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` Paper No.____
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HUTCHINSON TECHNOLOGY INCORPORATED and
`HUTCHINSON TECHNOLOGY OPERATIONS (THAILAND) CO., LTD.
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`Petitioners
`v.
`NITTO DENKO CORPORATION
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`Patent Owner
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`Case No. IPR2017-01421
`Patent No. 8,895,870
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`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
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`TABLE OF CONTENTS
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`B.
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`C.
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`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
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`3.
`4.
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`3.
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`i
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`Introduction
`Nitto’s Motion to Amend (“Motion”) does not come close to satisfying the
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`legal requirements for the relief sought. Nitto no longer disputes that its own prior
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`art anticipates Claim 2 – the only claim Nitto asserts in the New Jersey litigation.
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`So Nitto now proposes Substitute Claim 5, adding a limitation requiring that the
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`various layers to have edges “all flush with each other.” Paper No. 16 at 3.
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`But nothing in the original disclosure explains the relationship between the
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`“all flush” edges and the plating leads’ resonant frequency, the problem allegedly
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`overcome by the ‘870 patent. See Ex. 1001. In fact, the original disclosure never
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`even mentions the terms “flush” or “edge.” Id. According to Nitto, Substitute
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`Claim 5 is supported by a “schematic” illustration intended to explain the
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`orientation of the multiple layers -- not what occurs at their micron-scale edges.
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`Contrary to Nitto’s assertions, the record does not establish the inventors
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`possessed the “all flush” limitation at the time Nitto filed for the ‘870 Patent – or
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`even thought of it. Instead, the record establishes the opposite: that Nitto created
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`the “all flush” concept from thin air in the midst of the present IPR proceeding in
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`an act of desperation to breathe life into claim 2, the only claim it asserts in the
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`New Jersey litigation. In doing so, Nitto has created a Section 112 quagmire for
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`itself, implicating the written description, enablement, and indefiniteness
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`requirements on several fronts. In short, the “all flush” limitation presents a classic
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`example of an “IPR Invention” the Board’s rules on amendment prohibit.
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` Claim Construction for Substitute Claim 5
`Nitto proposes no constructions. HTI proposes constructions for two terms
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`in Claim 5 -- (1) “edge” and (2) “all flush with each other” – from the new
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`limitation: “wherein the edges of the insulating layer, the lead wire for plating, and
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`the cover insulating layer are all flush with each other.” Paper No. 16 at 3.
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`(1) “the edges”: The original disclosure from August 2009 does not use the
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`word “edge” in relation to a layer or any physical components. Instead, it uses the
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`word “edge” only in reference to the “rising edge” and “falling edge” of digital
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`signal wave shapes. Ex. 2001 at 24, ¶ 78. In the absence of any specification
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`guidance, a PHOSITA would understand a layer’s “edge” refers to the intersection
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`of two surfaces, as illustrated in the red dotted line below, which is consistent with
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`the ordinary meaning of the word “edge.” By relying on Fig. 2 (right), Nitto seems
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`to be referring to the layers’ “end surfaces”– not the “edges” of the end surfaces:
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`If Nitto contends the “edges” refer instead to the end surfaces created when
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`the layers are “cut off at the one-dot and dash line Z1” (Ex. 1001 at 8:19), then the
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`BRI of each “edge” refers to the end surface created along line Z1 of Fig. 1 for the
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`entire width of the circuit board, which is what line Z1 of Fig. 1 depicts:
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`Ex. 1001, FIG. 1 (annotations added). For purposes of this paper, HTI will assume
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`“edges” in Substitute Claim 5 are meant to be the “end surfaces.”
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`(2) “all flush with each other”: Based on the BRI of “the edges,” the phrase
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`“all flush with each other” requires that the end surfaces of each of the claimed
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`“cover insulating,” “lead wire for plating” and “insulating” layers be perfectly
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`aligned on the same plane across the width of the circuit board. Or, if not
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`“perfectly” aligned, then this limitation renders Substitute Claim 5 indefinite.
