Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: September 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00869
`Patent 8,801,869 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 8
`Entered: September 1, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MIPOX CORPORATION,
`Petitioner,
`
`v.
`
`INTERNATIONAL TEST SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00869
`Patent 8,801,869 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-00869
`Patent 8,801,869 B2
`
`
`I. INTRODUCTION
`
`Mipox Corporation (“Petitioner”) filed a Petition (“Pet.”) to institute
`
`an inter partes review of claims 1–8 of U.S. Patent No. 8,801,869 B2 (“the
`
`’869 patent,” Ex. 1001). Paper 1. International Test Solutions, Inc. (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 7. We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has demonstrated a reasonable likelihood of
`
`prevailing with respect to the unpatentability of claims 1–4 and 6 of the ’869
`
`patent. Accordingly, we institute an inter partes review of those claims.
`
`A.
`
`Related Proceedings
`
`The parties indicate that the ’869 patent is asserted by Patent Owner
`
`against Petitioner in International Test Solutions, Inc. v. Mipox Int’l Corp.,
`
`Case 3:16-cv-00791-RS (N.D. Cal.). Pet. 1; Paper 5, 2. Patent Owner also
`
`identifies two co-pending petitions for inter partes review of related patents:
`
`IPR2017-00937 (challenging U.S. Patent No. 7,202,683) and IPR2017-
`
`00938 (challenging U.S. Patent No. 6,777,966). Paper 5, 2; see also Pet. 1–
`
`2 (“Petitioner anticipates filing separate petitions for inter partes review of
`
`the ’966 Patent and the ’683 Patent.”).
`
`B.
`
`The ’869 Patent
`
`The ’869 patent, titled “Apparatuses, Device, and Methods for
`
`Cleaning Tester Interface Contact Elements and Support Hardware,” relates
`
`to a cleaning device for cleaning pin contact elements and support hardware
`
`in a semiconductor testing apparatus, wherein the cleaning layer has “a
`
`predetermined configuration appropriate for the particular pin contact
`
`elements.” Ex. 1001, Abs. According to the ’869 patent, “[t]he disclosure is
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`IPR2017-00869
`Patent 8,801,869 B2
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`particularly applicable to a cleaning pad for electrical test probes that have
`
`contact elements with a predetermined geometry,” such as crown tipped
`
`spring probes and spear tipped probes, “and support structures used for tester
`
`interface devices utilized for wafer level and package level testing.” Id. at
`
`6:23–28.
`
`The cleaning material “may be constructed from one or more layers,
`
`each with predetermined mechanical, material, and dimensional
`
`characteristics,” such as abrasiveness, density, elasticity, tackiness, and
`
`thickness, “so that when the pin elements contact the pad surface, the contact
`
`area and the surrounding support hardware are cleaned such that debris and
`
`contaminants are removed.” Id. at 6:51–57. The properties of the top layer
`
`of the cleaning material “allow the probe tips to deform and penetrate the
`
`elastomeric material to remove the debris on the contact area without
`
`damage to the geometry of the contact elements, while retaining the integrity
`
`of the elastomeric matrix.” Id. at 7:5–11. The cleaning material also “may
`
`have a multi-layered structure in which the surface is populated with a
`
`plurality of uniformly shaped and regularly spaced, geometric micro-
`
`features, such as micro-columns, micro-pyramids, or other such structural
`
`micro-features” to improve debris removal and collection efficiency. Id. at
`
`7:19–26.
`
`Figure 4A of the ’869 patent is reproduced below.
`
`
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`Patent 8,801,869 B2
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`Figure 4A depicts a sectional view of a cleaning medium with one or more
`
`compliant layers below a cleaning pad layer. Id. at 5:38–40. Cleaning
`
`medium 220 comprises cleaning pad layer 202, having predetermined
`
`properties (such as hardness) that contribute to cleaning the contact elements
`
`that contact cleaning pad layer 202, and one or more intermediate compliant
`
`layers 203 attached to and below cleaning pad layer 202. Id. at 8:63–9:5.
