IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Preciseley Microtechnology Corp.,
`Petitioner
`
`v.
`
`Dicon Fiberoptics, Inc., Patent Owner
`
`U.S. Patent No.: 6,838,738
`Filed: February 20, 2002
`Issued: January 4, 2005
`Inventors: Benedict J. Costello, Peter T. Jones,
`and Ho-Shang Lee
`Assignee: Dicon Fiberoptics, Inc.
`Title: ELECTROSTATIC CONTROL OF MICROOPTICAL COMPONENTS
`
`Inter Partes Review No. IPR2015-01728
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Madison Building (East)
`600 Dulany Street
`Alexandria, VA 22313
`
`
`
`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,838,738
`
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 1
`
`A.
`
`Real Party-In-Interest ............................................................................ 2
`
`B.
`
`Related Matters ...................................................................................... 2
`
`1.
`
`2.
`
`Related Litigation and IPRs ........................................................ 2
`
`Related Applications ................................................................... 2
`
`C.
`
`Lead and Back-Up Counsel ................................................................... 2
`
`D.
`
`Service Information ............................................................................... 3
`
`III.
`
`PAYMENT OF FEES ..................................................................................... 3
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW ...................................... 3
`
`A. Grounds for Standing ............................................................................ 3
`
`B.
`
`Identification of Challenge .................................................................... 4
`
`1.
`
`2.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based ...................................................................... 4
`
`How the Construed Claims Are Unpatentable and Supporting
`Evidence Relied Upon to Support the Challenge ....................... 6
`
`V.
`
`FACTUAL BACKGROUND.......................................................................... 7
`
`A. Declaration Evidence ............................................................................ 7
`
`B.
`
`C.
`
`The State of the Art ............................................................................... 8
`
`The ’738 Patent ...................................................................................10
`
`D.
`
`Prosecution History of the ’738 Patent ...............................................11
`
`VI. BROADEST REASONABLE CONSTRUCTION .......................................11
`
`i
`
`

`
`VII. GROUNDS OF UNPATENTABILITY ON WHICH PETITIONER IS
`LIKELY TO PREVAIL .................................................................................12
`
`A. Ground 1: Claims 1-4, 6, 7, 11, 14, 35-37, 39, 43, 44, 50 are obvious
`in view of Behin ’677 and Miller ........................................................13
`
`B.
`
`C.
`
`Ground 2: Claim 5 and 38 are obvious in view of Behin ’677, Miller,
`and Conant ...........................................................................................29
`
`Ground 3: Claims 15-18 and 47-49 are obvious in view of Behin ’677,
`Miller, and Behin ’173 ........................................................................32
`
`D. Ground 4: Claims 8-10, 12, 13, 40-42, 45 and 46 are obvious in view
`of Behin ’677, Miller, Hagelin, and Yeh ............................................36
`
`E.
`
`F.
`
`Ground 5: Claims 19-23, and 25, and 26-30 are anticipated and/or
`obvious in view of Behin ’173 ............................................................46
`
`Ground 6: Claims 24 and 31 are obvious in view of Behin ’173 and
`Conant..................................................................................................54
`
`G. Ground 7: Claims 32 and 33 are obvious in view of Behin ’173 and
`Suzuki ..................................................................................................56
`
`H. Ground 8: Claim 34 is obvious in view of Behin ’173, Conant, and
`Suzuki ..................................................................................................59
`
`VIII. CONCLUSION ..............................................................................................60
