Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: December 4, 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 Request for Rehearing
`37 CFR § 42.71(d)
`
`
`571-272-7822
`
`Paper 11
`Entered: December 4, 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 Request for Rehearing
`37 CFR § 42.71(d)
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`
`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.”).
`
`In our Decision dated October 12, 2017, we denied the Petition as to
`
`all challenged claims. Paper 7 (“Decision”).
`
`Petitioner requests reconsideration of our Decision. Paper 8 (“Req.
`
`Reh’g”). Petitioner’s grounds for seeking rehearing are that (1) Petitioner
`
`provided sufficient evidence that the problem with flying heads was known
`
`to a person of ordinary skill; and (2) Petitioner provided sufficient evidence
`
`that a person of ordinary skill would combine Ohkawa and Maeda and the
`
`APA (“admitted prior art”) and Maeda. Req. Reh’g 1.
`
`For the reasons that follow, Petitioner’s request for rehearing is
`
`denied.
`
`ANALYSIS
`
`The applicable standard for a request for rehearing is set forth in
`
`37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a single
`request for rehearing without prior authorization from the Board.
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`
`
`
`2
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`
`1. Combining Ohkawa and Maeda, and APA and Maeda
`
`
`
`The ’737 patent relates to reinforced flying leads for use in printed
`
`flexible circuit boards that connect the read/write head of a hard disk drive to
`
`other electronic components. The terminals are connected by ultrasonic
`
`bonding, which results in vibrations that weaken the leads. Ex. 1001, col. 1.
`
`ll. 45–54.
`
`
`
`Petitioner argued that Ohkawa and Maeda would have been combined
`
`because they are directed to “identical problems.” Pet. 41. In our Decision,
`
`we fully considered and rejected this argument, which is now central to
`
`Petitioner’s Rehearing Request.
`
`In our Decision, we concluded instead that Ohkawa and Maeda are
`
`directed to different problems. Decision 12–13. We determined that Maeda
`
`addresses the problem of thermal stress to a printed circuit pattern on printed
`
`circuit boards caused by heat soldering. Id. at 12. We observed also that
`
`Maeda does not relate to the flying leads disclosed in the ’737 patent. Id. at
`
`13.
`
`We further concluded that Ohkawa’s focus is not on heat soldering,
`
`but on ultrasonic bonding. Id. at 13. From this we concluded that the
`
`teachings of these references would not have been combined even if it were
`
`known that flying leads needed reinforcement:
`
`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
`
`
`
`3
`
`
`
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`IPR2017-01422
`Patent 6,481,737
`
`
`to demonstrate a reasonable likelihood of prevailing on this
`challenge.
`
`Decision 13 (emphasis added).
`
`
`
`Petitioner’s rehearing request does not persuasively rebut these
`
`underlying findings of fact. Instead, Petitioner either repeats arguments
`
`already considered and rejected or raises new arguments not appropriate on
`
`rehearing. For example, Petitioner now contends that “even though” Maeda
`
`is directed to printed substrates, “the same principle” applies to flying leads.
`
`Req. Reh’g 7. According to Petitioner, the position of its expert, Dr. Bogy,
`
`on this issue “makes more sense” than the position that the Board found
`
`persuasive. Id.
`
`This argument is just a rehash of the “identical problem” argument
`
`rejected in our Decision. We are not persuaded that anything has been
`
`misapprehended or overlooked, only that Petitioner disagrees with our
`
`findings of fact and our conclusions on this issue.
`
`
`
`Petitioner also presents some new arguments. Such arguments are not
`
`appropriate in a rehearing request. For example, we are not persuaded by
`
`Petitioner’s reference to a Kilby patent Petitioner says was discussed in the
`
`prosecution history. Req. Reh’g 7. Petitioner does not identify where this
`
`argument was previously presented. It, therefore, could not have been
`
`misapprehended or overlooked.
`
`
`
`Likewise, Petitioner’s attempt to use a newly submitted dictionary
`
`definition (Ex. 1012) to equate heat soldering and ultrasonic bonding is a
`
`new argument, and in any event not convincing. Req. Reh’g 9 n.1. The first
`
`definition of “solder” in the dictionary cited by Petitioner is “[a]ny of
`
`various fusible alloys . . . used to join metallic parts.” Ex. 1012. Petitioner
`
`
`
`4
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`ignores this primary definition, which is descriptive of heat soldering not
`
`ultrasonic bonding. We are not persuaded by the argument that heat
`
`soldering and ultrasonic bonding are the same or even similar.
