Trials@uspto.gov
`571-272-7822
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` Paper No. 6
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` Entered: February 11, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISELEY MICROTECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`DICON FIBEROPTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01728
`Patent 6,838,738 B1
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
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`
`
` Paper No. 6
`
`
`
` Entered: February 11, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PRECISELEY MICROTECHNOLOGY CORP.,
`Petitioner,
`
`v.
`
`DICON FIBEROPTICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01728
`Patent 6,838,738 B1
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-01728
`Patent 6,838,738 B1
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`I.
`INTRODUCTION
`Petitioner, Preciseley Microtechnology Corp. (“Preciseley”), filed a
`Petition requesting an inter partes review of claims 1–50 of U.S. Patent
`No. 6,838,738 B1 (Ex. 1001, “the ’738 patent”). Paper 1 (“Pet.”). In
`response, Patent Owner, DiCon Fiberoptics, Inc. (“DiCon”), filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted unless the information presented in the petition “shows that
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 1–50 of the ’738 patent.
`
`A. Related Matter
`
`The ’738 patent is asserted in DiCon Fiberoptics, Inc. v. Preciseley
`Microtechnology Corp., No. 3:15-cv-01362 (N.D. Cal.). Pet. 2.
`
`B. The ’738 Patent
`
`The ’738 patent, titled “Electrostatic Control of Micro-Optical
`Components,” issued January 4, 2005, from U.S. Patent Application
`No. 10/081,496, filed February 20, 2002. Ex. 1001, at [54], [45], [21], [22].
`The ’738 patent claims priority to U.S. Provisional Patent Application
`No. 60/324,245, filed September 21, 2001. Id. at [60].
`As the title suggests, the ’738 patent relates to electrostatic actuators
`for driving micro-electro-mechanical (“MEMS”) components. Id. at 1:22–
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`24. The ’738 patent purports to overcome disadvantages associated with
`prior art parallel plate electrostatic actuators, including high voltage
`requirements, limited range of motion, and instability when moved beyond a
`critical point, as well as the high power dissipation, slow response, and
`increased manufacturing complexity associated with electromagnetic or
`thermal actuators, through the use of vertical comb drive actuators. Id. at
`1:32–46.
`The vertical comb drive actuators disclosed in the ’738 patent each
`include a stator, i.e., a stationary element, and a rotor, i.e., a moving element,
`which are patterned into an array of inter-digital fingers, or combs. Id. at
`2:45–54. The ’738 patent describes several actuator varieties, differing in
`range of motion, complexity of manufacture, and starting material; however,
`each of the disclosed actuators uses an electrostatic force between the stator
`and the rotor that is normal to the plane in which the stator and rotor were
`fabricated, to move the rotor. Id.
`Figure 3 of the ’738 patent is reproduced below.
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`Figure 3 depicts a simplified cross sectional view of an actuator for
`use in a micro-optical component. Id. at 2:25–26. The application of a
`voltage to the stator, including stator fingers 304, relative to the rotor and
`conducting plane 303, produces electrical field 320 between adjacent stator
`fingers 304 and rotor finger 308, as well as between the stator fingers 304
`and conducting plane 303, but not between rotor finger 308 and conducting
`plane 303. Id. at 6:17–28. This asymmetry in electric field 320 generates a
`vertical force 305 on rotor finger 308, causing displacement in a direction
`normal to and away from conducting plane 303. Id. at 6:29–35.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 19, 26, 32, and 35 are
`independent. Independent claims 1, 19, 26, and 35 are directed to
`electrostatic actuators, and independent claim 32 is directed to a MEMS
`actuator. Claims 2–18 depend, directly or indirectly from claim 1; claims
`20–25 depend, directly or indirectly, from claim 19; claims 27–31 depend,
`directly or indirectly, from claim 26; claims 33 and 34 depend directly from
`claim 32; and claims 36–50 depend, directly or indirectly, from claim 35.
`Claim 1, reproduced below, is illustrative of the claimed subject matter.
`1.
