Trials@uspto.gov
`571-272-7822
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`Paper 70
`Entered: August 16, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PUNGKUK WIRE MANUFACTURING COMPANY,
`Petitioner,
`
`v.
`
`SEONG, KI CHUL,
`Patent Owner.
`____________
`
`Case IPR2016-00763
`Patent 6,306,523 B1
`_______________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`571-272-7822
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`Paper 70
`Entered: August 16, 2017
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PUNGKUK WIRE MANUFACTURING COMPANY,
`Petitioner,
`
`v.
`
`SEONG, KI CHUL,
`Patent Owner.
`____________
`
`Case IPR2016-00763
`Patent 6,306,523 B1
`_______________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2016-00763
`Patent 6,306,523 B1
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`
`INTRODUCTION
`Pungkuk Wire Manufacturing Company (“Petitioner”) filed a
`Corrected Petition to institute an inter partes review of claims 1–18 of U.S.
`Patent No. 6,306,523 B1 (Ex. 1001, “the ’523 patent”). Paper 4 (“Pet.”).
`Seong, Ki Chul (“Patent Owner”) filed a Corrected Preliminary Response to
`the Petition. Paper 13 (“Prelim. Resp.”). On September 8, 2016, the Board
`instituted trial to review the patentability of claims 1–4, 6, 9–11, and 14–18
`of the ’523 patent. Paper 14 (“Dec.”). Thereafter, Patent Owner filed a
`Response (Paper 37, “PO Resp.”), and Petitioner filed a Reply (Paper 40,
`“Reply”). Patent Owner filed a Motion to Exclude certain evidence
`submitted by Petitioner. Paper 63. Petitioner filed an opposition to the
`Motion to Exclude (Paper 65), and Patent Owner filed a reply to the
`opposition (Paper 66). An oral hearing was held June 7, 2017, and a
`transcript of the hearing is included in the record. Paper 69 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has not established by a preponderance of the
`evidence that any of claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are
`unpatentable. In addition, we dismiss Patent Owner’s motion to exclude
`evidence.
`
`
`The ’523 Patent
`The ’523 patent “relates to a porous electrode wire for use in electrical
`discharge machining and the method of manufacturing the same.” Ex. 1001,
`at [57]. The patent describes electrical discharge machining of a workpiece
`as “melting the workpiece during the arc discharge” created by applying “a
`2
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`Patent 6,306,523 B1
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`high frequency voltage” between an “electrode wire” and a “start hole” in
`the workpiece, along with “removing the machining particles using a
`machining liquid and an instantaneous vaporization power between the wire
`and the workpiece.” Id. at 1:20–33.
`The invention of the ’523 patent is described as having the purposes
`of improving machining speed “by increasing the surface area of the wire
`which will be in contact with cooling liquid” and “by allowing the contact of
`the cooling liquid not only with the surface of the wire but also with inner
`part of the wire,” and providing a coated wire “with improved flushability
`without decreasing the machining accuracy.” Id. at 3:23–39. The patent
`describes achieving these purposes by “hot dip galvanizing” a wire made of
`a first metal by “passing the wire . . . through a molten [bath] of a second
`metal . . . thereby forming an alloy layer by the diffusion reaction between
`the first metal and the second metal . . . and a coating layer made of the
`second metal.” Id. at 3:40–49. The patent also describes drawing this wire
`to a new diameter, “thereby forming cracks in the alloy layer and the coating
`layer.” Id. at 3:51–53. The first metal “may use copper or brass having 63–
`67 wt % copper and 33–37 wt % zinc.” Id. at 3:54–55. The second metal
`“may use zinc, aluminum or tin.” Id. at 3:55–56.
`Claim 1 of the ’523 patent is independent and is illustrative of the
`claimed subject matter. It is reproduced below.
`1. A method of manufacturing a coated electrode wire for use in
`electrical discharge machining comprising:
`providing an intermediate wire having a first diameter and
`made of a first metal including copper;
`hot dip galvanizing the intermediate wire through a molten
`bath of a second metal having vaporization temperature
`lower than the first metal for a desired time and
`3
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`Patent 6,306,523 B1
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`temperature, wherein an alloy layer is formed on the
`intermediate wire by diffusion reaction of the first metal
`and the second metal, having hardness higher and lower
`elongation than the first metal and second metal, and
`wherein a coating layer is formed on the alloy layer; and
`drawing the intermediate wire having the alloy layer and the
`coating layer to form a coated electrode wire having a
`second diameter, wherein cracks are formed during the
`drawing step in the alloy layer and the coating layer due
`to the high hardness and low elongation.