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` Nitto’s Motion Should Be Denied On Section 112 Grounds
`In moving to amend, Patent Owner carries the burden of establishing written
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`description support under 35 U.S.C. § 112. 37 C.F.R. § 42.121(b) (“a motion to
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`amend must … set forth . . . support in the original disclosure of the patent for
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`each claim that is added or amended . . . .”); Aqua Prods., Inc. v. Matal, 872 F.3d
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`1290, 1317 (Fed. Cir. 2017) (confirming Rule 42.121 correctly places a burden
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`on the patentee to “show that the amendments do not … introduce new matter”
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`(citing 35 U.S.C. § 316(d)(3), 37 C.F.R. § 42.20(c)) (emphasis added). Nitto’s
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`original disclosure completely fails under this standard.
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`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
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`claim elements not supported by the original disclosure – requires, in relevant part,
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`that: “the edges of the insulating layer, the lead wire for plating, and the cover
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`insulating layer are all flush with each other.” Paper No. 16 at 3.
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`1.
`Nitto’s Expert’s Testimony on the “Flush” Edges Limitation
`When deposed on the meaning of “flush,” Nitto’s expert, Dr. Tarnopolsky,
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`testified: “‘[f]lush’ would mean [the edges] are in spacial coincidence within
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`manufacturing tolerances” and a “general (sic) reasonable order of magnitude” of
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`those tolerances would be “0.5 microns or 1.5 microns.” Ex. 1018 at 88:8-10. He
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`confirmed the “edge is along the entire thickness of each layer . . .” and that having
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`a “slope,” as opposed to perpendicular, is not “flush.” Id. at 89:18-21, 90:14-24.
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`Applying this understanding (which Nitto can hardly dispute) for argument
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`here, Nitto’s Motion should have established the original disclosure disclosed the
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`presence of (i) end surfaces perpendicular to the layers, (ii) positioned relative to
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`each other within the manufacturing tolerances of 1.5 microns or less, (iii) for the
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`entire thickness of the edges. These requirements are illustrated below:
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`Ex. 1014 at ¶ 30. Nitto did not establish any of these requirements, however.
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`2.
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`The Concept of “Flush” Edges Does Not Appear Anywhere
`in the Specification
`The concept of “flush” is not mentioned anywhere in the original disclosure,
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`which is telling, particularly where Nitto relies on the “all flush” limitation as the
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`allegedly novel aspect. See Apple Inc. v. Memory Integrity, LLC, IPR2015-00159,
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`2016 WL 3597907, at *42 (P.T.A.B. June 21, 2016).
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`Nitto proposes to add the “all flush” limitation to distinguish the “Ohsawa”
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`prior art. Ex. 1003. Considering the ‘870 Patent and Ohsawa have a common
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`inventor (Mr. Ohsawa) and Ohsawa expressly teaches that several structural
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`features of its printed circuit board are “flush” or “generally flush” (Id. at ¶¶ 119,
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`145), Nitto is hard pressed to explain why the now allegedly novel “all flush”
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`feature of Substitute Claim 5 is mentioned nowhere in the ‘870 Patent. The only
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`logical conclusion is, of course, that the idea of “flush” edges – while important
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`enough to warrant express disclosure in Ohsawa in May 2008 – was unimportant to
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`the inventors when preparing the ‘870 Patent’s original disclosure.
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`In fact, the lack of relevance of the “all flush” edges of these layers could
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`not be more clear when reviewing the description of FIG. 7, the embodiment
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`corresponding to Substitute Claim 5. There, the specification teaches much about
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`the absolute values (and ratios) of the lengths and widths (i.e., the X-direction and
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`Y-direction) of the linear portions S1 and S2 of the plating lead S in Fig. 7 that
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`allegedly achieve the functional benefit related to the resonant frequency. Ex. 1001
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`at 9:8-10:20. Yet there is no mention of how the edges of those linear portions S1
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`and S2 (i.e., in the Z-direction) could affect the resonant frequency. Nitto’s new-
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`found distinction between the ‘870 Patent and its own Ohsawa prior art – the “all
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`flush” edges – is a distinction without a difference. It is an “IPR Invention”
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`designed to preserve some aspect of Claim 2 for future litigation purposes.
