UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`SONY CORPORATION,
`Petitioner,
`
`v.
`
`COLLABO INNOVATIONS, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-00941
`Patent 5,952,714
`
`
`Before DAVID C. McKONE, GREGG I. ANDERSON, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 28
`
`
` Entered: October 3, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`
`I. INTRODUCTION
`
`Sony Corporation (“Petitioner”)1 filed a Petition (Paper 2, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of
`claims 1–13, 15, and 16 (“the challenged claims”) of U.S. Patent
`No. 5,952,714 (“the ’714 patent,” Ex. 1001), filed July 30, 1996.2 Collabo
`Innovations, Inc. (“Patent Owner”) elected not to file a Preliminary
`Response. On October 13, 2016, we granted the Petition and instituted trial
`on claims 1–13, 15, and 16 of the ’714 patent. Paper 6 (“Institution
`Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Patent Owner Response
`(Paper 11, “PO Resp.”), and Petitioner filed a Reply (Paper 18, “Pet.
`Reply”). The Petition is supported by the Declaration of R. Michael
`Guidash (“Guidash Declaration,” “Guidash Decl.,” Ex.1002). Patent Owner
`proffered the Declaration of Dr. Martin Afromowitz (“Afromowitz
`Declaration,” “Afromowitz Decl.,” Ex. 2001). Petitioner took Dr.
`Afromowitz’s deposition (“Afromowitz Deposition,” “Afromowitz Dep.,”
`Ex. 1028). Patent Owner took Mr. Guidash’s deposition (“Guidash
`Deposition,” “Guidash Dep.,” Ex. 1029).
`An oral hearing was held on July 11, 2017. The transcript of the
`hearing has been entered into the record. Paper 26 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). We conclude, for the
`
`
`1 Sony Corporation of America and Sony Electronics Inc. also are identified
`as real-parties-in-interest. Pet. 1.
`2 The ’714 patent was filed July 30, 1996, under the Patent Cooperation
`Treaty (PCT). Ex. 1001, at [22], [86]. Thus, Petitioner alleges the ’714
`patent expired on July 30, 2016. Pet. 11. See section II.A. below.
`2
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`reasons that follow, that Petitioner has shown by a preponderance of the
`evidence that claims 1–13, 15, and 16 of the ʼ714 patent are unpatentable.
`A. Related Proceedings
`The ’714 patent has been asserted by Patent Owner against Petitioner
`in Collabo Innovations, Inc. v. Sony Corp., Case No. 1-15-cv-01094
`(D. Del.), which was filed on November 25, 2015, and first served (on Sony
`Electronics Inc.) on February 22, 2016. Pet. 1; Paper 5, 1.
`B. Technology Overview
`The ’714 patent relates to a package for a semiconductor “image
`sensing apparatus using a solid-state image sensing device” (also referred to
`as a “CCD chip” or “chip”). Ex. 1001, col. 1, ll. 6–8. The image sensing
`apparatus is mounted on a video camera which reproduces pictures. Id. at
`col. 1, ll. 19–29. The chip is mounted in a package made of plastic, glass, or
`ceramic material. Id. at col. 1, ll. 8–10. The background of the technology
`and the ’714 patent are discussed below.
`1. Background of the Technology
`The process of aligning and securing the chip in a package is called
`“mount[ing].” See Ex. 1001, col. 1, ll. 42–61. One prior art method of
`mounting an image sensor is “die bonding.” Id. at col. 1, ll. 47–48. “‘Die
`bonding’ refers to affixing the back side of a chip (a ‘die’) to substrate, for
`example, the base of a package.” Guidash Decl. ¶ 44. “This leaves the
`upper (or front side) surface of the chip exposed.” Id.
`
`
`
`3
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`Figure 10 of the ’714 patent is reproduced below.
`
`
`Figure 10 is a cross section of prior art chip 4 mounted in plastic package 12.
