Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Entered: October 12, 2017
`
`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 IPR2017-01422
`Patent 6,841,737
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`571-272-7822
`
`
`
`Paper 7
`Entered: October 12, 2017
`
`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 IPR2017-01422
`Patent 6,841,737
`____________
`
`
`
`Before THOMAS L. GIANNETTI, CHRISTA P. ZADO, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`I. INTRODUCTION
`
`Hutchinson Technology Incorporated and Hutchinson Technology
`Operations (Thailand) Co., Ltd. (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–7 of U.S. Patent No. 6,841,737 (Ex. 1001,
`“the ’737 patent”). Paper 2 (“Pet.”). Nitto Denko Corporation (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`
`review under 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the petition “shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we decline to institute an inter partes
`
`review of the ’737 patent.
`
`II. BACKGROUND
`
`A. The ’737 Patent
`
`The ‘737 patent is directed to an improved “flying lead” for use with a
`flexible circuit board that connects the read/write head of a hard disk drive to
`other electronic components. Prelim. Resp. 1. A “flying lead” is a type of
`terminal that allows for the connection of electrical components to the circuit
`board. Id. Unlike a traditional terminal that is only accessible from the
`board’s top, a flying lead is not covered by insulating material either from
`above or below. Id. This type of lead allows for a higher density of
`components, and facilitates the use of ultrasonic vibrations to bond
`components to the terminal. Id.
`
`
`
`
`2
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`Case IPR2017-01422
`Patent 6,841,737
`
`Because the lead is exposed and not supported from below by
`
`insulating material, it is structurally weak at the point where the lead’s
`conductive material intersects with the edges of the opening in the
`surrounding insulating and supporting layers. Id. To address this problem,
`the ’737 patent discloses the use of various reinforcements. Id.
`
`One solution is providing reinforcing portions wherein the conductive
`pattern of the flying lead terminal “has widened portions formed to extend in
`a widthwise direction.” Ex. 1001, 2:47–51; 2:60–64. In a second solution,
`“the first insulating layer and/or the second insulating layer have projections
`projecting from ends of the opening” onto the terminals to support them. Id.
`3:22–26; 3:41–47.
`
`Figures 11(b) and 12(b) from the patent, as annotated in the Petition
`(at p. 14), illustrate these two solutions. Annotated Figure 11(b) follows:
`
`Pet. 14.
`Figure 11(b) is an annotated plan view of the external-side connecting
`terminal of a suspension circuit board embodiment, showing lines of wire 34
`for connecting to a magnetic head and read/write board formed as an
`
`
`
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`3
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`Case IPR2017-01422
`Patent 6,841,737
`
`external circuit. Ex. 1001, 5:3–8; 10:32–35. In this embodiment, widened
`portions are provided as reinforcing portions in conductive pattern 34. Id.
`13:56–61.
`
`Annotated Figure 12(b) below illustrates a second embodiment:
`
`
`Pet. 14.
`
`Figure 12(b) is an annotated plan view of the external-side connecting
`terminals of another suspension board embodiment. Ex. 1001, 5:9–14. In
`this embodiment cover-side projections 50 are formed to project from the
`ends of the cover-side opening 42 onto the conductive pattern 34. Id. 14:66–
`15:1.
`
`B. Challenged Claims
`
`Claims 1, 3, 4, and 6 are independent. Claims 3 and 4 are directed to
`the first embodiment illustrated in Fig, 11(b), supra. Claim 6 is directed to
`the second embodiment illustrated in Fig. 12(b), supra. Claim 1 is broadly
`
`
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`4
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`Case IPR2017-01422
`Patent 6,841,737
`
`directed to a wired circuit board with either of the two solutions illustrated
`above. Pet. 15. Claim 1 follows:
`
`1. A wired circuit board comprising a metal supporting
`layer, a first insulating layer formed on the metal supporting
`layer, a conductive pattern formed on the first insulating layer, a
`second insulating layer formed on the conductive pattern, and
`an opening, formed at the same position of the conductive
`pattern, for allowing the metal supporting layer and the first
`insulating layer, and the second insulating layer to open, so as
`to form a terminal portion in which front and back sides of the
`conductive pattern are exposed,
`
`wherein at least any one of the first insulating layer, the
`second insulating layer and the conductive pattern has
`reinforcing portions for reinforcing the conductive pattern
`formed at the ends of the opening in crossing areas where ends
`of the opening and the conductive pattern cross each other.
