Patent No. 8,895,870
`Petitioners’ Revised Opposition to Patent Owner’s Motion to Amend
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Hutchinson Technology Incorporated
`Hutchinson Technology Operations (Thailand) Co., Ltd.
`Petitioners
`v.
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`Nitto Denko Corporation
`Patent Owner
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`Patent No. 8,895,870
`Issue Date: Nov. 25, 2014
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`Title: PRINTED CIRCUIT BOARD AND METHOD OF MANUFACTURING
`THE SAME
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`Inter Partes Review No. IPR2017-01421
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`PETITIONER’S REVISED OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
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`Petitioners’ Revised Opposition to Patent Owner’s Motion to Amend
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`Paper No.
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Hutchinson Technology Incorporated
`Hutchinson Technology Operations (Thailand) Co., Ltd.
`Petitioners
`v.
`
`Nitto Denko Corporation
`Patent Owner
`
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`Patent No. 8,895,870
`Issue Date: Nov. 25, 2014
`
`Title: PRINTED CIRCUIT BOARD AND METHOD OF MANUFACTURING
`THE SAME
`
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`Inter Partes Review No. IPR2017-01421
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`PETITIONER’S REVISED OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
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`
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`Table of Contents
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`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 ....................................................... 3
`1.
`Nitto’s Expert’s Testimony on the “Flush” Edges Limitation
` ..................................................................................................... 3
`The Concept of “Flush” Edges Does Not Appear Anywhere
`in the Specification .................................................................... 4
`The ‘870 Drawings do not Disclose “Flush” Edges................ 5
`The Specification’s “Cut Off” Step Does Not Establish
`Support for “Flush” Edges ....................................................... 7
`Nitto Failed to Establish Support for the “Lead Wire
`Extending from Said Wiring Trace” Limitation of
`Substitute Claim 5 ............................................................................... 9
`The Original Disclosure Failed to Describe the “Edge
`Formed On” Limitations of Substitute Claim 5 ............................. 11
`Even if Disclosed, Claim 5 is Not Enabled ...................................... 12
`1.
`Nitto’s Silence on Enablement Defeats its Motion ............... 12
`2.
`The Only (Minimal) Manufacturing Teaching is the Term
`“Cut Off” -- Which is Insufficient for Enablement ............. 13
`Conventional Cutting Methods Would Not Result in the
`“All Flush” Edges .................................................................... 14
`Substitute Claim 5 is Indefinite ........................................................ 17
`E.
` Substitute Claim 5 is Unpatentable ............................................................ 20
`
`B.
`
`C.
`
`D.
`
`2.
`
`3.
`4.
`
`3.
`
`i
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`
`
`Table of Contents (continued)
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`
`Page
`Substitute Claim 5 is Obvious over Ishizawa and Chou ............... 20
`A.
`Substitute Claim 5 is Obvious over Ohsawa and Ishii ................... 22
`B.
`C. Nitto Failed to Consider its Own Known Prior Art Relative
`to Claim 5 ........................................................................................... 23
` Ohsawa is Not Subject to 103(c)(1) Disqualification ................................ 24
` Conclusion .................................................................................................... 26
`
`
`ii
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`
`
`Introduction
`Nitto’s Motion to Amend (“Motion”) does not satisfy the legal requirements
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`for the relief sought. Nitto no longer disputes that its own prior art anticipates
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`Claim 2. So, Nitto now proposes Substitute Claim 5, adding a limitation requiring
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`the various layers 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 1001. In fact, the original disclosure never even
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`mentions the terms “flush” or “edge.” According to Nitto, Substitute Claim 5 is
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`supported by a “schematic” illustration intended to explain the orientation of the
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`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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`doing so, Nitto has created a Section 112 quagmire for itself, implicating the
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`written description, enablement, and indefiniteness requirements on several fronts.
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`In short, the “all flush” limitation presents a classic example of an “IPR Invention”
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`the Board’s rules on amendment prohibit.
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`1
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`
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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.” Paper No. 16 at 3.