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`3.
`The ‘870 Drawings do not Disclose “Flush” Edges
`Without any written text on which to rely, Nitto’s Motion relies instead on
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`Figs. 2 and 7, contending they depict the “all flush” feature. Paper No. 16 at 3-6.
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`Fig. 7 does not disclose multiple edges, let alone the claimed “flush”
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`arrangement of three edges. Instead, Fig. 7 is a “plan view” illustrating, at most,
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`the plating lead layer – rather than the positioning of each of the three “edges”
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`relative to each other. Ex. 1014 at ¶ 34. Bearing no relation to the positioning of
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`multiple edges, Fig. 7 can be disregarded from this analysis outright.
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`Referring next to Fig. 2, Nitto relies on the solid line appearing on the right
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`hand side of Fig. 2 as the patent’s alleged disclosure of “flush” edges.
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`Paper No. 16 at 9 (“flush edges” annotation in original). Yet Nitto’s assertion that
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`Fig. 2 is an adequate teaching of “flush” edges is misplaced because Fig. 2 is
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`merely a “schematic” illustration of the orientation of the multiple layers. Ex.
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`1014 at ¶ 36.
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`In particular, the specification states Fig. 2 is a “schematic” view illustrating
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`how the various layers are formed from bottom to top. Ex. 1001 at 6:58-7:10
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`(“base insulating layer 11 … is formed on the suspension body 10”). Thus, while
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`Fig. 2 can, perhaps, be relied on as illustrating the base insulation layer 11 is
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`disposed between the suspension body 10 and cover layer 13, it cannot be relied on
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`as illustrating where the respective edges of those micron-scale layers are disposed
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`in relation to each other. See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222
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`F.3d 951, 956 (Fed. Cir. 2000) (“inference drawn from certain figures about the
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`quantitative relationship between the respective widths of the groove and fins” fails
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`where the “specification is completely silent” on proportions and sizes); In re
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`Oslon, 212 F.2d 590, 592-593 (C.C.P.A. 1954) (affirming Board’s decision that
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`amended claims reciting relative distances of components did not meet the written
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`description requirement when supported only by an unscaled patent drawing and
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`the specification was completely silent on this point, especially when dimensions
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`of the components were on the order of a few thousandths of an inch)
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`The ‘870 Patent explicitly describes only a few of its drawings as
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`“schematic” illustrations, including Fig. 2. It is well established that “schematic”
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`illustrations do not depict the actual structural features of the devices they
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`represent. See Ex Parte Macove, No. 2009-009633, 2011 WL 686726, at *7 (BPAI
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`Feb. 23, 2011)) (when a patent describes some of its figures as being “schematic”,
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`the figures not described as “schematic” illustrations may “accurately portray the
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`configuration of the device.”); Ex Parte Maier, 2017 WL 2826171 at *2 (P.T.A.B.,
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`June 26, 2017) (“Merchant describes Figure 1 as ‘a schematic and diagrammatic
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`illustration of an exemplary disclosed power system,’ rather than a depiction of
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`structural details of retention devices 52”) (emphasis in original).
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`The same is true here. In the absence of other teachings in the original
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`disclosure, the indication that Fig 2 is a “schematic” illustration means that it
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`cannot be relied upon for disclosing the precise spatial relationships of the three
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`edges (e.g., within a 1.5 micron tolerance suggested by Nitto’s expert). Ex. 1018 at
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`88:8-10. Those three edges surfaces are irrelevant to the purpose of the
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`“schematic” illustration of Fig. 2, which merely illustrates the orientation of the
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`multiple layers of the device. Ex. 1014 at ¶ 36. Had the orientations of those end
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`surfaces been relevant, the inventors would have described them (at least
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`minimally) and not remained silent on this now allegedly “patentable” feature -
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`“all flush” edges.
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`4.