`
`Removable protective layer 201 protects the working surface of cleaning pad
`
`layer 202 from debris and/or contaminants until the cleaning device is ready
`
`for use. Id. at 9:35–38. To install the cleaning device onto a substrate
`
`material, second release liner layer 205 is removed to expose adhesive layer
`
`204, and adhesive layer 204 is then placed against a substrate to adhere
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`cleaning device 220 to the substrate. Id. at 9:48–54.
`
`The ’869 patent explains that “[t]he combinations of layers produces
`
`material properties unavailable from the individual constituent materials,
`
`while the wide variety of matrix, abrasive particles, and geometries allows
`
`for a product or structure that has to choose an optimum combination to
`
`maximize cleaning performance.” Id. at 9:5–10. The ’869 patent further
`
`explains that “adding compliant or microporous foam underlayers beneath a
`
`rigid cleaning layer” reduces the overall abrasive wear characteristics of the
`
`cleaning material and/or enhances the tip shaping performance such that the
`
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`Patent 8,801,869 B2
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`overall service life of the probe element is extended without compromising
`
`the shape or function of the contact geometry. Id. at 9:10–15.
`
`According to the ’869 patent, “the maximum cleaning efficiency of
`
`the cleaning material can be improved using a plurality of uniformly shaped
`
`and regularly spaced, geometric micro-features.” Id. at 11:25–28. Figure
`
`5A of the ’869 patent is reproduced below.
`
`
`
`Figure 5A depicts a sectional view of a cleaning material with micro-
`
`columns. Id. at 5:51–54. Cleaning medium 221 includes micro-columns
`
`212 constructed from a single layer “across a combination of intermediate
`
`compliant or rigid layers 207 with . . . predetermined properties.” Id. at
`
`11:30–33. “The size and geometry of the micro-features may vary
`
`according [to] the configuration and material of the contact elements to
`
`achieve a pad that will remove the debris but not damage the probe
`
`elements.” Id. at 11:47–50. The micro-features “may have abrasive
`
`particles applied to the top surface, along the length of the micro-feature,
`
`within the body of the micro-feature, or at the base of the micro-feature.” Id.
`
`at 12:58–61.
`
`Figure 8A of the ’869 patent is reproduced below.
`
`
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`Patent 8,801,869 B2
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`Figure 8A depicts a sectional view of a cleaning material with micro-
`
`columns for cleaning the contact tip area of a cantilevered test probe. Id. at
`
`6:12–14. Cleaning material 224 is attached to substrate 500. Id. at 13:62–
`
`63. The contact elements are cleaned by driving cleaning material 224 into
`
`contact with contact elements 400, thus removing debris at the surface of
`
`contact elements 400 as well as along the side of the tip length. Id. at 13:63–
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`14:5. According to the ’869 patent, the spacing, geometry, and abrasiveness
`
`of the micro-columns are selected so “that the reciprocal pressure on the
`
`contact elements imparts efficient cleaning to remove and collect debris
`
`from the contact elements.” Id. at 14:5–9.
`
`C.
`
`Challenged Claims
`
`Petitioner challenges claims 1–8 of the ’869 patent, of which claims 1
`
`and 4 are independent. Claim 1 is representative, and is reproduced below.
`
`1.
`A cleaning device for cleaning pin contact elements
`and support hardware in a semiconductor testing apparatus, the
`cleaning device comprising:
`
`a cleaning layer with a configuration for the pin contact elements,
`the cleaning layer having a plurality of geometric micro-
`features that extend above a surface of the cleaning layer
`
`
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`6
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`Patent 8,801,869 B2
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`with predetermined geometrical and dimensional
`properties;
`
`a substrate having a configuration to be introduced into the
`testing apparatus during the normal testing operating of
`the testing apparatus, wherein the substrate comprises a
`surrogate semiconductor wafer or packaged IC device;
`
`the cleaning layer, secured to the substrate, having predetermined
`characteristics that clean debris from the pin contact
`elements and support hardware when the pin contact
`elements and support hardware contact the cleaning layer
`so that the pin contact elements and support hardware are
`cleaned during a normal operation of the testing machine.