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`“the edges”: Nitto’s briefing and reliance on Fig. 2 shown below (for
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`example) indicate Nitto uses the term “edges” to refer to what are actually end
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`surfaces.
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`
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`Paper 16 at 9. While much of HTI’s briefing assumes the same, HTI does not agree
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`“edges” can properly be construed as referring to end surfaces. Instead the ordinary
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`meaning and proper construction of “edge” refers to the intersection of two
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`surfaces, as illustrated in the red dotted line above 1014 ¶ 21.1
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`“all flush with each other”: The phrase “all flush with each other” requires
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`that the end surfaces of each of the claimed “cover insulating,” “lead wire for
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`plating” and “insulating” layers be perfectly aligned. Or, if not “perfectly” aligned,
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`then this limitation renders Substitute Claim 5 indefinite. See Section III(E) below.
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`1 The original disclosure from August 2009 does not use the word “edge” in
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`relation to a layer or any physical components. 2001.
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`2
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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 –the first of several claim
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`elements not supported by the original disclosure – requires, in relevant part, that:
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`“the edges of the insulating layer, the lead wire for plating, and the cover insulating
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`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.” 1018 at 88:8-10. He
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`3
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`
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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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`Thus, Nitto’s Motion should have established the original disclosure
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`disclosed the presence of: (i) end surfaces perpendicular to the layers, (ii)
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`positioned relative to each other within the manufacturing tolerances of 1.5
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`microns or less, (iii) for the entire thickness of the edges, as illustrated below:
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`1014 at ¶ 30. Nitto did not establish any of these requirements.
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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 Ohsawa. Paper
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`16 at 8-11; 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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`4
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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 that the idea of “flush” edges was unimportant to the
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`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 of the linear portions S1
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`and S2 of the plating lead S in Fig. 7 “so that effects of the resonance . . . can be
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`reduced.” 1001 at 9:25-10:20. Yet, nowhere does the specification mention that
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`problematic resonance can reduced by aligning the edge of the plating lead with
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`those of the other layers. Nitto’s new-found distinction between the ‘870 Patent
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`and its own Ohsawa prior art – the “all flush” edges – is a distinction without a
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`difference. It is an “IPR Invention” designed to preserve some aspect of Claim 2
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`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, a “plan view,” does not disclose multiple edges, let alone the claimed
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`5
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`“flush” arrangement of three edges. 1014 ¶ 34. Bearing no relation to the
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`positioning of multiple edges, Fig. 7 can be disregarded from this analysis outright.
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`For Fig. 2, Nitto relies on the solid line appearing on the right hand side:
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`Paper No. 16 at 9 (“flush edges” annotation in original). Yet, Fig. 2 is merely a
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`“schematic” illustration of the orientation of the multiple layers. 1014 ¶ 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. 1001 at 6:58-7:10 (“base
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`insulating layer 11 … is formed on the suspension body 10”). Thus, while Fig. 2
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`can, perhaps, be relied on as illustrating the base insulation layer 11 is disposed
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`between the suspension body 10 and cover layer 13, it cannot be relied on as
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`illustrating where the respective edges of those micron-scale layers are disposed in
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`relation to each other. 1014 ¶ 37. See Hockerson-Halberstadt, Inc. v. Avia Grp.
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`Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000) (“inference drawn from certain figures
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`about the quantitative relationship between the respective widths of the groove and
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`fins” fails where the “specification is completely silent” on proportions and sizes);
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`In re Oslon, 212 F.2d 590, 592-593 (C.C.P.A. 1954) (amended claims reciting
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`6
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`
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`relative distances of components did not meet the written description requirement
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`when supported only by an unscaled patent drawing).
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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”,
`
`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, “schematic” Fig. 2
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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). 1018 at
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`88:8-10; 1014 ¶ 36-37. Had the orientations of those end surfaces been relevant,
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`the inventors would have described them (at least minimally).