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`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
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`specification’s reference to a “cut off” along line Z1 of Fig. 4(e) as purported
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`support for “flush.” Ex. 1018 at 8:16-22. If Nitto were permitted to raise this
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`argument now,1 it would still fail because a vague reference to an unspecified type
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`of a “cut off” step cannot serve as written description support of “flush.” The
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`Federal Circuit has affirmatively invalidated patents when the accused infringer
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`(not the patentee) carried the burden of proof (under the clear and convincing
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`standard) based on disclosures providing substantially more in comparison:
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`[O]ne of ordinary skill in the art reading the 2000 application
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`1 Because Nitto was required to establish support for “flush” edges in its Motion, it
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`is now too late for Nitto to rely on a new position after the fact.
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`would have understood that Novozymes had only predicted that
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`at least some mutations at position 239 would yield variants with
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`increased thermostability, not that it possessed or had
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`definitively identified any mutations that would do so.
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`Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1350 (Fed.
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`Cir. 2013) (“A mere wish or plan for obtaining the claimed invention does not
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`satisfy the written description requirement”) (emphasis added, internal quotations
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`omitted). In contrast to Nitto, the patentee in Novozymes at least explicitly
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`identified the disputed claim element and provided a “roadmap” for obtaining it.
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`See id. Yet, the Federal Circuit invalidated the claim on written description
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`grounds nevertheless. Id. at 1350-51 (“the written description requirement
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`prohibits a patentee from leaving it to the . . . industry to complete an unfinished
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`invention”) (internal quotations omitted).
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`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 . . .
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`extending from said wiring trace” and “first linear portion [of said lead wire for
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`plating] extending from said wiring trace...” Paper No. 16 at 3. As such, Substitute
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`Claim 5 requires that the lead wire for plating extends from the wiring trace – not
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`from the terminal that is separately claimed in Substitute Claim 5. Nitto cites only
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`three lines of the ‘870 Patent as written support, noting “[t]he wiring traces extend
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`from ‘a plurality of electrode pads 30’” and, “a plurality of lead wires S for plating
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`are formed to extend from the plurality of electrode pads 30 towards the opposite
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`side to the wiring traces 20.” Id. at 5-6. But the cited figures (Figs. 1, 2, and 7) and
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`text only teach the lead wire for plating as extending from the electrode pad 302 –
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`not the wiring trace, as claimed. Fig. 7, which Nitto relies upon for Substitute
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`Claim 5, illustrates this arrangement:
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`Similarly, the text corresponding to Fig. 2 (the other figure on which Nitto relies
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`for Substitute Claim 5) states “the lead wire S for plating is provided to extend
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`from each electrode pad 30.” Ex. 1001 at 7:1-2. Nitto’s Expert Declaration cites
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`the same portions of the ‘870 patent, still disclosing the lead wire as extending
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`from the electrode pad. See Ex. 2002 at 69.
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`Nitto has encountered this issue before. During prosecution, the Examiner
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`rejected the same limitation under Section 112, understanding the specification
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`does not disclose a lead wire extending from a wiring trace:
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`2 In the ‘870 patent, the “electrode pad 30” appears synonymous with the term
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`“terminal.” See Ex. 1001 at 13:23-25
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`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.
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`Ex. 1002 at 413 (underling in original) (July 2012 Office Action).
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`Faced with this Section 112 rejection, Nitto amended Claims 1, 4 and 6 (now
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`Claims 1, 3 and 4) to recite that the lead wire extends from the “terminal,” rather
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`than the “wiring trace,” in a manner consistent with its original disclosure:
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`Ex. 1002 at 395-96. (October 8, 2012 Amendment) But that is not what Substitute
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`Claim 5 says today. In the same October 8, 2012 amendment, Nitto re-wrote then
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`allowable dependent Claim 2 into independent form, and (perhaps by accident)
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`copied the original “extending” language from claim 1 subject to the Section 112
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`rejection. That same language issued as Claim 2 in the ‘870 Patent and remains in
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`Substitute Claim 5, making the same Section 112 problem now relevant again.
