throbber

`
`
` Paper No.____
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`HUTCHINSON TECHNOLOGY INCORPORATED and
`HUTCHINSON TECHNOLOGY OPERATIONS (THAILAND) CO., LTD.
`
`Petitioners
`v.
`NITTO DENKO CORPORATION
`
`Patent Owner
`
`
`Case No. IPR2017-01421
`Patent No. 8,895,870
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`TABLE OF CONTENTS
`

`

`

`
`B. 
`
`C. 
`
`Page
`Introduction ...................................................................................................... 1 
`Claim Construction for Substitute Claim 5 ..................................................... 2 
`  Nitto’s Motion Should Be Denied On Section 112 Grounds .......................... 3 
`A.  Nitto Failed to Establish Support for the “All Flush” Edges
`Limitation of Substitute Claim 5 ........................................................... 4 
`1. 
`Nitto’s Expert’s Testimony on the “Flush” Edges Limitation ... 4 
`2. 
`The Concept of “Flush” Edges Does Not Appear Anywhere in
`the Specification .......................................................................... 5 
`The ‘870 Drawings do not Disclose “Flush” Edges ................... 6 
`The Specification’s “Cut Off” Step Does Not Establish Support
`for “Flush” Edges ........................................................................ 9 
`Nitto Failed to Establish Support for the “Lead Wire Extending
`from Said Wiring Trace” Limitation of Substitute Claim 5................ 10 
`The Original Disclosure Failed to Describe the “Edge Formed
`On” Limitations of Substitute Claim 5 ................................................ 13 
`D.  Assuming Arguendo The ‘870 Patent Discloses the Limitations
`of Substitute Claim 5, Nitto Failed to Establish Enablement ............. 14 
`1. 
`Nitto’s Silence on Enablement Defeats its Motion ................... 14 
`2. 
`The Only (Minimal) Manufacturing Teaching is the Term “Cut
`Off” -- Which is Insufficient for Enablement ........................... 15 
`Conventional Cutting Methods Would Not Result in the “All
`Flush” Edges ............................................................................. 16 
`Substitute Claim 5 is Indefinite ........................................................... 20 
`E. 
`  Nitto Failed to Consider Its Own Known Prior Art Relative to Claim 5 ...... 22 
`The Effect of Aqua Products on HTI’s Opposition to Nitto’s Motion to
`Amend ............................................................................................................ 24 
`  Conclusion ..................................................................................................... 25 
`
`3. 
`4. 
`
`3. 
`
`i
`
`

`

`
`
`
`
`
`
`Introduction
`Nitto’s Motion to Amend (“Motion”) does not come close to satisfying the
`
`legal requirements for the relief sought. Nitto no longer disputes that its own prior
`
`art anticipates Claim 2 – the only claim Nitto asserts in the New Jersey litigation.
`
`So Nitto now proposes Substitute Claim 5, adding a limitation requiring that the
`
`various layers to have edges “all flush with each other.” Paper No. 16 at 3.
`
`But nothing in the original disclosure explains the relationship between the
`
`“all flush” edges and the plating leads’ resonant frequency, the problem allegedly
`
`overcome by the ‘870 patent. See Ex. 1001. In fact, the original disclosure never
`
`even mentions the terms “flush” or “edge.” Id. According to Nitto, Substitute
`
`Claim 5 is supported by a “schematic” illustration intended to explain the
`
`orientation of the multiple layers -- not what occurs at their micron-scale edges.
`
`Contrary to Nitto’s assertions, the record does not establish the inventors
`
`possessed the “all flush” limitation at the time Nitto filed for the ‘870 Patent – or
`
`even thought of it. Instead, the record establishes the opposite: that Nitto created
`
`the “all flush” concept from thin air in the midst of the present IPR proceeding in
`
`an act of desperation to breathe life into claim 2, the only claim it asserts in the
`
`New Jersey litigation. In doing so, Nitto has created a Section 112 quagmire for
`
`itself, implicating the written description, enablement, and indefiniteness
`
`
`4834-0613-7443.5
`
`
`1
`
`