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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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`7
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`
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`support for “flush.” 1018 at 8:16-22. If Nitto were permitted to raise this argument
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`now,2 it would still fail because a vague reference to an unspecified type of a “cut
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`off” step cannot serve as written description support of “flush.” The Federal Circuit
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`has affirmatively invalidated patents when the accused infringer (not the patentee)
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`carried the burden of proof (under the clear and convincing standard) based on
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`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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`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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`2 Nitto was required to establish support for “flush” edges in its Motion. 37 C.F.R.
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`42.121(b). It is now too late for Nitto to introduce a new position.
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`8
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`
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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” 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 pads (a/k/a
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`“terminal,” 1001 at 13:23-25) – not the wiring trace, as claimed. Fig. 7 illustrates
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`this arrangement:
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`
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`Similarly, the text corresponding to Fig. 2 (the other figure on which Nitto relies
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`9
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`
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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.” 1001 at 7:1-2. Nitto’s Expert Declaration cites the
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`same. See 2002 at 69.
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`Nitto has encountered this issue before. During prosecution, the Examiner
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`rejected essentially the same limitation as indefinite, understanding the
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`specification does not disclose a lead wire extending from a wiring trace:
`
`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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`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
`
`than the “wiring trace” in a manner consistent with its original disclosure:
`
`
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`1002 at 395-96. But that is not what Substitute Claim 5 says today.
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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. 1001,
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`Fig. 1. There is simply no support in the original disclosure for locating the plating
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`10
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`
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`leads anywhere along the wiring trace, as set forth in Substitute Claim 5. Apple Inc.
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`v. Personalized Media Communications LLC, IPR2016-01520, 2018 WL 922376,
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`at *25 (Feb. 15, 2018) (“The motion must account for the claimed subject matter as
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`a whole, i.e., the entire proposed substitute claim, when showing where there is
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`sufficient 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
`
`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 (1001 at 7:20-8:21), it does
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`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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`11
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`
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`1001, 8:16-21 (emphasis added). Assuming the edges are created during this
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`“cutting off” process, those edges are not described as being “formed on” any
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`underlying surface. Substitute Claim 5 includes a third recitation of the phrase
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`“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.
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`16 at 3.
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`D. Even if Disclosed, Claim 5 is Not Enabled
`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”).
`
`1.
`Nitto’s Silence on Enablement Defeats its Motion
`Nitto provides no discussion of enablement whatsoever. Apple Inc. v.
`
`Personalized Media Commc’ns., LLC, IPR2016-00755, Paper 42; 2017 Pat. App.
`
`12
`
`
`
`
`
`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
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`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
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`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. 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
`
`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
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`Board routinely denies amendment on enablement grounds where, like here, the
`
`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
`
`of the known or developing techniques by virtue of implicit reliance on a known
`
`13
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`
`
`
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`technique, the ‘091 patent fails to indicate which of the known techniques . . . it
`
`relies upon”).
`
`In fact, Substitute Claim 5, as written, is inconsistent with a “cut off” theory
`
`of enablement (assuming that is Nitto’s basis) because it explicitly requires that the
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`edges of the insulating layer and the lead wire to be “formed on,” respectively, the
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`suspension body and the insulating layer. 1014 at ¶ 44. But if a “cut off” process
`
`through these layers creates the edges, then these edges were never formed on the
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`suspension body or the insulating layer. Id. at ¶ 45. Accordingly, Nitto’s chosen
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`language for Substitute Claim 5 does not appear to implicate the “cut off” process
`
`and the “all flush” element is 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 “for the
`
`missing information in the specification,” which it cannot ALZA Corp. v. Andrx
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`Pharm., LLC, 603 F.3d at 940-41, Nitto’s motion still fails because there are many
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`technical obstacles one would face in attempting to “cut” flush edges at the level of
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`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. 1014 at ¶ 47. While suitable for the purposes of severing
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`plating leads, conventional shearing is not intended to provide perfectly flush
`
`14
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`
`
`
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`edges. 1014 at ¶ 53-54. Reproduced below are Scanning Electron Microscope
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`(“SEM”) images of the “cut” end of a Nitto flexure manufactured in the 2009
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`timeframe:
`
`
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`1016 at ¶ 13-14. HTI’s expert, Mr. Erpelding, observed these images suggest a
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`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. 1016 at ¶ 13-14; 1014 at ¶ 50, 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. 1003 at ¶ 126 (“as
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`shown in Fig. 1, the metal supporting board 22 is cut out by etching”); 1026 at ¶
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`139 (“Then, in the second etching step, the second coupling lead 29 is cut 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
`
`teaches that etching will result in the erosion of layers, leading to a “non-flush”
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`condition. Paper 16 at 9; 1003. In short, if the “cutting” process in the ’870 Patent
`
`15
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`
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`
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`is performed by etching, then Nitto cannot deny it will lead to “non-flush” edges.