`An electrostatic actuator formed in a single layer
`comprising:
`a stator formed in the layer comprising a first plurality of
`fingers;
`a rotor formed in the layer comprising a second plurality
`of fingers, wherein:
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`one or more of the fingers of the second plurality is
`between the fingers of the first plurality, and
`one or more fingers of the stator and rotor are positioned
`above a conducting plane having the same potential as the rotor,
`each of said stator and rotor comprising electrically conducting
`layers, and
`one or more fingers of the rotor has a height less than or
`equal to one or more fingers of the stator such that a vertical force
`is exerted upon the rotor, the height measured from the bottom
`of the finger to the top of the finger, wherein the first and second
`plurality of fingers are substantially in a plane when no voltage
`is applied to the actuator, such plane being transverse to direction
`of the vertical force, said rotor being pivoted about an axis, so
`that when a voltage is applied to a conducting layer of the stator,
`a vertical force is exerted upon one or more fingers of the rotor,
`causing the rotor to rotate about the axis, wherein the rotor
`further comprises a central portion, the central portion forming
`part of a micro-optical component that attenuates or switches an
`input signal be rotation of the central portion of the rotor.
`Ex. 1001, 9:34–62.
`
`D. Prior Art Relied Upon
`
`
`
`Conant
`
`Hagelin
`
`Behin
`’173
`
`US 6,000,280
`
`US 7,079,299 B1
`
`US 6,386,716 B2
`
`US 6,744,173 B2
`
`Preciseley relies upon the following prior art references (Pet. 4–6):
`Behin
`US 6,593,677 B2
`July 15, 2003
`(Ex.
`’677
`1002)
`Miller
`(Ex.
`1003)
`(Ex.
`1004)
`(Ex.
`1005)
`(Ex.
`1006)
`
`Dec. 14,
`1999
`July 18, 2006
`
`May 14,
`2002
`June 1, 2004
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`Yeh
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`Suzuki
`
`US 2002/0118850
`A1
`US 6,178,069 B1
`
`Aug. 29,
`2002
`Jan. 23, 2001
`
`(Ex.
`1007)
`(Ex.
`1008)
`
`E. Asserted Grounds of Unpatentability
`
`Preciseley asserts the following grounds of unpatentability (Pet. 6):
`
`Claims
`Basis
`Reference(s)
`1–4, 6, 7, 11, 14, 35–
`37, 39, 43, 44, and 50 § 103(a) Behin ’677 and Miller
`5 and 38
`§ 103(a) Behin ’677, Miller, and Conant
`15–18 and 47–49
`§ 103(a) Behin ’677, Miller, and Behin ’173
`8–10, 12, 13, 40–42,
`§ 103(a) Behin ’677, Miller, Hagelin, and Yeh
`45, and 46
`§ 102(e)
`and/or
`§ 103(a)
`§ 103(a) Behin ’173 and Conant
`§ 103(a) Behin ’173 and Suzuki
`§ 103(a) Behin ’173, Conant, and Suzuki
`
`19–23 and 25–30
`
`Behin ’173
`
`24 and 31
`32 and 33
`34
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
`Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015) (“Congress
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`implicitly approved the broadest reasonable interpretation standard in
`enacting the AIA,” and “the standard was properly adopted by PTO
`regulation.”), cert. granted, No. 15-446 (U.S. Jan. 15, 2016). Under the
`broadest reasonable interpretation standard, and absent any special
`definitions, claim terms or phrases are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`B.
`
`“formed in”
`
`Each of independent claims 1, 19, and 26 recites that the actuator, or
`an aspect of the actuator, is “formed in” a wafer or layer having particular
`characteristics.1 For example, claim 26 recites
`An electrostatic actuator formed in a[n] insulating layer,
`the actuator comprising:
`a stator comprising a first plurality of fingers having an
`insulating portion formed in the insulating layer, and a
`conductive portion upon the insulating portion;
`a rotor comprising a second plurality of fingers, the rotor
`formed in the insulating layer, . . .
`Ex. 1001, 11:12–18.
`
`
`1 Dependent claim 9 also recites an instance of “formed in,” stating: “The
`electrostatic actuator of claim 1 further comprising one or more springs
`formed in the layer, the springs connected to the central portion of the rotor.”