`
`Ex. 1001, 15:27–45.
`
`D.
`
`The Prior Art
`
`Petitioner relies on the following prior art references:
`
`Reference Description
`Yamasaka U.S. 6,130,104
`Mitarai
`U.S. 6,960,123 B2
`Jiang
`U.S. 7,530,887 B2
`Tamura
`U.S. Patent App. Pub. No.
`US 2008/0070481 A1
`Japanese Patent App. Pub.
`No. H7-244074
`Japanese Patent App. Pub.
`No. P2000-332069
`
`Micronics
`
`Okubo
`
`Date
`Oct. 10, 2000
`Nov. 1, 2005
`May 12, 2009
`Mar. 20, 2008
`
`Exhibit No.
`1011
`1009
`1008
`1010
`
`Sept. 19, 1995
`
`1014
`
`Nov. 30, 2000
`
`1007
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–8 on the following
`
`grounds:
`
`Reference(s)
`Micronics
`Micronics and/or Jiang
`Micronics and Mitarai
`Tamura and/or Yamasaka
`and/or Okubo
`
`
`
`
`
`
`Basis
`§ 102(b)
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`1–6, 8
`1–6, 8
`1–8
`1–4, 6
`
`7
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`IPR2017-00869
`Patent 8,801,869 B2
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`
`A.
`
`Claim Interpretation
`
`II. ANALYSIS
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest
`
`reasonable construction, claim terms are presumed to have 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 those terms in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999).
`
`Neither party requests explicit construction of any claim terms. Pet. 6
`
`(“For this proceeding only, Petitioner submits that no specific claim
`
`constructions are necessary.”); Prelim. Resp. 4 (“Patent Owner agrees with
`
`Petitioner that ‘no specific claim constructions are necessary’ for this IPR.”).
`
`For purposes of this Decision, based on the record before us, we determine
`
`that none of the claim terms requires an explicit construction.
`
`B.
`
`Anticipation by Micronics
`
`Petitioner contends that claims 1–6 and 8 are unpatentable under 35
`
`U.S.C. § 102(b) as anticipated by Micronics. Pet. 8–21. Petitioner relies on
`
`the Declaration of Ira M. Feldman (“Feldman Declaration,” Ex. 1012) in
`
`support of its contentions. Id.
`
`
`
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`8
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`Patent 8,801,869 B2
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`1.
`
`Overview of Micronics
`
`Micronics1 relates to a cleaning part for removing debris that adheres
`
`to a contact tip used to inspect a test body, such as an integrated circuit.
`
`Ex. 1007 ¶ 1. In particular, Micronics provides a cleaning tip that
`
`“effectively remove[s] foreign matters adhering to both the end face and the
`
`circumference of the tip without shortening the service life.” Id. ¶ 7.
`
`Micronics describes a cleaning part that “consists of an elastic body
`
`with much unevenness on the surface and an abrasive layer on the whole
`
`surface of the aforementioned unevenness of the elastic body.” Id. ¶ 8.
`
`Figure 2 of Micronics is reproduced below.
`
`
`
`Figure 2 depicts an expanded sectional view of the Micronics cleaning part.
`
`Id. at 5. Elastic body 12 “has much unevenness on the top and is bonded to
`
`the top” of film substrate 18 by adhesive 16, and film substrate 18 is bonded
`
`to the top of sheet substrate 22 by adhesive 20. Id. ¶ 16. Abrasive layer 14
`
`on elastic body 12 “is formed by coating a granular or powder abrasive
`
`material smaller than the concave size” of elastic body 12 “on the whole
`
`
`1 Micronics is a Japanese patent application publication, and Petitioner
`provided an English-language translation with an affidavit attesting to the
`accuracy of the translation. Ex. 1007, 14; see 37 C.F.R. 42.63(b).