`
`ii
`
`

`
`EXHIBIT LIST
`
`Exhibit #
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent No. 6,838,738 (“the ’738 patent”)
`
`U.S. Patent No. 6,593,677 to Behin et al. (“Behin ’677”)
`
`U.S. Patent No. 6,000,280 to Miller et al. (“Miller”)
`
`U.S. Patent No. 7,079,299 to Conant et al. (“Conant”)
`
`U.S. Patent No. 6,386,716 to Hagelin et al. (“Hagelin”)
`
`U.S. Patent No. 6,744,173 to Behin et al. (“Behin ’173”)
`
`U.S. Patent Application Publication No. 2002/0118850 to Yeh et
`al. (“Yeh”)
`
`U.S. Patent No. 6,178,069 to Suzuki (“Suzuki”)
`
`A. Selvakumar, K. Najafi, W. H. Juan, and S. Page, “Vertical
`Comb Array Microactuators”, IEEE Micro Electro Mechanical
`Systems, 1995, MEMS '95, Proceedings, Amsterdam,
`Netherlands, 29 January – 2 February, 1995
`
`William C. Tang, "Electrostatically Balanced Comb Drive for
`Controlled Levitation", IEEE Solid-State Sensor and Actuator
`Workshop, 1990, 4th Technical Digest, Hilton Head Island, SC,
`USA, 4-6 June, 1990
`
`Kevin A. Shaw, "SCREAM I: a single mask, single-crystal
`silicon, reactive ion etching process for microelectromechanical
`structures", Sensors and Actuators A, 40 (1994) 63-70
`
`Zhimin Yao etc., "Single crystal silicon supported thin film
`micromirrors for optical applications", Opt. Eng. 36(5) 1408–
`1413 (May 1997)
`
`1013
`
`Expert Declaration of Dr. Ezekiel J. Kruglick, Ph.D., with
`Attachments
`
`iii
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`I.
`
`INTRODUCTION
`
`Petitioner Preciseley Microtechnology Corp. ( “Preciseley” or “Petitioner”)
`
`respectfully requests inter partes review for claims 1-50 (“the Challenged Claims”)
`
`of U.S. Patent No. 6,838,738 (“the ’738 patent,” attached as Ex. 1001) in
`
`accordance with 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42.100 et seq.
`
`The claimed inventions of the ’738 patent are directed generally to MEMS
`
`electrostatic comb drive actuators for controlling micro-optical components. Ex.
`
`1001 at Title, Abstract, and 1:40-46.1 As demonstrated by various prior art
`
`references (e.g., Exhibits 1002-1008), each and every feature claimed in the ’738
`
`patent was well-known in the art prior to the patent’s earliest effective filing date.
`
`The ’738 patent merely combined certain well-known features in an obvious and
`
`predictable way, as discussed in further detail in this Petition.
`
`The claim charts and arguments presented in Section VII of this Petition,
`
`supported by the Declaration of Dr. Ezekiel J. Kruglick (Ex. 1013), demonstrate by
`
`a preponderance of the evidence that the identified prior art references render
`
`unpatentable each and every one of the Challenged Claims of the ’738 patent.
`
`II. MANDATORY NOTICES
`
`
`1This petition cites to various exhibits by citing page (or column) and line
`
`number references, as follows: “Ex. [No.] at [page/column]:[lines].”
`
`1
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`Pursuant to 37 C.F.R. § 42.8(a)(1), Preciseley provides the following
`
`mandatory disclosures.
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Preciseley
`
`Microtechnology Corp., is the real party-in-interest.
`
`B. Related Matters
`
`1.
`
`Related Litigation and IPRs
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner states that the ’738 patent is
`
`asserted in pending litigation captioned Dicon Fiberoptics, Inc. v. Preciseley
`
`Microtechnology Corp., No. 3:15-CV-01362 (N.D. Cal.). The patent-in-suit is the
`
`’738 patent.
`
`2.
`
`Related Applications
`
`The ’738 patent claims benefit of U.S. Provisional Patent Application Serial
`
`No. 60/324,245, filed on September 21, 2001.
`
`C. Lead and Back-Up Counsel
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner provides the following
`
`designation of counsel:
`
`Lead Counsel
`Robert P. Lord (Reg. No. 46,479)
`lord@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, TX 77010-1034
`Phone: 713.228.8600
`
`Back-up Counsel
` Tammy J. Terry (Reg. No.: 69,167)
`terry@oshaliang.com
`Jeffrey R. Guinn (Reg. No. 72,863)
`guinn@oshaliang.com
`OSHA LIANG LLP
`Same Address
`
`2
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`Fax: 713.228.8778
`
`Phone: 713.228.8600
`Fax: 713.228.8778
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
`
`Petition.
