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
`
`_________________
`
`Case IPR2017-01422
`U.S. Patent No. 6,841,737
`
`Wired Circuit Board
`
`Filed on July 16, 2002
`Issued on January 11, 2005
`_________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37. C.F.R. § 42.107
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`Hutchinson Technology Incorporated
`Hutchinson Technology Operations (Thailand) Co., Ltd.
`Petitioners
`
`v.
`
`Nitto Denko Corporation
`Patent Owner
`
`_________________
`
`Case IPR2017-01422
`U.S. Patent No. 6,841,737
`
`Wired Circuit Board
`
`Filed on July 16, 2002
`Issued on January 11, 2005
`_________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37. C.F.R. § 42.107
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. OVERVIEW OF THE ’737 PATENT ......................................................... 3
`III. SUMMARY OF REFERENCES IDENTIFIED BY PETITIONER ........ 8
`A. Ohkawa ................................................................................................. 8
`B. Maeda .................................................................................................10
`C. AAPA ..................................................................................................11
`IV. CLAIM CONSTRUCTION ........................................................................ 11
`V.
`PATENT OWNER HAS NOT ESTABLISHED THAT IT HAS A
`REASONABLE LIKELIHOOD OF SUCCESS ...................................... 12
`A.
`Purported Obviousness over Ohkawa Combined with Maeda
`(Ground 1) ..........................................................................................12
`1.
`Petitioner Failed to Provide an Articulated Reasoning of
`Why One of Skill Would Combine Ohkawa with Maeda to
`Arrive at the Claimed Subject Matter ..................................13
`Failure of Proof In Connection With Claims 3, 4, and 5 ....21
`2.
`Purported Obviousness over Ohkawa Combined with AAPA
`(Ground 2) ..........................................................................................23
`VI. CONCLUSION ............................................................................................ 24
`
`B.
`
`-i-
`
`
`
`I.
`
`INTRODUCTION
`
`The ‘737 patent is directed to an improved “flying lead” for use with a
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`flexible circuit board that connects the read/write head of a hard disk drive to other
`
`electronic components. A “flying lead” is a type of terminal that allows for the
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`connection of electrical components to the board. Unlike a traditional terminal that
`
`is only accessible from the board’s top, a flying lead is not covered by insulating
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`material from either above or below. Thus, it is exposed, open, and accessible both
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`from the top and bottom of a circuit board. This type of lead allows for a higher
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`density of components, and facilitates the use of ultrasonic vibrations to bond
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`components to the terminal. Use of ultrasonic bonding is highly beneficial because
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`it directly bonds circuit components without the addition of solder, flux, or
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`application of heat, and it does not require additional cleaning processes. This
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`reduces costly processing steps during manufacture. It is also faster, safer, and
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`produces a stronger bond than other component attachment methods.
`
`The inventors of the ’737 patent recognized that the application of ultrasonic
`
`vibrations to a flying lead presents a problem. In particular, because the lead is
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`exposed and not supported from below by insulating material, it is structurally
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`weak at the point where the lead’s conductive material intersects with the edges of
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`the opening in the surrounding insulating and supporting layers. To solve this
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`problem, the ’737 patent discloses the use of various different reinforcements. In
`
`-1-
`
`
`
`one embodiment, the lead’s conductive material includes “widened portions” at the
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`edge of the insulation openings. In another embodiment, the insulating layers
`
`include “projections” that extend into the opening over the lead’s conductive
`
`material.
`
`Petitioner argues that the ’737 patent would have been obvious over two
`
`combinations of prior art: Ohkawa combined with Maeda, or purported admitted
`
`prior art (“AAPA”) combined with Maeda. But, these arguments are not supported
`
`with evidence. Ohkawa and the AAPA do relate to typical flying leads. Neither,
`
`however, discloses any form of reinforcement. In fact, neither reference even
`
`recognizes that it was known that flying leads may be susceptible to structural
`
`weakness. Petitioner ignores this and simply assumes that one of ordinary skill
`
`would know that the flying leads of Ohkawa and the AAPA were in need of
`
`improvement.