`Ex. 1001, 10:19–21.
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`Preciseley urges us to interpret “formed in” as requiring only that “the
`described structure was created at least partially within the wafer and/or
`layer being discussed.” Pet. 12. As support, Preciseley cites to the
`Declaration of Dr. Ezekiel Kruglick (“Kruglick Declaration”), which states
`“[i]n my opinion, the term ‘formed in’ as used in certain challenged claims,
`means that the described structure was created at least partially within the
`wafer and/or layer being discussed.” Ex. 1013 ¶ 41.
`DiCon responds that “formed in” requires no construction, and
`further, that the interpretation offered by Preciseley “renders the term a
`nullity” because under Preciseley’s construction, claims reciting that a given
`structure is “formed in” a particular layer would encompass structures made
`from layers in addition to the specified layer. Prelim. Resp. 8. Referencing
`the embodiments depicted in Figures 6 and 7 of the ’738 patent, as well as
`those set forth in claims 1, 19, and 26, DiCon asserts that “the term ‘formed
`in’ simply identifies the layer or layers from which the claimed electrostatic
`actuators (or features of the actuator such as the stator or rotor fingers) are
`fabricated, not the layer or layers from which such features are ‘at least
`partially’ fabricated.” Id. at 9–11. DiCon also contends that Dr. Kruglick’s
`testimony should not be afforded any weight because Dr. Kruglick “points to
`nothing in the ’738 Patent or its prosecution history to support it.” Id. at 11.
`Although we have considered DiCon’s arguments, we observe that
`claim 26 recites an actuator “formed in an insulating layer,” including a
`stator having fingers with “an insulating portion formed in the insulating
`layer, and a conductive portion upon the insulating portion.” Ex. 1001,
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`11:12–16. Thus, by the plain language of the claim 26, an actuator “formed
`in” an insulating layer may include components made from the insulating
`layer, as well as additional materials, i.e., a conductive portion. Id.; see also
`id. at 2:1–13 (“In yet another embodiment of the invention, an electrostatic
`actuator formed in a[n] insulating layer is disclosed. . . . The actuator
`comprises a stator comprising a first plurality of fingers having an insulating
`portion formed in the insulating layer, and a conductive portion upon the
`insulating portion.”). Similarly, the Specification of the ’738 patent teaches
`that “[s]ince the stator is formed in a layer of a wafer, the stator may include
`many fixed areas of the wafer, and any material on the wafer.” Ex. 1001,
`2:58–60 (emphases added).
`We contrast the use of “formed in” to refer to structures formed
`partially in a given layer in claim 26 with the use of “comprising” and
`“consisting of” to distinguish between a stator made partially from an
`insulating layer, on the one hand, and a rotor made exclusively from an
`insulator, on the other, in claim 32. We also note that the claim 32
`requirement for a rotor consisting of an insulating material captures the
`“unique aspect of significant interest” DiCon contends would be lost if
`“formed in” were interpreted to mean “created at least partially in.”
`See Prelim. Resp. 10–11.
`The plain language of claim 26, as well as the remainder of the
`Specification, indicates that a structure “formed in” a particular layer may
`encompass materials in addition to that layer. Furthermore, Dr. Kruglick’s
`testimony is consistent with this understanding of “formed in,” as it is used
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`in the ’738 patent. Ex. 1013 ¶ 41. On this record, and for purposes of this
`decision, therefore, we construe the phrase “formed in” to encompass a
`structure created at least partially in the layer or wafer being discussed.
`
`C.
`
`Principles of Law
`
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`“A reference anticipates a claim if it discloses the claimed invention ‘such
`that a skilled artisan could take its teachings in combination with his own
`knowledge of the particular art and be in possession of the invention.’” In re
`Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (emphasis omitted) (quoting In
`re LeGrice, 301 F.2d 929, 936 (CCPA 1962)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`When a work is available in one field of endeavor, design
`incentives and other market forces can prompt variations of it,
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`either in the same field or a different one. If a person of ordinary
`skill can implement a predictable variation, § 103 likely bars its
`patentability. For the same reason, if a technique has been used
`to improve one device, and a person of ordinary skill in the art
`would recognize that it would improve similar devices in the
`same way, using the technique is obvious unless its actual
`application is beyond his or her skill. Sakraida [v. Ag Pro, Inc.,
`425 U.S. 273 (1976)] and Anderson’s–Black Rock [Pavement
`Salvage Co., 396 U.S. 57 (1969)] are illustrative—a court must
`ask whether the improvement is more than the predictable use of
`prior art elements according to their established functions.