`Ex. 1001, col. 1, ll. 53–56. Lead frame 11 allows for electrical connections
`to external circuitry and includes inner lead 9 and outer lead 10 molded into
`plastic package 12. Id.; see also Guidash Decl. ¶¶ 43–45 (describing
`die-bonding). CCD chip 4 is die-bonded by conductive paste 14 to concave
`portion 13 of package 12. Ex. 1001, col. 1, ll. 57–58. Electrode pad 6 on
`the CCD chip is “wire-bonded to the inner lead 9 by the metal lead 7 as
`same as the case of the [conventional] ceramic package.” Id. at col. 1,
`ll. 59–60. Upon mounting the image sensing apparatus to a “three-eye video
`camera and . . . accurately position[ing]” the apparatus, the “package 12 to
`which the CCD chip 4 is die-bonded” results in “high accuracy.” Id. at
`col. 1, l. 66–col. 2, l. 5.
`2. The ’714 Patent (Ex. 1001)
`The invention of the ’714 patent is described in several different
`embodiments. Ex. 1001, col. 4, ll. 15–40 (Brief Description of the
`Drawings). Figure 2 of the ’714 patent is reproduced below.
`
`
`
`4
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`
`
`Figure 2 is a cross section of the “first exemplary embodiment” of the image
`sensing apparatus. Ex. 1001, col. 4, ll. 64–67. Epoxy resin is mixed with
`inorganic filler to form package 21, which includes lead frame 24. Id. at
`col. 4, l. 67–col. 5, l. 4. Two openings 25 and 26 are formed respectively at
`the front side and back side of the package, opening 25 being of a smaller
`area than opening or inlet 26. Id. at col. 5, ll. 10–12; see id. at col. 4, ll. 53–
`58. “A frame body of the lead frame 24 is cut away, and the outer lead 23 is
`bent toward the inlet 26, thereby forming the package 21.” Id. at col. 5,
`ll. 4–6. Bump 29 is formed on electrode pad 28 of CCD chip 27 and the
`bump is press-fitted to inner lead 22 through inlet 26. Id. at col. 5, ll. 6–12.
`“During [the] press-fit operation, a position signal is feedbacked from
`a[n] optical position adjusting device (not shown) disposed in front of the
`CCD chip 27 to the mounting jig, thereby finely adjusting an orientation of
`the CCD chip 27 and disposing the CCD chip 27 on the back side of the step
`of the package 21.” Ex. 1001, col. 5, ll. 12–18. Simultaneously, ultra-violet
`hardening adhesive 30 is injected onto four sides of the CCD chip to glue the
`chip to package 21. Id. at col. 5, ll. 18–21. Thus, “CCD chip 27 is
`accurately mounted to the package 21.” Id. at col. 5, ll. 21–22.
`
`
`
`5
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`C. Illustrative Claims
`Of the challenged claims, claims 1, 2, 6, 7, and 12 are independent
`apparatus claims and claims 13, 15, and 16 are independent method claims.
`Claims 3–5 depend from claim 2. Claims 8–11 are multiple dependent
`claims that depend from either claim 6 or claim 7. Claims 1 and 13 are
`reproduced below:
`1. A solid-state image sensing apparatus comprising:
`a package having a through hole therein, openings on both
`end faces thereof, and different opening areas of said openings,
`a lead frame comprising inner leads and outer leads, said lead
`frame being sealed in said package, and
`a solid-state image sensing device mounted in said package
`by being inserted from an inlet of said opening which has a wider
`area, and thereby sealing said through hole, said solid-state
`image sensing device being secured to said package via an
`adhesive.
`Ex. 1001, col. 9, ll. 20–30.
`13. A manufacturing method of a solid-state image sensing
`apparatus comprising a package having a through hole therein, a
`lead frame comprising inner leads and outer leads, said lead
`frame being sealed in said package, and a solid state image
`sensing device mounted in said package, said manufacturing
`method comprising the steps of:
`inserting said solid-state image sensing device into said
`through hole,
`connecting an electrode pad of the solid-state image sensing
`device inserted in the through hole to the inner lead via a bump
`or an anisotropic conductor having only vertical conductivity,
`while simultaneously adjusting the optical positioning of said
`solid-state image sensing device, and
`
`
`
`6
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`securing said solid-state image sensing device to the package
`with an adhesive.