`

`
`
`requirements on several fronts. In short, the “all flush” limitation presents a classic
`
`example of an “IPR Invention” the Board’s rules on amendment prohibit.
`
` Claim Construction for Substitute Claim 5
`Nitto proposes no constructions. HTI proposes constructions for two terms
`
`in Claim 5 -- (1) “edge” and (2) “all flush with each other” – from the new
`
`limitation: “wherein the edges of the insulating layer, the lead wire for plating, and
`
`the cover insulating layer are all flush with each other.” Paper No. 16 at 3.
`
`(1) “the edges”: The original disclosure from August 2009 does not use the
`
`word “edge” in relation to a layer or any physical components. Instead, it uses the
`
`word “edge” only in reference to the “rising edge” and “falling edge” of digital
`
`signal wave shapes. Ex. 2001 at 24, ¶ 78. In the absence of any specification
`
`guidance, a PHOSITA would understand a layer’s “edge” refers to the intersection
`
`of two surfaces, as illustrated in the red dotted line below, which is consistent with
`
`the ordinary meaning of the word “edge.” By relying on Fig. 2 (right), Nitto seems
`
`to be referring to the layers’ “end surfaces”– not the “edges” of the end surfaces:
`
`
`
`
`
`
`
`If Nitto contends the “edges” refer instead to the end surfaces created when
`
`the layers are “cut off at the one-dot and dash line Z1” (Ex. 1001 at 8:19), then the
`2
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`BRI of each “edge” refers to the end surface created along line Z1 of Fig. 1 for the
`
`entire width of the circuit board, which is what line Z1 of Fig. 1 depicts:
`
`
`
`Ex. 1001, FIG. 1 (annotations added). For purposes of this paper, HTI will assume
`
`“edges” in Substitute Claim 5 are meant to be the “end surfaces.”
`
`(2) “all flush with each other”: Based on the BRI of “the edges,” the phrase
`
`“all flush with each other” requires that the end surfaces of each of the claimed
`
`“cover insulating,” “lead wire for plating” and “insulating” layers be perfectly
`
`aligned on the same plane across the width of the circuit board. Or, if not
`
`“perfectly” aligned, then this limitation renders Substitute Claim 5 indefinite.
`
` Nitto’s Motion Should Be Denied On Section 112 Grounds
`In moving to amend, Patent Owner carries the burden of establishing written
`
`description support under 35 U.S.C. § 112. 37 C.F.R. § 42.121(b) (“a motion to
`
`amend must … set forth . . . support in the original disclosure of the patent for
`3
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`each claim that is added or amended . . . .”); Aqua Prods., Inc. v. Matal, 872 F.3d
`
`1290, 1317 (Fed. Cir. 2017) (confirming Rule 42.121 correctly places a burden
`
`on the patentee to “show that the amendments do not … introduce new matter”
`
`(citing 35 U.S.C. § 316(d)(3), 37 C.F.R. § 42.20(c)) (emphasis added). Nitto’s
`
`original disclosure completely fails under this standard.
`
`A. Nitto Failed to Establish Support for the “All Flush” Edges
`Limitation of Substitute Claim 5
`The “all flush” limitation of Substitute Claim 5 – which is the first of several
`
`claim elements not supported by the original disclosure – requires, in relevant part,
`
`that: “the edges of the insulating layer, the lead wire for plating, and the cover
`
`insulating layer are all flush with each other.” Paper No. 16 at 3.
`
`1.
`Nitto’s Expert’s Testimony on the “Flush” Edges Limitation
`When deposed on the meaning of “flush,” Nitto’s expert, Dr. Tarnopolsky,
`
`testified: “‘[f]lush’ would mean [the edges] are in spacial coincidence within
`
`manufacturing tolerances” and a “general (sic) reasonable order of magnitude” of
`
`those tolerances would be “0.5 microns or 1.5 microns.” Ex. 1018 at 88:8-10. He
`
`confirmed the “edge is along the entire thickness of each layer . . .” and that having
`
`a “slope,” as opposed to perpendicular, is not “flush.” Id. at 89:18-21, 90:14-24.
`
`Applying this understanding (which Nitto can hardly dispute) for argument
`
`here, Nitto’s Motion should have established the original disclosure disclosed the
`
`presence of (i) end surfaces perpendicular to the layers, (ii) positioned relative to
`
`
`4834-0613-7443.5
`
`
`4
`
`