`KSR, 550 U.S. at 417.
`The level of ordinary skill in the art is reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`579 F.2d 86, 91 (CCPA 1978).
`
`D. Obviousness Ground of Unpatentability Based on
`Behin ’677 and Miller
`
`Preciseley asserts that claims 1–4, 6, 7, 11, 14, 35–37, 39, 43, 44, and
`50 are unpatentable under § 103(a) as obvious over Behin ’677 and Miller.
`Pet. 13–29. Preciseley explains how the combination of Behin ’677 and
`Miller discloses the subject matter of each challenged claim (id.), and relies
`upon the Kruglick Declaration (Ex. 1013) to support its positions.
`DiCon counters that Behin ’677 teaches away from the claimed
`invention, because the actuators disclosed in Behin ’677 include a biasing
`feature that generates an initial angular displacement, causing the rotor and
`stator fingers to be out of plane before a voltage is applied to the stator,
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`contrary to the requirements of independent claims 1 and 35. Prelim.
`Resp. 24–25. DiCon further argues that a skilled artisan would not have
`been motivated to combine the biased actuator of Behin ’677 with an
`unbiased actuator in general, and the unbiased actuator of Miller in
`particular, because such combination would require elimination of the
`biasing feature that Behin ’677 identifies as an advance over the prior art.
`Id. at 27–28.
`DiCon does not directly dispute Dr. Kruglick’s opinions that actuator
`choice is a detail that may be defined subsequent to the specification of other
`functional aspects of a MEMS device, or that the combination of features set
`forth in the claims of the ’738 patent represent mere design choices.
`See Prelim. Resp. 24–31. Rather, DiCon asserts that Preciseley’s and
`Dr. Kruglick’s rationale for combining Behin ’677 with Miller reduces to a
`conclusory statement that a skilled artisan would be motivated to incorporate
`elements from Miller into Behin ’677 because both references are in the
`same general technical field. Id. at 29–30. DiCon also argues that neither
`Preciseley nor Dr. Kruglick addresses whether a skilled artisan would have a
`reasonable expectation of success in combining the cited references. Id.
`at 31.
`
`Behin ’677
`Behin ’677 discloses a rotating electrostatic comb drive actuator
`fabricated from a single layer, and including a stationary element and a
`rotating element having interdigitated comb fingers, such that the comb
`fingers of the stationary element and rotating element are self-aligned. Ex.
`12
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`1002, 3:28–35. Behin ’677 further discloses the inclusion of a biasing
`element on the rotating element, to apply torsional force in response to
`position sensing feedback. Id.
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`Figure 2 is reproduced below.
`
`As shown in Figure 2 of Behin ’677, biased comb drive rotating
`actuator 200 comprises rotating element 24, including comb fingers 20, as
`well as micro-machined structure 23, including comb fingers 22. Id.
`at 6:28–35, 7:7–14. Behin ’677 explains that “a plurality of first comb
`fingers 20, extending from a first micro-machined structure 21, are
`substantially co-planar with a plurality of second comb fingers 22 extending
`from a second micro-machined structure 23.” Id. at 6:31–35. Behin ’677
`further teaches that “[a] voltage may be applied between comb fingers to
`cause the rotating element to undergo further rotation about the axis in a
`predetermined manner.” Id. at Abstract.
`
`Miller
`Miller discloses an electrostatic actuator “which can be used with a
`wide range of MEMS devices to provide improved control of the motion of
`such devices.” Ex. 1003, 2:32–43. Miller teaches that “[i]nterdigitated
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`electrode capacitive actuators . . . take advantage of the electrostatic comb
`drive levitation effect[.]” Id. at 20:17–19.
`Figure 24 is reproduced below.