`Id. at col. 10, l. 56–col. 11, l. 4.
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–13, 15, and 16 patent as unpatentable
`on the following grounds. Pet. 2–3, 15–60.
`
`Reference(s)
`
`Yoshino3
`Yoshino and Izumi4
`Yoshino, Nagano,5 and
`Wakabayashi6
`Yoshino, Izumi/Nagano,
`Hirosawa,7 and Nita8
`Yoshino and
`Izumi/Nagano
`
`Basis
`
`§ 102(b)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Claim(s)
`Challenged
`1
`6
`
`7
`
`8
`
`9
`
`
`3 JP Pat. Application Pub. No. S61-131690, to T. Yoshino et al., published
`June 19, 1986 (“Yoshino,” Ex. 1003 (English translation)/Ex. 1006
`(Japanese)). All citations to Yoshino and the other translated Japanese
`references are to the English translations thereof.
`4 JP Pat. Application Pub. No. 63-221667, to A. Izumi et al., published
`Sept. 14, 1988 (“Izumi,” Ex. 1016 (English translation)/Ex. 1017 (Japanese))
`5 JP Pat. Application Pub. No. H06-29507, to T. Nagano, published Feb. 4,
`1994 (“Nagano,” Ex. 1018 (English translation)/Ex. 1019 (Japanese)).
`6 JP Pat. Application Pub. No. H07-45803, to T. Wakabayashi et al.,
`published Feb. 14, 1995 (“Wakabayashi,” Ex. 1004 (English
`translation)/Ex. 1007 (Japanese)).
`7 JP Pat. Application Pub. No. S60-74880, to I. Hirosawa et al., published
`Apr. 27, 1985 (“Hirosawa,” Ex. 1020 (English translation)/Ex. 1021
`(Japanese)).
`8 JP Pat. Application Pub. No. H07-78951, to S. Nita, published Mar. 20,
`1995 (“Nita,” Ex. 1011 (English translation)/Ex. 1023 (Japanese)).
`7
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`
`Reference(s)
`
`Basis
`
`Claim(s)
`Challenged
`
`Yoshino, Izumi/Nagano,
`and Wakabayashi
`Yoshino, Izumi/Nagano,
`and Onishi9
`Yoshino and Tobase10
`Yoshino and Hikosaka11
`Yoshino, Izumi,
`Nagano, and Hikosaka
`Yoshino, Tobase, and
`Hikosaka
`Wakabayashi
`Wakabayashi and
`Fujii12
`Wakabayashi, Fujii, and
`Onishi
`Wakabayashi and
`Hikosaka
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`10
`
`11
`
`12
`13
`
`15
`
`16
`
`1
`
`2–4
`
`5
`
`13
`
`
`9 JP Disc. No. H05-6989, to E. Onishi, disclosed Jan. 14, 1993 (“Onishi,”
`Ex. 1014 (English translation)/Ex. 1015 (Japanese)).
`10 JP Pat. Application Pub. No. H05-275611, to K. Tobase, published
`Oct. 22, 1993 (“Tobase,” Ex. 1022 (English translation)/Ex. 1013
`(Japanese)).
`11 JP Pat. Application Pub. No. S59-225560, to M. Hikosaka, published
`Dec. 18, 1984 (“Hikosaka,” Ex. 1005 (English translation)/Ex. 1008
`(Japanese)).
`12 JP Pat. Application Pub. No. H06-85221, to H. Fujii, published Mar. 25,
`1994 (“Fujii,” Ex. 1024 (English translation)/Ex. 1025 (Japanese)).
`8
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`
`II. ANALYSIS
`
`A. Claim Construction
`Petitioner alleges the ’714 patent expired on July 30, 2016. See
`Pet. 11. On the face of the published ’714 patent, the application for the
`’714 patent was filed as a PCT application on July 30, 1996. Ex. 1001, at
`[22]. Thus, the July 30, 1996, filing date of the PCT application is the
`calculation date for the expiration of the ’714 patent under 35 U.S.C.