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`Accordingly, Substitute Claim 5 is much broader than Claims 1, 3 and 4 in
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`that the lead wire for plating can be anywhere along the wiring trace 20 – perhaps
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`even near the magnet sensor located on the tongue 12. Ex. 1001, FIG. 1. There is
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`simply no support in the original disclosure for locating the plating leads anywhere
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`along the wiring trace, as set forth in Substitute Claim 5. Because Nitto can only
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`suggest support for Substitute Claim 5 by pointing to teachings of the plating leads
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`“extending from” the terminal or electrode pad 30 (not from the wiring trace),
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`Nitto’s motion should also fail on this basis as well. Apple Inc. v. Personalized
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`Media Communications LLC, IPR2016-01520, 2018 WL 922376, at *25 (Feb. 15,
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`2018) (“The motion must account for the claimed subject matter as a whole, i.e.,
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`the entire proposed substitute claim, when showing where there is sufficient
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`written description support for each claim feature”) (emphasis in original).
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`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
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`suspension body” and “a lead wire for plating with an edge formed on said
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`insulating layer.” Paper No. 16 at 3 (underline in original). While the specification
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`describes the insulation layer and the lead wire layer are “formed on” their
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`respective underlying surfaces with references to Fig. 4 (Ex. 1001 at 7:20-8:21), it
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`does not disclose “edges” that are “formed on” a surface, as now claimed.
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`To the extent the specification discloses an “edge” (if at all) that edge is only
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`introduced in the manufacturing process after all layers are already “formed.”
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`After the plating layer 30a is formed, the support
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`substrate 50, the base insulating layer 11, the lead wires S
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`for plating and the cover insulating layer 13 are cut off at
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`the one-dot and dash line Z1.
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`Ex. 1001, 8:16-21 (emphasis added). Assuming the edges are created during this
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`“cutting off” process, they are most definitely not described in the original
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`disclosure as being “formed on” any underlying surface.3
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`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
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`established support for the added limitation of Claim 5, (which Nitto has not done
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`per Section III(A) above), Nitto nevertheless failed to establish the disclosure is
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`enabling. ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940-41 (Fed. Cir.
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`2010) (“the specification of the ‘373 patent only describes osmotic dosage forms
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`and does not provide sufficient guidance for a person of ordinary skill in the art
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`to make the non-osmotic dosage forms as claimed”) (emphasis added).
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`1.
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`Nitto’s Silence on Enablement Defeats its Motion
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`3 Substitute Claim 5 includes a third recitation of the phrase “with an edge” relative
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`to the cover layer, but uses the word “provided,” suggesting there is a difference
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`between “provided” and “formed on.” Paper No. 16 at 3.
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`Nitto provides no discussion of enablement whatsoever, likely because there
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`is nothing to discuss. Apple Inc. v. Personalized Media Commc’ns., LLC, IPR2016-
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`00755, Paper 42; 2017 Pat. App. LEXIS 11703, *205-206 (P.T.A.B. September 19,
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`2017) (denying amendment where “Patent Owner has not met the burden of
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`showing enablement”). Nitto’s Motion should be denied on this basis alone.
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`2.
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`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
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`Board be inclined to entertain one) would have failed because there is nothing in
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`the ‘870 Patent on which to rely. The specification provides no disclosure
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`whatsoever concerning how the claimed “flush” edges can be achieved during
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`manufacturing, much less within the very specific requirements Nitto’s expert
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`testified to. (See Section III(A)(1) above). At best, the specification merely says
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`the layers are “cut off” with no further explanation. Ex. 1001 at 8:16-21. This is
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`insufficient as Nitto “cannot simply rely on the knowledge of a person of ordinary
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`skill to serve as a substitute for the missing information in the specification.” ALZA
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`Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940-41 (Fed. Cir. 2010).
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`Even if Nitto were permitted to raise an untimely enablement position, the
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`Board routinely denies amendment on enablement grounds where, like here, the
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`original disclosure fails to indicate which known techniques to use. See Apple,
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`2017 Pat. App. LEXIS 11703 at *205-06 (“assuming the ‘091 patent enables one
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`of the known or developing techniques by virtue of implicit reliance on a known
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`technique, the ‘091 patent fails to indicate which of the known techniques . . . it
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`relies upon”) (emphasis added).