`
`As shown in Figure 24 of Miller, the application of a voltage V to
`fixed fingers 180, generates electric fields 430 and 432 between fixed
`fingers 180 and moveable finger 182, as well as electric field 434 between
`fixed fingers 180 and grounded substrate 18. Id. at 20:19–30. Together,
`electric fields 430, 432, and 434 produce vertical force 436 on moveable
`finger 182, which causes moveable finger 182 to move away from substrate
`18. Id. at 20:30–35.
`Miller additionally teaches that varying the relative height of the fixed
`and moveable fingers “changes the pattern of the electrostatic fields, and
`increases the asymmetry[,]” thereby affecting the magnitude of the vertical
`force on the moveable fingers. Id. at 20:64–21:17.
`
`Rationale to Combine Prior Art Teachings
`Relying on the Kruglick Declaration, Preciseley contends that a
`skilled artisan would have been motivated to combine features of the
`electrostatic comb drive actuators capable of causing rotation about an axis
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`taught by Behin ’677 and Miller to arrive at the claimed invention. Pet. 18–
`19; see also Ex. 1013 ¶¶ 56, 57. In particular, Preciseley asserts that
`Behin ’677 and Miller are closely related, highlighting the citation of Miller
`by Behin ’677, and arguing that each reference describes “various options
`for actuator designs that could be used interchangeably depending on the
`designer’s preferences and/or the device constraints of the device being
`designed.” Pet. 18–19; see also Ex. 1013 ¶¶ 56, 57.
`Dr. Kruglick elaborates on this reasoning, explaining that “[t]he
`choice of actuator is actually a detail that can be defined after other
`functional component(s) of the MEMS device [have] been specified.”
`Ex. 1013 ¶ 57; see also Pet. 18–19. Dr. Kruglick also emphasizes that
`Behin ’677 and Miller are closely related references: “both describe reactive
`ion deep etching based vertical comb actuators that are close fabrication
`alternatives of each other. Further, both use vertical electrostatic actuators to
`rotate a stator around an axis, further demonstrating that the differences are
`just interchangeable design choices.” Ex. 1013 ¶ 57.
`DiCon’s arguments are based on a narrow interpretation of Behin ’677
`as disclosing that a biasing element and biasing force are necessary to
`overcome the disadvantages of prior art actuators. Prelim. Resp. 26–27.
`However, “[a] reference must be considered for everything it teaches by way
`of technology and is not limited to the particular invention it is describing
`and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d
`898, 907 (Fed. Cir. 1985); In re Applied Materials, Inc., 692 F.3d 1289,
`1298 (Fed. Cir. 2012). Importantly, when evaluating claims for
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`obviousness, “the prior art as a whole must be considered.” In re Hedges,
`783 F.2d 1038, 1041 (Fed. Cir. 1986).
`Separate and apart from any benefits of the disclosed biasing feature,
`Behin ’677 teaches that self-aligned rotating comb drive devices present
`numerous advantages over prior art actuators in their own right. For
`example, Behin ’677 explains that because they are fabricated from a single
`layer of substrate, “the first and second comb fingers [in a self-aligned
`rotating comb drive] may start from a substantially co-planar and
`interdigitated engagement, thereby substantially diminishing non-linear
`rotational effects that are often inherent in the prior art vertical combdrive
`actuators.” Ex. 1002, 5:24–31. Behin ’677 further teaches
`if the first and second combdrives are defined by a single
`lithographic step, their alignment can be held to much tighter
`tolerances than in the prior art, providing for much more stable
`behavior than vertical combdrive actuators of the prior art. The
`performance of the rotating actuators and position sensors thus
`constructed is therefore more predictable than, and superior to,
`the prior art vertical combdrive devices.
`Id. at 5:31–40. Behin ’677 also identifies “simple design, compact size, low
`cost, and versatile performance” as advantages of the disclosed self-aligned
`comb drive rotating actuators. Id. at 14:35–39.
`These advantages of self-aligned comb drives stand in marked
`contrast to the disadvantages of prior art actuators fabricated in different
`layers of substrate, which Behin ’677 describes at length.
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`Figure 1A is reproduced below.