`
`D.
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), papers concerning this matter should be
`
`served on lead and backup counsel whose service information is provided above.
`
`Petitioner consents to service of papers in this proceeding by e-mail.
`
`III. PAYMENT OF FEES
`
`The undersigned authorizes the Office to charge Deposit Account No. 50-
`
`0591 (Ref. No. 18358/003001) for the fee required by 37 C.F.R. § 42.15(a) for this
`
`Petition and any additional fees as may be required.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW
`
`As set forth below and pursuant to 37 C.F.R. § 42.104, each requirement for
`
`inter partes review of the ’738 patent is satisfied.
`
`A. Grounds for Standing
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner hereby certifies that the ’738
`
`patent is available for inter partes review and that the Petitioner is not barred or
`
`estopped from requesting inter partes review challenging the claims of the ’738
`
`patent on the grounds identified herein. The ’738 patent is not subject to a
`
`previous estoppel based proceeding of the AIA. The complaint served on Petitioner
`
`3
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`in the action referenced in Section II(B) was served within the last 12 months.
`
`B.
`
`Identification of Challenge
`
`Pursuant to 37 C.F.R. §§ 42.104(b)(1), Petitioner requests inter partes
`
`review of claims 1-50 of the ’738 patent, and that the Board cancel the same.
`
`1.
`
`The Specific Art and Statutory Ground(s) on Which the
`Challenge Is Based
`
`Pursuant to 37 C.F.R. § 42.104(b)(2), inter partes review of the ’738 patent
`
`is requested in view of the following references, each of which is prior art to the
`
`’738 patent under 35 U.S.C. § 102(a), (b), and/or (e):2
`
`(1) U.S. Patent No. 6,593,677 to Behin et al. (Ex. 1002, “Behin ’677”),
`
`issued July 15, 2003, from an application filed March 14, 2001 which claims
`
`benefit to a provisional application filed on March 24, 2000. Because its filing
`
`date is before the earliest effective filing date of the ’738 patent, Behin ’677 is
`
`prior art to the ’738 patent under at least 35 U.S.C. § 102(e);
`
`(2) U.S. Patent No. 6,000,280 to Miller et al. (Ex. 1003, “Miller”), issued
`
`December 14, 1999, from an application filed March 23, 1998 which claims
`
`benefit to a provisional application filed on July 20, 1995. Because Miller issued
`
`more than one year prior to the earliest effective filing date of the ’738 patent,
`
`
`2 The pre-AIA versions of 35 U.S.C. §§ 102 and 103 apply to the claims of the
`
`pre-AIA ’738 patent.
`
`4
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`Miller is prior art to the ’738 patent under at least 35 U.S.C. § 102(b);
`
`(3) U.S. Patent No. 7,079,299 to Conant et al. (Ex. 1004, “Conant”),
`
`issued July 18, 2006, from an application filed May 31, 2000. Because its filing
`
`date is before the earliest effective filing date of the ’738 patent, Conant is prior art
`
`to the ’738 patent under at least 35 U.S.C. § 102(e);
`
`(4) U.S. Patent No. 6,386,716 to Hagelin et al. (Ex. 1005, “Hagelin”),
`
`issued May 14, 2002, from an application filed June 11, 2001 that is a continuation
`
`of U.S. Patent No. 6,283,601, which was filed on April 14, 2000. Because its
`
`filing date is before the earliest effective filing date of the ’738 patent, Hagelin is
`
`prior art to the ’738 patent under at least 35 U.S.C. § 102(e);
`
`(5) U.S. Patent No. 6,744,173 to Behin et al. (Ex. 1006, “the ’173
`
`patent”), issued June 1, 2004, from an application filed on March 14, 2001 which
`
`claims benefit to a provisional application filed on March 24, 2000. Because its
`
`filing date is before the earliest effective filing date of the ’738 patent, Behin ’173
`
`is prior art to the ’738 patent under at least 35 U.S.C. § 102(e);
`
`(6) U.S. Patent Application Publication No. 2002/0118850 to Yeh et al.