`§ 154(a)(2). See Broad. Innovation, L.L.C. v. Charter Commc’ns, Inc.,
`420 F.3d 1364, 1368 (Fed. Cir. 2005). Patent Owner agrees that the ’714
`patent has expired. PO Resp. 12. On this record, we determine that the ’714
`patent has expired.
`“[T]he Board’s review of the claims of an expired patent is similar to
`that of a district court’s review.” In re Rambus Inc., 694 F.3d 42, 46 (Fed.
`Cir. 2012) (internal citations omitted). Thus, we construe the claims in
`accordance with their ordinary and customary meanings, as would be
`understood by a person of ordinary skill in the art, in the context of the
`specification. See generally Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc).
`Petitioner proposed six terms for construction. Pet. 11–14. We
`preliminarily construed two terms in the Institution Decision, “electrode
`pad(s)” and “bump.”13 These two terms are not disputed and their
`constructions are not dispositive of any patentability issue at trial. See PO
`Resp. 11. Accordingly, we need not construe these two terms for purposes
`
`
`13 We construed “electrode pad(s)” to mean “a pad disposed on the substrate
`which provides for an electrical connection point.” Inst. Dec. 9. We
`construed “bump” to mean “a mound or hump of conductive material.”
`Id. at 10.
`
`
`
`9
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`of this Decision. See Vivid Techs. Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (Only those terms that are in controversy need to
`be construed and only to the extent necessary to resolve the controversy).
`As to the remaining claim terms, including the additional terms
`Petitioner proposed for construction, we proceeded on the plain and ordinary
`meaning of the words in the context of the claim in which they appear or
`how the term would have been understood by the person of ordinary skill in
`the art. We determined that some of Petitioner’s construction arguments
`were instead arguments relating to application of the claim language to the
`issues presented. See Inst. Dec. 9 n.13.
`Patent Owner proposes that “‘secured’ to the package via an
`adhesive” (the “secured via an adhesive” limitation)14 should be construed as
`“‘gluing’ to the package.” PO Resp. 13. Petitioner argues the term should
`be given its plain and ordinary meaning, and requires only “that the device
`be affixed to the package via a material that tends to adhere.” Pet. Reply 1–
`2 (citing Inst. Dec. 14). The Institution Decision did not separately construe
`the “secured via an adhesive” limitation and, as Petitioner asserts, applied
`the plain and ordinary meaning in analyzing the claim limitations. See Inst.
`Dec. 14–15 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
`LANGUAGE, 16 (New College Edition 1979) (Ex. 3001) in connection with
`claim 1 analysis).
`
`
`14 For example, claim 1 recites a “solid-state image sensing device being
`secured to said package via an adhesive.” The other independent claims all
`include “secured to” and “via an adhesive,” varying in exactly what is
`secured to what. See, e.g., claim 2 (“solid-state image sensing device being
`secured to said main body of said package via an adhesive”).
`10
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`Patent Owner’s evidence and argument is found at pages 11 through
`15 of its Response.15 Arguing that “secured via adhesive” is limited to
`“gluing,” Patent Owner contrasts “gluing” with the epoxy resin
`manufacturing method described in the Specification where epoxy resin is
`“‘injected into a mold’ that is used to form the package including the lead
`frame.” PO Resp. 13 (citing, e.g., Ex. 1001, col. 4, l. 67–col. 5, l. 4). Patent
`Owner then cites to several parts of the Specification that describe the
`process as “gluing,” as opposed to the previously described injection
`process. Id. at 13–14 (citing Ex. 1001, Abstract, col. 3, ll. 10–11, col. 3,
`ll. 27–29, col. 3, ll. 45–47, col. 3, ll. 58–59, col. 3, ll. 64–65, col. 5, ll. 18–
`21, col. 6, ll. 23–28, col. 8, ll. 18–22, col. 8, ll. 28–33). Patent Owner also
`argues that the “figures of the ’714 patent show the adhesive (i.e.,
`ultra-violet hardening adhesive 30) is applied such that the substrate is
`secured to the package by gluing it to the package.” Id. at 14 (citing
`Ex. 1001, Figs. 3, 5).