`
`C. Real Parties in Interest
`
`Petitioner identifies the following additional real parties in interest:
`
`
`1. Magnecomp Precision Technology Public Company Limited
`
`
`2. Magnecomp Corporation
`
`
`3. Headway Technologies, Inc.
`
`
`4. TDK Corporation
`
`
`5. TDK U.S.A. Corporation
`
`
`6. SAE Magnetics (Hong Kong) Limited
`
`
`7. Acrathon Precision Technologies (HK) Limited
`
`
`8. Acrathon Precision Technologies (Dong Guan) Co., Ltd
`
`Pet. 5–6. Patent Owner identifies no additional real parties in interest.
`Paper 4, 1.
`
`
`
`
`5
`
`
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`Case IPR2017-01422
`Patent 6,841,737
`
`D. Related Matters
`
`The parties identify the following civil action involving the ’737
`patent: Nitto Denko Corporation v. Hutchinson Technology Incorporated,
`C.A. No. 2:16-cv-03595-MF, pending in the United States District Court for
`the District of New Jersey. Pet. 7; Paper 4, 1.
`
`E. References and Other Evidence
`Petitioner relies upon the following references (Pet. 9):
`Ohkawa
`CN 1297224 A
`May 30, 2001
`Maeda
`JP H8-162724
`June 21, 1996
`
`(Ex. 1005)1
`(Ex. 1007)2
`
`Petitioner relies also on certain “admitted” prior art (“APA”) in the ’737
`patent. Pet. 56–57. This APA will be further described infra. In addition,
`Petitioner relies on the declaration testimony of a technical expert, Dr. David
`B. Bogy (“Bogy Decl.,” Ex. 1011).
`
`
`F. Grounds Asserted
`Petitioner challenges the patentability of the claims of the ’737 patent
`on the following grounds (Pet. 10):
`
`Claims
`1–7
`1–7
`
`References
`Basis
`§ 103(a) Ohkawa and Maeda
`§ 103(a) APA and Maeda
`
`
`1 Exhibit 1005 is a certified English translation of CN Patent Application
`Publication No. 1297224A (Ex. 1004).
`2 Exhibit 1007 is a certified English translation of JP Patent Application
`Publication No. H8-162724 (Ex. 1006).
`
`
`
`6
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`III. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Additionally,
`any special definitions for claim terms must be set forth with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`Petitioner proposes a special construction for one claim term: “at the
`same position.” Pet. 20–22. Patent Owner states it “is of the view that all
`the claim elements Petitioner discusses (and those it did not) can be afforded
`their plain and ordinary meaning.” Prelim. Resp. 11.
`In view of our analysis, we determine that no claim terms require
`construction at this stage. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy
`need to be construed, and only to the extent necessary to resolve the
`controversy).
`
`
`
`
`
`
`
`7
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`Case IPR2017-01422
`Patent 6,841,737
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`B. Obviousness over Ohkawa and Maeda
`
`1. Overview
`
`Petitioner contends Ohkawa qualifies as prior art under 35 U.S.C.
`§ 102(a). Pet. 9. Petitioner contends Maeda qualifies as prior art under 35
`U.S.C. § 102(b). Id. at 10. Patent Owner does not challenge either of these
`assertions. We conclude that both Ohkawa and Maeda are prior art to the
`’737 patent.
`
`Petitioner contends that Ohkawa describes the fundamental well-
`known structure of flying lead terminals in a wired circuit board. Pet. 22.
`Ohkawa illustrates a suspension board with circuit 11 in Figures 1 and 16
`reproduced here with annotations by Petitioner:
`
`
`Pet. 23.
`
`
`
`
`
`
`8
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`Case IPR2017-01422
`Patent 6,841,737
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`
`Pet. 24.
`Figures 1 and 16 of Ohkawa (annotated by Petitioner) illustrate the
`basic construction of suspension board 12 with circuit 11.
`
`Petitioner acknowledges Ohkawa does not “specifically” disclose
`reinforcing portions. Pet. 37. Petitioner, therefore, relies on Maeda to
`supply the claimed reinforcing portions missing from Ohkawa. Id.