`
`
`
`Reference
`Mukherjee1
`
`Reviewed Ground of Unpatentability
`The Board instituted trial to review the patentability of the challenged
`claims on the following ground:
`Claims Challenged
`1–4, 6, 9–11, and 14–18
`
`Basis
`§ 102
`
`ANALYSIS
`Claim Construction
`In an inter partes review, the Board interprets a claim term in an
`unexpired patent according to its broadest reasonable construction in light of
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b).
`Under that standard, absent any special definitions, we assign claim terms
`their ordinary and customary meaning, as understood by a person of
`ordinary skill in the art, in the context of the entire patent disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only terms
`which are in controversy need to be construed, and then only to the extent
`
`
`1 Mukherjee, U.S. Patent No. 5,808,262, issued Sept. 15, 1998 (Ex. 1002,
`“Mukherjee”).
`
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`Patent 6,306,523 B1
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`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For this reason, we do not construe
`terms for which constructions were proposed during the trial but for which
`construction is not necessary to resolve this case.
`In our Institution Decision, we addressed, but did not construe, the
`terms “elongation,” certain product-by-process terms, and “cracks.” Dec. 6–
`8. The parties do not contest our treatment of the terms “elongation” or the
`product-by-process terms in the Institution Decision. See PO Resp. 7–9;
`Reply. Accordingly, with respect to these terms, we maintain the position
`taken in the Institution Decision that we did not need to construe these
`terms. Dec. 6–8.
`Regarding the term “cracks,” which we determined in our Institution
`Decision was not necessary to construe (Dec. 8), Patent Owner argues that
`the term “cracks” in claims 1 and 14 should be construed to mean “narrow
`breaks.” PO Resp. 7–9. Petitioner, when asked at oral hearing if it
`disagreed with Patent Owner’s construction, indicated that Patent Owner’s
`construction was “fine.” Tr. 18:3–21. In the absence of controversy about
`the construction of the term, we construe “cracks” as “narrow breaks.”
`
`
`Prior Art Disclosure
`Mukherjee
`Mukherjee relates to “[a] process of manufacturing [a] spark erosion
`electrode . . . for use in electrical discharge machining, the core of the
`electrode being of comparatively low zinc alpha brass with top layer of
`highly rich zinc beta and gam[m]a brass.” Ex. 1002, at [57]. Mukherjee
`discloses using a core wire made from brass containing 61.5% copper. Id.
`5
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`Patent 6,306,523 B1
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`at 6:17, 6:39. It also discloses coating this wire with zinc. Id. at 6:37–38.
`In Mukherjee, the zinc-coated brass wire is drawn “at a reduction of more
`than 94.3% in area.” Id. at 6:58–65. Both before and after this drawing
`step, Mukherjee discloses annealing the wire, with the second annealing step
`disclosed as causing the “top layer [of] zinc [to] further penetrate[] towards
`the core.” Id. at 6:49–57, 6:66–7:5. After the first annealing step, but before
`the drawing and second annealing steps, Mukherjee discloses that the
`“Kirkendal[l] effect” causes the zinc coating to “transform[] to β- and α-
`brass.” Id. at 7:43–48.
`
`
`Anticipation of Challenged Claims by Mukherjee
`Petitioner argues that claims 1–4, 6, 9–11, and 14–18 are anticipated
`by Mukherjee. Pet. 22–28. Petitioner relies on four declarations of
`Dr. Wojciech Misiolek to support its argument. Ex. 1008; Ex. 1016; Ex.
`1019; Ex. 1023. Patent Owner disputes the unpatentability of claims 1–4, 6,
`9–11, and 14–18. PO Resp. 16–28. Patent Owner supports its assertions
`with a declaration of Sya Ensha, Ph.D. Ex. 2002. After reviewing the
`complete record, we conclude Petitioner has not shown by a preponderance
`of the evidence that Mukherjee discloses each limitation of claims 1–4, 6, 9–
`11, and 14–18 of the ’523 patent.