`Patent Owner adds extrinsic evidence in the form of the Afromowitz
`Declaration that “one having ordinary skill in the art, gleaning relevant
`information from the specification and prosecution history would have
`known that securing to the package with an adhesive would not include the
`use of injection molding because ‘adhesive’ as used in the art would not, as
`the term is typically used, include injection molding.” PO Resp. 14–15
`(citing Afromowitz Decl. ¶ 32). Patent Owner concludes with an argument
`
`
`15 Patent Owner first argues that “Mr. Guidash’s testimony [in the Guidash
`Declaration] regarding claim construction, should be afforded little to no
`weight.” PO Resp. 11–12. Our claim construction analysis does not rely on
`the Guidash Declaration, thus Patent Owner’s argument is not relevant. We
`do consider the Guidash Declaration in section II.D.2. below relating to the
`application of the prior art to the “secured via an adhesive” limitation.
`11
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`that “securing with an adhesive, in light of the specification, would not
`include injection molding because of the higher probability of disturbing,
`even slightly, the position of the imaging device in the x, y, or z axis, in
`contradiction to the purpose of the ’714 patent[,] which is to be ‘positioned
`within its package to a high degree of precision.’” Id. at 15.
`Petitioner responds that “[n]othing in the claims, the specification, or
`the file history necessitates any specific securing technique or adhesive
`agent, and this claim term should be given its plain and ordinary meaning.”
`Pet. Reply 2. Petitioner summarizes Patent Owner’s argument as a “gluing”
`process is within the scope of “securing with an adhesive” and an injection
`molding process is not. Id. citing (PO Resp. 13–15). Petitioner makes four
`arguments in opposition to Patent Owner’s proposal and in support of
`Petitioner’s proposal to use the plain and ordinary meaning of the “secured
`via an adhesive” limitation.
`First, Petitioner argues “[u]se of ‘glued’ in the specification does not
`limit the actual claim term ‘secured.’” Pet. Reply 3–4. Following the
`standard applied in the district courts, Petitioner argues Patent Owner’s
`construction relies improperly on “embodiments that describe the
`substrate/image sensor as ‘glued’ to the package.” Id. at 3 (citing Phillips,
`415 F.3d at 1323 (exemplary embodiments should not be imported into the
`claims)). Further, Petitioner argues the fact that a specific, and unclaimed,
`molding step is described does not exclude molding from securing via
`adhesive. Id. at 3–4.
`Second, Petitioner argues “[t]he ’714 patent’s positioning process
`does not require that ‘secured’ be construed as ‘gluing.’” Pet. Reply 4–6.
`Though not cited in Patent Owner’s Response, Petitioner responds to the
`testimony in paragraph 31 of the Afromowitz Declaration that an “injection
`12
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`or pressing operation forces flow of the viscous resin encapsulant, and if
`used around wire-bonded chips, for example, can cause wire sweep . . . ,
`resulting in shorts, and other deformations, including unintended movement
`of the chip.”16 Id. at 4 (quoting Afromowitz Decl. ¶ 31). Petitioner argues
`the ’714 patent does not teach wire bonded chips but rather “one that is
`bonded using bumps or a conductive adhesive” and, in any event, bonding
`occurs before securing by adhesive. Id. (citing Ex. 1001, claim 1).
`Petitioner also refutes the Afromowitz Declaration testimony that optical
`positioning is not possible with a “molding process,” again pointing out that
`positioning takes place prior to the securing via adhesive step and thus a
`molding process would not interfere with positioning. Id. at 5–6 (citing
`Afromowitz Decl. ¶ 32; Ex. 1001, col. 10, l. 64–col. 11, l. 4 (claim 13
`method steps)). Dr. Afromowitz testified in his deposition that thermoset
`epoxies can shrink while curing, which could slightly shift the position of a
`chip bonded via indium bumps. Afromowitz Dep., 72:9–73:20. Petitioner
`responds that the ’714 patent does not teach indium bumps and “both
`Yoshino and Wakabayashi teach using a resin to secure a bump-bonded chip
`to the package, and neither reports chip displacement issues when resin is
`cured.” Pet. Reply 6 (citing Ex. 1003, 3; Ex. 1004 ¶ 15).