`

`
`
`each other within the manufacturing tolerances of 1.5 microns or less, (iii) for the
`
`entire thickness of the edges. These requirements are illustrated below:
`
`
`
`
`
`Ex. 1014 at ¶ 30. Nitto did not establish any of these requirements, however.
`
`2.
`
`The Concept of “Flush” Edges Does Not Appear Anywhere
`in the Specification
`The concept of “flush” is not mentioned anywhere in the original disclosure,
`
`which is telling, particularly where Nitto relies on the “all flush” limitation as the
`
`allegedly novel aspect. See Apple Inc. v. Memory Integrity, LLC, IPR2015-00159,
`
`2016 WL 3597907, at *42 (P.T.A.B. June 21, 2016).
`
`Nitto proposes to add the “all flush” limitation to distinguish the “Ohsawa”
`
`prior art. Ex. 1003. Considering the ‘870 Patent and Ohsawa have a common
`
`inventor (Mr. Ohsawa) and Ohsawa expressly teaches that several structural
`
`features of its printed circuit board are “flush” or “generally flush” (Id. at ¶¶ 119,
`
`145), Nitto is hard pressed to explain why the now allegedly novel “all flush”
`
`feature of Substitute Claim 5 is mentioned nowhere in the ‘870 Patent. The only
`
`logical conclusion is, of course, that the idea of “flush” edges – while important
`
`
`4834-0613-7443.5
`
`
`5
`
`

`

`
`
`enough to warrant express disclosure in Ohsawa in May 2008 – was unimportant to
`
`the inventors when preparing the ‘870 Patent’s original disclosure.
`
`In fact, the lack of relevance of the “all flush” edges of these layers could
`
`not be more clear when reviewing the description of FIG. 7, the embodiment
`
`corresponding to Substitute Claim 5. There, the specification teaches much about
`
`the absolute values (and ratios) of the lengths and widths (i.e., the X-direction and
`
`Y-direction) of the linear portions S1 and S2 of the plating lead S in Fig. 7 that
`
`allegedly achieve the functional benefit related to the resonant frequency. Ex. 1001
`
`at 9:8-10:20. Yet there is no mention of how the edges of those linear portions S1
`
`and S2 (i.e., in the Z-direction) could affect the resonant frequency. Nitto’s new-
`
`found distinction between the ‘870 Patent and its own Ohsawa prior art – the “all
`
`flush” edges – is a distinction without a difference. It is an “IPR Invention”
`
`designed to preserve some aspect of Claim 2 for future litigation purposes.
`
`3.
`The ‘870 Drawings do not Disclose “Flush” Edges
`Without any written text on which to rely, Nitto’s Motion relies instead on
`
`Figs. 2 and 7, contending they depict the “all flush” feature. Paper No. 16 at 3-6.
`
`Fig. 7 does not disclose multiple edges, let alone the claimed “flush”
`
`arrangement of three edges. Instead, Fig. 7 is a “plan view” illustrating, at most,
`
`the plating lead layer – rather than the positioning of each of the three “edges”
`
`
`4834-0613-7443.5
`
`
`6
`
`