`
`Further, even if Petitioner had presented evidence showing a known problem
`
`with Ohkawa and the AAPA, one of ordinary skill in the art would not have looked
`
`to Maeda. Maeda’s figures bear some slight visual similarity to the figures of
`
`the ’737 patent. But, this is where the similarity ends. Maeda does not relate to
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`flying leads, or the possible breakage that could occur if such a lead is strained by
`
`ultrasonic vibrations. Instead, all that Maeda discusses is a standard terminal that
`
`is only open from above and is completely supported from below by a “substrate
`
`-2-
`
`
`
`main body.” And, rather than discussing the attachment of components to a
`
`terminal using ultrasonic vibrations, Maeda only discusses the use of soldering
`
`which results in the application of heat to a large swath of a circuit board. Indeed,
`
`Maeda’s leads are specifically designed to withstand the thermal expansion
`
`resulting from the heat of the soldering process. One of ordinary skill in the art
`
`would not consider Maeda’s solutions to problems arising from solder-bonding
`
`standard terminals to be of any pertinence to Ohkawa or the AAPA.
`
`In sum, rather than presenting actual evidence, Petitioner has simply pointed
`
`to the collection of elements required by the ’737 patent’s claims in different,
`
`unrelated references. Petitioner and its expert then conclusorily assume that
`
`because the inventors of the ’737 patent were able to develop a reinforced flying
`
`lead, one of skill in the art as of the patent’s filing would have been able to do the
`
`same. But, the law is clear: neither the ’737 patent nor conclusory expert
`
`testimony can supply Petitioner with the articulated reasoning and rational
`
`underpinning needed to establish obviousness.
`
`II. OVERVIEW OF THE ’737 PATENT
`
`The ’737 patent (Ex. 1001), entitled “Wired Circuit Board,” was filed July
`
`16, 2002 as U.S. App. 10/195392 and claims priority to JP 2001-216812, filed on
`
`July 17, 2001. Makoto Komatsubara, Shigenori Morita, Tadao Ookawa and
`
`Toshio Shintani are the patent’s inventors. The ’737 patent is generally directed to
`
`-3-
`
`
`
`“a wired circuit board” that includes an exposed conductive pattern known as a
`
`“flying lead.” (Ex. 1001, ’737 patent at 1:45-61.)
`
`A conventional wired circuit board includes a lower supporting board, an
`
`insulating material formed on the supporting board, a conductive pattern for
`
`transmission of electrical signals formed on the insulating material, and a further
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`cover layer of an insulating material to protect the conductive pattern. (See id. at
`
`1:26-32) Such a wired circuit board also includes a number of exposed terminals
`
`not covered by insulation that allow for the attachment of electrical components to
`
`the board. (Id. at 1:14-16.)
`
`Numerous types of terminals are known in the art. A standard terminal can
`
`be formed by leaving open the upper insulating layer above the conductive pattern.
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`(See id. at 1:17-19.) This type of terminal is electrically accessible only from one
`
`side of the circuit board. (See id.) Another type of terminal—known as a “flying
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`lead”—is formed by making openings in the insulation and exposing the
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`conductive pattern on both sides of the board. (Id.) A “flying lead” can be
`
`beneficially used with circuit boards having “higher density and reduced size.”
`
`(Id. at 1:19-22.)
`
`Figure 21a of the ’737 patent provides a side view of an example “flying
`
`lead.” Figure 21b provides a top view of the same lead:
`
`-4-
`
`
`
`(Id. at Fig. 21.) As shown, “a cover layer 4 of an insulating material” is open on
`
`the top side of the circuit board. (Id. at 1:34-35.) This exposes “a front side of
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`conductive pattern 3,” which is coated with an electrically conductive “metal
`
`plated layer[] 6” to form the upper portion of the terminal. (Id.; see also 1:37-40.)
`
`Further, “supporting board 1 and the base layer 2 are” also “opened to expose a
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`back side of the conductive pattern 3,” which is coated with another “metal plated
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`layer[] 6.” (Id. at 1:35-37.) This results in exposed “terminal portions 5 … on
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`both sides” of the circuit board. (Id. at 1:32-33.) Then, other electrical
`
`components can be connected to one side of the terminals of a flying lead by
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`“applying supersonic vibration thereto by use of a bonding tool and the like.” (Id.