`
`Figure 1A of Behin ’677 depicts prior art rotating actuator 100, which
`employs a two-layer vertical comb drive, in a nominal state. Ex. 1002,
`2:23–25. In describing Figure 1A, Behin ’677 observes that “[i]t is worth
`noting that stationary comb fingers 12 and movable comb fingers 10 are
`fabricated in 2 different layers of substrate (not show in in FIG. 1A).” Id. at
`2:33–36. Behin ’677 goes on to describe the disadvantages associated with
`such multi-layer fabrication:
`because stationary comb fingers 12 and movable comb fingers
`10 are not coplanar and therefore not substantially engaged in
`their initial positions, the motion of the combdrive thus
`constructed is significantly nonlinear, unless a sufficient force is
`exerted on the combdrive to engage stationary comb fingers 12
`and movable comb fingers 10. Moreover, precise lateral
`alignment between stationary comb fingers 12 and movable
`comb fingers 10 is also inherently difficult to achieve in the
`above prior art combdrive system, because stationary comb
`fingers 12 and movable comb fingers 10 are fabricated in two
`
`18
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`different layers of the substrate. This can further result in non-
`linear and unstable behavior[.]
`Id. at 2:60–3:5.
`Notably, the disadvantages Behin ’677 attributes to prior art actuators,
`such as the actuator depicted in Figure 1A, arise from the fabrication of the
`stator and rotor fingers in those actuators from different layers (id.), and not,
`as DiCon suggests, from the absence of a biasing element or biasing force
`(Prelim. Resp. 19).
`We recognize that Behin ’677 additionally discloses a biasing element
`and biasing force to generate controlled angular displacement of the rotor,
`thus offering improved versatility of actuation and sensing capabilities
`versus the prior art. Ex. 1002, 3:28–31. We further note that the preferred
`embodiments described in Behin ’677 incorporate this biasing feature. See,
`e.g., id. at 7:25–28. Contrary to DiCon’s position, however, these teachings
`and embodiments in no way detract from the above described disclosure of
`the advantages attained with self-aligned rotating vertical comb drives,
`irrespective of the inclusion of any biasing feature.
`Accordingly, on this record, we are not persuaded by DiCon’s
`argument that combining the teachings of Behin ’677 with an actuator that
`lacks a biasing feature to arrive at an actuator in which the rotor and stator
`fingers are in plane “would require elimination of the very advance over the
`prior art (an actuator with a biasing force) that Behin[ ]’677 discloses”
`(Prelim. Resp. 27). Rather, based on the present record, we are persuaded
`that a skilled artisan would have recognized the advantages of self-aligned
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`rotating vertical comb drives taught by Behin ’677, and been motivated to
`incorporate these features of Behin ’677 into unbiased actuator designs.
`In particular, on this record, we observe that a skilled artisan would
`have appreciated Behin ’677 as suggesting that the stator and rotor should be
`in a coplanar configuration prior to the application of a biasing force, where
`the actuator includes a biasing feature, or prior to the application of a
`voltage, in embodiments without a biasing feature, such as the embodiment
`depicted in Figure 1A. See Ex. 1002, 3:35–38 (“in a nominal state, the two
`sets of comb fingers are substantially interdigitated according to a
`predetermined engagement”), 12:66–13:2 (“the first and second sets of comb
`fingers . . . may be in a substantially co-planar interdigitating engagement in
`the absence of biasing force”). In fact, Behin ’677 explicitly teaches that the
`undesirable non-linear rotational effects seen in prior art actuators are
`substantially diminished in self-aligned actuators where the stator and rotor
`fingers “start from a substantially co-planar and interdigitated
`engagement[.]” Id. at 5:24–31.
`Similar to Behin ’677, Miller discloses “an improved comb-type
`actuator structure which can be used with a wide range of MEMS devices to
`provide improved control of the motion of such devices.” Ex. 1003, 2:38–
`40. Miller specifies that “[t]he comb-type structure consists of high aspect
`ratio MEMS beams fabricated as interleaved fixed and movable capacitor
`fingers. . . . [A]pplication of a voltage between adjacent fingers produces an
`electrostatic force which tends to produce relative motion of the fingers.”