`Third, Petitioner disagrees with Patent Owner’s contention that one of
`ordinary skill would have understood that the phrase “secured to said
`package via an adhesive” excludes molding methods. Pet. Reply 7–10
`(citing PO Resp. 14–15 (citing Afromowitz Decl. ¶ 32)). Petitioner asserts
`that the testimony in the Afromowitz Declaration is not credible because
`
`
`16 Petitioner notes that the testimony mentions two references never made of
`record and is unsupported. Pet. Reply 4 n.1.
`13
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`Dr. Afromowitz’s deposition revealed a lack of familiarity with molding
`methods he testified about. Id. at 7 (citing Afromowitz Dep., 35:18–36:4,
`40:3–17, 41:14–42:20, 43:15–44:11). Specifically, although Petitioner
`acknowledged that Dr. Afromowitz “holds a patent directed to ‘Fabrication
`of Molds and Mold Components Using a Photolithographic Technique and
`Structures Made Therefrom,’” Dr. Afromowitz testified the patent was
`“peripherally related to molding of resins that are part of the technology
`described in patent ’714.” Id. (citing Afromowitz Dep., 13:17–25).
`Petitioner argues that Dr. Afromowitz “lacks practical experience with
`package design” and was involved with only one industry project prior to
`1974. Id. (citing Afromowitz Dep., 9:21–11:1, 16:4–13; Ex. 2001,
`Appendix A). Petitioner also highlights that Dr. Afromowitz has no
`teaching experience and has not done any research relating to design or
`fabrication of semiconductor packaging. Id. at 7–8 (citing Afromowitz
`Dep., 11:12–15, 12:3–13:17).
`Petitioner contrasts Dr. Afromowitz’s experience with that of
`Mr. Guidash. Pet. Reply 8. Mr. Guidash testifies that “molded resin” is
`“a material sometimes used in the fabrication of package bodies that
`functions here as an adhesive.” Guidash Decl. ¶¶ 69, 108. Mr. Guidash was
`employed at Kodak for 31 years and was “[r]esponsible for all aspects of
`IC . . . packaging” for “Instant Camera IC’s.” Guidash Curriculum Vitae
`(Ex. 1026), 3. Mr. Guidash testified in his deposition to four projects where
`he designed image sensor packages. Guidash Dep., 7:11–10:12; 11:8–12:24,
`19:13–20:7, 34:19–37:18, 44:19–45:20. Petitioner relies on these
`qualifications of Mr. Guidash to assert that “he is more qualified to opine on
`how one of skill would have understood the materials and processes used.”
`Pet. Reply 8.
`
`
`
`14
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`Petitioner further cites to testimony from the Afromowitz Deposition,
`including that “epoxy resins can be used as an adhesive.” Pet. Reply 9
`(citing Afromowitz Dep., 48:5–49:16). Petitioner notes that Dr. Afromowitz
`is the inventor on a patent teaching that “[t]hermosetting resins are
`well-known and are widely used as matrices for advanced composite
`materials and structural adhesives.” Id. at 9–10 (citing Ex. 1030,17 col. 4,
`ll. 46–48; Afromowitz Dep., 14:14–15:3). Additionally, Petitioner points to
`the Afromowitz Deposition testimony that “a resin functions as a ‘binder’ to
`hold together particles that otherwise would not ‘adhere to one another.’”
`Id. at 10 (citing Afromowitz Dep., 52:1–12). Last, Petitioner cites to the
`Afromowitz patent (Ex. 1030) for additional teachings that “thermosetting
`resins” can be adhesives used in molds. Id. (citing Ex. 1030, col. 1, ll. 35–
`36); see also id. (citing Afromowitz Dep., 53:10–15 (“[A] resin would need
`a special ‘releasing agent’ in order for it to not act as an adhesive with regard
`to the mold itself.”)).