`
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`uneven surface” of elastic body 12, such that abrasive layer 14 is formed on
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`the entire inner surface of concave portion 24 of elastic body 12. Id. ¶ 17.
`
`Micronics teaches that concave portion 24 “can be prepared with a pitch P in
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`the range of 0.05 mm to 0.3 mm, and a depth D in the range of 0.05 mm to
`
`0.5 [mm].” Id. ¶ 20. According to Micronics, substrate 18 can be a flexible
`
`plastic film, and substrate 22 can be a rigid sheet part such as a silicon wafer.
`
`Id. ¶ 18.
`
`Micronics Figure 4 is reproduced below.
`
`
`
`Figure 4 depicts a sectional view demonstrating the use of the Micronics
`
`cleaning part to remove debris from a contact tip. Id. at 5. Micronics
`
`teaches that when contact tip 34 “is taken in” by concave portion 24, “not
`
`only the end face, but also the circumference of the tip will be wrapped by”
`
`abrasive layer 14. Id. ¶ 27. In this way, “foreign matters adhering to both
`
`the end face and the circumference in the rear part of the tip are removed”
`
`from contact tip 34 by abrasive layer 14. Id. ¶ 28. According to Micronics,
`
`because contact tip 34 is inserted into concave portion 24 and not elastic
`
`body 12, contact tip 34 will not damage elastic body 12, and the cleaning
`
`part will have a long service life. Id. ¶ 30.
`
`
`
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`10
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`IPR2017-00869
`Patent 8,801,869 B2
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`2.
`
`Analysis
`
`Pursuant to 35 U.S.C. § 312(a)(3), a Petition may be considered only
`
`if it “identifies, in writing and with particularity, each claim challenged, the
`
`grounds on which the challenge to each claim is based, and the evidence that
`
`supports the grounds for the challenge to each claim.” Upon review of the
`
`Petition and the supporting evidence, we determine that the Petition does not
`
`articulate, with reasonable clarity, the evidence that supports Petitioner’s
`
`contention that Micronics discloses all of the elements of claim 1 of the ’869
`
`patent.
`
`Specifically, as Patent Owner notes, Petitioner does not identify
`
`clearly which elements of Micronics Petitioner considers to be the “cleaning
`
`layer” and “a surface of the cleaning layer” above which a plurality of
`
`geometric micro-features extend, as recited in claim 1. See Prelim. Resp. 9.
`
`First, with respect to the “a cleaning layer with a configuration for the pin
`
`contact elements” limitation of claim 1, Petitioner identifies Micronics
`
`abrasive layer 14 as the cleaning layer. Pet. 10. Then, with respect to the
`
`“the cleaning layer having a plurality of geometric micro-features that
`
`extend above a surface of the cleaning layer with predetermined geometrical
`
`and dimensional properties” limitation of claim 1, Petitioner identifies “at
`
`least” elastic body 12 and abrasive layer 14 of Micronics as the cleaning
`
`layer, the peaks (as the converse of concave portion 24) as the geometric
`
`micro-features that extend above the surface of the cleaning layer, and the
`
`surface of the cleaning layer as “any surfaces of” elastic body 12, abrasive
`
`layer 14, adhesive 16, film substrate 18, adhesive 20, or concave portion 24.
`
`Id. at 10–11.
`
`
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`11
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`Petitioner, therefore, identifies at least two different structures in
`
`Micronics (elastic body 12, abrasive layer 14) as the cleaning layer, and
`
`includes those two structures as well as four additional structures (adhesive
`
`16, film substrate 18, adhesive 20, concave portion 24) as the surface of the
`
`cleaning layer above which the geometric micro-features (the converse of
`
`concave portions 24) extend. Neither Petitioner nor Mr. Feldman explain
`
`sufficiently, however, how the converse of concave portions 24 extend
`
`above a surface of elastic body 12 or abrasive layer 14, or how and why
`
`elastic body 12, abrasive layer 14, adhesives 16 and 20, and/or concave
`
`portion 24 are “a surface of” elastic body 12 or abrasive layer 14. Thus, the
`
`Petition does not provide meaningful “particularity” sufficient for the panel
`
`to ascertain where, specifically, Petitioner identifies each limitation of claim
`
`1 of the ’869 patent in Micronics.