`
`
`Claims 1 and 14
`Independent claim 1 recites, inter alia, “wherein cracks are formed
`during the drawing step in the alloy layer and the coating layer.” Ex. 1001,
`7:21–22. Independent claim 14 recites, inter alia, “wherein cracks are
`formed in the alloy later and the coating layer.” Id. at 8:25–26.
`6
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`
`Petitioner argues that the disclosure of this limitation is inherent in
`Mukherjee. Pet. 22–24; Reply 2–22. Patent Owner argues that Mukherjee
`does not expressly disclose the “cracks” limitation of claims 1 and 14 of the
`’523 patent, with which Petitioner does not appear to disagree. See, e.g., PO
`Resp. 2. Patent Owner further argues that Petitioner fails to establish
`sufficiently that cracks are inherently formed in the alloy layer and coating
`layer of Mukherjee. PO Resp. 16–28.
`A reference inherently discloses an element of a claim “if that missing
`characteristic is necessarily present, or inherent, in the single anticipating
`reference.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed.
`Cir. 2003) (citation omitted) (emphasis added). “Inherency, however, may
`not be established by probabilities or possibilities. The mere fact that a
`certain thing may result from a given set of circumstances is not sufficient.”
`Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
`2010) (citing Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269
`(Fed. Cir. 1991)). “If, however, the disclosure is sufficient to show that the
`natural result flowing from the operation as taught would result in the
`performance of the questioned function, it seems to be well settled that the
`disclosure should be regarded as sufficient.” Cont’l Can, 948 F.2d at 1269
`(emphasis added). Thus, the question we must answer to determine the
`inherency of a claim limitation in the prior art is whether the disclosure of
`the prior art shows that the limitation necessarily would result from
`following the express disclosure of the prior art, as opposed to showing that
`the limitation only might result from following the express disclosure of the
`prior art. Here, Petitioner has not directed us to sufficient evidence of record
`for us to find that this question should be answered affirmatively.
`7
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`
`Petitioner initially directs us to two pieces of evidence to support the
`inherent disclosure by Mukherjee of the cracks recited in claims 1 and 14.
`Pet. 22–23 (citing Ex. 1002, 6:36–65; Ex. 1008 ¶¶ 8, 9). In the Reply,
`Petitioner additionally directs us to several more pieces of evidence. Reply
`passim (citing Ex. 1019 ¶¶ 8–9, 12–13, 16–18 (Third Misiolek Declaration),
`Ex. 1020 (Wikipedia entry); Ex. 1021 (Testing Report); Ex. 1022 (Hwang
`Declaration); Ex. 1023 ¶¶ 9, 12–16, 21 (Fourth Misiolek Declaration);
`Ex. 1024, 28:4–6, 31:4–6, 48:8–9, 84:4 (Ensha Deposition Transcript);
`Ex. 1025, 3 (Metal Alloys article); Ex. 1026, 6:21–24, 6:50–53, 6:60–63
`(Tomalin patent)).
`Petitioner’s cited evidence establishes several facts. First, it
`establishes that Mukherjee discloses a process in which a core wire with a
`diameter of 3 millimeters is plated with zinc, heated for 24 to 26 hours at
`temperatures up to 380 degrees Celsius, cooled, then drawn “at a reduction
`of more than 94.3% in area to get the diameter of the wire [down to] an
`intermediate shape between 1 [and] 1.25 [millimeters].” Ex. 1002, 6:36–65.
`Second, it establishes that the Mukherjee process creates an alloy layer of
`beta brass and gamma brass and an outer zinc layer, each of which has “a
`lower ductility compared to [the] alpha brass [core of the wire].” Ex. 1008
`¶¶ 7–8. Third, it establishes that the beta brass and gamma brass alloy layer
`and the outer zinc layer are “exposed to the highest strain” in the wire-
`drawing process. Id. ¶ 8. Fourth, Petitioner’s testing report and supporting
`testimony establish that a process similar to Mukherjee’s process2 created a
`
`
`2 The process used in Petitioner’s testing is only “similar to the processes
`disclosed in Columns 6 and 7 of Mukherjee,” not identical to those
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`wire with “cracks on the surface of the wire.” Ex. 1021; Ex. 1022; Ex. 1023
`¶¶ 9, 13. Fifth, it establishes that the annealing steps in Mukherjee “cannot
`transform low ductility gamma brass and eta zinc phases into high ductility
`phases.” Ex. 1019 ¶¶ 16–18. Sixth, it establishes that gamma brass is “more
`brittle than zinc.” Ex. 1024, 48:7–9. Finally, it establishes that “it is nearly
`impossible to cold draw [gamma] phase alloy material because it is very
`brittle.” Ex. 1026, 6:21–22.