`Fourth, Petitioner argues that construing the “secured via an adhesive”
`limitation to mean gluing is ambiguous. Pet. Reply 10–11. Petitioner bases
`this assertion on the alleged inability of Dr. Afromowitz to define
`“adhesive.” Id. at 11 (quoting Afromowitz Dep., 67:6–68:17 (“[T]here’s
`hardly any generalized statement one could make.”)).
`We are not persuaded by Patent Owner’s arguments and conclude that
`the plain and ordinary meaning of “adhesive” is “to adhere.” We find that
`Patent Owner’s construction relies improperly on “embodiments that
`describe the substrate/image sensor as ‘glued’ to the package.” We further
`
`
`17 U.S. Patent No. 5,009,102, issued April 23, 1991, to Martin A.
`Afromowitz.
`
`15
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`find that the fact that a specific, and unclaimed, molding step is described
`does not exclude molding from “securing via adhesive.” We therefore
`decline to adopt Patent Owner’s proposed construction of the “secured via
`an adhesive” limitation as meaning “gluing.” Further, we find that although
`“glue” is an “adhesive,” is not the only “adhesive” that falls within the scope
`of the claims. Thus, the claim language supports a construction not limited
`to “gluing.” Neither party cites to the prosecution history for construction of
`the “secured via an adhesive” term. In sum, we reject Patent Owner’s
`construction because it relies on improperly importing an embodiment
`described in the Specification into the claim. See Phillips, 415 F.3d at 1323.
`Accordingly, we do not agree with Patent Owner’s arguments that
`“secured via an adhesive” excludes injection molding. These arguments rely
`on extrinsic evidence. Tellingly, the Afromowitz patent (Ex. 1030), and the
`Afromowitz Deposition testimony cited above by Petitioner, both support
`our finding that epoxy resin used in molding the semiconductor package is
`an adhesive. We are not persuaded that a molding process would interfere
`with positioning the package because positioning, according to the claims,
`takes place prior to the securing via adhesive. See Ex. 1001, col. 10, l. 64–
`col. 11, l. 4 (claim 13 method steps). Regardless, only claims 13–16 recite
`any limitation that requires precision positioning. Even if injection molding
`interfered with positioning, the claim limitation regarding “secured via
`adhesive” would still be met with respect to all other claims.
`We have reviewed the parties’ arguments based on their respective
`expert’s testimony. The Afromowitz Declaration testimony that one of
`ordinary skill would not understand “adhesive” to encompass injection
`molding is entitled to little, if any, weight because it is contradicted by
`statements made in the Afromowitz patent (Ex. 1030) and at his deposition.
`16
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`See Pet. Reply 7–10. However, Mr. Guidash does not testify specifically as
`to the construction of the “secured via an adhesive” limitation. Thus, expert
`testimony is of little assistance, nor is it necessary, to reach our
`determination.
`This construction also is supported by the dictionary reference. See
`Ex. 3001, 16; see also Phillips, 415 F.3d at 1318 (dictionaries can be useful
`in claim construction). Applying the district court standard for claim
`construction as per Phillips, we decline to limit the “secured via an
`adhesive” limitation to “gluing.”
`B. Incorporation by Reference
`Patent Owner argues the Petition improperly incorporates arguments
`by reference. PO Resp. 15–17. Patent Owner contends eight paragraphs of
`the Guidash Declaration were improperly incorporated to support the level
`of ordinary skill. Id. at 15 (citing Guidash Decl. ¶¶ 52–59). Patent Owner
`argues this violates our rules regarding the word count limit because, with
`the material allegedly incorporated by reference, the Petition would exceed
`the word limit maximum under 37 C.F.R. § 42.24(a)(1). Id. at 15–16.
`Patent Owner also attacks the Petition for an alleged failure to identify the
`grounds of the challenge by failing “to provide analysis of one of the
`required Graham factors that are required factual inquiries when making an
`obviousness argument.” Id. at 16 (citing 35 U.S.C. § 312(a)(3), 37 C.F.R.
