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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______
`
`
`HUTCHINSON TECHNOLOGY, INC.,
`HUTCHINSON TECHNOLOGY OPERATIONS (Thailand) CO., LTD.,
`
`Petitioner,
`
`v.
`
`NITTO DENKO CORP.,
`
`Patent Owner.
`
`____________
`
`
`IPR 2017-01421
`Patent 8,895,870
`
`____________
`
`
`Record of Oral Hearing
`Held: July 17, 2018
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`____________
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`
`
`Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and MELISSA H.
`HAAPALA, Administrative Patent Judges.
`
`
`
`
`JENNIFER HAYES, ESQUIRE
`RONALD LOPEZ, ESQUIRE
`Nixon Peabody LLP
`300 South Grand Avenue
`Suite 4100
`Los Angeles, CA 90071
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`IPR 2017-01421
`Patents 8,895,870
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONR:
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` BEHALF OF THE PATENT OWNER:
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`ALEX V. CHACHKES, ESQUIRE
`K, PATRICK HERMAN, ESQUIRE
`Orrick, Herrington & Sutcliffe, LLP
`51 West 52nd Street
`New York, NY 10019
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, July 17,
`2018, commencing at 2:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia, before Walter Murphy, Notary
`Public.
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`P R O C E E D I N G S
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`JUDGE GIANNETTI: Please be seated. I’m looking for our remote
`judges on the monitors. All right. So we are here for the final hearing in
`case IPR 2017-01421. Let me introduce the panel. I see that they are now
`on screens. I'm Judge Giannetti. I will be presiding today. On the monitor
`to my left is Judge Haapala and on the monitor to my right is Judge Zado.
`They will be participating in this hearing remotely.
`So with that, let me get your appearances. Who's appearing today for
`the Patent Owner?
`MR. CHACHKES: Thank you, Your Honor. Alex Chachkes, with
`me is Patrick Herman representing the Patent Owner.
`JUGE GIANNETTI: Okay. Thank you, Mr. Chachkes. And for the
`Petitioner.
`MS. HAYES: Good afternoon, Your Honors. Jennifer Hayes from
`Nixon Peabody on behalf of Petitioners, and with me today is Mr. Lopez,
`also from Nixon Peabody.
`JUDGE GIANNETTI: Okay. Ms. Hayes, will you be making the
`argument today?
`MS. HAYES: Yes, I will be making the argument today
`(indiscernible.)
`JUDGE GIANNETTI: Okay. Mr. Chachkes -- pardon me if I don't
`get that right. I'm trying -- and you will be making the argument today?
`MR. CHACHKES: Yes.
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`JUDGE GIANNIETTI: Okay. All right. So we have a couple of
`housekeeping matters I want to deal with. I just want to make sure I
`understand the status of claim 2. Counsel, for Patent Owner would you
`please fill me in? I understand that claim 2 is going to be canceled; is that
`the idea?
`MR. CHACHKES: That's correct, Your Honor.
`JUDGE GIANNETTI: Okay, fine. So I think that simplifies the trial
`somewhat in that neither party -- we added additional grounds for that claim
`in our Order on the 27th pursuant to the SAS decision and since that claim is
`going to be canceled I think we can limit this action for the other claims to
`the grounds that were in the decision to institute, and obviously we're going
`to consider the amended claim, claim 5. Is that your understanding,
`counsel?
`MR. CHACHKES: That's our understanding as well.
`JUDGE GIANNETTI: Okay, fine. And that's okay with you?
`MR. CHACHKES: Yes.
`JUDGE GIANNETTI: Okay. Counsel for Petitioner? Is that okay
`with you?
`MS. HAYES: Yes. That's okay with Petitioner.
`JUDGE GIANNETTI: Okay, fine. So we can proceed on that basis, I
`think that simplifies things. So let me go over some of the ground rules.
`Each side is going to have 60 minutes and in your presentations you can
`address the Motion to Amend, the merits of the case as well as the pending
`motion which I believe is a Motion to Exclude. If you wish to address that,
`you may. You're not required to, if you don't address it we will just decide
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`those on the papers, and the Petitioner may reserve time for rebuttal and you
`can let me know about that either at the beginning of your presentation or
`you can just reserve the balance of your time.
`I think that's pretty much it. I just want to make sure that you are
`aware that we do have two remote judges today and so it would be very
`helpful, in fact necessary, for you in using your demonstratives to call out
`the slide number. They have your demonstratives, we all do, so we'll be able
`to follow along and also the record will be able to reflect what you're doing.
`Your demonstratives are not part of the record. They have not been filed,
`we're not authorizing you to file the demonstratives. The record of this
`hearing will be the transcript. Any questions before we begin? Ms. Hayes?
`MS. HAYES: No, Your Honor.
`JUDGE GIANNETTI: Mr. Chachkes?
`MR. CHACHKES: No.
`JUDGE GIANNETTI: Okay, fine. So, Petitioner, you're up first.
`Ms. Hayes, you may proceed when you're ready.
`MS. HAYES: Thank you, Your Honor, and we do have courtesy
`copies of the trial demonstratives but do you already have a copy?
`JUDGE GIANNETTI: Well, I have my copy. If you want to hand a
`copy up that's fine. Our remote judges also have copies that you sent to us.
`Just hand up one copy, I think that'll be enough. Okay, thank you. All right,
`Ms. Hayes, whenever you're ready.
`MS. HAYES: Good afternoon, Your Honors. I would like to reserve
`15 minutes of rebuttal time.
`JUDGE GIANNETTI: Okay, fine.
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`MS. HAYES: May it please the Board. At the outset I'd like to just
`provide a brief outline of the presentation that we plan to give. First, we
`would like to address the Motion to Amend to add substitute claim 5 which
`we believe should be denied, and then we will discuss the obviousness of
`claim 1 in view of Ishii and Zeng, and then claim 4 in view of Ishii,
`Kuzawinski and Chou, and finally the Motion to Exclude.
`So turning to slide 3. Petitioners believe that Patent Owner's Motion
`to Amend should be denied and claim 5 is provided on slide 4. Claim 5 has
`been added in lieu of claim 2, a substitute for claim 2, and there are two key
`limitations that have been added to claim 2 and that is the cover insulating
`layer with an edge that's provided to cover the lead wire for plating, and
`finally what we refer to as the all flush limitation which are those last lines
`of substitute claim 5 which is that wherein the edges of the insulating layer,
`the lead wire for plating, and the cover insulating layer are all flush with
`each other. These limitations were added to overcome the Ohsawa reference
`which was used as an anticipation ground in view of the original claim 2.
`Now we believe that claim 5 is an IPR invention. The all flush
`limitation is not a limitation that is disclosed in the specification of the 870
`patent. There's no written description support or enablement for that claim
`limitation. The rest of claim 5 also lacks written description support and the
`proposed substitute claim 5 is also indefinite and is unpatentable over the
`prior art.
`So turning to slide 7. As noted on slide 7, the 870 patent has a
`description of their stated objective of their invention, and the stated
`objective of the invention is to effect the interference of the lead wire for
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`plating that is exerted on the wave form of the electrical signal and they do
`that by modifying the dimensions and in particular the width of the lead wire
`for plating. In the specification there is no teaching that flush edges have
`any impact on the resonance of the plating lead. The specification is clear
`throughout that it is these dimensions, in particular the ratios of the widths to
`the lengths and the particular arrangement of the widths that solves the
`resonance problem. One example of that is shown in figure 7 which has the
`lead wire for plating which is narrow closest to the electrode pad or terminal,
`and is wide as it gets further away.
`JUDGE GIANNETTI: Counsel, I'm a bit confused by your argument
`here. Are you making a point of novelty argument? Are you saying that
`what has to be described in the written description is the point of novelty and
`that this all flush limitation is not the point of novelty?
`MS. HAYES: That's right. The all flush limitation is really new
`matter. It's an IPR invention because it doesn't actually disclose that it has
`any purpose, that its purpose is to affect the resonance or have any value
`whatsoever.
`JUDGE GIANNETTI: Is that consistent with the law that says that
`you have to look at the invention as a whole? I mean why are we talking
`about this if you do not use the term point of novelty (indiscernible) you
`adopted. Why is that the right approach? Shouldn't be looking at the claim
`as a whole?
`MS. HAYES: Well I think we do look at the claim as a whole and I
`think if you look at the claim as a whole, it's clear that the limitations are
`disclosed in the prior art and they're just trying to get around the prior art by
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`adding a distinction without any real difference, a distinction that doesn't add
`any value to the claim whatsoever, and that's demonstrated by the
`specification. So the specification, as explained on slide 8, doesn't describe
`flush at all. The word flush doesn't appear in the specification. There's no
`explanation of why the flush limitation is inventive. There's no explanation
`that the flush limitation has any impact on the resonant frequency of the
`plating lead or any --
`JUDGE HAAPALA: I'm going to stop you too. If we're talking
`about written description support, I'm not aware of any case law that adding
`amendments have to be the point of novelty or have to be something unique
`to the invention. Certainly claims have all kinds of limitations that aren't
`specific to the point of novelty, so I think if we just focus on the written
`description argument, if we can move ahead to Patent Owner's pointing to
`figure 2 for that support. Can you address that please?
`MS. HAYES: May I point out first the Apple v. Memory Integrity
`case. So that was a decision by the PTAB that found that when the allegedly
`novel aspect is not described that the Patent Owner has not met their burden
`of showing enablement and so we think that case does support our view that
`they need to demonstrate that the all flush limitation does have some
`inventive aspect to it in order to satisfy the enablement requirement. But
`turning to --
`JUDGE GIANNETTI: Definitely a non-precedential Board decision
`(indiscernible.) Do you have anything from the Federal Circuit on that?
`MS. HAYES: I do not have anything from the Federal Circuit that
`specifically addresses that issue, but in the Dynamic Drinkware v. National
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`Graphics Federal Circuit case they did explain that in order to get the benefit
`of an earlier priority date, which Patent Owner is doing here, they need to
`point to both the written description and enablement for all aspects of the
`invention. They further address that in the AutoTech v. BMW Federal
`Circuit case. So there they said it's the specification, not the knowledge of
`one skilled in the art that must apply the knowledge of one skilled in the art,
`that must apply the novel aspects of an invention in order to constitute
`adequate enablement.
`JUDGE GIANNETTI: And these cases are in your papers?
`MS. HAYES: The AutoTech v. BMW case is in the papers. I do not
`believe the Dynamic Drinkware case is in the papers.
`JUDGE GIANNETTI: And I'm not sure that that's very helpful to you
`on this point. Okay. I would like to have you answer Judge Haapala's
`question. Let's go to figure 2.
`MS. HAYES: So figure 2, that is shown on slide 10 of the
`demonstrative. Slide 10 is a schematic diagram and that's how it's referred
`to in the specification of the 870 patent and this is the only purported
`description of the flush edges. There's no description in the specification to
`explain precisely what is shown or what it means that the edges are flush.
`What we have later is --
`JUDGE GIANNETTI: Well, let me stop you there. I think there's
`some case law there that was cited by your opponent that suggests that at
`least in certain circumstances that it is sufficient to have a figure showing the
`particular feature that needs to be described. But that doesn't necessarily
`have to be text, it can be a figure that you can rely on for written description.
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`MS. HAYES: Right. There are cases that fall on both sides. So we
`cited several cases in our papers that say that schematic figures are not
`enough. Patent Owner cited to the Koito Manufacturing case --
`JUDGE GIANNETTI: Correct.
`MS. HAYES: -- and that case is distinguishable because in Koito
`there's actually written description to support the relative dimensions of the
`two components. There they said that there was some teaching in the
`specification that helped support what was shown in the figure with the
`relative scale whereas here there's nothing in the specification to help
`explain the relative dimensions of the different pieces and to show that the
`layers are in fact flush and what the tolerance of the layers flushness needs
`to be.
`
`JUDGE GIANNETTI: You know, I saw that in your papers that your
`contention is in that case that it was something in the text; did I get that
`right? So I'm not going to put you on the spot right this moment, but before
`the hearing is over I'd like to have you point me to where in that case that
`statement is.
`MS. HAYES: Okay.
`JUDGE GIANNETTI: I won't put you on the spot right now. I want
`to see what the argument -- perhaps when you come back to the podium for
`your rebuttal, you can point that out to me.
`JUDGE HAAPALA: Ms. Hayes, you talk about the cited cases as
`being related to relative dimensions, but here we don't have the limitation
`related to dimensions. We have a limitation that says flush edges which
`arguably is shown in figure 2, the edges are flush. There's nothing in the
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`claim language that requires relative dimensions or something along those
`lines where something would have to be to scale.
`MS. HAYES: Right. And I think here the key is the testimony from
`Patent Owner's expert, Dr. Tarnopolsky, who testified that -- my apologies.
`So he testified that the layers, in the industry a person of skill in the art
`would understand that the tolerances of the different layers would be
`between half a micron and one and a half microns, and I'm looking at slide
`21 for example of our demonstrative, and his testimony was at Exhibit 1018
`at 88, lines 8 through 10, and 89, 18 through 21. Because they have
`provided testimony that flush means half a micron to one and a half micron
`tolerance, and further they pointed to a portion of the specification, figure
`4E, that discusses the cutting that results in the formation of the flush layers
`that there is not actually written description support that a person of skill in
`the art would understand. A person of skill in the art would understand that
`you cannot create the flush layers that they show in figure 2 using the cutting
`techniques shown in 4E and described in the specification. Instead, you --
`and this was confirmed by their own expert -- you have to use different
`techniques to get through all of the different layers of the board as described
`in the 870 patent. You can't just cut through all of the layers at the same
`time, that doesn't work.
`JUDGE GIANNETTI: Is this the argument based on the metallic
`layer on the bottom?
`MS. HAYES: That's correct.
`JUDGE GIANNETTI: That can't be cut through using the usual
`cutting techniques?
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`MS. HAYES: Correct.
`JUDGE GIANNETTI: So what's the implication of that?
`MS. HAYES: So the implication of that is that what's shown in figure
`2 isn't actually possible given the teaching in the 870 patent, in particular
`based on figure 4E, based on the testimony of their own expert and as
`confirmed by Dr. Coughlin, Petitioner's expert. There's no -- and Mr.
`Erpelding, another expert of the Petitioners. Everyone agrees that you can't
`use conventional cutting techniques to cut through all of the layers and get a
`flush edge and because a person of skill in the art wouldn't understand how
`to get flush edges based on the 870 teaching, there really is not enough
`written description in order to get flush edges.
`JUDGE GIANNETTI: You mean there's no piece of equipment
`available in any place that could provide a flush edge there?
`MS. HAYES: Well, so the conventional cutting techniques that
`existed at the time the 870 patent was filed could not be used to achieve a
`flush edge that gets all four layers aligned as described in the 870 patent.
`You'd have --
`JUDGE GIANNETTI: It shows a flush edge there, doesn't it?
`MS. HAYES: It shows a flush edge but it --
`JUDGE GIANNETTI: Isn't the issue here what it shows rather than
`how one could achieve it? What kind of machinery one would need to
`achieve it? Why is that relevant?
`MS. HAYES: Well, it's relevant because they've introduced new
`matter to the specification or to the claim that is not supported by the
`specification so the specification needs to provide both a written description
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`and enablement for this new limitation that they're adding, and they can't
`identify any way. Their expert confirmed that you can't achieve the flush
`edges that they say are shown in figure 2 using the cutting techniques and
`the cutting line that's shown in figure 4E.
`JUDGE HAAPALA: So is the issue really enablement then or lack of
`written description support, because in the figure here, as you said, it shows
`a flush edge? Is it your argument then that this is not enabled?
`MS. HAYES: I think it's both. I think that it's certainly not enabled.
`I don't think there is any real disagreement that it's not enabled. I also think
`that there's a written description problem here because I don't think that the
`figure alone is really sufficient to teach a person of skill in the art exactly
`what flush edges means as used in claim 5, and that is largely based on the
`fact that the 870 patent refers to the figure as being a schematic drawing
`which prior cases have said is insufficient to provide the written description
`support when that's the only teaching of the invention.
`JUDGE ZADO: So I have a question about your showing the edges
`and my question is this because I'm not sure if this is part of your argument
`or not. Would a skilled artisan of the time looking at that figure have
`understood that edges could be flush or looking at that figure would they
`have thought something else, and is that in the record anywhere?
`MS. HAYES: There's nothing in the record relating to what a person
`of skill in the art would think looking at figure 2. So the Patent Owner, in
`their Motion to Amend, doesn't tell us what flush means. The expert
`declaration doesn't tell us what flush means, and the only time that there's
`any testimony about what flush means came in the cross-examination of Dr.
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`Tarnopolsky and he testified well, it's this tolerance of .5 microns to 1.5
`microns and that it would be a perpendicular straight line through the entire
`thickness of the entire board and there's no support for that. They don't
`identify any documents that support that that's what the meaning of flush is
`and Petitioner's experts have said there's no plain meaning of flush. That's
`not something that people used commonly in the art and based on the
`teaching in the 870 patent, it's not possible to achieve the flush edge
`limitation that's shown in figure 2.
`JUDGE GIANNETTI: Counsel, I'd like to hear -- unless the panel has
`more questions on this enablement issue and the written description issue --
`can I hear your argument on the merits of the Motion to Amend on the prior
`art.
`
`MS. HAYES: Okay. So turning to slide 25 of the demonstrative. The
`first combination of references that Petitioners point to to invalidate claim 5
`are Ishizawa and the Chou references. So Ishizawa discloses all of the
`limitations except that the cover layer being flush with the lead wire for
`plating and the insulating layer, and so --
`JUDGE GIANNETTI: So what slide is that again?
`MS. HAYES: So this is slide 25 of the demonstrative.
`JUDGE GIANNETTI: So Ishizawa has the configuration, the lead
`configuration that you've (indiscernible) --
`MS. HAYES: Right.
`JUDGE GIANNETTI: -- but it does it for a different purpose, doesn't
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`it?
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`MS. HAYES: It does.
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`JUDGE GIANNETTI: Is there any disclosure in Ishizawa about
`shaping the leads to avoid interference?
`MS. HAYES: No. There's no teaching in Ishizawa.
`JUDGE GIANNETTI: So why would we look to Ishizawa? It doesn't
`sound like a very persuasive reference.
`MS. HAYES: Well, I don't think it matters for invalidating claim 5.
`Claim 5 does not claim what the purpose of its lead wire for plating
`configuration is. They don't say in the claims that the purpose of the lead
`wire for plating is that, having the arrangement that it does, is that it is for
`the express purpose of reducing the interference. That's only described in
`the specification but the claim is much broader than that. The claim is not
`limited to a specific problem or specific solution. It relates broadly to
`printed circuit boards that have insulating layers and cover layers and lead
`wires for plating, and Ishizawa has those same features. So I don't think it
`matters that it's not solving the same problem in the same way.
`JUDGE GIANNETTI: It's an obviousness challenge though, isn't it?
`Don't we have to look at the prior art as a whole and figure out what -- you
`can't pick and choose things?
`MS. HAYES: Right. If you do --
`JUGE GIANNETTI: Look at the motivation for using a particular
`piece of prior art.
`MS. HAYES: Right. And so here the reason that you combine the
`references together is not to solve the same problem, but I think in this case
`you don't need to solve the same problem in order to combine the references
`together. The problem that's described in Ishizawa is this problem of
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`debonding that occurs when you insert the circuit board into a connector and
`adding the cover layer that's described in Chou would help solve that same
`problem. You can add the cover layer on top of the lead wire for plating
`and that would the same problem of the debonding issue that's occurring in
`Ishizawa.
`JUDGE GIANNETTI: But why would a person of ordinary skill in
`the art faced with this problem of interference caused by the resonance of
`these stubs, why would they turn to Ishizawa to solve that problem?
`Ishizawa solves a totally different problem.
`MS. HAYES: They're solving a different problem but I think you
`have to look at the claim as a whole, and the claim as a whole is very broad.
`It's not limited to solving that problem. It's a much broader claim. Claim 5
`doesn't include any limitation that it's for a flexure system that had this
`interference problem. It's just broadly related to a suspension board that has
`all these layers and the lead wires for plating and the fact that you're solving
`a different problem than the problem described in the 870 patent I don't
`think is critical to the obviousness analysis.
`JUDGE GIANNETTI: What about your other art? Did you have
`another (indiscernible?)
`MS. HAYES: We have another argument and the argument is based
`on the combination of Ohsawa with Ishii, and so first the gating issue, and
`I'm looking at slide 28 of the demonstrative. So the first gating issue is
`whether Ohsawa qualifies as prior art and here there are two issues. One,
`Ohsawa is 102(e) art if and only if the 870 patent gets the benefit of the
`provisional filing date and because Patent Owner has not met their burden
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`on the written description and enablement issues for each of the limitations
`in claim 5, our view is that Ohsawa is only 102(a) art so they can't rely on
`103(c)(1) to disqualify Ohsawa.
`Furthermore, the declaration that Patent Owner relies on to disqualify
`Ohsawa is deficient and we have described those reasons why in our papers
`but --
`
`JUDGE GIANNETTI: I'd like to hear you on the art though a little bit
`on the combination and why you think it wouldn't make the claim obvious,
`assuming that it is prior art.
`MS. HAYES: Right. And so slide 30 is a good example of the
`argument. So Ohsawa has all of the layers. It has the lead wire for plating,
`it has the right dimensions, it has a cover layer that covers the lead wire for
`plating. What it's missing is the all flush limitation and our position is that
`Ohsawa combined with Ishii would invalidate claim 5.
`The Ohsawa reference illustrates its flexures as being all connected to
`one another and everyone of skill in the art knows that in order to use the
`Ohsawa flexure you have to separate the flexures from one another, and so
`that means you have to cut the flexures, and here assuming that a cut as
`described in the 870 patent is sufficient to disclose to a person of skill in the
`art that you can cut through all the layers and create a flush edge, a person of
`skill in the art looking at Ishii which describes that you cut through all the
`layers as shown with the notches 24 in figure 2 would cut the Ohsawa board
`at the line 24 that we've annotated on figure 2 and the result is that you get
`the same all flush limitation that's described in the 870 patent.
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`So in this case Ohsawa describes the same problem and the same
`solution. Ohsawa would necessarily have to be cut to be able to be used and
`Ishii teaches how to sever the board from the other components to get a
`flexure that actually works.
`JUDGE GIANNETTI: So you don't have a reference that shows the
`flush limitation without being modified; is that right?
`MS. HAYES: Correct. Ohsawa does not show the flush limitation
`without being modified. There are other references that we identified in an
`earlier version of the papers but then we didn't have space to include those in
`our revised opposition and so I understand I'm not able to raise that now.
`JUDGE GIANNETTI: Okay. Unless the panel has more questions on
`the Motion to Amend, perhaps we can (indiscernible.)
`JUDGE HAAPALA: I do have one question about the reason to
`combine. Okay. I'm going to assume that your premise that Ohsawa has to
`be separated, why would they turn to Ishii's cutting techniques?
`MS. HAYES: So a person of skill in the art would understand that
`there are known conventional ways to cut through the board. Ishii describes
`one example of doing that using the notches 24 and so a person of skill in
`the art would understand that they could take the Ohsawa board and cut
`through those layers by adding those notches as shown in the annotated
`figure 2, and they would do that because they know that you have to cut
`through the board in order to have a device that actually works and can be
`used as a flexure in the hard disk drive.
`JUDGE HAAPALA: I'm still not following why they would select
`Ishii's technique in particular because you're explaining to me that one of
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`skill in the art knows you can do this, but the reason why you would select
`Ishii's cutting technique as opposed to a different technique I'm not
`following that reason.
`MS. HAYES: Right. So -- and this is addressed in Dr. Tarnopolsky's
`deposition and this is also addressed in Mr. Erpelding's declaration and I
`believe also in Dr. Coughlin's second declaration. There were known
`cutting techniques. The cutting techniques involved typically removing the
`underlying stainless steel substrate and then cutting through all of the
`remaining layers. One way to remove the underlying stainless steel
`substrate was to etch that first and then come through and sheer, like
`basically take scissors and cut through the remaining layers of the board, and
`so a person of skill in the art would understand that those are the known
`techniques for separating the boards and that they could adopt those based
`on the point of cut that Ishii discloses because you have to separate them in
`order to use the flexure.
`JUDGE GIANNETTI: In the diagram of Ohsawa shown here on slide
`30, is that the -- I see again you've annotated it -- is No. 2, is that the metallic
`layer?
`MS. HAYES: Layer 2 is the underlying metallic substrate.
`JUDGE GIANNETTI: So you were talking earlier about how the
`conventional equipment couldn't handle cutting through that.
`MS. HAYES: Right.
`JUDGE GIANNETTI: And is that your argument for why you would
`combine, you would use the notch?
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`MS. HAYES: Yes. So this is premised on the idea that we're
`assuming that if the 870 patent enables and provides written description
`support by saying you cut through the board and all of the layers, then Ishii's
`disclosure is just as good as what's in the 870 patent and a person of skill in
`the art would therefore know that when they say you cut through all the
`layers, you're not going to use the same cutting technique. So this is all
`premised on first assuming the 870 patent provides a written description and
`adequate enablement support for cutting through all four layers.
`JUDGE GIANNETTI: So you're saying if it can be done in the patent
`it can be done in Ohsawa?
`MS. HAYES: Correct.
`JUDGE GIANNETTI: Okay.
`MS. HAYES: And I understand that you don't want to hear any more
`arguments on the Motion to Amend so I'm going to move on to the --
`JUDGE GIANNETTI: No, I'm saying I think we've heard quite a bit -
`
`-
`
`MS. HAYES: Right.
`JUDGE GIANNETTI: -- and you've got 30 minutes left and I don't
`want to cut short on the other claims.
`MS. HAYES: Right. And so I'm going to move on to claim 1, and
`claim 1 as we set forth in the petition is obvious over Ishii in view of Zeng
`and I have claim 1 on slide 32. That's what I have on the screen. Claim 1 is
`broadly directed to a printed circuit board. It is not limited itself to flexures
`as Patent Owner would like to argue.
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`Patent Owner's only attack is the motivation to combine Ishii with
`Zeng. Ishii discloses all but the wide to narrow limit
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