`
`Accordingly, we conclude that Petitioner has not demonstrated a
`
`reasonable likelihood that independent claim 1, and claims 2 and 3 that
`
`depend, directly or indirectly, therefrom, are anticipated by Micronics.
`
`Independent claim 4 also includes the “a cleaning layer with a configuration
`
`for the pin contact elements, the cleaning layer having a plurality of
`
`geometric micro-features that extend above a surface of the cleaning layer”
`
`limitation recited in claim 1, and Petitioner makes the same arguments with
`
`respect to this element in claim 4 as it did for claim 1. Pet. 16–17. For the
`
`same reasons set forth with respect to claim 1, we conclude that Petitioner
`
`has not established a reasonable likelihood that independent claim 4, and
`
`claims 5, 6, and 8 that depend directly therefrom, are anticipated by
`
`Micronics.
`
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`12
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`C. Obviousness over Micronics, or Micronics and Jiang
`
`Petitioner contends that the subject matter of claims 1–6 and 8 would
`
`have been obvious over Micronics alone, or the combined teachings of
`
`Micronics and Jiang. Pet. 21–36. Petitioner relies on the Feldman
`
`Declaration in support of its contentions. Id.
`
`1.
`
`Overview of Jiang
`
`Jiang relates to chemical mechanical polishing pads “having a
`
`polishing structure useful for chemical mechanical polishing magnetic,
`
`optical and semiconductor substrates.” Ex. 1008, 1:5–9. Jiang describes a
`
`polishing pad that generally includes a polishing layer with a polishing
`
`surface for confronting a workpiece, such as a semiconductor wafer, that
`
`polishes the surface of the workpiece in the presence of a polishing medium.
`
`Id. at 8:25–32. The polishing layer can include a polishing texture, as shown
`
`in Figure 2 of Jiang, reproduced below.
`
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`Figure 2 depicts an enlarged, partial, schematic, cross-sectional, elevational
`
`view of a chemical mechanical polishing pad described in Jiang. Id. at 4:31–
`
`33. Polishing texture 200 is built as a series of identical or similar polishing
`
`elements 204 and 208 that have a precise geometry, illustrated as
`
`substantially horizontal elements 204 and substantially vertical elements
`
`208. Id. at 9:37–41. The interconnected network of polishing elements 204
`
`and 208 have average width 210, average cross-sectional area 222, average
`
`height 214, and average half-height 215, and are spaced at average pitch
`
`218. Id. at 9:42–48.
`
`Jiang teaches that “[a]s the average height [214] increases, the number
`
`of interconnecting elements 204 required to stiffen the network of polishing
`
`elements 208 during polishing increases.” Id. at 9:57–60. Generally, “only
`
`the unconstrained ends of elements 208 projecting beyond the uppermost
`
`interconnecting elements 204 are free to flex under shear forces during
`
`polishing,” and “[t]he heights of elements 208 between base layer 240 and
`
`the uppermost interconnecting element 204 are highly constrained and forces
`
`applied to any one element 208 are effectively carried by many adjacent
`
`elements 204 and 208.” Id. at 9:60–67. According to Jiang, “[i]n this way
`
`polishing texture 200 is rigid at the length scale required for good
`
`planarization, but is locally compliant at shorter length scales by virtue of
`
`the local deformability and flexibility of the unbuttressed ends of elements
`
`208.” Id. at 10:1–5.
`
`2.
`
`Obviousness over Micronics
`
`Petitioner argues that, because “[a]nticipation is the epitome of
`
`obviousness,” claims 1–6 and 8 “should also be found unpatentable as
`
`obvious over the cleaning devices disclosed in Micronics.” Pet. 22.