`§ 42.6 (a)(3), other citations omitted). Patent Owner requests that we
`terminate the Petition on all grounds of obviousness or that we “consider
`only the arguments properly supported in the Petition.” Id. at 16–17
`(citations omitted).
`Although Patent Owner is correct that the Petition does not specify a
`level of ordinary skill, we are not persuaded that Petitioner is precluded from
`17
`
`
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`proceeding on the basis of the level of ordinary skill set forth in the Guidash
`Declaration. See section II.E.1. below (citing Guidash Decl. ¶ 53). Patent
`Owner raises only one incorporation by reference issue, the level of ordinary
`skill. See Pet. Reply 11. Patent Owner did not argue a different level of
`ordinary skill should be used in its Patent Owner Response or at the final
`hearing. Petitioner does allege a person of ordinary skill would find the
`challenged claims obvious. See, e.g., Pet. 24 (regarding the combination of
`Yoshino and Izumi). Under these circumstances, this is at most a de minimis
`alleged incorporation by reference. Neither are we persuaded that the
`Petition is deficient for failure to copy the level of ordinary skill from the
`Guidash Declaration. We decline to find that either alleged deficiency
`requires termination of all obviousness grounds. Moreover, we agree with
`Petitioner that the prior art itself reflects the level of ordinary skill. See Pet.
`Reply 11 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001)).
`C. Law of Anticipation
`In order for a prior art reference to serve as an anticipatory reference,
`it must disclose every limitation of the claimed invention, either explicitly or
`inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
`Anticipation “requires that every element and limitation of the claim was
`previously described in a single prior art reference, either expressly or
`inherently, so as to place a person of ordinary skill in possession of the
`invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082
`(Fed. Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
`1373, 1379 (Fed. Cir. 2003); Cont’l Can Co. USA v. Monsanto Co., 948
`F.2d 1264, 1267–69 (Fed. Cir. 1991)).
`
`
`
`18
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`As the Federal Circuit has held,
`This modest flexibility in the rule that “anticipation” requires that
`every element of the claims appear in a single reference
`accommodates situations where the common knowledge of
`technologists is not recorded in the reference; that is, where
`technological facts are known to those in the field of the
`invention, albeit not known to judges. It is not, however, a
`substitute for determination of patentability in terms of § 103.
`Cont’l Can, 948 F.2d at 1268–69.
`The elements must be arranged as required by the claim, but identity
`of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
`1990). Furthermore,
`unless a reference discloses within the four corners of the
`limitations arranged or combined in the same way as recited in
`the claim, it cannot be said to prove prior invention of the thing
`claimed and, thus, cannot anticipate under 35 U.S.C. § 102.
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
`Whether a patent is invalid as anticipated is a two-step inquiry. See Power
`Mosfet Tech., LLC v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir. 2004).
`The first step requires construction of the claims. Id. The second step in the
`analysis requires a comparison of the properly construed claim to the prior
`art. Id.
`D. Anticipation of Claim 1 Under § 102(b) by Yoshino (Ground 1)
`Petitioner alleges claim 1 is anticipated by Yoshino. Pet. 15–19.
`Petitioner supports its position with the Guidash Declaration. See Guidash
`Decl. ¶¶ 66–69, 96–114. Patent Owner disagrees. PO Resp. 19–30. Patent
`Owner’s position is supported by the Afromowitz Declaration. Afromowitz
`Decl. ¶¶ 33–36.
`
`
`
`19
`
`

`

`
`IPR2016-00941
`Patent 5,952,714
`1. Yoshino Overview (Ex.1003)
`Yoshino discloses a packaging substrate for a solid-state image
`sensing device, where the device is mounted in a through hole and bonded to
`inner leads. Ex. 1003, 2. Yoshino’s Figure 1 is reproduced below.
`
`
`Yoshino’s Figure 1 is a cross-section of the invention of Yoshino. Id. at 3.