`
`
`
`We are also unconvinced by Petitioner’s similar arguments regarding
`
`whether combining the APA1 with Maeda would have been obvious. Req.
`
`Reh’g 9–12. This is an issue that was discussed in the Decision at pages 13–
`
`14. As discussed in the Decision and in the section following, the APA, like
`
`Ohkawa, is directed to solving problems resulting from ultrasonic bonding
`
`of contacts in flying leads. For the reasons set forth in our Decision, we
`
`were not persuaded that persons of ordinary skill would have looked to
`
`Maeda for a solution. Thus, for the reasons discussed above in connection
`
`Ohkawa and Maeda, we are not persuaded that anything was
`
`misapprehended or overlooked in our Decision regarding combining the
`
`APA with Maeda.
`
`
`
`
`
`2. Knowledge of the problem with flying leads
`
`Petitioner’s second ground for rehearing is its assertion that that there
`
`was sufficient evidence that it was a known problem that flying leads needed
`
`reinforcement. Req. Reh.’g 1–6. At the outset we note that we have
`
`determined that Petitioner had not provided a sufficient rationale for making
`
`the Ohkawa-Maeda or APA-Maeda combinations “even if it were known
`
`that Ohkawa’s flying leads needed reinforcement.” Decision 13 (emphasis
`
`added). Thus, the question of whether the problem was or was not “known”
`
`
`1 The APA (“admitted prior art”) refers to statements made in the ’737 patent
`in the “Description of Prior Art.” Ex. 1001 col. 1, ll. 14–53.
`
`
`
`5
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`was not a determinative issue in denying the Petition. Nevertheless, we will
`
`address Petitioner’s arguments.
`
`Petitioner first contends “several references” demonstrate that the
`
`problem was known, and points specifically to Palmer. Req. Reh’g 2 (citing
`
`Ex. 1010). Palmer is cited in the Background section of the Petition, and is
`
`not involved in any of Petitioner’s patentability challenges. Petitioner’s
`
`argument, therefore, is new and not appropriate to raise in a rehearing
`
`request.
`
`In any event, Palmer does not prove that the problem addressed by the
`
`’737 patent, namely, weakening of flying leads due to vibrations from
`
`ultrasonic bonding of contacts, was known. Like Maeda, Palmer is
`
`concerned with heat soldering. This is demonstrated by the quotation from
`
`Palmer presented in the Petition (at p. 4): “Indeed, any method utilizing a
`
`flying lead type of solder connection can be easily damaged during the
`
`manufacturing process or while being handled because the flying lead
`
`connection does not have any support.” Ex. 1010, col. 1 ll. 45–48.
`
`
`
`The Rehearing Request next cites asserted “admission” evidence in
`
`the ’737 patent specification. Req. Reh’g 3–4. Petitioner cites to statements
`
`in The Description of Prior Art appearing at column 1, lines 14–53 of the
`
`’737 patent. Id. These statements, which are identified by Petitioner as part
`
`of the APA, were not overlooked, and were specifically discussed in the
`
`Decision. See Decision 14.
`
`The statements in the ’737 patent relied on by Petitioner make no
`
`mention of soldering the terminals as is described in Maeda, only ultrasonic
`
`bonding: “Thereafter, these terminal portions formed as the flying lead are
`
`
`
`6
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`bonded to external connecting terminals by applying supersonic vibration
`
`thereto by use of a bonding tool and the like.” Ex. 1001, col. 1, ll. 41–44.
`
`The description goes on to describe the problem addressed as caused by
`
`transmitting ultrasonic vibration to the terminals:
`
`In this terminal portion formed as the flying lead, since the both
`sides of the conductive pattern are exposed, the supersonic
`vibration is easily transmitted to the terminals. This is suitable
`for the bonding using the supersonic vibration: on the other
`hand, this provides the disadvantage that the conductive pattern
`exposed at both sides thereof is weak in physical strength and is
`subject to stress concentration at edge portions of the openings
`in the base layer and cover layer, to cause easy disconnection of
`the conductive pattern.
`
`Ex. 1001, col. 1 ll. 45–53 (emphasis added). It makes no mention of thermal
`
`stress due to heat soldering.