`Id. at 2:40–43; see also id. at 22:50–65.
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`Furthermore, Dr. Kruglick’s opinion that Miller and Behin ’677 “both
`describe reactive ion deep etching based vertical comb actuators that are
`close fabrication alternatives of each other[,]” and that “[t]he choice of
`actuator is actually a detail that can be defined after other functional
`component(s) of the MEMS device [have] been specified” (Ex. 1013 ¶ 57),
`supports Preciseley’s contention that a skilled artisan would have been
`motivated to use different aspects of these actuators interchangeably
`depending on designer preferences and design constraints. On this record,
`we credit Dr. Kruglick’s testimony, as it is consistent with the prior art
`disclosures.
`Accordingly, given the evidence before us in this record, we conclude
`that Preciseley has demonstrated sufficiently that a skilled artisan would
`have been motivated to combine Behin ’677 and Miller to arrive at the
`claimed invention. See KSR, 550 U.S. at 417 (“[I]f a technique has been
`used to improve one device, and a person of ordinary skill in the art would
`recognize that it would improve similar devices in the same way, using the
`technique is obvious unless its actual application is beyond his or her
`skill.”).
`
`Conclusion
`At this juncture, DiCon has not raised any additional arguments with
`regard to the dependent claims other than those addressed above. We have
`reviewed Preciseley’s explanations and supporting evidence, and we are
`persuaded that Preciseley has established sufficiently that the combination of
`Behin ’677 and Miller teaches or suggests each limitation of the challenged
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`claims as set forth in the Petition. For the foregoing reasons, we conclude
`that Preciseley has shown a reasonable likelihood of prevailing on its
`assertions that claims 1–4, 6, 7, 11, 14, 35–37, 39, 43, 44, and 50 are as
`obvious over Behin ’677 and Miller.
`
`E. Obviousness Ground of Unpatentability Based on
`Behin ’677, Miller, and Conant
`
`Preciseley asserts that claim 5, which depends directly from claim 1,
`and claim 38, which depends directly from claim 35, are unpatentable under
`§ 103(a) as obvious over Behin ’677, Miller, and Conant. Pet. 29–31. In
`support of its assertion, Preciseley provides detailed explanations as to how
`the combination of Behin ’677, Miller, and Conant meets each claim
`limitation (id.), and relies upon the Kruglick Declaration (Ex. 1013) to
`support its positions.
`Referencing the arguments set forth above regarding the obviousness
`of independent claims 1 and 35, DiCon reasserts that Behin ’677 and Miller
`are not properly combined. Prelim. Resp. 31–32. We addressed those
`arguments in our analysis above, and found them unavailing on this record.
`DiCon additionally contends that Preciseley improperly relies on conclusory
`statements to support the combination of Behin ’677, Miller, and Conant.
`Id. Furthermore, DiCon argues that Behin ’677 teaches away from any
`combination with Conant because “Behin[ ]’677 identifies Conant as a prior
`art comb drive system that should be replaced by, not combined with the
`actuator described in Behin[ ]’677.” Id. at 33. In our discussion below, we
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`address each of these contentions in turn, after providing a brief summary of
`Conant.
`
`Conant
`Conant describes a staggered torsional electrostatic comb drive having
`a torsional hinge, and capable of creating vertical forces to cause rotation.
`Ex. 1004 Abstract, 3:7–19. The stationary and moving combteeth
`assemblies of Conant are fabricated in different layers, using separate
`lithographic steps. Id. at Abstract.
`Figure 1 is reproduced below.
`
`As shown in Figure 1 of Conant, Staggered Torsional Electrostatic
`Combdrive (“STEC”) 20 includes stationary combteeth assembly 22, having
`individual combteeth 24, as well as moving combteeth assembly 30, having
`individual combteeth 32, and torsional hinge 42. Ex. 1004, 2:47–57.
`Moving combteeth assembly 30 is positioned entirely above stationary
`combteeth assembly 22 in a resting state. Id. at 2:51–53. When a voltage is
`applied between moving combteeth assembly 30 and stationary combteeth
`assembly 22, the applied voltage attracts the moving combteeth assembly 30
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