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`This is yet another reason why the “schematic” of Fig. 2 is unreliable for
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`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. 1014 at ¶ 80. Of
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`course, Nitto has implicitly confirmed this fact – that is why Nitto’s ‘870 patent
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`never disclosed or claimed “all flush” edges to begin with.
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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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`1014 at ¶ 69-72. Nitto’s expert also referred to an unspecified “very delicate”
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`grinding technique in his testimony. 1018 at 75:14. Because the patent mentions
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`neither technique, Nitto’s hand-picked expert (arguably more skilled than a
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`PHOSITA and benefiting from nine more years in the field since 2009) was left
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`guessing at which of various unspecified and undisclosed techniques were
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`contemplated by ‘870 Patent’s use of the word “cut.” 1014 at ¶ 73-78. That is not
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`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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`16
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`
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`
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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. 1014 at ¶ 60.
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`
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`1001 at 8:18and Fig. 4(e) (annotated). In order to achieve a cut of any quality (let
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`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). 1014 at ¶ 62.
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`If not removed, the stainless steel makes any cut process significantly more
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`challenging. Id. at ¶ 63. This especially true when the specification teaches the
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`stainless steel support substrate 50 may be up to 200 microns thick. 1001 at 7:34;
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`1014 at ¶ 64. In view of this disclosure, a PHOSITA would conclude the ‘870
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`Patent contemplates a departure from conventional cutting or shearing techniques
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`to cut the stainless steel. 1014 at ¶ 79. The ‘870 Patent, however, provides no clue
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`on how to do so 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
`
`result. As written, the phrase “a covering layer with an edge provided to cover
`
`17
`
`
`
`
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`said lead wire for plating” requires the “edge” to “cover said lead wire for
`
`plating.” Because the edge (end surface) could never perform this “covering”
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`function due to its location and orientation, Substitute Claim 5 is indefinite. See
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`Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp., 811 F.3d 1359,
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`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
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`LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (“The patents’
`
`‘unobtrusive manner’ phrase is highly subjective and, on its face, provides little
`
`guidance to one of skill in the art”). While absolute mathematical precision is not
`
`required, there must be some standard for measuring the scope of the phrase. Id. at
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`1370-71. Here, there is no basis to judge whether edges are “flush” (even from
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`SEM images) when dealing with highly complex micron-scale layers relative to
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`‘870 Fig. 2. 1014 at ¶ 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 explaining
`
`18
`
`
`
`
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`how the “all flush” limitation is not taught by Ohsawa, Nitto argues that Ohsawa’s
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`plating lead 4 has a surface 16B “positioned slightly shifted rearward from the
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`front end surface 30 of the insulating layer 5.” Paper 16 at 9 (emphasis added).
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`Nitto annotates Ohsawa’s Fig. 2 with “Edges not ‘flush’.”
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`
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`Id. Ohsawa’s plating lead 4 can have a thickness of 3 microns (1003 at ¶ 83) – i.e.,
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`the height of surface 16B in Fig. 2 above is 3 microns. Thus, if the plating lead 4
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`has a thickness of 3 microns, the “slight shifting” of the surface 16B to the left
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`away from end surface 30 would be very small – maybe 1 to 1.5 microns (at best) -
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`- as illustrated in Nitto’s annotation of Ohsawa’s Fig. 2 shown above.