`
`(Ex. 1007, “Yeh”), published August 29, 2002, from an application filed August 2,
`
`2001 which claims benefit to a provisional application filed on August 2, 2000.
`
`Because its filing date is before the earliest effective filing date of the ’738 patent,
`
`Yeh is prior art to the ’738 patent under at least 35 U.S.C. § 102(e);
`
`5
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`(7) U.S. Patent No. 6,178,069 to Suzuki (Ex. 1008, “Suzuki”), issued
`
`January 23, 2001, from an application filed May 21, 1998. Because Suzuki issued
`
`more than one year prior to the earliest effective filing date of the ’738 patent,
`
`Suzuki is prior art to the ’738 patent under at least 35 U.S.C. § 102(b);
`
`The Challenged Claims of the ’738 patent are unpatentable under 35 U.S.C.
`
`§ 102 as anticipated by the prior art and/or under 35 U.S.C. § 103(a) as being
`
`obvious over the prior art. Specifically:
`
`Ground
`
`’738 Patent Claims Basis of Unpatentability under 35 U.S.C. § 103
`
`A
`
`B
`
`C
`
`D
`
`E
`
`F
`
`G
`
`H
`
`1-4, 6, 7, 11, 14, 35-
`37, 39, 43, 44, and
`50
`
`Behin ’677 and Miller
`
`5 and 38
`
`Behin ’677, Miller, and Conant
`
`15-18 and 47-49
`
`Behin ’677, Miller, and Behin ’173
`
`8-10, 12, 13, 40-42,
`45, and 46
`
`Behin ’677, Miller, Hagelin, and Yeh
`
`19-23 and 25-30
`
`Behin ’173
`
`24 and 31
`
`32 and 33
`
`Claim 34
`
`Behin ’173 and Conant
`
`Behin ’173 and Suzuki
`
`Behin ’173, Conant, and Suzuki
`
`2. How
`the Construed Claims Are Unpatentable and
`Supporting Evidence Relied Upon to Support the Challenge
`
`Pursuant to 37 C.F.R. § 42.104(b)(4), an explanation of how the Challenged
`
`Claims of the ’738 patent are unpatentable under the statutory grounds identified
`
`above, including the identification of where each element of the claim is found in
`
`6
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`the prior art, is provided in Section VII below, in the form of claims charts.
`
`Pursuant to 37 C.F.R. § 42.104(b)(5), the Exhibit numbers of the supporting
`
`evidence relied upon to support the challenges and the relevance of the evidence to
`
`the challenges raised, including identifying specific portions of the evidence that
`
`support the challenges, are provided in Section VII, in the form of claim charts.
`
`V.
`
`FACTUAL BACKGROUND
`
`A. Declaration Evidence
`
`This Petition is supported by the Declaration of Dr. Kruglick. See Ex. 1013.
`
`Dr. Kruglick provides opinions about the content and state of the prior art, the level
`
`of skill of a person having ordinary skill in the art at the time of the invention of
`
`the Challenged Claims (i.e., the hypothetical “PHOSITA”) (Ex. 1013 at ¶¶ 22-36),
`
`and what would have been obvious to the PHOSITA.
`
`Dr. Kruglick is qualified to provide the above-mentioned opinions. He is
`
`currently the President of Ardent Research, a Research and Development
`
`Company. He received a Bachelor of Science degree in Electrical Engineering
`
`from the University of California in 1995, a Master of Science degree from the
`
`University of California, Los Angeles in 1996, and a Doctor of Philosophy degree
`
`in Integrated Circuits and Systems with a specialty in MEMS from the University
`
`of California, Berkeley in 1999. He has done extensive work in the field of
`
`microelectrical mechanical systems (MEMS) research, design, and fabrication. Ex.
`
`7
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`1013 at ¶¶ 2-5 and Appendix A. Additional details regarding Dr. Kruglick’s
`
`qualifications are in his CV at Ex. 1013, Appendix A.
`
`B.