`
`at 1:41-44.) The other side of the terminals allows an ultrasonic transducer to
`
`directly contact the terminals and transfer ultrasonic energy to the terminals
`
`without attenuation by any intervening layers. (Id. at 1:45-47).
`
`-5-
`
`
`
`While the use of “flying leads” makes it easier to access and attach
`
`components to a circuit board’s terminals using supersonic vibrations, the
`
`inventors of the ’737 patent recognized an issue. In particular, because the
`
`“conductive pattern[s]” are not supported and are instead “exposed at both sides,”
`
`they are “weak in physical strength” and are “subject to stress concentration at
`
`edge portions of the openings in the base layer and cover layer.” (Id. at 1:49-53.)
`
`This can result in a “disconnection of the conductive pattern” when supersonic
`
`vibrations are applied. (Id. at 1:53.)
`
`To address this problem, the ’737 patent discloses and claims a “new wired
`
`circuit board having a terminal portion formed as a flying lead” that has “enhanced
`
`strength.” (Id. at 1:56-59.) This enhanced strength is achieved by providing the
`
`conductive pattern that forms the terminal or the portions of the insulating layers
`
`surrounding the pattern with a particular “reinforcing” shape. (See id. at 1:62-2:7.)
`
`Two such flying lead reinforcements are at issue in this proceeding. First, as
`
`required by claims 3 and 4, the flying lead can be reinforced by using a
`
`“conductive pattern” with “widened portions” that “extend in a widthwise
`
`direction” in “crossing areas where ends of the opening and the conductive pattern
`
`cross each other.” (Id. at claims 1, 3, 4 and 6.) This is generally shown in Figure 2
`
`of the ’737 patent:
`
`-6-
`
`
`
`(Id. at Fig. 2; see also id. at 7:37-8:13.) As can be seen, the terminal’s conductive
`
`pattern 13 has a “widened portion 22” that has a “width[] larger than the usual
`
`width” of the remainder of the conductive pattern.” (Id. at 8:9-13.)
`
`Second, as required by claim 6, “at least one of the first insulating layer and
`
`the second insulating layer” can be formed with “projections projecting from ends
`
`of the opening onto the conductive pattern in the opening in the crossing areas
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`where the ends of the opening and the conductive pattern cross each other.” (Id. at
`
`claim 6.) This is generally shown in Figure 5:
`
`(Id. at Fig. 5; see also 8:45-9:44.) As shown in this Figure, “cover-side projections
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`25” (and matching “base-side projections 26”) “overlap with the line[]” of
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`conducting wire 13. (Id. at 9:28-34.)
`
`-7-
`
`
`
`One other independent claim—claim 1—is at issue here. This claim
`
`embraces using either of the two types of reinforcements set forth above. (See id.
`
`at claim 1.)
`
`III.
`
`SUMMARY OF REFERENCES IDENTIFIED BY PETITIONER
`
`Petitioner relies on a collection of prior art references, including C.N. Patent
`
`App. Pub. 1297224 to Ohkawa et al. (“Ohkawa,” Ex. 1004 and 1005), J.P. Patent
`
`App. Pub. H8-162724 to Maeda et al. (“Maeda,” Ex. 1006 and 1007), and certain
`
`material set forth in the “Background” section of the ’737 patent that petitioner
`
`identifies as Applicant Admitted Prior Art (“AAPA”). Each of these references is
`
`discussed below.
`
`A.
`
`Ohkawa
`
` Ohkawa generally relates to a “suspension board with circuit” for use in a
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`“hard disk drive[].” (Ex. 1005, Ohkawa at 1:4-5.) Ohkawa first discusses a
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`“typical” circuit board that includes a “stainless steel” supporting layer, a “base
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`layer … of insulating material,” “a conductive layer … in the form of a particular
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`circuit pattern,” and another insulating “cover layer.” (Id. at 1:15-18.) An
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`“external connection terminal 5” is formed on the top of the board by omitting a
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`portion of the insulating cover layer. (Id. at 1:18-25.) This typical circuit board is
`
`shown in Figure 21.