`
`
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`14
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`Petitioner further asserts that “[t]o the extent that any element is alleged to
`
`be missing [from Micronics], it is clearly an obvious choice in view of
`
`Micronics.” Id. Petitioner, however, does not present any arguments
`
`relating to its contention that claims 1–6 and 8 would have been obvious
`
`over Micronics. Challenging claims under an obviousness alternative to
`
`anticipation does not relieve Petitioner of the burden of articulating
`
`“reasoning with some rational underpinning” to show obviousness. KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 551
`
`F.3d 977, 988 (Fed. Cir. 2006)). On this record, Petitioner has not
`
`demonstrated a reasonable likelihood that it would prevail on the ground that
`
`Micronics renders the subject matter of claims 1–6 and 8 obvious.
`
`3.
`
`Obviousness over Micronics and Jiang
`
`Petitioner contends because Micronics is directed to a cleaning part
`
`for prober tips that removes foreign matters from the tips without shortening
`
`the service life of the probe, and Jiang “is directed to using a cleaning part
`
`with a surface to polish substrates in the IC industry,” “Micronics and Jiang
`
`would have presented a strong suggestion and motivation to a person of
`
`ordinary skill in the art to combine” their teachings. Pet. 22–23. Petitioner
`
`contends that the combination “would produce a commercial advantage in
`
`that the cleaning part 10 shown in FIGS. 1–2 of Micronics could use the
`
`geometry of the polishing pad 104 with polishing texture 200 to increase
`
`durability and lifespan of the cleaning part 10.” Id. at 23 (internal citations
`
`omitted). According to Petitioner, a person having ordinary skill in the art
`
`would have been able to carry out the substitution of “the non-planar,
`
`abrasive cleaning layer 14 in Micronics with the non-planar, latticed
`
`
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`geometrical microstructures of Jiang,” with reasonably predictable results.
`
`Id. at 24.
`
`As part of a determination of obviousness, Petitioner must “identify a
`
`reason that would have prompted a person of ordinary skill in the relevant
`
`field to combine the elements in the way the claimed new invention does,”
`
`and “this analysis should be made explicit.” KSR, 550 U.S. at 418.
`
`Petitioner does not provide sufficient explanation as to why a person having
`
`ordinary skill in the art would have looked to Jiang, directed to chemical
`
`mechanical polishing pads “having a polishing structure useful for chemical
`
`mechanical polishing magnetic, optical, and semiconductor substrates” (Ex.
`
`1008, 1:5–9), for guidance in improving Micronics’ cleaning part for
`
`removing debris that adheres to a contact tip used to inspect a test body, such
`
`as an integrated circuit, to increase its durability and lifespan. See Pet. 22–
`
`24. Petitioner does not explain, for instance, why the geometry of the
`
`polishing pad 104 with polishing texture 200 described in Jiang would be
`
`considered an improvement over the abrasive layer Micronics already
`
`provides, such that a person having ordinary skill in the art would have
`
`looked to Jiang to improve Micronics’ cleaning part. Additionally,
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`Petitioner does not direct us to, nor do we discern, statements in Micronics
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`with respect to the need to improve the materials used to make Micronics’
`
`cleaning part.
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`We also find unavailing Petitioner’s argument that a person having
`
`ordinary skill in the art would have had a reason to combine the teachings of
`
`Micronics and Jiang because “it provides a combination of known elements,
`
`or a simple substitution of one known element for another, to obtain
`
`predictable results.” Pet. 24. This conclusory statement is nothing more
`
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`16
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`IPR2017-00869
`Patent 8,801,869 B2
`
`than a restatement of a basic test identified by the Supreme Court for
`
`determining whether an invention would have been obvious. See KSR, 550
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`U.S. at 417 (“whether the improvement is more than the predictable use of
`
`prior elements according to their established functions”). Restatement of a
`
`rationale for finding obviousness is no substitute for specific application of
`
`that rationale to the facts of a case. Here, Petitioner does not provide a
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`persuasive, fact-based analysis to support the claimed combination of
`
`Micronics and Jiang.