`

`
`
`relative to each other. Ex. 1014 at ¶ 34. Bearing no relation to the positioning of
`
`multiple edges, Fig. 7 can be disregarded from this analysis outright.
`
`Referring next to Fig. 2, Nitto relies on the solid line appearing on the right
`
`hand side of Fig. 2 as the patent’s alleged disclosure of “flush” edges.
`
`Paper No. 16 at 9 (“flush edges” annotation in original). Yet Nitto’s assertion that
`
`Fig. 2 is an adequate teaching of “flush” edges is misplaced because Fig. 2 is
`
`merely a “schematic” illustration of the orientation of the multiple layers. Ex.
`
`
`
`1014 at ¶ 36.
`
`In particular, the specification states Fig. 2 is a “schematic” view illustrating
`
`how the various layers are formed from bottom to top. Ex. 1001 at 6:58-7:10
`
`(“base insulating layer 11 … is formed on the suspension body 10”). Thus, while
`
`Fig. 2 can, perhaps, be relied on as illustrating the base insulation layer 11 is
`
`disposed between the suspension body 10 and cover layer 13, it cannot be relied on
`
`as illustrating where the respective edges of those micron-scale layers are disposed
`
`in relation to each other. See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222
`
`F.3d 951, 956 (Fed. Cir. 2000) (“inference drawn from certain figures about the
`7
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`quantitative relationship between the respective widths of the groove and fins” fails
`
`where the “specification is completely silent” on proportions and sizes); In re
`
`Oslon, 212 F.2d 590, 592-593 (C.C.P.A. 1954) (affirming Board’s decision that
`
`amended claims reciting relative distances of components did not meet the written
`
`description requirement when supported only by an unscaled patent drawing and
`
`the specification was completely silent on this point, especially when dimensions
`
`of the components were on the order of a few thousandths of an inch)
`
`The ‘870 Patent explicitly describes only a few of its drawings as
`
`“schematic” illustrations, including Fig. 2. It is well established that “schematic”
`
`illustrations do not depict the actual structural features of the devices they
`
`represent. See Ex Parte Macove, No. 2009-009633, 2011 WL 686726, at *7 (BPAI
`
`Feb. 23, 2011)) (when a patent describes some of its figures as being “schematic”,
`
`the figures not described as “schematic” illustrations may “accurately portray the
`
`configuration of the device.”); Ex Parte Maier, 2017 WL 2826171 at *2 (P.T.A.B.,
`
`June 26, 2017) (“Merchant describes Figure 1 as ‘a schematic and diagrammatic
`
`illustration of an exemplary disclosed power system,’ rather than a depiction of
`
`structural details of retention devices 52”) (emphasis in original).
`
`The same is true here. In the absence of other teachings in the original
`
`disclosure, the indication that Fig 2 is a “schematic” illustration means that it
`
`cannot be relied upon for disclosing the precise spatial relationships of the three
`
`
`4834-0613-7443.5
`
`
`8
`
`

`

`
`
`edges (e.g., within a 1.5 micron tolerance suggested by Nitto’s expert). Ex. 1018 at
`
`88:8-10. Those three edges surfaces are irrelevant to the purpose of the
`
`“schematic” illustration of Fig. 2, which merely illustrates the orientation of the
`
`multiple layers of the device. Ex. 1014 at ¶ 36. Had the orientations of those end
`
`surfaces been relevant, the inventors would have described them (at least
`
`minimally) and not remained silent on this now allegedly “patentable” feature -
`
`“all flush” edges.
`
`4.
`
`The Specification’s “Cut Off” Step Does Not Establish
`Support for “Flush” Edges
`While not in Nitto’s Motion, Nitto’s expert testified at his deposition on the
`
`specification’s reference to a “cut off” along line Z1 of Fig. 4(e) as purported
`
`support for “flush.” Ex. 1018 at 8:16-22. If Nitto were permitted to raise this
`
`argument now,1 it would still fail because a vague reference to an unspecified type
`
`of a “cut off” step cannot serve as written description support of “flush.” The
`
`Federal Circuit has affirmatively invalidated patents when the accused infringer
`
`(not the patentee) carried the burden of proof (under the clear and convincing
`
`standard) based on disclosures providing substantially more in comparison:
`
`[O]ne of ordinary skill in the art reading the 2000 application
`
`
`1 Because Nitto was required to establish support for “flush” edges in its Motion, it
`
`is now too late for Nitto to rely on a new position after the fact.
`
`
`4834-0613-7443.5
`
`
`9
`
`