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`Yet Nitto’s expert testified that “flush” would mean the edges are within
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`tolerances of “0.5 microns or 1.5 microns.” 1018 at 88:8-10. Accepting Nitto’s
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`expert testimony as true, Ohsawa’s surfaces 16B and 30 would still be “flush”
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`when the plating lead 4 has a 3-micron thickness. Considering Nitto had no
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`problem relying on only a “schematic” illustration of Fig. 2 to concoct its “all
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`flush” invention, Nitto cannot complain about HTI’s use of Ohsawa’s “non-
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`schematic” Fig. 2. In short, Nitto and its own expert disagree on what is “flush.”
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`19
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`
` Substitute Claim 5 is Unpatentable
` Should the Board agree the original disclosure properly supports the
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`limitations of Claim 5, Claim 5 should be found unpatentable in view of the prior
`
`art, which provides at least as much disclosure, if not more.
`
`A.
`Substitute Claim 5 is Obvious over Ishizawa and Chou
`Substitute Claim 5 is obvious in view of: (i) Japanese Patent Publication No.
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`2008-282831 to Ishizawa (“Ishizawa”), prior art under 35 U.S.C. § 102(e); and (ii)
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`Chou, prior art as set forth in the Petition. 1020; 1008, Paper No. 2 at 8; 1029 ¶ 18.
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`Ishizawa: Ishizawa discloses the standard circuit board elements recited in
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`Claim 5. In particular, the “reinforcing plate 200” of Ishizawa’s “flexible circuit
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`board 100” (1020 ¶ 10, Fig. 1) discloses the claimed suspension body (1020 ¶ 11,
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`Fig. 1); Ishizawa’s “substrate 101 … a resin film substrate or the like” discloses the
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`insulating layer; (1020 ¶ 13); Ishizawa’s “conductor circuit 103” shown on top of
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`“substrate 101” discloses the wiring trace formed on said insulating layer; (1020 ¶
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`11, Fig. 1); Ishizawa’s “terminal part 110” formed at a portion of the conductor
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`circuit 103 in Fig. 1 discloses Claim 5’s terminal (1020 ¶ 10-11, Fig. 1). 1029 ¶ 19-
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`22. Further, Ishizawa’s “cover film 150” discloses a cover insulating layer. 1020 ¶
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`11; 1029 ¶ 24.
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`Ishizawa’s “plated leads 120 [that] increase in linear width from a specific
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`position toward the distal end 130 of the circuit board, thereby forming an
`
`20
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`
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`increased width part 123” disclose Claim 5’s “lead wire for plating . . . extending
`
`from said wiring trace” and “wherein said first width is smaller than said second
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`width”:
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`
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`1020 ¶10-11, Fig. 1; 1029 ¶ 22. Finally, Ishizawa’s “substrate 101” and “plated
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`leads 120” -- both extending “to” the same “distal end 130” -- teach Claim 5’s
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`“flush” edges for all but the claimed cover layer. Id. (“plated leads 120 for plating
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`the terminal part 110 extend from the terminal rows to the distal end of the
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`substrate”). 1029 ¶ 23.
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`Combination with Chou: The edge of Ishizawa’s “cover film 150” (i.e.
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`cover layer) is not flush with the edges of substrate and plated leads 120, because
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`“cover film 150” does not extend as far as plated leads 120. 1020 at Fig. 1.
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`However, Chou’s “insulating protection layer 14” (i.e. Claim 5’s cover layer) does
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`extend to and cover Chou’s “electroplating conductive wires 11” (i.e. Claim 5’s
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`lead wire for plating).
`
`21
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`1008 ¶ 6, Fig. 3B (annotations added). 1029 ¶ 25-26. Ishizawa combined with
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`Chou’s “insulating protection layer 14” would result in all three layers terminating
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`and having “flush” edges at Ishizawa’s distal end 130. Id.
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`Ishizawa provides a motivation for this combination. Ishizawa warns against
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`“debonding” of the plating leads “during insertion into and
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