`This evidence does not establish, however, that a necessary result of
`Mukherjee’s drawing process is a wire with cracks formed in its alloy layer
`and in its coating layer. Regarding the alloy layer, although the beta and
`gamma brass alloy is a brittle material (Ex. 1008 ¶¶ 7–8; Ex. 1019 ¶¶ 16–18;
`Ex. 1024, 48:7–9), and the strain of drawing is concentrated in that brittle
`layer (Ex. 1008 ¶ 8), Petitioner does not provide sufficient evidence
`establishing that drawing necessarily creates cracks in the beta and gamma
`brass. The closest evidence provides that “it is nearly impossible to cold
`draw [gamma] phase alloy material.” Ex. 1026, 6:21–22 (emphasis added).
`This statement, however, falls short of establishing that drawing of beta and
`gamma phase brass cannot be accomplished without the formation of cracks
`in the alloy layer. First, the statement does not say that drawing of a gamma
`phase alloy is impossible, only “nearly impossible.” Additionally, the
`statement relates to gamma phase alloy only, not the mixture of beta and
`gamma phase alloys present in Mukherjee.
`
`
`processes. Reply 10; see also Ex. 1023 ¶¶ 17–20 (describing differences
`between the testing process and the Mukherjee process).
`9
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`IPR2016-00763
`Patent 6,306,523 B1
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`
`Neither is Dr. Misiolek’s testimony sufficient to support a finding that
`the Mukherjee process necessarily creates cracks in the alloy layer or in the
`coating layer. In his initial declaration, Dr. Misiolek states that “[t]he wire
`drawing process disclosed by Mukherjee would crack the outside beta and
`gamma brass alloy layer and the outer zinc layer of the coated wire.”
`Ex. 1008 ¶ 8 (emphasis added). As support for this statement, Dr. Misiolek
`testifies that “beta brass, gamma brass, and zinc each have a lower ductility
`compared to alpha brass and these layers are exposed to the highest strain.”
`Id. Dr. Misiolek does not sufficiently explain, however, why the lower
`ductility of beta brass, gamma brass, and zinc means that the alloy layer and
`the coating layer necessarily would crack as a result of the Mukherjee
`drawing process. The presence of a relatively brittle alloy layer and zinc
`layer, and the application of a relatively large amount of strain to those
`layers, seem to make the formation of cracks more likely, but it is not clear
`from Dr. Misiolek’s testimony why the presence of such circumstances
`makes the formation of cracks completely certain. The testimony in
`Dr. Misiolek’s third declaration does not make the reasoning any more clear.
`Ex. 1019 ¶ 9 (testifying that “the drawing process in column 6 of Mukherjee
`would cause cracks to form on the surface of the wire” without explaining
`why). Thus, Dr. Misiolek’s testimony is conclusory and entitled to little
`weight. 37 C.F.R. § 42.65(a).
`Moreover, there is evidence of record that, in any given wire drawing
`process, “whether cracks actually occur depends on multiple factors,
`including . . . the temperature used during the [drawing] process, and . . . the
`speed of the drawing.” Ex. 2002 ¶ 14. Dr. Misiolek does not dispute this
`testimony, and Petitioner does not direct us to any evidence to the contrary.
`10
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`IPR2016-00763
`Patent 6,306,523 B1
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`Ex. 1019 ¶¶ 14–18; Reply 16–28. Mukherjee does not disclose either the
`speed of its wire drawing process or the temperature at which that process
`takes place. Ex. 1002, 6:58–65. Accordingly, there is insufficient evidence
`of record to find that wires produced using the Mukherjee process always
`and inevitably must have cracks in the alloy layer and in the coating layer.
`Finally, the testing reported in Exhibit 1021 and discussed in Exhibits
`1022 and 1023 does not establish that the drawing process of Mukherjee
`necessarily results in the formation of cracks in the alloy layer and the
`coating layer. Most importantly, the testing was performed under conditions
`different than those described in Mukherjee, rendering it unhelpful in
`determining whether any particular result would be achieved when using
`Mukherjee’s process. Additionally, the cracks reported in the test were
`located on the surface of the wire. Ex. 1021, 99–103; Ex. 1023 ¶ 14. As
`indicated in the ’523 patent, not all zinc-coated brass wires transform their
`entire zinc coating to brass upon undergoing heat treatment; rather, some
`have an outer layer of zinc remaining. Ex. 1001, 5:9–10 (observing “that the
`alloy layer (22) and the coating layer (23) are formed sequentially on the
`brass core wire (21)”), Fig. 3b (depicting relative location of these layers).