`

`
`
`would have understood that Novozymes had only predicted that
`
`at least some mutations at position 239 would yield variants with
`
`increased thermostability, not that it possessed or had
`
`definitively identified any mutations that would do so.
`
`Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1350 (Fed.
`
`Cir. 2013) (“A mere wish or plan for obtaining the claimed invention does not
`
`satisfy the written description requirement”) (emphasis added, internal quotations
`
`omitted). In contrast to Nitto, the patentee in Novozymes at least explicitly
`
`identified the disputed claim element and provided a “roadmap” for obtaining it.
`
`See id. Yet, the Federal Circuit invalidated the claim on written description
`
`grounds nevertheless. Id. at 1350-51 (“the written description requirement
`
`prohibits a patentee from leaving it to the . . . industry to complete an unfinished
`
`invention”) (internal quotations omitted).
`
`B. Nitto Failed to Establish Support for the “Lead Wire Extending
`from Said Wiring Trace” Limitation of Substitute Claim 5
`Nitto’s Substitute Claim 5 recites, inter alia, “a lead wire for plating . . .
`
`extending from said wiring trace” and “first linear portion [of said lead wire for
`
`plating] extending from said wiring trace...” Paper No. 16 at 3. As such, Substitute
`
`Claim 5 requires that the lead wire for plating extends from the wiring trace – not
`
`from the terminal that is separately claimed in Substitute Claim 5. Nitto cites only
`
`three lines of the ‘870 Patent as written support, noting “[t]he wiring traces extend
`10
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`from ‘a plurality of electrode pads 30’” and, “a plurality of lead wires S for plating
`
`are formed to extend from the plurality of electrode pads 30 towards the opposite
`
`side to the wiring traces 20.” Id. at 5-6. But the cited figures (Figs. 1, 2, and 7) and
`
`text only teach the lead wire for plating as extending from the electrode pad 302 –
`
`not the wiring trace, as claimed. Fig. 7, which Nitto relies upon for Substitute
`
`Claim 5, illustrates this arrangement:
`
`
`
`
`
`Similarly, the text corresponding to Fig. 2 (the other figure on which Nitto relies
`
`for Substitute Claim 5) states “the lead wire S for plating is provided to extend
`
`from each electrode pad 30.” Ex. 1001 at 7:1-2. Nitto’s Expert Declaration cites
`
`the same portions of the ‘870 patent, still disclosing the lead wire as extending
`
`from the electrode pad. See Ex. 2002 at 69.
`
`Nitto has encountered this issue before. During prosecution, the Examiner
`
`rejected the same limitation under Section 112, understanding the specification
`
`does not disclose a lead wire extending from a wiring trace:
`
`2 In the ‘870 patent, the “electrode pad 30” appears synonymous with the term
`
`“terminal.” See Ex. 1001 at 13:23-25
`
`
`4834-0613-7443.5
`
`
`11
`
`

`

`
`
`Regarding claims 1, 4 and 6: . . . limitations "a lead wire
`for plating formed on said insulating layer to extend from
`said wiring trace" are ambiguous because it is not clear
`whether a lead wire for plating actually extend from said
`wiring trace or removed after plating.
`
`Ex. 1002 at 413 (underling in original) (July 2012 Office Action).
`
`Faced with this Section 112 rejection, Nitto amended Claims 1, 4 and 6 (now
`
`Claims 1, 3 and 4) to recite that the lead wire extends from the “terminal,” rather
`
`than the “wiring trace,” in a manner consistent with its original disclosure:
`
`
`
`Ex. 1002 at 395-96. (October 8, 2012 Amendment) But that is not what Substitute
`
`Claim 5 says today. In the same October 8, 2012 amendment, Nitto re-wrote then
`
`allowable dependent Claim 2 into independent form, and (perhaps by accident)
`
`copied the original “extending” language from claim 1 subject to the Section 112
`
`rejection. That same language issued as Claim 2 in the ‘870 Patent and remains in
`
`Substitute Claim 5, making the same Section 112 problem now relevant again.
`
`Accordingly, Substitute Claim 5 is much broader than Claims 1, 3 and 4 in
`
`that the lead wire for plating can be anywhere along the wiring trace 20 – perhaps
`
`even near the magnet sensor located on the tongue 12. Ex. 1001, FIG. 1. There is
`
`simply no support in the original disclosure for locating the plating leads anywhere
`
`
`4834-0613-7443.5
`
`
`12
`
`