`
`
`
`We considered and discussed this passage in our Decision in
`
`connection with our discussion of combining the APA with Maeda, and
`
`concluded that the passage does not provide a motivation to combine the
`
`teachings of those references. Unlike Maeda, it discusses ultrasonic
`
`bonding, not heat soldering. Decision 14. Other than through its
`
`unconvincing dictionary reference (see supra), Petitioner does not deny that
`
`there a distinction between the two bonding methods: one method relies on
`
`heat, the other ultrasonic vibration.
`
`
`
`We also determined that the statement does not indicate that the
`
`weakness in the flying leads caused by ultrasonic vibration was known to
`
`anyone but the inventors. Id. Petitioner has not persuasively rebutted this
`
`finding. See Req. Reh’g 9–12. Petitioner’s citation of non-precedential
`
`Board decisions, with no discussion of the reasoning or facts of those cases,
`
`
`
`7
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`does not convince us that they are apposite here. See id. at 11. In short,
`
`Petitioner’s arguments on rehearing for combining the APA and Maeda have
`
`been considered and found not persuasive. We are not convinced that
`
`anything has been overlooked or misapprehended.
`
`Petitioner’s final argument is that the Board failed to give Dr. Bogy’s
`
`testimony sufficient weight. Req. Reh’g 4–6. We note at the outset that the
`
`Board has wide discretion in determining what weight, if any, to give expert
`
`testimony. “[T]he PTAB is permitted to weigh expert testimony and other
`
`record evidence and, in so doing, rely on certain portions of an expert’s
`
`declaration while disregarding others.” Icon Health & Fitness, Inc. v.
`
`Strava, Inc., 849 F.3d 1034, 1041 (Fed. Cir. 2017); Velander v. Garner, 348
`
`F.3d 1359, 1371 (Fed. Cir. 2003) (“It is within the discretion of the trier of
`
`fact to give each item of evidence such weight as it feels appropriate.”
`
`(citation omitted)).
`
`With this guidance from the Federal Circuit in mind, we reviewed
`
`Dr. Bogy’s testimony in our Decision and determined not to credit his
`
`conclusion that a person of ordinary skill “would know” that Okawa’s
`
`connection terminal “is susceptible to breaking.” Decision 12 (citing Bogy
`
`Decl. ¶ 104).
`
`In the Rehearing Request, Petitioner asserts that we failed to consider
`
`the citied evidence supporting Dr. Bogy’s decision. Req. Reh’g 4–6.
`
`Specifically, Petitioner points to Dr. Bogy’s generalized discussions of
`
`flying leads (id. at 4–5), his expertise in stress concentration (id. at 5), and
`
`his citations, in paragraph 104 of his declaration, to portions of Maeda
`
`discussing stress concentration in printed circuit boards (id. at 5–6). We are
`
`
`
`8
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`not persuaded by this argument that anything has been misapprehended or
`
`overlooked. The Board has the discretion to weigh Dr. Bogy’s credentials
`
`and his generalized discussions of the state of the art against what appears in
`
`the entire record. See Velander, 348 F.3d at 1371(“In giving more weight to
`
`prior publications than to subsequent conclusory statements by experts, the
`
`Board acted well within that discretion.”) The Board did this in its Decision.
`
`Moreover, we are not persuaded by Dr. Bogy’s citations to Maeda that
`
`anything was overlooked or misapprehended. Both Maeda and Dr. Bogy’s
`
`testimony were considered and discussed at length in the Decision. See, e.g.,
`
`Decision 9–12, 14. That we were not convinced by his testimony is not a
`
`ground for rehearing.
`
`
`
`CONCLUSION
`
`
`
`Petitioner has not carried its burden of demonstrating that our
`
`Decision denying institution of inter partes review of claims 1–7 of the
`
`ʼ737 patent misapprehended or overlooked any matters or that the Board
`
`abused its discretion. 37 C.F.R. § 42.71(d).
`
`
`
`ORDER
`
`For the foregoing reasons, Petitioner’s Request for Rehearing is
`
`denied.
`
`
`
`
`
`
`
`
`
`9
`
`
`
`
`IPR2017-01422
`Patent 6,481,737
`
`PETITIONER:
`
`Jennifer Hayes
`jenhayes@nixonpeabody.com
`
`Daniel Burnham
`dburnham@nixonpeabody.com
`
`
`PATENT OWNER:
`
`Alex V. Chachkes
`a34ptabdocket@orrick.com
`
`Donald Daybell
`D2dptabdocket@orrick.com
`
`
`
`
`10
`
`
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