`
`-8-
`
`
`
`Ohkawa goes on to explain that electronics can be connected to the terminal
`
`5 using “ultrasonic vibration applied from outside of the metal support board 1.”
`
`(Id. at 1:24-27.) But, since the vibrations need to pass all the way through the
`
`metal supporting base, the insulation, the conductive layer, and an electroplated
`
`layer, “the intensity of the attenuated vibration sometimes is insufficient to cause
`
`the terminals to be bonded together.” (Id. at 1:28-34.)
`
`To address this, Ohkawa describes “suspension board with circuit” with a
`
`typical flying lead terminal that improves “bonding reliability.” (Id. at 1:40-42.)
`
`Ohkawa’s flying lead that has both an “opening” in the upper “cover layer” and
`
`another opening in the lower “suspension board.” (Id. at 5:10-15.) This, as shown
`
`in Figure 2, results in a terminal that is open both from the top and bottom of the
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`circuit board. (Id. at Fig. 2.) Then, when “ultrasonic vibration” is applied to the
`
`lead, it passes directly to the conductive layer 14 and the electroplating 19 without
`
`having to pass through other, lower supporting layers. (See id. at 12:3-10.) This in
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`turn results in the desired “improved bonding reliability” between the terminal and
`
`any attached electronics. (Id. at 12:8-10.)
`
`Ohkawa, however, does not mention that flying leads may experience
`
`structural weakness at the point where the exposed conductive material crosses the
`
`boundary of the opening in the insulating layer. And, Ohkawa does not propose,
`
`-9-
`
`
`
`teach, or recognize that a flying lead should be reinforced by modifying the shape
`
`of either the conducting material or the surrounding insulating layers.
`
`B. Maeda
`
`Maeda is directed to a “printed substrate able to withstand heat treatments.”
`
`(Ex. 1007, Maeda at ¶ [0004].) As shown in Figure 2, Maeda’s printed substrate
`
`includes a “conductive pattern 2,” which is formed on the “substrate main body 1”,
`
`and an “insulating resist layer 3” which is substantially formed on the “substrate
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`main body 1” and partially formed on top of the conductive pattern. (Id. at ¶
`
`[0008]; see also Fig. 2.) Maeda identifies item 2a in the Figure as a “land for
`
`soldering” other electronic components onto Maeda’s circuit. (Id.) Thus, unlike
`
`Ohkawa, Maeda does not discuss the use of bonding using ultrasonic vibrations.
`
`Instead, it only discusses the connection of other components to its circuit using a
`
`soldering process. Further, unlike Ohkawa, Maeda does not discuss flying leads.
`
`There is no opening under its conductive pattern.
`
`Maeda goes on to explain that the “coefficient of linear expansion” of the
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`“substrate main body 1,” “circuit pattern 2,” and “resist 3” are all different. (Id. at
`
`¶ [0003].) Thus, according to Maeda, soldering can result in “[t]hermal damage of
`
`the circuit pattern 2.” (Id. at ¶ [0009].) This thermal damage is purportedly
`
`focused at the point where the differently expanding main body 1, circuit pattern 2,
`
`and resist 3 intersect. (Id.) To remedy this, Maeda notes that “the width of the
`
`-10-
`
`
`
`circuit patterns 2 is increased in the vicinity of the boundary line” of the opening in
`
`the resist. (Id.) Alternatively, “the shape of the resist can be modified.” (Id. at ¶
`
`[0011].)
`
`C.
`
`AAPA
`
`The AAPA identified by Petitioner is a typical flying-lead terminal that is
`
`depicted by Figure 21 of the ’737 patent. (See Petition at 57-58.) As shown in Fig.