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`In fact, Substitute Claim 5, as written, is inconsistent with the “cut off”
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`theory of enablement (assuming that is Nitto’s basis). By stating “an insulating
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`layer with an edge formed on said suspension body” and “a lead wire for plating
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`with an edge formed on said insulating layer,” Substitute Claim 5 is requiring that
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`these two edges (i.e., end surfaces) to have been “formed on”, respectively, the
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`suspension body and the insulating layer. Ex. 1014 at ¶ 44. But if a “cut off”
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`process through these layers creates the edges, then these claimed edges were
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`never formed on the suspension body or the insulating layer to begin with. Id. at ¶
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`45. Accordingly, Nitto’s chosen language for Substitute Claim 5 does not appear to
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`implicate the “cut off” process. The “all flush” element for Substitute Claim 5 is
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`simply not enabled.
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`3.
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`Conventional Cutting Methods Would Not Result in the
`“All Flush” Edges
`Further, even if Nitto could rely on a PHOSITA’s knowledge to establish
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`enablement, which it cannot, Nitto’s motion should still fail because there are
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`many technical obstacles one would face in attempting to “cut” flush edges at the
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`level of precision Nitto’s expert testified to.
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`Without any further guidance, a PHOSITA seeing the word “cut” may defer
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`to conventional shearing techniques most commonly used at the time of invention
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`and still in use today. Ex. 1014 at ¶ 47. Conventional mechanical shearing,
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`however, while suitable for the purposes of severing plating leads, is not intended
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`to provide perfectly flush edges. Ex. 1014 at ¶ 53. Reproduced below are Scanning
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`Electron Microscope (“SEM”) images of the “cut” end of a Nitto flexure
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`manufactured in the 2009 timeframe:
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`Ex. 1016 at ¶¶ 13-14. HTI’s expert, Mr. Erpelding, observed these images suggest
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`a shearing blade was used during manufacturing, resulting in significant surface
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`disruptions in the end surface, raising considerable questions over whether
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`perfectly flush edges even existed in 2009 – putting aside whether Nitto disclosed
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`them in its patent. Ex. 1016 at ¶ 13-14; Ex. 1014 at ¶ 54.
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`Furthermore, Nitto teaches “cutting” can be accomplished by etching in
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`Nitto’s other patents (including Ohsawa) in the 2009 timeframe. Ex. 1003 at ¶ 126
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`(“as shown in FIG. 1, the metal supporting board 22 is cut out by etching”); Ex.
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`1026 at ¶ 139 (“Then, in the second etching step, the second coupling lead 29 is cut
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`by etching”). Thus, the “cut” process of the ‘870 Patent would seem to include
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`etching techniques. But Nitto’s Motion explains that its own Ohsawa reference
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`(intrinsic evidence) teaches that etching will result in the erosion of layers, leading
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`to a “non-flush” condition. Paper 16 at 9; Ex. 1003. In short, if the “cutting”
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`process in the ’870 Patent is performed by etching, then Nitto cannot deny it will
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`lead to “non-flush” edges. This is yet another reason why the “schematic” of Fig. 2
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`is unreliable for determining the configuration of the layers’ edges.
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`Whether edges are “flush” or not, however, is of little concern to the
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`industry as edges with surface disruptions function just the same. Ex. 1014 at ¶ 80.
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`Of course, Nitto has implicitly confirmed this fact – that is why Nitto’s ‘870 patent
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`never claimed “all flush” edges to begin with and never mentions anything about
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`how the “all flush” edges could resolve problems with resonant frequency.
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`Perhaps understanding the shortcomings of commonly known techniques,
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`Nitto’s expert then theorized at his deposition that a specialized technique known
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`as “laser ablation” could align the edges within the precision required for “flush.”