`
`The State of the Art
`
`The ’738 patent is directed toward microelectrical mechanical systems
`
`(MEMS) such as electrostatic comb drive actuators for controlling (e.g., rotating)
`
`micro-optical components (e.g., mirrors) using vertical force, which were known
`
`long before September 21, 2001, the earliest effective filing date of any claim of
`
`the ’738 patent. Such electrostatic comb drive actuators were described in
`
`publications
`
`long before September 21, 2001 such as,
`
`for example,
`
`“Electrostatically Balanced Comb Drive for Controlled Levitation” (Ex. 1010) by
`
`William C. Tang; “SCREAM I: a single mask, single-crystal silicon, reactive ion
`
`etching process for microelectromechanical structures” by Kevin A. Shaw (Ex.
`
`1011); and “Single crystal silicon supported thin film micromirrors for optical
`
`applications” by Zhimin Yao (Ex. 1012).
`
`MEMS design before September 21, 2001 was done at a computer using
`
`layout tools to draw 2D geometries (e.g., patterns) that get translated into 3D
`
`MEMS devices (e.g., electrostatic comb actuators) through the process of
`
`removing or adding materials to wafers based on the geometries drawn by the
`
`designer. MEMS design tools provide for the use of “cells,” design sub portions
`
`that can be incorporated into a design by reference and are visually integrated into
`
`8
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`the overall design. Accordingly, MEMS design tools allow different designers to
`
`work on different portions of a design, such as one person working on the mirror of
`
`an optical component while another designs the actuator and any changes to the
`
`design of (e.g.) the actuator cell will appear within the overall system design
`
`without any action by other designers. Ex. 1013 at ¶ 27.
`
`Before the year 2000, it became increasingly common to see MEMS devices
`
`made by the etching (e.g., reactive ion etching) of silicon-on-insulator (SOI)
`
`wafers. Such wafers may be purchased or prepared with layers of insulator and
`
`silicon atop the bulk single-crystal-silicon layer that makes up the majority of the
`
`material of a typical wafer. The price and availability of such wafers improved
`
`around that time resulting a wave of work in the late 1990s using material such as
`
`SOI. The various layers were then etched or patterned to manufacture the desired
`
`MEMS devices. Ex. 1013 at ¶ 28.
`
`As the claim charts in Sec. VII make clear, virtually the entire system recited
`
`in the Challenged Claims was already part of the state of the art, having been
`
`essentially described in Behin ’677 (Ex. 1002), Miller (Ex. 1003), and/or the Behin
`
`’173 (Ex. 1006), each of which is a prior art patent filed before the earliest
`
`effective filing date of the Challenged Claims, and each of which discloses MEMS
`
`electrostatic comb drive actuators. Ex. 1013 at ¶¶ 30, 31, and 33.
`
`Additionally, MEMS features, such as comb drive actuated rotation, optical
`
`9
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`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`components, and filter components, were well known in the art before 2001. Ex.
`
`1013 at ¶ 32. MEMS device architectures, such as comb drive fingers made of
`
`one or more layers of material (e.g., insulating material, conducting material, etc.),
`
`comb drive fingers of differing heights, comb driver fingers subject to a levitation
`
`force, comb drive actuators with fingers formed in a single layer, and devices with
`
`a rotating central portion having comb drive actuators on two sides, were also well
`
`known before 2001. Ex. 1013 at ¶¶ 30-35. The Challenged Claims merely recite,
`
`and add nothing to, the state of the art before September 21, 2001.
`
`C. The ’738 Patent
`
`The ’738 patent is generally directed toward MEMS such as electrostatic
`
`comb drive actuators for controlling (e.g., rotating) micro-optical components (e.g.,
`
`mirrors) using vertical force(s). Ex. 1013 at ¶ 37. The MEMS actuator described
`
`in the ’738 patent is described as being etched (e.g., reactive ion etched) from one
`
`or more layers, which are described as including silicon and insulators such as on a
`
`purchased or fabricated SOI wafer as described above. Ex. 1013 at ¶ 38. The ’738
`
`patent includes five independent claims, which vary in scope somewhat.