`

`
`
`along the wiring trace, as set forth in Substitute Claim 5. Because Nitto can only
`
`suggest support for Substitute Claim 5 by pointing to teachings of the plating leads
`
`“extending from” the terminal or electrode pad 30 (not from the wiring trace),
`
`Nitto’s motion should also fail on this basis as well. Apple Inc. v. Personalized
`
`Media Communications LLC, IPR2016-01520, 2018 WL 922376, at *25 (Feb. 15,
`
`2018) (“The motion must account for the claimed subject matter as a whole, i.e.,
`
`the entire proposed substitute claim, when showing where there is sufficient
`
`written description support for each claim feature”) (emphasis in original).
`
`C. The Original Disclosure Failed to Describe the “Edge Formed
`On” Limitations of Substitute Claim 5
`Substitute Claim 5 requires “an insulating layer with an edge formed on said
`
`suspension body” and “a lead wire for plating with an edge formed on said
`
`insulating layer.” Paper No. 16 at 3 (underline in original). While the specification
`
`describes the insulation layer and the lead wire layer are “formed on” their
`
`respective underlying surfaces with references to Fig. 4 (Ex. 1001 at 7:20-8:21), it
`
`does not disclose “edges” that are “formed on” a surface, as now claimed.
`
`
`
`To the extent the specification discloses an “edge” (if at all) that edge is only
`
`introduced in the manufacturing process after all layers are already “formed.”
`
`After the plating layer 30a is formed, the support
`
`substrate 50, the base insulating layer 11, the lead wires S
`
`for plating and the cover insulating layer 13 are cut off at
`13
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`the one-dot and dash line Z1.
`
`
`Ex. 1001, 8:16-21 (emphasis added). Assuming the edges are created during this
`
`“cutting off” process, they are most definitely not described in the original
`
`disclosure as being “formed on” any underlying surface.3
`
`D. Assuming Arguendo The ‘870 Patent Discloses the Limitations of
`Substitute Claim 5, Nitto Failed to Establish Enablement
`Nitto’s Motion also fails on enablement grounds. In particular, even if Nitto
`
`established support for the added limitation of Claim 5, (which Nitto has not done
`
`per Section III(A) above), Nitto nevertheless failed to establish the disclosure is
`
`enabling. ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940-41 (Fed. Cir.
`
`2010) (“the specification of the ‘373 patent only describes osmotic dosage forms
`
`and does not provide sufficient guidance for a person of ordinary skill in the art
`
`to make the non-osmotic dosage forms as claimed”) (emphasis added).
`
`1.
`
`Nitto’s Silence on Enablement Defeats its Motion
`
`
`3 Substitute Claim 5 includes a third recitation of the phrase “with an edge” relative
`
`to the cover layer, but uses the word “provided,” suggesting there is a difference
`
`between “provided” and “formed on.” Paper No. 16 at 3.
`
`
`4834-0613-7443.5
`
`
`14
`
`

`

`
`
`Nitto provides no discussion of enablement whatsoever, likely because there
`
`is nothing to discuss. Apple Inc. v. Personalized Media Commc’ns., LLC, IPR2016-
`
`00755, Paper 42; 2017 Pat. App. LEXIS 11703, *205-206 (P.T.A.B. September 19,
`
`2017) (denying amendment where “Patent Owner has not met the burden of
`
`showing enablement”). Nitto’s Motion should be denied on this basis alone.
`
`2.
`
`The Only (Minimal) Manufacturing Teaching is the Term
`“Cut Off” -- Which is Insufficient for Enablement
`Nevertheless, any attempt by Nitto to establish enablement (should the
`
`Board be inclined to entertain one) would have failed because there is nothing in
`
`the ‘870 Patent on which to rely. The specification provides no disclosure
`
`whatsoever concerning how the claimed “flush” edges can be achieved during
`
`manufacturing, much less within the very specific requirements Nitto’s expert
`
`testified to. (See Section III(A)(1) above). At best, the specification merely says
`
`the layers are “cut off” with no further explanation. Ex. 1001 at 8:16-21. This is
`
`insufficient as Nitto “cannot simply rely on the knowledge of a person of ordinary
`
`skill to serve as a substitute for the missing information in the specification.” ALZA
`
`Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940-41 (Fed. Cir. 2010).
`
`Even if Nitto were permitted to raise an untimely enablement position, the
`
`Board routinely denies amendment on enablement grounds where, like here, the
`
`original disclosure fails to indicate which known techniques to use. See Apple,
`
`2017 Pat. App. LEXIS 11703 at *205-06 (“assuming the ‘091 patent enables one
`15
`
`
`4834-0613-7443.5
`
`
`