`
`21, the flying lead does not include any reinforcing structures. Its conductive
`
`traces are uniform in size and shape, and its insulating layers do not project into the
`
`opening over the conductive traces to provide support. Further, Patent Owner has
`
`not (and does not) admit that there was a known problem regarding the strength
`
`and stability of such a flying lead. As discussed in further detail below, it was the
`
`inventors who recognized that flying leads has shortcomings, which they addressed
`
`by their invention.
`
`IV. CLAIM CONSTRUCTION
`
`While Petitioner includes a discussion of the meaning of certain of the ’737
`
`patent’s claim terms, Patent Owner is of the view that all the claim elements
`
`Petitioner discusses (and those it did not) can be afforded their plain and ordinary
`
`meaning.
`
`-11-
`
`
`
`V.
`
`PATENT OWNER HAS NOT ESTABLISHED A REASONABLE
`LIKELIHOOD OF SUCCESS
`
`Neither Ohkawa and Maeda nor the AAPA and Maeda render the ’737
`
`patent’s claims obvious.
`
`A.
`
`Purported Obviousness over Ohkawa Combined with Maeda
`(Ground 1)
`
`Petitioner argues that the combination of Ohkawa and Maeda renders claims
`
`1-7 of the ’737 patent obvious. (See Petition at 10.) Petitioner concedes that
`
`Ohkawa fails to disclose the “reinforcing portions” of claims 1 and 2, the
`
`“conductive pattern” with “widened portions” of claims 3, 4, and 5, and the
`
`“insulating layer” with “projections” of claims 6 and 7. (Id. at 37, 44, 49, 52)
`
`But, it nonetheless argues that it would have been obvious to modify Ohkawa’s
`
`leads to include the structure required by the claims in view of Maeda. (See id.)
`
`Petitioner has failed to come forward with any evidence at all showing that
`
`one of ordinary skill in the art would have even recognized that Ohkawa’s leads
`
`were in need of reinforcement. And, even if one of skill were seeking to improve
`
`upon Ohkawa, Maeda provides no useful insight. It also fails to disclose all that is
`
`required by certain of the ’737 patent’s claims.
`
`-12-
`
`
`
`1.
`
`Petitioner Failed to Provide an Articulated Reasoning of
`Why One of Skill Would Combine Ohkawa with Maeda to
`Arrive at the Claimed Subject Matter
`
`When assessing whether a patent claim is obvious, “[c]are must be taken to
`
`avoid hindsight reconstruction by using the patent in suit as a guide through the
`
`maze of prior art references, combining the right references in the right way so as
`
`to achieve the result of the claims in suit.” In re NTP, Inc., 654 F. 3d 1279, 1299
`
`(Fed. Cir. 2011). It is not sufficient for a patent challenger to simply point to
`
`“prior art corollaries for the claimed elements” with no further explanation. In re
`
`Rouffett, 149 F.3d 1350, 1357 (Fed. Cir. 1998). Instead, “there must be some
`
`articulated reasoning with some rational underpinning to support the legal
`
`conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`
`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner has failed to
`
`provide such reasoning here. Instead, it simply points to different references that
`
`purportedly disclose all the limitations required by the ’737 patent’s claims and
`
`then conclusorily states that it would have been “obvious” to combine the
`
`references.
`
`a.
`
`Petitioner Has Not Established That One of Ordinary
`Skill in the Art Would Even Consider Modifying
`Ohkawa
`
`The entirety of Petitioner’s “evidence” regarding why it would have been
`
`obvious to combine Ohkawa and Maeda can be found on pages 41 and 42 of its
`
`-13-
`
`
`
`petition. Here, Petitioner first argues that “[a] person of ordinary skill in the art …
`
`would know that the external connection terminal 17 of Ohkawa … is susceptible
`
`to breaking (damage) … caused by stress concentrations.” (Petition at 41.) But,
`
`Petitioner has not presented any evidence showing that one of skill would actually
`
`have possessed such knowledge. Petitioner does cite to its expert, but the cited
`
`paragraph largely repeat the text of the petition. (Compare Petition at 41 with Ex.