`
`Independent claims 1 and 35 have insignificant difference in scope and are
`
`generally directed towards electrostatic actuators that include interdigitated stator
`
`fingers and rotor fingers. The stator and rotor fingers are different heights and are
`
`fabricated over a conducting plane, and are substantially in a plane when voltage is
`
`10
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`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`not applied. When a voltage is applied, a vertical force is exerted on the rotor
`
`fingers, causing rotation about an axis of a micro-optical component. Ex. 1001 at
`
`claims 1 and 35.
`
`Independent claims 19, 26, and 32 have insignificant difference in scope and
`
`are generally directed towards electrostatic actuators that include interdigitated
`
`stator and rotor fingers that include (e.g., are formed in) insulating and/or
`
`conducting layers, and that, when a voltage is applied to at least a portion of the
`
`stator fingers, the rotor fingers are subjected to a vertical force. Ex. 1001 at claims
`
`19, 26, and 32.
`
`Each of the independent claims has claims depending from them that overlap
`
`in scope. Ex. 1001 at claims 2-18, 20-25, 27-32, and 36-50. Each of claims 1-50
`
`is reproduced in the Claim Charts of Section VII, below.
`
`D.
`
`Prosecution History of the ’738 Patent
`
`The ’738 patent issued from Application Serial No. 10/081,496 (“the ’496
`
`application”) filed February 20, 2002. After two Office Actions, each leading to
`
`claim amendments resulting in the final claims of the ’738 patent, a Notice of
`
`Allowance issued on August 26, 2004.
`
`VI. BROADEST REASONABLE CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.100(b), the Challenged Claims of the unexpired
`
`’738 Patent shall receive the “broadest reasonable construction in light of the
`
`11
`
`

`
`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
`
`specification of the patent in which [they] appear[].” All claim terms not
`
`specifically addressed below have been accorded their broadest reasonable
`
`interpretations in light of the patent specification, including their plain and
`
`ordinary meanings to the extent a skilled artisan could determine such meaning.
`
`Certain of the claims of the ’738 patent recite the phrase “formed in,” which
`
`means that that the described structure was created at least partially within the
`
`wafer and/or layer being discussed. Although the phrase “formed in” is not
`
`specifically defined in the ’738 patent, all disclosures in the specification support
`
`this construction. There is no mention of “formed in” in the ’738 Patent that refers
`
`to anything other than the described structure being created at least partially within
`
`the wafer and/or layer being discussed. Ex. 1013 at ¶¶ 40-41.
`
`VII. GROUNDS OF UNPATENTABILITY ON WHICH PETITIONER IS
`LIKELY TO PREVAIL
`
`Devices such as those recited in the Challenged claims were well known
`
`long before September 21, 2001. See, e.g., Ex. 1009-1012. But for the fact that
`
`the independent claims 1 and 35 and certain dependent claims (i.e., claims 2-18,
`
`36-50) recite a few essentially trivial matters of design choice that were well
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`known by September 21, 2001, and/or features already known as being often
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`incorporated into MEMS devices, they would all be anticipated by Behin ’677 (Ex.
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`1002), which disclosed virtually the entirety of the claimed invention prior to
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`September 21, 2001. Ex. 1013 at ¶¶ 42-44. Accordingly, Behin ’677 (Ex. 1002),
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`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
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`combined with various additional prior art references, renders obvious independent
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`claims 1 and 35 and certain dependent claims (i.e., claims 2-18, 36-50). Behin
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`’173, a co-pending patent application with exactly the same inventors, covering
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`largely similar subject matter, and filed on the same day as Behin ’677, anticipates
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`and/or renders obvious independent claims 19 and 26 and certain dependent claims
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`(i.e., claims 20-23, 25, and 27-30) and, when used in combination with additional
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`prior art references, renders obvious independent claim 32 and certain dependent
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`claims (i.e., claims 24 and 31-34). Relying on either Behin ’677 (Ex. 1002) or
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`Behin ’173 (Ex. 1006) as the primary reference, the following explanations and
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`claim charts demonstrate the unpatentability of the Challenged Claims.