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`For these reasons, Petitioner has not demonstrated a reasonable
`
`likelihood of establishing that claims 1–6 and 8 of the ’869 patent would
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`have been obvious over the combined teachings of Micronics and Jiang.
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`D. Obviousness over Micronics and Mitarai
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`Petitioner contends that the subject matter of claims 1–8 would have
`
`been obvious over the combined teachings of Micronics and Mitarai.
`
`Pet. 36–51. Petitioner relies on the Feldman Declaration in support of its
`
`contentions. Id.
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`1.
`
`Overview of Mitarai
`
`Mitarai “relates to a cleaning sheet for probe needles, which is capable
`
`of substantially simultaneously polishing and removing both film-like
`
`adherents” and “aluminum chips or the like adhered to the entire
`
`needlepoints” that inhibit the “contactability of needlepoints of a probe card
`
`used to measure and inspect the state of completion of each device on a
`
`semiconductor wafer.” Ex. 1009, 1:6–13. The Mitarai cleaning sheet “is
`
`used in a prober provided with a stage moved horizontally and vertically
`
`relative to holding means for holding a probe card provided with a plurality
`
`of probe needles in a protruded form.” Id. at 2:35–40.
`
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`17
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`IPR2017-00869
`Patent 8,801,869 B2
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`Mitarai describes a substrate detachably fixed onto the stage with a
`
`surface-roughened first polishing layer “provided over the substrate and
`
`which causes tips of the probe needles to be pressed thereagainst from a
`
`vertical direction and polishes the tips of the probe needles when the tips
`
`slide in a horizontal direction.” Id. at 2:40–46. A second polishing layer,
`
`which has polishing grains mixed into an elastic member having a thickness
`
`greater than the first polishing layer, is provided over the substrate adjacent
`
`to the first polishing layer “as viewed in the direction of motion of the probe
`
`card.” Id. at 2:46–51. The second polishing layer “causes the tips of the
`
`probe needles to be stuck into the elastic member when the tips are pressed
`
`from the vertical direction, thereby polishing side faces of the tips of the
`
`probe needles by means of the polishing grains.” Id. at 2:51–55.
`
`Mitarai teaches providing “the surface-roughened first polishing layer
`
`for effectively polishing film-like foreign substances adhered to needle tip
`
`portions brought into contact with pads, and the second polishing layer made
`
`up of the elastic member containing the polishing grains for removing
`
`adherents attached to the entire needlepoints” in a single cleaning sheet. Id.
`
`at 2:56–62. According to Mitarai, when needlepoint polishing is done
`
`“using an automatic polishing function of a prober while breaking in the
`
`course of probing, the tip sections of the needlepoints brought into contact
`
`with the pads are effectively polished and thereafter aluminum chips or the
`
`like adhered to the whole needlepoints can be eliminated.” Id. at 2:62–3:1.
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`According to Mitarai, because “another number of needlepoints of a
`
`plurality of needlepoints are subjected to overall polishing at a short
`
`traveling range of the probe needles while a certain number of needlepoints
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`
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`18
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`IPR2017-00869
`Patent 8,801,869 B2
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`of the plurality of needlepoints are being subjected to tip polishing, a
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`polishing processing time interval can greatly be shortened.” Id. at 3:12–18.
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`2.
`
`Analysis
`
`Petitioner contends that the combined teachings of Micronics and
`
`Mitarai teaches all of the elements of independent claim 1. Pet. 39–43. For
`
`example, Petitioner contends that Micronics discloses “a cleaning layer with
`
`a configuration for the pin contact elements” because it “teaches a cleaning
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`layer (14) with a configuration for the pin contact elements (34).” Id. at 40
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`(citing Ex. 1007, Figure 4). Petitioner also contends that “Mitarai teaches a
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`cleaning layer (polishing layer 12) with a configuration for the pin contact
`
`elements (32),” and thus also discloses the claimed cleaning layer. Id.