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`Ex. 1014 at ¶ 69-72. Nitto’s expert also referred to an unspecified “very delicate”
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`grinding technique in his testimony. Ex. 1018 at 75:14. This testimony, however,
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`reinforces that even a hand-picked technical expert, arguably more skilled than a
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`PHOSITA and benefiting from nine more years in the field since 2009, was still
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`left guessing at which of various unspecified and undisclosed techniques were
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`contemplated by ‘870 Patent’s use of the word “cut.” Ex. 1014 at ¶¶ 73-78. That is
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`not enablement.
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`Finally, and perhaps most significantly, the specification entirely ignores the
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`very first thing a PHOSITA could consider if attempting to perform a “cut” of any
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`quality, much less a “flush” cut. In particular, Fig. 4(e) discloses the “cut” as
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`traversing not only the cover insulation 13, plating lead S, and base insulating 11
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`layers, but also the “support substrate 50 made of stainless steel,” which is a much
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`stronger material that is more difficult to shear by cutting. Ex. 1014 at ¶ 60.
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`Ex. 1001 at 8:18and Fig. 4(e) (annotated). In order to achieve a cut of any quality
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`(let alone “flush” within 1.5 microns), manufacturers typically remove the stainless
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`steel support layer in the region before the cut (e.g., by acid etching). Ex. 1014 at ¶
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`62. If not removed, the stainless steel makes any cut process significantly more
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`challenging. Id. at ¶ 63. This especially true when specification provides that the
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`stainless steel support substrate 50 may approach up to 200 microns in thickness.
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`Ex. 1001 at 7:34; Ex. 1014 at ¶ 64.
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`The specification, however, discloses the stainless steel as still present when
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`the cutting occurs along line Z1. Ex. 1001 at Fig. 4(e). In view of this disclosure, a
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`PHOSITA would conclude the ‘870 Patent contemplates a departure from
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`conventional cutting or shearing techniques to cut the stainless steel. Ex. 1014 at ¶
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`79. The ‘870 Patent, however, provides no clues as to enable the skilled artisan to
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`“cut off” all four layers and still achieve the “all flush” concept.
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`E.
`Substitute Claim 5 is Indefinite
`Nitto’s proposed language for Substitute Claim 5 leads to a nonsensical
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`result. As written, the phrase “a covering layer with an edge provided to cover
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`said lead wire for plating” requires the “edge” to “cover said lead wire for
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`plating.” Because the edge (or end surface) could never perform this “covering”
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`function of the lead wire due to its location and orientation, Substitute Claim 5 is
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`indefinite for this reason alone. See Trustees of Columbia Univ. in City of N.Y. v.
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`Symantec Corp., 811 F.3d 1359, 1366-1367 (Fed. Cir. 2016) (a claim is indefinite
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`when its plain language leads to a nonsensical result).
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`More importantly, the “all flush” limitation of Substitute Claim 5 is also
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`indefinite because a skilled artisan would have no idea of how perfect “flush” must
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`be or what tolerances (if any) the claim encompasses. Terms of degree are
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`indefinite if they do not provide objective boundaries to one of skill in the art when
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`read in light of the specification and prosecution history. See Interval Licensing
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`LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). While absolute
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`mathematical precision is not required, there must be some standard for measuring
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`the scope of the phrase. Id. at 1370-71. Here, there is no basis to judge what edges
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`qualify as “flush” (even from SEM images) when dealing with highly complex
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`micron-scale layers and comparing it to schematics such as ‘870 Fig. 2. Ex. 1014 at
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`¶¶ 55, 58-59.
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`Highlighting this indefiniteness is the fact that Nitto and its own expert
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`disagree about whether Ohsawa’s edges are “flush.” Specifically, when
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`explaining how the “all flush” limitation is not taught by Ohsawa, Nitto argues that
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`Ohsawa’s plating lead 4 has a surface 16B “positioned slightly shifted rearward
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`from the front end surface 30 of the insulating layer 5.” Paper 16 at 9. Nitto
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`annotates Ohsawa’s Fig. 2 with “Edges not ‘flush’.”
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`Id. Ohsawa’s plating lead 4 can have a