`
`1011 at ¶ 104.) “Conclusory assertions by Petitioner, merely repeated in
`
`conclusory and unsupported statements by an expert witness in support, are not
`
`persuasive….” Coalition for Affordable Drugs VII LLC v. Pozen Inc., Case
`
`IPR2015-01680, Paper 18 at 15 (Feb. 11, 2016).
`
`Next, while Petitioner’s expert states that “both Maeda and the ’737 patent”
`
`recognize that structural weakness of flying leads was “a known problem,” this is
`
`simply wrong. Maeda does not relate to flying leads. Thus, it cannot possibly
`
`provide evidence that there was a “known problems” with this type of terminal.
`
`And, while the ’737 patent inventors themselves recognized that flying leads are
`
`susceptible to breaking, this is not evidence that others were also aware of this.
`
`The ’737 patent does include a section entitled “Description of the Prior Art” that
`
`discusses flying leads. (See Ex. 1001, ’737 patent at 1:13-53.) But, this does not
`
`automatically convert everything discussed in the section into admitted prior art.
`
`See In re Nomiya, 509 F.2d 566, 571-72 (CCPA 1975) (noting that the structure of
`
`-14-
`
`
`
`a particular piece of electronics described in a patent’s “Description of the Prior
`
`Art” section was admitted prior art, but the characteristics of that same piece of
`
`electronics described in the same section were not). Instead, “[i]t is necessary to
`
`consider everything [the inventors] have said about what is prior art to determine
`
`the exact scope of their admission.” Id. at 571.
`
`The ’737 patent’s Description of the Prior Art” section explains that flying
`
`leads are in “wide-spread use.” (Ex. 1001, ’737 patent at 1:17-20.) Then, with
`
`reference to Figure 21, the section details the structure of a typical flying lead.
`
`(See id. at 1:25-40.) This is what constitutes prior art: the existence and structure
`
`of the flying lead shown in Figure 21. While the section ends with a discussion of
`
`one “disadvantage” of flying leads (structural weakness), the ’737 patent never
`
`states that this disadvantage was known to anyone besides the inventors. (Id. at
`
`1:45-53.) Instead, this is simply the inventors’ own assessment of the
`
`shortcomings of the prior art, and their own personal motivation for developing the
`
`subject matter set forth in the rest of the patent. One cannot “read obviousness into
`
`an invention on the basis of the [inventor’s] own statements; that is, ... the prior art
`
`[must be viewed] without reading into that art [inventor’s] teachings.” In re
`
`Nomiya, 509 F.2d at 571 (quoting In re Sponnoble, 405 F.2d 578, 585 (CCPA
`
`1969). But, that is exactly what Petitioner does here. It argues that because the
`
`inventors of the ’737 patent themselves recognized an issue with flying leads,
`
`-15-
`
`
`
`others of ordinary skill in the art, without the benefit of the teachings of the ‘737
`
`patent, would have somehow recognized this same issue and modified Ohkawa.
`
`Finally, further weighing against Petitioner’s arguments that there was a
`
`“known” problem with flying leads, Ohkawa itself fails to recognize that its flying
`
`leads are structurally weak and could benefit from reinforcement. Indeed, despite
`
`the fact that it subjects its leads to the strains of both an “ultrasonic-bonding
`
`device” to attach components and a “tensile-strength testing machine” that
`
`“bend[s]” its board, Ohkawa says nothing about the possibility that its leads may
`
`break. (Ex. 1005, Ohkawa at 17:1-25.)
`
`In sum, Petitioner’s entire obviousness analysis is premised on an
`
`assumption that one of skill would somehow have known that the flying lead of
`
`Ohkawa was structurally weak and in need of improvement. But, it has presented
`
`no evidence—beyond the conclusory testimony of its expert—showing this.
`
`Further, and even more problematically, Petitioner uses the ’737 patent itself to
`
`supply the otherwise missing reason for combining the elements of different prior
`
`art references. This is classic hindsight. Petitioner was required to identify a
`
`basis—in the prior art, not the ’737 patent—for combining the prior art. It has not
`
`even begun to do so.
`
`-16-
`
`
`
`a.