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`A. Ground 1: Claims 1-4, 6, 7, 11, 14, 35-37, 39, 43, 44, 50 are
`obvious in view of Behin ’677 and Miller
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`Claims 1-4, 6, 7, 11, 14, 35-37, 39, 43, 44, and 50 of the ’738 patent (Ex.
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`1001) are unpatentable under 35 U.S.C. § 103 as obvious in view of Behin ’677
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`(Ex. 1002) and Miller (Ex. 1003).
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`Behin ’677 and Miller each disclose an electrostatic comb drive actuator that
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`subject movable comb drive fingers to vertical forces capable of causing rotation
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`about an axis. Ex. 1002 at Abstract and 6:40-41; Ex. 1003 at Abstract, 2:63-3:10
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`and 6:41-43; Ex. 1013 at ¶ 53. This general description of an electrostatic comb
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`drive actuator matches the electrostatic actuator recited in independent claims 1
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`and 35 of the ’738 patent. Ex. 1001 at Claims 1 and 35.
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`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
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`Behin ’677 further explicitly discloses nearly all limitations recited in
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`independent claims 1 and 35, as well as dependent claim 36 of the ’738 patent.
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`Specifically, Behin ’677 discloses an electrostatic comb drive actuator in which the
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`comb drive includes movable (i.e., rotor) fingers and stationary (i.e., stator) fingers
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`that are substantially interdigitated (i.e., between one another) and formed in a
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`single layer (as recited in claims 1 and 36 of the ’738 patent). Ex. 1002 at FIG.
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`1A, Abstract 1:63-64, 3:31-35, 3:38-40. Similar devices were common in the art
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`before September 21, 2001 (i.e., the earliest priority date of any claim of the ’738
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`patent). Ex. 1013 ¶¶ 30-36.
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`In an abundance of caution, Petitioner has also cited Miller which, like
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`Behin ’677, also discloses an electrostatic comb drive actuator with interdigitated
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`stationary (i.e., fixed) and movable comb drive fingers, as do (although not cited in
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`Claim Chart 1) Conant, Behin ’173, Yeh, Hagelin, and Suzuki. Ex. 1003 at
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`Abstract and 2:38-40; Ex. 1004, Abstract and Claim 2; Ex. 1005, FIG. 3, FIG. 4,
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`and 3:31-47; Ex. 1006, Abstract; Ex. 1007, FIG. 1A and paragraph [0052]; Ex.
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`1008 at 1:36-56; Ex. 1013 at ¶¶ 30-36.
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`Behin ’677 also explicitly discloses that the stationary and movable fingers
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`are co-planar in the absence of an applied voltage, that application of a voltage
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`between the comb fingers causes rotation of a rotating element about an axis, and
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`that the rotating element includes micro-optical components (e.g., a mirror) for
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`activities such as fiber-optic switching. Ex. 1002 at Abstract, FIG. 1A, FIG. 1B,
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`FIG. 3, FIG. 4, Claim 19, 5:46-49, and 12:66-13:2; Ex. 1013 at ¶¶ 53-54.
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`Thus, as described above, the only limitations recited in independent claims
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`1 and 35 of the ’738 patent that are not explicitly disclosed in Behin ’677 relate to
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`the presence of a conducting plane beneath the stationary fingers and movable
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`fingers, and that the stationary fingers and movable fingers differ in height. While
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`such features would likely have been implicitly obvious to a PHOSITA before
`
`September 21, 2001, to eliminate any need to rely on inherency and/or non-
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`explicitly disclosed knowledge of a PHOSITA, these features are also explicitly
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`disclosed in Miller.
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`The presence of a conducting plane below the stator fingers and rotor
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`fingers, as recited in claims 1 and 35 of the ’738 patent, is described in the Detailed
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`Description of the ’738 patent to provide a “levitation force” acting on the rotor
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`fingers to move the rotor fingers out of a plane parallel to the conducting plane
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`(i.e., a normal force away from the conducting plane). Ex. 1001 at 6:16-48. The
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`’738 patent even refers to an electrostatic comb drive actuator with such a
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`conducting plane as a “levitation comb drive”. Ex. 1001 at 6:49-50. The ’738
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`patent then discloses that reducing the height of the rotor relative to the stator (as
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`recited in independent claims 1 and 35 and dependent claim 50) increases the
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`“force and range of motion of the levitation comb drive”. Ex. 1001 at 6:49-54.