`

`
`
`of the known or developing techniques by virtue of implicit reliance on a known
`
`technique, the ‘091 patent fails to indicate which of the known techniques . . . it
`
`relies upon”) (emphasis added).
`
`In fact, Substitute Claim 5, as written, is inconsistent with the “cut off”
`
`theory of enablement (assuming that is Nitto’s basis). By stating “an insulating
`
`layer with an edge formed on said suspension body” and “a lead wire for plating
`
`with an edge formed on said insulating layer,” Substitute Claim 5 is requiring that
`
`these two edges (i.e., end surfaces) to have been “formed on”, respectively, the
`
`suspension body and the insulating layer. Ex. 1014 at ¶ 44. But if a “cut off”
`
`process through these layers creates the edges, then these claimed edges were
`
`never formed on the suspension body or the insulating layer to begin with. Id. at ¶
`
`45. Accordingly, Nitto’s chosen language for Substitute Claim 5 does not appear to
`
`implicate the “cut off” process. The “all flush” element for Substitute Claim 5 is
`
`simply not enabled.
`
`3.
`
`Conventional Cutting Methods Would Not Result in the
`“All Flush” Edges
`Further, even if Nitto could rely on a PHOSITA’s knowledge to establish
`
`enablement, which it cannot, Nitto’s motion should still fail because there are
`
`many technical obstacles one would face in attempting to “cut” flush edges at the
`
`level of precision Nitto’s expert testified to.
`
`
`4834-0613-7443.5
`
`
`16
`
`

`

`
`
`Without any further guidance, a PHOSITA seeing the word “cut” may defer
`
`to conventional shearing techniques most commonly used at the time of invention
`
`and still in use today. Ex. 1014 at ¶ 47. Conventional mechanical shearing,
`
`however, while suitable for the purposes of severing plating leads, is not intended
`
`to provide perfectly flush edges. Ex. 1014 at ¶ 53. Reproduced below are Scanning
`
`Electron Microscope (“SEM”) images of the “cut” end of a Nitto flexure
`
`manufactured in the 2009 timeframe:
`
`
`
`Ex. 1016 at ¶¶ 13-14. HTI’s expert, Mr. Erpelding, observed these images suggest
`
`a shearing blade was used during manufacturing, resulting in significant surface
`
`disruptions in the end surface, raising considerable questions over whether
`
`perfectly flush edges even existed in 2009 – putting aside whether Nitto disclosed
`
`them in its patent. Ex. 1016 at ¶ 13-14; Ex. 1014 at ¶ 54.
`
`Furthermore, Nitto teaches “cutting” can be accomplished by etching in
`
`Nitto’s other patents (including Ohsawa) in the 2009 timeframe. Ex. 1003 at ¶ 126
`
`(“as shown in FIG. 1, the metal supporting board 22 is cut out by etching”); Ex.
`
`1026 at ¶ 139 (“Then, in the second etching step, the second coupling lead 29 is cut
`
`
`4834-0613-7443.5
`
`
`17
`
`

`

`
`
`by etching”). Thus, the “cut” process of the ‘870 Patent would seem to include
`
`etching techniques. But Nitto’s Motion explains that its own Ohsawa reference
`
`(intrinsic evidence) teaches that etching will result in the erosion of layers, leading
`
`to a “non-flush” condition. Paper 16 at 9; Ex. 1003. In short, if the “cutting”
`
`process in the ’870 Patent is performed by etching, then Nitto cannot deny it will
`
`lead to “non-flush” edges. This is yet another reason why the “schematic” of Fig. 2
`
`is unreliable for determining the configuration of the layers’ edges.
`
`Whether edges are “flush” or not, however, is of little concern to the
`
`industry as edges with surface disruptions function just the same. Ex. 1014 at ¶ 80.
`
`Of course, Nitto has implicitly confirmed this fact – that is why Nitto’s ‘870 patent
`
`never claimed “all flush” edges to begin with and never mentions anything about
`
`how the “all flush” edges could resolve problems with resonant frequency.
`
`Perhaps understanding the shortcomings of commonly known techniques,
`
`Nitto’s expert then theorized at his deposition that a specialized technique known
`
`as “laser ablation” could align the edges within the precision required for “flush.”
`
`Ex. 1014 at ¶ 69-72. Nitto’s expert also referred to an unspecified “very delicate”
`
`grinding technique in his testimony. Ex. 1018 at 75:14. This testimony, however,
`
`reinforces that even a hand-picked technical expert, arguably more skilled than a
`
`PHOSITA and benefiting from nine more years in the field since 2009, was still
`
`left guessing at which of various unspecified and undisclosed techniques were
`
`
`4834-0613-7443.5
`
`
`18
`
`