`
`Maeda addresses the problem of thermal stresses to a printed circuit
`pattern caused by soldering. Ex. 1007 ¶ [0003]. Maeda discloses a printed
`substrate with circuit pattern 2 formed on substrate main body 1 and a resist
`3 that covers portions of the circuit pattern 2 and substrate main body 1, as
`shown in annotated Figs. 2 and 4:
`
`
`
`9
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`Case IPR2017-01422
`
`Case IPR2017-01422
`Patent 6,841,737
`Patent 6,841,737
`
`
`
`
`
`(”It'll-
`
`
`
`7 I" "-
`
`
`
`m a m Alli!
`
`
`2
`
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`
`
`
`
`
`3 5 End Edge 3a
`
`3"— l-
`
`
`
`
`
`
`
`
`
`10
`
`10
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`Case IPR2017-01422
`Patent 6,841,737
`
`Pet. 38–40. Figures 2 and 4 of Maeda (annotated by Petitioner) show a
`portion of a suspension board and circuit in which the leads are reinforced
`by widened portions (Fig. 2) or reinforced by projections of the resist/cover
`(Fig. 4).
`
`2. Analysis
`
`Petitioner provides an analysis of Ohkawa and Maeda in relation to
`claims 1–7 at pages 22–56 of the Petition. Petitioner also sets forth a
`rationale for combining the references. For example, in discussing claim 1,
`Petitioner contends: “[a] person of ordinary skill in the art . . . would know
`that the external connection terminal 17 of Ohkawa, being exposed on both
`the top and bottom sides, is susceptible to breaking (damage) at both ends of
`the opening of the external connection terminal 17, caused by stress
`concentrations, resulting in an electrical disconnect.” Pet. 41. Further
`Petitioner contends:
`Thus, a [person of ordinary skill in the art] seeking to prevent
`damage of the exposed conductive layer 14 at both ends of the
`opening of the external connection terminal 17 would be
`motivated to modify Ohkawa by adding Maeda’s reinforcing
`portions at both ends of the opening at least because (1) Maeda
`teaches that its reinforced portions 2b (FIG. 2) increase its
`strength and thereby prevent damage and (2) Maeda teaches its
`protruding cover/resist 3 onto the circuit pattern 2 (FIG. 4)
`disperses tension, thereby preventing breakage.
`Id. In support of these assertions, Petitioner cites the testimony of its expert,
`Dr. Bogy. Bogy Decl. ¶ 105. The first part of Dr. Bogy’s cited testimony
`merely repeats the statement from the Petition quoted supra. The second
`portion contends that Ohkawa and Maeda “both experience identical
`problems in bonding terminals of wired circuit boards using heat soldering
`
`
`
`11
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`and Maeda provides two solutions to this known problem.” Id. We discuss
`this second assertion infra.
`
`Patent Owner challenges this contention. Prelim. Resp. 12–21. Patent
`Owner asserts “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.” Id. at 12. We agree
`with Patent Owner. Petitioner points to nothing in Ohkawa that discloses or
`suggests a need to reinforce the type of flying leads described there.
`Petitioner relies again on the testimony of its expert that a person of ordinary
`skill “would know” that Okawa’s connection terminal “is susceptible to
`breaking.” Bogy Decl. ¶ 104. Dr. Bogy cites no persuasive evidence to
`support this assertion. He states: “As discussed in both Maeda and the ‘737
`patent, this was a known problem.” Id. However, Dr. Bogy provides no
`citations, either to Maeda or the ’737 patent, that would support this
`conclusion. We, therefore, do not credit this testimony. See 37 C.F.R.
`§ 42.65(a)(expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight).
`
`Petitioner further asserts a person of ordinary skill “would be further
`motivated to combine Ohkawa and Maeda because a [person of ordinary
`skill] would recognize that they both experience identical problems in
`bonding terminals of wired circuit boards using heat soldering and Maeda
`provides two solutions to this known problem.” Pet. 41. Petitioner supports
`this with a citation to Maeda’s discussion of thermal stress in circuit patterns
`due to soldering referred to supra. See Ex. 1007 ¶ [0003]. As noted supra,
`Dr. Bogy makes a similar statement in his declaration. Bogy Decl. ¶ 104.