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`Miller explicitly discloses both actuation via a levitation force due to a conducting
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`plane (e.g., the substrate of Miller) and/or actuation via a height difference between
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`rotor fingers (i.e., movable fingers) and stator fingers (i.e., fixed fingers). Ex. 1003
`
`at FIG. 24, FIG. 26, FIG. 27, 20:1-6, 20:17-43, and 20:65-21:3; Ex. 1013 at ¶ 59.
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`In fact, FIG. 3 of the ’738 patent and FIG. 24 of Miller are nearly identical, and
`
`show the “levitation comb drive” described and claimed (in independent claims 1
`
`and 35) in the ’738 patent:
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`
`
`
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`FIG. 3 of the ’738 Patent
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`FIG. 24 of Miller
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`
`
`
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`
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`Similarly, FIG. 4 of the ’738 patent and FIG. 27 of Miller are nearly
`
`identical and show the movable fingers (i.e., rotor fingers) of the “levitation comb
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`drive” having a height less than the fixed fingers (i.e., stator fingers) described and
`
`claimed in the ’738 patent:
`
`
`
`FIG. 4 of the ’738 Patent
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`
`
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`FIG. 27 of Miller
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`Petition for Inter Partes Review of U.S. Patent No. 6,838,738
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`Claims 2, 3, 4, and 37 of the ’738 patent recite that the stator and rotor
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`(claim 37), or the layer in which the stator and rotor are formed (Claims 2-4)
`
`include semiconducting material, insulating material, or conductive material, with
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`claim 2 adding that the single layer of claim 1 is a single layer of a wafer. Ex.
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`1001 at claims 2-4 and 37. Claim 14 specifies that the stator and rotor of claim 1
`
`include silicon. Ex. 1001 at claim 14. Behin ’677 explicitly discloses that the
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`single layer (and the fingers formed from the single layer) may be any one or more
`
`of a variety of semiconducting (e.g., silicon), insulating, or conducting materials.
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`Ex. 1002, 4:66-5:6 and 6:54-58; Ex. 1013 at ¶ 54. Miller also explicitly discloses
`
`that these types of materials may be included in the fixed and movable fingers. Ex.
`
`1003 at claim 3, claim 4, and 2:40-43; Ex. 1013 at ¶ 55. Moreover, both Behin
`
`’677 and Miller explicitly disclose that the electrostatic comb drive actuator is
`
`formed from a wafer. Ex. 1002 at 3:31-35; Ex. 1003 at 8:48-49; Ex. 1013 at ¶¶ 54-
`
`55.
`
`Claims 6, 7, 39, and 43 each describe a type of actuation caused by the force
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`(i.e., vertical force) recited in independent claims 1 and 35. Specifically, claims 6
`
`and 43 recite that when the rotor is subjected to a vertical force, the rotor moves
`
`out of a common plane with the stator. Ex. 1001 at claims 6 and 43. Miller
`
`explicitly discloses this type of actuation, stating “[t]his asymmetric field creates a
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`vertical force which causes the movable finger electrodes to shift vertically with
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`respect to the fixed finger electrodes.” Ex. 1003 at 3:4-7; Ex. 1013 at ¶ 55. Claims
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`7 and 39 describe that the vertical force causes the rotor to rotate about an axis.
`
`Ex. 1001 at claims 7 and 39. Behin ’677 explicitly discloses such rotation about an
`
`axis, stating that “[a] voltage may be applied between comb fingers to cause the
`
`rotating element to undergo further rotation about the axis…”, which is both
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`rotation about an axis, and movement of the movable fingers (i.e., rotor) out of the
`
`common plane with the stationary fingers (i.e., stator) Ex. 1002 at FIG. 1B, FIG.
`
`3, FIG. 4, and Abstract; Ex. 1013 at ¶ 54.
`
`Claims 11 and 44 of the ’738 patent recite