`Petitioner does not explain whether the wire produced by the Mukherjee
`process or by Petitioner’s testing process detailed in Exhibit 1021 lacks a
`remaining zinc coating (in which case it would fail to satisfy all the
`limitations of challenged claims 1 and 14), or retains a zinc coating (in
`which case the results of the testing, which depict only cracks in the outer
`layer of the wire, would fail to demonstrate that the alloy layer has cracks, as
`required by claims 1 and 14). Dr. Misiolek suggests that a zinc coating
`remains present in the Mukherjee process. Ex. 1008 ¶ 8 (referring to “the
`11
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`IPR2016-00763
`Patent 6,306,523 B1
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`outer zinc layer of the coated wire” and “the outside beta and gamma brass
`alloy layer” separately and in the plural as “these layers”). Thus, even to the
`extent that Petitioner’s testing shows that drawing a wire according to
`Mukherjee’s process necessarily would create cracks in the surface of the
`wire, it is unclear whether those cracks would be in the alloy layer, or in an
`overlying outer zinc layer. Because the challenged independent claims
`require cracks in both the alloy layer and the coating layer, and because
`Petitioner’s testing only reported cracks located on the surface of the wire, at
`least one element of the challenged independent claims remains unproven by
`the proffered test results.
`Therefore, we cannot find that Mukherjee anticipates claims 1 and 14
`of the ’523 patent.
`
`
`Other Claims
`Petitioner also contends that claims 2–4, 6, 9–11, and 15–18 are
`anticipated by Mukherjee. Pet. 22–28. Claims 2–4, 6, and 9–11 depend,
`directly or indirectly, from claim 1; claims 15–18 depend, directly or
`indirectly, from claim 14. Ex. 1001, 7:24–31, 7:35–36, 8:1–8, 8:29–40.
`Accordingly, each incorporates all the limitations of the respective
`independent claim from which it depends. 37 C.F.R. § 1.75(c). Because, as
`discussed above, there is insufficient evidence of record to find that claims 1
`and 14 are anticipated by Mukherjee, there also is insufficient evidence of
`record to find that claims 2–4, 6, 9–11, and 15–18 are anticipated by
`Mukherjee.
`
`
`
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`IPR2016-00763
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`
`Patent Owner’s Motion to Exclude
`Patent Owner moves to exclude Exhibits 1020, 1021, 1022, 1023,
`1025, and 1026. Paper 63. We do not consider the merits of Patent Owner’s
`Motion to Exclude because, as explained above, even if the disputed
`evidence is considered, Petitioner has not shown by a preponderance of the
`evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are
`unpatentable as anticipated by Mukherjee. Accordingly, Patent Owner’s
`Motion to Exclude is dismissed as moot.
`
`
`CONCLUSION
`For the reasons given, we are not persuaded that Petitioner has shown
`by a preponderance of the evidence that claims 1–4, 6, 9–11, and 14–18 of
`the ’523 patent are anticipated by Mukherjee. In addition, Patent Owner’s
`Motion to Exclude is dismissed as moot.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner has not shown by a preponderance of the
`evidence that claims 1–4, 6, 9–11, and 14–18 of the ’523 patent are
`unpatentable;
`FURTHER ORDERED that Patent Owner’s Motion to Exclude is
`dismissed as moot; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the Decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
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`13
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`IPR2016-00763
`Patent 6,306,523 B1
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`
`FOR PETITIONER:
`
`Kevin W. Raudebaugh
`Steve Y. Cho
`Katherine M. Mead
`Yong Seong Kim
`AMPACC LAW GROUP, PLLC
`kwr@ampacc.com
`cho@ampacc.com
`k2m@ampacc.com
`ysk@ampacc.com
`
`
`
`FOR PATENT OWNER:
`
`John K. Park
`Mark L. Sutton
`PARK LAW FIRM
`park@parklaw.com
`mlsutton@parklaw.com
`
`
`
`
`
`14
`
`
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