`
`
`
`12
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`We are not persuaded by this argument. We do not agree that
`
`Ohkawa and Maeda address “identical problems.” As Patent Owner points
`out, Maeda does not relate to flying leads. Prelim. Resp. 14, 17. Moreover,
`Ohkawa has nothing to do with soldering. Id. at 17. Ohkawa’s focus is on
`ultrasonic attachment. See Ex. 1005 11:46–12:18. Thus, even if it were
`known that Ohkawa’s flying leads needed reinforcement (which Petitioner
`has failed to demonstrate persuasively), we would not be convinced by
`Petitioner’s argument that a person of ordinary skill would have looked to
`Maeda’s disclosure of conductive patterns specifically designed to deal with
`thermal damage caused by soldering. Consequently, we determine that
`Petitioner has not set forth a convincing rationale for combining Ohkawa
`and Maeda and, therefore, fails to demonstrate a reasonable likelihood of
`prevailing on this challenge.
`
`C. Obviousness over APA and Maeda
`
`This challenge is similar to the obviousness challenge based on
`Ohkawa and Maeda. See Pet. 56–85. The alleged APA in the ’737 patent
`relied on by Petitioner includes the Description of Prior Art appearing at
`column 1, lines 14–53, and Figure 21 of the patent. Pet. 56. This is a
`general presentation of the structure of suspension boards with flying leads
`and the use of ultrasonic bonding to connect the leads. As Patent Owner
`points out, this disclosure is similar to Ohkawa’s. Prelim. Resp. 23. Both
`Ohkawa and the prior art description in the ’737 patent present typical flying
`leads without reinforcement to prevent breakage due to ultrasonic bonding.
`Id.
`
`
`Petitioner’s rationale for combining the APA and Maeda is similar to
`that advanced for the Ohkawa-Maeda combination. See, for example, pages
`
`
`
`13
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`70–71 of the Petition, pertaining to claim 1. Petitioner similarly relies for
`support on testimony from its expert, Dr. Bogy. See Bogy Decl. ¶ 310. For
`the reasons discussed in connection with Ohkawa and Maeda, we do not find
`this rationale convincing. Specifically, even if Petitioner had demonstrated
`persuasively that a breakage problem caused by ultrasonic bonding of flying
`leads was known (which Petitioner has not), we would not be convinced by
`Petitioner’s argument that a person of ordinary skill would have looked to
`Maeda’s disclosure of conductive patterns specifically designed to deal with
`thermal damage caused by soldering.
`
`There is in the ’737 patent, at the very end of the Description of Prior
`Art, a mention of weakness in the physical strength of the leads as a result of
`vibration during ultrasonic bonding. Ex. 1001, 1:44–52. Dr. Bogy cites this
`statement in his testimony. Bogy Decl. ¶ 310 (final sentence). We are not
`persuaded by Dr. Bogy’s conclusion that this is evidence of a motivation to
`combine the APA and Maeda. Dr. Bogy concludes that the APA and Maeda
`“both identify and experience identical problems in bonding terminals of
`wired circuit boards using heat soldering and Maeda provides two solutions
`to this known problem,” Id. (emphasis added). As noted, however, the
`’737 patent does not concern heat soldering, but ultrasonic bonding. More
`fundamentally, however, this statement in the ’737 patent does not indicate
`that this lead weakness was known to anyone but the inventors. It is,
`therefore, hindsight and irrelevant to the obviousness determination. See,
`e.g., Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir.
`2000) (“[T]he path that leads an inventor to the invention is expressly made
`irrelevant to patentability by statute.”).
`
`
`
`14
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`D. Summary
`
`Petitioner has failed to demonstrate that claims 1–7 of the ’737 patent
`would have been obvious over (1) Ohkawa and Maeda, or (2) the APA and
`Maeda.
`
`IV. ORDER
`
`
`
`It is, therefore,
`
`
`
`
`
`
`
`
`
`
`ORDERED that the Petition is denied and no trial is instituted.
`
`15
`
`
`
`Case IPR2017-01422
`Patent 6,841,737
`
`PETITIONER:
`Jennifer Hayes
`Daniel J. Burnham
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`dburnham@nixonpeabody.com
`
`PATENT OWNER:
`Alex V. Chachkes
`Donald Daybell
`Orrick, Herrington & Sutcliffe LLP
`a34ptabdocket@orrick.com
`d2dptabdocket@orrick.com
`
`
`
`
`
`
`16
`
`
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