`
`(citing Ex. 1009, 4:16–34, 4:57–67, Fig. 2A). Petitioner further contends
`
`that Micronics discloses “the cleaning layer having a plurality of geometric
`
`micro-features that extend above a surface of the cleaning layer with
`
`predetermined geometrical and dimensional properties” when it “teaches a
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`cleaning layer (at least 12, 14) with geometric micro-features of peaks
`
`(converse of valleys (24)) that extend above a surface of the cleaning layer
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`(e.g., any surfaces of 12, 14, 16, 18, 20, 24) with predetermined geometrical
`
`and dimensional properties (D, T, P).” Id. at 40–41. Petitioner contends that
`
`Mitarai also teaches this claim limitation because it “teaches a cleaning layer
`
`(12) with geometric micro-features (13) that extend above a surface of the
`
`cleaning layer (11 or 14) with predetermined geometrical and dimensional
`
`properties.” Id. at 41 (citing Ex. 1009, 5:67–6:13, Figs. 1A, 1B, 1C).
`
`Petitioner argues that because Micronics is directed to a cleaning part
`
`for prober tips that removes foreign matters from the tips without shortening
`
`the service life of the probe, and Mitarai “is directed to using a cleaning
`
`
`
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`19
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`IPR2017-00869
`Patent 8,801,869 B2
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`sheet for probe needles that has surface heights and geometries and which is
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`capable of cleaning probe tips without having to use different types of
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`cleaning sheets,” “[t]hese teachings in Micronics and Mitarai would have
`
`presented a strong suggestion and motivation to a person of ordinary skill in
`
`the art to combine the teachings of Micronics and Mitarai.” Pet. 37. In
`
`particular, Petitioner argues that
`
`[i]t would have been obvious to one of ordinary skill in the art to
`replace the abrasive cleaning layer 14 in Micronics with the
`geometrical structures of any of the cleaning sheets of Mitarai to
`increase effectiveness or durability of the cleaning sheet 10
`because one of ordinary skill would have been able to carry out
`such a substitution, and the results would have been reasonably
`predictable.
`
`Id. at 39.
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`Upon review of the Petition and the supporting evidence, we
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`determine that the Petition does not articulate, with reasonable clarity, the
`
`evidence that supports Petitioner’s contention that the combined teachings of
`
`Micronics and Mitarai discloses all of the elements of independent claims 1
`
`and 4 of the ’869 patent. Specifically, Petitioner does not identify clearly
`
`which elements of the cleaning part that results from the proposed
`
`combination of Micronics and Mitarai is “a surface of the cleaning layer”
`
`above which a plurality of geometric micro-features extend as recited in
`
`independent claims 1 and 4.
`
`As we understand Petitioner’s argument, Petitioner proposes that a
`
`person having ordinary skill in the art would have replaced Micronics’
`
`abrasive layer 14 with “the geometry, first and second polishing areas,
`
`surface heights, and embedded abrasives of” Mitarai’s cleaning sheet 10 or
`
`cleaning sheet 40. Pet. 37. With respect to “the cleaning layer having a
`
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`20
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`IPR2017-00869
`Patent 8,801,869 B2
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`plurality of geometric micro-features that extend above a surface of the
`
`cleaning layer with predetermined geometrical and dimensional properties,”
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`however, Petitioner identifies Micronics’ elastic body 12 and abrasive layer
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`14 as the cleaning layer and “any surfaces of” elastic body 12, abrasive layer
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`14, adhesive 16, film substrate 18, adhesive 20, or concave portion 24 as the
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`surface of the cleaning layer, and also identifies Mitarai’s polishing layer 12
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`as the cleaning layer, and substrate 11 or adhesive 14 as the surface of the
`
`cleaning layer. Id. at 40–41. Petitioner, therefore, identifies structures in
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`both Micronics and Mitarai as corresponding to the “cleaning layer” and
`
`“surface of the clea
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