`
`Petitioner Ignores the Differences Between Ohkawa
`and Maeda
`
`After a discussion of purportedly “known” problems with flying leads
`
`(which again is not supported by any actual evidence), Petitioner goes on to state
`
`that “[a] POSITA would be … motivated to combine Ohkawa and Maeda because
`
`a POSITA would recognize that they both experience identical problems in
`
`bonding terminals of wired circuit boards using heat soldering….” (Petition at 41.)
`
`This is a gross misstatement of both Maeda’s and Ohkawa’s disclosures, and is
`
`indeed a flatly false statement of Ohkawa, which has nothing to do with soldering.
`
`Heat soldering also has nothing to do with the ‘737 patent. Any alleged
`
`motivations relating to heat soldering cannot support a finding of obviousness.
`
`Maeda relates exclusively to attachment of electrical components to a
`
`standard circuit board terminal via soldering, a high-temperature process where
`
`heat is applied to the terminal area of a circuit board resulting in detrimental
`
`thermal expansion of the board’s various different layers. (Ex. 1007, Maeda at ¶
`
`[0008]; see also Fig. 2.) Maeda does not discuss flying leads, or the attachment of
`
`components to a terminal using ultrasonic vibrations, a bonding method that
`
`produces only localized, focused strain. Maeda’s terminals are not open from
`
`below, and rest on top of an insulating substrate. Maeda does state that its
`
`conductive pattern should be shaped in a particular way. But, Maeda employs this
`
`shape only to avoid the “[t]hermal damage” resulting from the different
`
`-17-
`
`
`
`“coefficient of linear expansion” of its conductive material, base insulating layer,
`
`and cover insulation. (Id. at ¶¶ [0003], [0009].)
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`Unlike Maeda, Ohkawa relates only to flying leads. Thus, Ohkawa’s
`
`terminals are not supported from below by a base insulating layer like the terminals
`
`shown in Maeda. And, Ohkawa states that electronics are to be connected to its
`
`terminals using ultrasonic vibrations, which is a process without the application of
`
`solder, flux, or direct heat sources that does not have issues associated with thermal
`
`expansion. (Ex. 1005, Ohkawa at 1:24-27.) Indeed, that is the entire point of
`
`Ohkawa: its flying lead terminals are specifically designed without a supporting
`
`base to provide “improved bonding reliability” when ultrasonic vibrations are used
`
`to attach electronic components to the terminal. (Id. at 12:8-10.) Ohkawa does
`
`not discuss, suggest, or teach the use of soldering to connect components to its
`
`circuit board. Thus, one of ordinary skill in the art reading Ohkawa would have no
`
`reason to look to a prior art patent like Maeda that discloses conductive patterns
`
`specifically designed to deal with the “thermal damage” caused by soldering.
`
`And, even if one decided for some reason to solder components onto
`
`Ohkawa’s flying lead, Maeda would still be irrelevant. Maeda’s circuit patterns
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`sustain “thermal damage” because they are coextensive with and rest directly on
`
`top of a supporting base with a different coefficient of thermal expansion. (See Ex.
`
`1007, Maeda at ¶ [0003].) But, Ohkawa’s flying lead is not attached to or
`
`-18-
`
`
`
`supported from below by anything. Thus, it will not react in the same way as
`
`Maeda’s terminals when heated. Rather than being strained by the supporting
`
`layer of insulation, Ohkawa’s leads are unconstrained to expand and vibrate about
`
`the opening the insulation layer (much like an expansion joint in a bridge).
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`Next, even a cursory review of Maeda’s figures reveals that Maeda’s
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`terminal structure would not improve upon Ohkawa. Each of Maeda’s terminal
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`designs include a thin neck-like area between the portion where components are to
`
`be attached and the edge of the upper insulation. This is shown below in Figures 2
`
`and 4:
`
`(Ex. 1007, Maeda at Figs. 2, 4 (emphasis added). Again, Ohkawa’s flying lead
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`terminals are meant to facilitate the attachment of electrical components to the
`
`terminals using ultrasonic bonding, a process that applies ultrasonic vibrations to
`
`the center of an exposed lead and produces localized strain. (Ex. 1005, Ohkawa at
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`1:24-27.) While Maeda’s terminals may be able to deal with the effects of thermal
`
`-19-
`
`
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`expansion resulting from the application of heat to a large portion of a circuit
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`board, they would be useless when subjected to ultrasonic vibrations. The focused
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`strain caused by the vibrations could simply cause Maeda’s leads to snap at the
`
`narrow neck portion.