`

`
`
`contemplated by ‘870 Patent’s use of the word “cut.” Ex. 1014 at ¶¶ 73-78. That is
`
`not enablement.
`
`Finally, and perhaps most significantly, the specification entirely ignores the
`
`very first thing a PHOSITA could consider if attempting to perform a “cut” of any
`
`quality, much less a “flush” cut. In particular, Fig. 4(e) discloses the “cut” as
`
`traversing not only the cover insulation 13, plating lead S, and base insulating 11
`
`layers, but also the “support substrate 50 made of stainless steel,” which is a much
`
`stronger material that is more difficult to shear by cutting. Ex. 1014 at ¶ 60.
`
`
`
`Ex. 1001 at 8:18and Fig. 4(e) (annotated). In order to achieve a cut of any quality
`
`(let alone “flush” within 1.5 microns), manufacturers typically remove the stainless
`
`steel support layer in the region before the cut (e.g., by acid etching). Ex. 1014 at ¶
`
`62. If not removed, the stainless steel makes any cut process significantly more
`
`challenging. Id. at ¶ 63. This especially true when specification provides that the
`
`stainless steel support substrate 50 may approach up to 200 microns in thickness.
`
`Ex. 1001 at 7:34; Ex. 1014 at ¶ 64.
`
`
`4834-0613-7443.5
`
`
`19
`
`

`

`
`
`The specification, however, discloses the stainless steel as still present when
`
`the cutting occurs along line Z1. Ex. 1001 at Fig. 4(e). In view of this disclosure, a
`
`PHOSITA would conclude the ‘870 Patent contemplates a departure from
`
`conventional cutting or shearing techniques to cut the stainless steel. Ex. 1014 at ¶
`
`79. The ‘870 Patent, however, provides no clues as to enable the skilled artisan to
`
`“cut off” all four layers and still achieve the “all flush” concept.
`
`E.
`Substitute Claim 5 is Indefinite
`Nitto’s proposed language for Substitute Claim 5 leads to a nonsensical
`
`result. As written, the phrase “a covering layer with an edge provided to cover
`
`said lead wire for plating” requires the “edge” to “cover said lead wire for
`
`plating.” Because the edge (or end surface) could never perform this “covering”
`
`function of the lead wire due to its location and orientation, Substitute Claim 5 is
`
`indefinite for this reason alone. See Trustees of Columbia Univ. in City of N.Y. v.
`
`Symantec Corp., 811 F.3d 1359, 1366-1367 (Fed. Cir. 2016) (a claim is indefinite
`
`when its plain language leads to a nonsensical result).
`
`More importantly, the “all flush” limitation of Substitute Claim 5 is also
`
`indefinite because a skilled artisan would have no idea of how perfect “flush” must
`
`be or what tolerances (if any) the claim encompasses. Terms of degree are
`
`indefinite if they do not provide objective boundaries to one of skill in the art when
`
`read in light of the specification and prosecution history. See Interval Licensing
`
`
`4834-0613-7443.5
`
`
`20
`
`

`

`
`
`LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). While absolute
`
`mathematical precision is not required, there must be some standard for measuring
`
`the scope of the phrase. Id. at 1370-71. Here, there is no basis to judge what edges
`
`qualify as “flush” (even from SEM images) when dealing with highly complex
`
`micron-scale layers and comparing it to schematics such as ‘870 Fig. 2. Ex. 1014 at
`
`¶¶ 55, 58-59.
`
`Highlighting this indefiniteness is the fact that Nitto and its own expert
`
`disagree about whether Ohsawa’s edges are “flush.” Specifically, when
`
`explaining how the “all flush” limitation is not taught by Ohsawa, Nitto argues that
`
`Ohsawa’s plating lead 4 has a surface 16B “positioned slightly shifted rearward
`
`from the front end surface 30 of the insulating layer 5.” Paper 16 at 9. Nitto
`
`annotates Ohsawa’s Fig. 2 with “Edges not ‘flush’.”
`
`Id. Ohsawa’s plating lead 4 can have a

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket