Trials@uspto.gov
`571-272-7822
`
`
`Paper 52
`Entered: October 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUTCHINSON TECHNOLOGY INC.,
`HUTCHINSON TECHNOLOGY OPERATIONS (Thailand) CO., LTD.,
`Petitioner,
`
`v.
`
`NITTO DENKO CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01421
`Patent 8,895,870 B2
`____________
`
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and THOMAS L. GIANNETTI and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`

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`Case IPR2017-01421
`Patent No. 8,895,870 B2
`
`
`I. INTRODUCTION
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`
`
`Hutchinson Technology Incorporated and Hutchinson Technology
`
`Operations (Thailand) Co., Ltd. (“Petitioner”) filed a Petition requesting an
`
`inter partes review of claims 1, 2, and 4 of U.S. Patent No. 8,895,870 B2
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`(Ex. 1001, “the ’870 patent”). Paper 2 (“Pet.”). Nitto Denko Corporation
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`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
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`demonstration of a reasonable likelihood that Petitioner would prevail with
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`respect to at least one challenged claim, we granted Petitioner’s request and
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`instituted an inter partes review on all challenged claims. Paper 8
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`(“Institution Dec.”). Following the Supreme Court’s decision in SAS Inst.
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`Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified our Institution Decision
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`to institute trial on all of the grounds presented in the Petition, specifically
`
`adding two additional grounds for claim 2. Paper 25.
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`
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`Following institution, Patent Owner filed a Response to the Petition
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`(Paper 15, “PO Resp.”) and Petitioner filed a Revised Reply (Paper 35, “Pet.
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`Reply”). In addition, Patent Owner filed a Motion to Amend (Paper 16,
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`“Mot. To Amend”). Petitioner filed a Revised Opposition to the Motion
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`(Paper 36, “Mot. Amend Opp.”) and Patent Owner filed a Reply (Paper 40,
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`“Mot. Amend Reply”).
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`An Oral Hearing was held on July 17, 2018. The Hearing Transcript
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`(“Tr.”) is included in the record as Paper 50. Having considered the
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`evidence of record, and for the reasons set forth below, we determine that
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`Petitioner has failed to demonstrate by a preponderance of the evidence that
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`claims 1 and 4 of the ’870 patent are unpatentable. In addition, for the
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`2
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`reasons that follow, we grant the Motion to Amend. Finally, we order
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`cancellation of claim 2 and replacement by new claim 5.
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`
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`A. The ’870 Patent
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`II. BACKGROUND
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`
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`The ’870 patent is titled “Printed Circuit Board and Method of
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`Manufacturing the Same.” The patent discloses a printed circuit board that
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`reduces the effect “a lead wire for plating” has on the waveform of an
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`electrical signal passing through the wiring traces present on the board. Ex.
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`1001, 1:60–63. The board includes various “conductor traces” (or “wiring
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`traces”), typically made from copper, for transmitting electrical signals. Id.
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`at 1:17–19. Figure 1 (as annotated by Patent Owner) is illustrative:
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`Patent No. 8,895,870 B2
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`Figure 1 shows a circuit board with terminal pads 23 and 30 located at the
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`opposite ends of wiring traces 20. Id. at 6:20–27. The particular type of
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`circuit board shown in this figure and described in the patent is a
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`“suspension board.” Id. at 6:20. This board is used in hard disk drives, to
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`connect the magnetic head to other electrical hardware. Id. at 6:28–37.
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`
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`The ’870 patent further describes that a circuit board’s connection
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`terminals can be formed via electrolytic plating. Id. at 1:19–20. In this
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`process, the circuit board is immersed in a solution that contains metal
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`cations, such as nickel or gold, and power is applied to the conductor traces.
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`This results in the deposition of a thin layer of nickel, gold, or other metal on
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`the exposed trace surface and the formation of the desired terminal pad. Id.
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`at 8:12–15; see also Fig. 4(e)). To provide the electrical power needed for
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`plating, during formation of the conductor traces, lead wires for plating are
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`formed. Those leads extend from the portions at which the connection
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`terminals are to be formed to one end of the substrate. Id. at 1:22–26.
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`Power is fed to the conductor traces through the lead wires for plating. Id. at
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`1:26–27.
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`
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`The ’870 patent explains that once plating is complete, the plating
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`leads are “unnecessary,” yet “remain on the printed circuit board.” Id. at
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`1:41–43. However, electrical signals reflected by the plating leads can
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`interfere with the signals traveling through the functional wiring traces on
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`the circuit board. Id. at 1:43–51. When an electrical signal is transmitted
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`through the conductor traces while another electronic circuit is connected to
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`the connection terminals of the printed circuit board, the lead wires for
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`plating become stubs branched from transmission lines. Id. at 1:43–47.
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`Resonance occurs at a particular frequency in such stubs. This causes a
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`particular frequency component of the electrical signal to be attenuated. Id.
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`at 1:47–50. This may result in disadvantages such as a blunt waveform of
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`the electrical signal. Id. at 1:50–51,
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`
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`The ’870 patent explains that one solution is to “[r]emov[e] the lead
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`wires for plating after the electrolytic plating.” Id. at 1:52–54. However, the
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`patent says a process of removing the lead wires for plating is additionally
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`required, thus leading to an increase in manufacturing cost. Id. at 1:54–56.
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`
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`According to the ’870 patent, rather than removing the leads, the leads
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`are formed in a manner such that the effect of the resonance in the lead wire
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`for plating to be exerted on the waveform of the electrical signal is reduced.
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`Id. at 5:45–49. This will be discussed in more detail infra.
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`5
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`Patent No. 8,895,870 B2
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`B. Challenged Claims
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`
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`The ’870 patent has four claims. All are independent. Claims 1, 2,
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`and 4 are challenged. Claim 1 reads as follows:
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`1. A printed circuit board comprising:
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`a suspension body;
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`an insulating layer formed on said suspension body;
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`a plurality of wiring traces formed on said insulating
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`
`
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`
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`layer;
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`a first terminal provided at one end of each of said
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`plurality of wiring traces;
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`a second terminal provided at another end of each of said
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`plurality of wiring traces; and
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`a plurality of lead wires for plating formed on said
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`insulating layer, one of said plurality of lead wires extending
`from each first terminal of said plurality of wiring traces,
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`wherein the plurality of lead wires for plating are not
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`connected to one another and each of said plurality of lead
`wires for plating includes:
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`a first linear portion extending from each first terminal
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`and having a first width; and
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`a second linear portion extending from said first linear
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`portion and having a second width that is smaller than said first
`width.
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`
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`Claim 1 is directed to the embodiment of the invention illustrated in
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`Figure 8 of the ’870 patent:
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`Patent No. 8,895,870 B2
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`Figure 8 shows a lead wire for plating having the wider portion (H5) of the
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`plating leads closer to terminal 30.
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`
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`Claim 2 of the ’870 patent is similar to claim 1, but is directed to the
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`embodiment of the invention illustrated in Figure 7 of the patent:
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`
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`Figure 7 has the narrower portion (H3) of the plating leads closer to terminal
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`
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`30.
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`
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`Claim 4 covers a circuit board with plating leads that are of uniform
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`width. The leads are also wider than the regular traces on the circuit board.
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`Claim 4 is directed to the embodiment of Figure 3 of the patent:
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`7
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`Patent No. 8,895,870 B2
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`Figure 3 shows a lead wire for plating having a uniform width (H1) that is
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`greater than the width (H2) of the regular traces on the circuit board.
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`
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`As indicated supra, claim 3 was not challenged.
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`
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`C. Real Parties-in-Interest
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`
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`Petitioner identifies the following additional real parties-in -interest:
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`
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`1. Magnecomp Precision Technology Public Company Limited
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`2. Magnecomp Corporation
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`3. Headway Technologies, Inc.
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`4. TDK Corporation
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`5. TDK U.S.A. Corporation
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`6. SAE Magnetics (Hong Kong) Limited
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`7. Acrathon Precision Technologies (HK) Limited
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`8. Acrathon Precision Technologies (Dong Guan) Co., Ltd
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`Pet. 3–4. Patent Owner identifies no additional real parties-in-interest.
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`Paper 4, 1.
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`
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`D. Related Matters
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`
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`The parties identify the following civil action involving the ’870
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`patent: Nitto Denko Corporation v. Hutchinson Technology Incorporated,
`
`
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`8
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`Patent No. 8,895,870 B2
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`C.A. No. 2:16-cv-03595-MF, pending in the United States District Court for
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`the District of New Jersey. Pet. 4; Paper 4, 1.
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`E. References and Other Evidence
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`Petitioner relies upon the following references (Pet. 6–7):
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`Ohsawa
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`US 2009/0283314
`
`Nov. 19, 2009
`
`(Ex. 1003)
`
`Lennard
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`US 6,543,673
`
`Apr. 8, 2003
`
`(Ex. 1004)
`
`Kuzawinski
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`US 6,882,038
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`Apr. 19, 2005
`
`(Ex. 1005)
`
`Zeng
`
`Ishii
`
`Chou
`
`Yang
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`US 2007/0145543 A1
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`Jun. 28, 2007
`
`(Ex. 1006)
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`US 2008/0102608 A1 May 1, 2008
`
`(Ex. 1007)
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`US 2008/0185177 A1
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`Aug. 7, 2008
`
`(Ex. 1008)
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`US 2007/0211386 A1
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`Sep. 13, 2007
`
`(Ex. 1011)
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`
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`In addition, both parties also rely on declaration testimony. Petitioner
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`relies on first and second declarations of a technical expert, Dr. Thomas M.
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`Coughlin (“Coughlin I Decl.,” Ex. 1009; “Coughlin II Decl.” Ex. 1029).
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`Petitioner also relies on declarations of several other witnesses: A David
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`Erpelding (Ex. 1014, “Erpelding Decl.”), Jacob B. Bjorstrom (Ex. 1016,
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`“Bjorstrom Decl.”), and Nobuhito Sawasaki (Ex. 1017, “Sawasaki Decl.”).
`
`
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`Patent Owner relies on declarations of two witnesses: Dr. Giora J.
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`Tarnopolsky, a technical expert (Ex. 2002, “Tarnopolsky Decl.”), and
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`Toshiki Naito (Ex. 2007, “Naito Decl.”). The record also includes
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`deposition transcripts for several of these witnesses.1
`
`
`1 Ex. 1018 (“Tarnopolsky Dep.”), Ex. 1019 (“Naito Dep.”), Ex. 2006
`(“Coughlin I Dep.”), Ex. 2009 (“Erpelding Dep.”), and Ex. 2015 (“Coughlin
`II Dep.”).
`
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`9
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`F. Grounds Asserted
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`
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`We instituted inter partes review of the claims of the ’870 patent on
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`three separate grounds. One of those grounds (anticipation by Ohsawa)
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`related to claim 2. For two additional grounds relating to claim 2, however,
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`we determined that Petitioner had not established a reasonable likelihood of
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`prevailing and did not institute trial: obviousness of claim 2 over Ishii and
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`Lennard (Institution Dec. 17–18) and anticipation of claim 2 by Yang (id. at
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`13). Following the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138
`
`S. Ct. 1348 (2018), we entered an order adding those additional grounds.
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`Paper 25.
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`At the Oral Hearing, Patent Owner confirmed its intent to cancel
`
`claim 2. Tr. 4:1–14; see also Mot. To Amend 2 (“[T]his motion to amend
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`[claim 2] is not contingent on the outcome of this IPR.”). Thus, in addition
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`to claim 5 presented in the Motion to Amend, the following patentability
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`challenges remain for decision:
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`Claim
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`Basis
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`Reference(s)
`
`1
`
`4
`
`§ 103(a)
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`§ 103(a)
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`Ishii and Zeng
`Ishii, Chou, and
`Kuzawinski
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`
`
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`A. Claim Construction
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`III. ANALYSIS
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`In an inter partes review, the Board interprets claim terms in an
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`unexpired patent according to the broadest reasonable construction in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
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`10
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`Patent No. 8,895,870 B2
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`(2016). Under that standard, and absent any special definitions, we give
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`claim terms their ordinary and customary meaning, as would be understood
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`by one of ordinary skill in the art at the time of the invention. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally,
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`any special definitions for claim terms must be set forth with reasonable
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`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
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`(Fed. Cir. 1994).
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`Petitioner proposed a special construction for several claim terms:
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`“lead wires/wires for plating,” “extending from said wiring trace,” and
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`“suspension body.” Pet. 21–25. Patent Owner stated it “is of the view that
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`all the claim elements Petitioner discusses (and those it did not) can be
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`afforded their plain and ordinary meaning.” Prelim. Resp. 18. The Board
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`concluded in the Institution Decision than no claim terms required
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`construction at that stage. Institution Dec. 10.
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`Patent Owner’s Response states: “Patent Owner agrees with the Board
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`that the claim terms are understandable on their face and can be afforded
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`their plain and ordinary meaning.” PO Resp. 9. Petitioner responds in its
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`Reply: “In view of the arguments and issues raised in the Patent Owner’s
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`Response and in view of the Board’s Decision to Institute, Petitioners
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`contend that no claim terms require construction for this Reply.” Pet. Reply
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`1. Accordingly, we determine that no claim terms require construction. See
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
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`1999) (only terms which are in controversy need to be construed, and only to
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`the extent necessary to resolve the controversy).
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`11
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`Patent No. 8,895,870 B2
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`B. Obviousness – Claims 1 and 4
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`1. Obviousness – In General
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`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
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`between the claimed subject matter and the prior art are such that the subject
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`matter, as a whole, would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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`
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`The question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art; (3)
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`the level of skill in the art; and (4) where in evidence, so-called secondary
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`considerations, including commercial success, long-felt but unsolved needs,
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`failure of others, and unexpected results. Graham v. John Deere Co., 383
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`U.S. 1, 17–18 (1966) (“the Graham factors”).
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`
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`If the claimed subject matter cannot be fairly characterized as
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`involving the simple substitution of one known element for another or the
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`mere application of a known technique to a piece of prior art ready for the
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`improvement, a holding of obviousness can be based on a showing that
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`“there was an apparent reason to combine the known elements in the fashion
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`claimed.” KSR, 550 U.S. at 418. Such a showing requires “some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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`
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`Showing that a reference “could” have been modified, however, does
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`not demonstrate a motivation or rationale for making the modification or
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`combination. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
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`Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could
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`12
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`Patent No. 8,895,870 B2
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`have made but would have been motivated to make the combinations or
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`modifications of prior art to arrive at the claimed invention.”); InTouch
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`Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
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`Furthermore, a reference relied on must be considered as a whole. In re
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`Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within
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`the framework of section 103 to pick and choose from any one reference
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`only so much of it as will support a given position, to the exclusion of other
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`parts necessary to the full appreciation of what such reference fairly suggests
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`to one of ordinary skill in the art.” (citation and inner quotes omitted)).
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`2. Level of Skill
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`Petitioner contends a person or ordinary skill at the relevant time
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`frame (August 2010 or September 2009) would have had “at least a
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`Bachelor’s degree in electrical engineering or computer engineering, and
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`five years of experience working in the design of circuit board design and
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`resonant electrical interference of open circuits in the Hard Disk
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`Drive (HDD) industry or a Master’s degree in electrical engineering or
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`computer engineering, and two years of experience working in the design of
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`circuit boards for the HDD industry, including circuit board design and
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`resonant electrical interference of open circuits.” Pet. 19 (citing Coughlin I
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`Decl. ¶ 30). Patent Owner does not contest this definition in its Preliminary
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`Response or Response. Patent Owner’s expert, Dr. Tarnopolsky, however,
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`states a minor disagreement: “While I agree that engineers working in the
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`hard disk drive industry will have a general understanding of high-frequency
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`signal transmission, it would be highly unusual for such an individual to
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`dedicate years of their career working on ‘resonant electrical interference of
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`open circuits.’” Tarnopolsky Decl. ¶ 65. For purposes of this Decision, we
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`Patent No. 8,895,870 B2
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`adopt Petitioner’s formulation. However, we regard any differences with
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`Dr. Tarnpolsky’s definition as immaterial, for our decision would be the
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`same under either definition.
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`3. Claim 1 – Ishii and Zeng
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`Petitioner’s obviousness analysis for claim 1 relies on Ishii for all
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`elements of the claim except for the claimed geometry of the plating leads
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`(claim element [1d]). Pet. 32–39.
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`
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`Ishii generally relates to a method for producing a circuit board while
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`“preventing discoloration of a terminal portion” and “efficiently removing
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`static electricity charged on the wired board.” Ex. 1007 ¶ 8. Ishii discusses
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`the use of a plating lead that is connected to the circuit board’s conductive
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`pattern to facilitate electrolytic plating. Id. ¶¶ 45–46. Once the circuit board
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`is manufactured, perforated notches that traverse the portions where the
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`plating lead is branched allow most of the branched leads and the entire
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`“portion where the plating lead 9 is combined into one lead” to be removed.
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`Id. ¶ 65. This separation is illustrated by dotted line 24 in Figure 2 of Ishii,
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`presented here in a partial view annotated by Petitioner:
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`Pet. 35. Ex. 1007, Figure 2 (partial view annotated). Figure 2 of Ishii is an
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`enlarged view of suspension board with circuit 1, showing plating leads 9,
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`magnetic-head-side connecting terminals 7A, and external connecting
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`terminal portions 7B. Id. ¶¶ 24, 40–41.
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`
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`Petitioner relies on Zeng for the claimed plating lead configuration
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`missing from Ishii. Pet. 39–43. Zeng relates to an “integrated circuit
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`package that can be physically and electrically connected to a printed wiring
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`board.” Ex. 1006 ¶ 10. Zeng depicts “plating bars” with different
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`characteristics. For instance, Zeng’s Figure 3 (reproduced below from page
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`41 of the Petition, with Petitioner’s annotations) shows plating bar or tail
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`140A having wide section 1400 nearest contact terminal 130 and narrow
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`section 1410 extending from wide section 1400:
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`Patent No. 8,895,870 B2
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`Figure 3 from Zeng shows plating bar 140A connected to a transmission line
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`of a package substrate. Ex. 1006 ¶ 7. The figure above is annotated by
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`Petitioner to show the configuration of the plating lead or tail. Pet. 41.
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`
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`Zeng recognizes that plating bar resonance can interfere with
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`electrical transmissions. Ex. 1006 ¶ 13. In describing the lead configuration
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`of Figure 3, Zeng discloses this as one technique for shifting plating bar
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`resonance. Id. ¶ 14 (“One technique for shifting plating bar resonant
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`frequency to higher is to modify a characteristic impedance along the length
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`of the plating bar.”).
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`
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`Zeng presents two examples of plating bars or leads, designated 140A
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`and 140B. Id. ¶ 13. In these examples, plating lead 140A is longer than
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`plating lead 140B. Id. According to Zeng, “[r]epresentatively, plating bar
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`140A having a physical length of several millimeters presents concerns over
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`resonance at frequencies of several gigahertz (GHz) compared to a plating
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`16
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`Patent No. 8,895,870 B2
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`bar 140B having a representative physical length less than one millimeter.”
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`Id.
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`
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`We have considered Petitioner’s element-by-element analysis of claim
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`1 in light of the Ishii-Zeng combination. Pet. 33–42. For the reasons that
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`follow, we are not persuaded that Petitioner has presented a sufficient
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`rationale under KSR for combining the references. See id. 42–43.
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`
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`Initially, Petitioner asserted that “[a] person of ordinary skill in the art
`
`would know that the open ended leads on the suspension board would be
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`liable to cause resonant interference.” Id. at 42 (citing Coughlin I Decl.
`
`¶ 116). Further, Petitioner asserted: “Thus, a person of ordinary skill in the
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`art – wishing to reduce the resonant interference of Ishii’s plating leads –
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`would combine these references to make a suspension board with plating
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`leads that are wider closer to the terminals as in claim 1.” Id.
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`
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`Patent Owner’s response focuses on the fact that, in Ishii, the plating
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`leads are attached to “magnetic head-side connecting terminal portion 7A.”
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`PO Resp. 13. Patent Owner presents a convincing argument, supported by
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`credible expert testimony, that “[l]eaving any substantial portion of the
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`plating lead in place after manufacturing—as would be necessary to graft
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`Zeng’s leads onto Ishii—would have a significant, detrimental impact on the
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`ability of the slider to maintain the proper flying attitude (and thus the hard
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`disk drive to operate).” Id. at 14 (citing Tarnopolsky Decl. ¶¶ 93–94, 123–
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`124; 133–134). We find that this consideration would have led a person of
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`ordinary skill to conclude that, in removing the plating leads, one should
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`endeavor to make the remaining stubs as short as possible. According to
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`Zeng’s teaching, this would greatly reduce, if not eliminate, the need for a
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`modified lead structure to avoid resonance problems. Tarnopolsky Decl.
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`¶¶ 135–137. As Dr. Tarnopolsky testifies, “Ishii’s plating leads are attached
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`to the head-side terminal and are designed to be removed. One of ordinary
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`skill in the art would recognize that this lead removal already eliminates
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`detrimental signal reflections.” Id. ¶ 120. Moreover, we find that providing
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`an additional lead structure on the head-side of Ishii’s board would have
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`been avoided because it would lead to problems maintaining the proper
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`flying attitude of the head. Id. ¶¶ 120–123, 126–129. Further, we determine
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`that Zeng confirms that short leads are not susceptible to resonance
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`problems. See discussion supra; see also Tarnopolsky Decl. ¶ 102;
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`Tarnopolsky Dep. 142:23–143:1.
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`
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`We have considered Petitioner’s responses and do not find them
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`convincing. Pet. Reply 3–5. Petitioner argues, first, that Ishii’s Figure 2
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`“expressly teaches that a length of the plating lead is present after Ishii’s
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`tearing along perforated notch line 24.” To illustrate this point, Petitioner
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`presents an annotated portion of Ishii’s Figure 2:
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`
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`Pet. Reply 2. The above figure is a portion of Ishii’s Figure 2, annotated by
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`Petitioner to show magnetic-head-end terminals 7A, dotted tear line 24, and
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`remainder of plating lead 9 of unspecified length. Petitioner argues: “What
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`remains of plating lead 9 may still present a resonance problem in need of
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`the solution of Zeng.” Id. at 3.
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`Patent No. 8,895,870 B2
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`
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`Petitioner provides no persuasive support for this statement. Neither
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`the figure itself nor its description in Ishii provides dimensions. When a
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`reference does not disclose that the drawings are to scale and is silent as to
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`dimensions, arguments based on measurement of the drawing features are of
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`little value. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951,
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`956 (Fed. Cir. 2000). Without such information, we are not persuaded by
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`Petitioner’s argument that the length of the plating lead that remains in Ishii
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`would present a resonance problem. The evidence supports the opposite
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`conclusion. According to Dr. Tarnopolsky, “[o]ne of ordinary skill in the art
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`would understand that no circuit portions should remain dangling beyond the
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`heads-side terminals 7A [of Ishii]. . . . Any remnants of the plating leads 9,
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`except for micrometric-length elements, attached to the head side terminals
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`would interfere with the flying attitude of the slider.” Tarnopolsky Decl. ¶
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`93. Further, “[o]ne of ordinary skill in the art would recognize that this lead
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`removal already eliminates detrimental signal reflections.” Id. ¶ 120.
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`
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`Petitioner goes on to argue that a person of ordinary skill “would be
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`motivated to connect the plating leads [in Ishii] to the non-head (preamp)
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`side of the circuit board, and then change their dimensions (as disclosed in
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`Zeng) to avoid interference, rather than undergoing the expensive process of
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`removing them from the head side.” Pet. Reply 3–4. Petitioner argues that
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`changing Ishii’s circuit patterns “requires a few mouse clicks” on design
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`software. Id. at 4–5. In support of this assertion, Petitioner relies on expert
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`testimony from Dr. Coughlin. Coughlin II Decl. ¶¶ 57–59. Dr. Coughlin
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`testifies that connecting Ishii’s plating leads to the non-head side terminals
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`of Ishii would be a “simple design change.” Id. ¶ 57. However, he provides
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`us with no details or persuasive evidence to support this statement. He
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`further testifies that such a redesign “would take very minimal effort.” Id. ¶
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`59. But again, he provides no persuasive evidence or details to support this
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`conclusion.
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`
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`We are not convinced by this conclusory testimony from Dr.
`
`Coughlin. We have broad discretion to assign weight to be accorded witness
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`testimony. In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368
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`(Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir.
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`2003). We give little weight to an expert opinion that does not disclose the
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`underlying facts or data on which the opinion is based. 37 C.F.R. § 42.65.
`
`
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`Beyond those considerations, however, Petitioner’s rationale for
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`combining Ishii and Zeng fails for other reasons. Petitioner’s newest
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`argument, in its Reply, apparently embraces Patent Owner’s assertion that a
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`skilled artisan practicing the teachings of Ishii would have endeavored to
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`remove as much as possible of the plating leads. Pet. Reply 4. This,
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`however, only reinforces Patent Owner’s argument, supported by Dr.
`
`Tarnopolsky’s testimony, that there would have been no reason to combine
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`the references because interference due to resonance was already avoided.
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`See supra.
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`
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`Moreover, as confirmed by Dr. Coughlin’s testimony, Petitioner’s
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`argument would require a redesign of Ishii to change the location of the
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`plating leads. Such hindsight reconstructions of prior art to prove
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`obviousness have been rejected by the Federal Circuit. See, e.g., Panduit
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`Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1572 (Fed. Cir. 1987) (“In
`
`viewing the prior art, the district court improperly treated all cable ties as
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`virtually interchangeable (after hearing all about Caveney’s inventions and
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`Case IPR2017-01421
`Patent No. 8,895,870 B2
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`then viewing the ease with which creative defense counsel reconstructed the
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`prior art at his easel).”).
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`
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`For the foregoing reasons, we are persuaded that Petitioner has failed
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`to demonstrate that claim 1 would have been obvious over Ishii and Zeng.2
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`
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`
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`4. Claim 4 – Ishii, Chou, and Kuzawinski
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`Petitioner contends Ishii describes all of the elements of claim 4,
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`except for a cover layer over the plating leads (recited in element [4c]) –
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`which is taught by Chou – and the claimed geometry of the plating leads
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`(claim element [4d]) – which is taught by Kuzawinski. Pet. 52–62.
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`
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`Chou discloses that a conventional circuit board may include an
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`insulating protective layer formed on the surfaces of the electroplating
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`conductive wires. Ex. 1008 ¶ 6.
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`
`
`Kuzawinski is titled “Plating Tail Design for IC Packages.” The
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`patent addresses the field of packaging integrated circuits (ICs). Ex. 1005,
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`1:5–7. Kuzawinski recognizes the electrical interference problem created by
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`plating tails:
`
`there can be a
`In high-frequency (high-speed) circuits,
`significant problem resulting from plating tails, in that the
`signal can reflect off the end of the tail or a step in the tail and
`then interfere with an IC, e.g. by canceling the desired signal.
`
`
`2 Patent Owner does not address the “Graham Factors,” except in a footnote.
`PO Resp. 19 n.2. Patent Owner asserts there was “industry praise” for its
`flexures, “some of which embody the claimed subject matter.” However,
`this assertion is not supported by any evidence establishing a nexus with the
`claimed invention. Likewise, a cited 2016 press release (Ex. 2003),
`recognizing Patent Owner as a “top 100 global innovator,” does not refer to
`any specific products. Moreover, Patent Owner establishes no nexus
`between the cited SEC disclosure documents (Ex. 2004, 2005) relating to
`Petitioner’s financial performance and the merits of Patent Owner’s
`invention.
`
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`Patent No. 8,895,870 B2
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`Id. at 1:21–25. Kuzawinski further recognizes that “[a] common solution to
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`this problem is to remove all or most of the tail.” Id. at 1:26–27.
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`Kuzawinski describes the invention disclosed as an alternative solution,
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`involving “the alteration of a transverse dimension of a plating tail to alter its
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`characteristic impedance.” Id. at 1:47–49.
`
`
`
`Kuzawinski describes two separate embodiments. In one, the
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`substrate has multiple layers, illustrated in Figure 1 following:
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`Ex. 1005, Fig. 1. Figure 1 of Kuzawinski is an exploded view of a substrate
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`for supporting IC 10 having multiple layers. The Figure shows contact pad
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`18, signal trace 15, stub 20, and plating tail 36. Via 30 connects plating tail
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`36 to stub 20, which, in turn, is connected to pad 18. Id. at 2:5–15.
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`
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`Kuzawinski explains that plating tail 36 has a characteristic
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`impedance at the operating frequency of the signals carried by trace 15 that
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`is determined by the cross section of the tail and the thickness 122-1 of the
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`dielectric between tail 36 and the adjacent plane 120-2. Id. To avoid
`
`interference, the impedance of tail 36 is changed from the impedance used
`
`elsewhere in the apparatus (for example 50 ohms) to a value that is
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`sufficiently different that the signal will be reflected as though it were an
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`open circuit (i.e., the portion of the signal that travels down via 30 will be
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`reflected back with the same polarity and a reduced amplitude). Id. at 2:25–
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`31. One way of accomplishing this is to set the transverse dimensions of tail
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`36 by increasing the width substantially from the standard trace width. Id. at
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`2:59–62.
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`
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`In the second Kuzawinski embodiment, depicted in Figure 2 and
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`described as “alternative,” the substrate has plating tail 36 removed before
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`the two layers are bonded together to form a substrate. Id. at 3:11–17.
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`
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`Claim 4 of the ’870 patent requires that “each of said plurality of lead
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`wires for plating has a uniform width along a length extending from each
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`first electrode pad to an edge of the suspension body.