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`“It is impermissible within the framework of section 103 to pick and choose
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`from any one reference only so much of it as will support a given position to the
`
`exclusion of other parts necessary to the full appreciation of what such reference
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`fairly suggests to one of ordinary skill in the art.” Oracle Corp. v. Crossroads
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`Systems, Inc., IPR2014-01209, Paper 77 at 24 (Jan. 29, 2016) (quoting In re
`
`Wesslau, 353 F.2d 238, 241 (CCPA 1965)). An analysis “where relevant parts of
`
`the reference are disregarded for the proposed combination without sufficient
`
`explanation of why a person of ordinary skill would do so … is precisely the type
`
`of hindsight reasoning that must be rejected.” Id. at 26. But, this is what Petitioner
`
`does here. The two references do not relate to “identical” problems. Instead, when
`
`read in their entirety, it is apparent that, to the extent that Ohkawa even addresses
`
`any problems with bonding at all, they deal with completely different problems
`
`(solderless ultrasonic bonding with no direct heat sources in Ohkawa, vs. high-
`
`temperature solder bonding in Maeda).
`
`In sum, Petitioner’s obviousness arguments are premised on (1) an
`
`unsupported assumption that one of skill in the art would “know” of a problem
`
`-20-
`
`
`
`with Ohkawa and (2) an incorrect reading of the “problems” solved by Ohkawa
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`and Maeda. Petitioner provides no other reasons for combining the two references.
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`As a result, it has failed to meet its burden and has not established that there is a
`
`reasonable likelihood that claims 1-7 will be shown to be obvious.
`
`2.
`
`Failure of Proof In Connection With Claims 3, 4, and 5
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`In addition to failing to present evidence showing that Ohkawa and Maeda
`
`would have been combined by one of ordinary skill in the art, Petitioner has also
`
`not established that the references disclose all the limitations of claims 3, 4, and 5.
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`These claims all require the use of a “conductive pattern” that has “widened
`
`portions formed to extend in a widthwise direction” at the opening in the
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`“insulating layer[s].” According to Petitioner, Maeda discloses this claim
`
`element because it has “‘reinforced portions 2b’ in the form of ‘the width of the
`
`circuit patterns 2 is increased in the vicinity of the boundary line L.” (Petition at
`
`44.) This is not the claimed “widened portion.” As seen below, “reinforced
`
`portions 2b” in Maeda are no wider than the bulk of “circuit pattern 2”:
`
`-21-
`
`
`
`(Ex. 1007, Maeda at Fig. 2 (emphasis added).) Thus, rather than disclosing the
`
`claimed “widened portion,” Maeda only includes a narrow neck between item 2b
`
`and item 2a. Further, the “reinforced portions 2b” do not occur at an opening of
`
`the structure where a void occurs; instead, they are fully supported by the
`
`continuous “substrate main body 1.” Additionally, the limitations of claims 3, 4,
`
`and 5 do not require, as does Maeda, the widened “land 2a that is wider than the
`
`circuit pattern 2.”
`
`The ’737 patent’s specification confirms that Maeda’s “reinforced portions
`
`2b” do not satisfy the limitations of claims 3, 4, and 5. In particular, the ’737
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`patent notes that “[e]ach widened portion 22 is so formed that the maximum
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`widthwise length 23 is 1.1-4 times … as longer as the usual line width 24 of the
`
`lines of” the conductive wires. (Ex. 1001, ’737 patent 7:66-8:8 (emphasis added).)
`
`-22-
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`
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`Similarly, the patent notes that “[t]he widened portions 22 may be formed in any
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`shape … as long as they are shaped to protrude widthwise and have widths larger
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`than the usual width.” (Id.
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