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 IPR2017-01607
`Patent 8,692,126
`______________
`
`
`
`Record of Oral Hearing
`Held: October 2, 2018
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and THOMAS L. GIANNETTI and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`HUTCHINSON TECHNOLOGY, INC.,
`HUTCHINSON TECHNOLOGY OPERATIONS (Thailand) CO., LTD.,
`Petitioner,
`
`V.
`
`NITTO DENKO CORPORATION,
`Patent Owner.
`______________
`
`Case IPR2017-01607
`Patent 8,692,126
`______________
`
`
`
`Record of Oral Hearing
`Held: October 2, 2018
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and THOMAS L. GIANNETTI and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
` APPEARANCES:
`
` ON BEHALF OF PETITIONER:
`
` JENNIFER HAYES, ESQUIRE
` LAW OFFICE OF NIXON PEABODY, LLP
` 300 South Grand Avenue, Suite 4100
` Los Angeles, California 90071
` (213) 629-6179
`
` ON BEHALF OF PATENT OWNER:
`
` ALEX V. CHACHKES, ESQUIRE
` LAW OFFICE OF ORRICK, HERRINGTON & SUTCLIFFE, LLP
` 51 West 52nd Street
` New York, New York 10019-6142
` (212) 506-3748
`
`
`
`
`The above-entitled matter came on for hearing on October 2, 2018,
`commencing at 2:01 p.m., at the U.S. Patent and Trademark Office, Madison
`Building, 600 Dulany Street, Alexandria, Virginia, 22314.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`P R O C E E D I N G S
`
` JUDGE GIANNETTI: So good afternoon, everyone.
`This is the final hearing in IPR2017-01607, Hutchinson
`Technology versus Nitto Denko Corporation involving patent
`8,692,126. I'm Judge Giannetti. I will be presiding
`today. Two other judges on our panel appear on the screen to
`my left, Judge Zado and Judge Haapala appearing remotely.
` Counsel -- I see counsel here, so let's start by
`getting your appearances. Let's first start with the
`petitioner. Who is appearing today for the petitioner?
` MS. HAYES: Good afternoon, Your Honors. Jennifer
`Hayes from Nixon & Peabody on behalf of petitioners, and with
`me today are Mr. Ron Lopez and Mr. Matthew Werber also of
`Nixon & Peabody.
` JUDGE GIANNETTI: Welcome, back Ms. Hayes.
` MS. HAYES: Thank you.
` JUDGE GIANNETTI: And for the patent owner?
` MR. CHACHKES: Good afternoon, Your Honor. Alex
`Chachkes from Orrick, Herrington & Sutcliffe for patent owner
`Nitto Denko, and with me today is K. Patrick Herman.
` JUDGE GIANNETTI: Welcome back, Mr. Chachkes.
` MR. CHACHKES: Thank you, Your Honor.
` JUDGE GIANNETTI: So we just have one argument
`today, one case. The ground rules, 60 minutes per side
`
`3
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`starting with petitioner. The petitioner may reserve time
`for rebuttal. There's a motion to amend, so I invite you to
`address the motion to amend in your presentation, Mr.
`Chachkes.
` All right. We have your demonstratives. I
`believe the remote judges have them also, but it will be
`helpful and I will remind you that as you go through your
`presentation please cite to the page numbers in the
`demonstratives so that our judges can follow along.
` Any questions before I begin, Mr. Chachkes,
`anything?
` MR. CHACHKES: No, Your Honor.
` MS. HAYES: No, Your Honor.
` JUDGE GIANNETTI: Ms. Hayes?
` MS. HAYES: No, Your Honor.
` JUDGE GIANNETTI: So I'll set the timer for
`60 minutes, and Mr. Chachkes, you -- excuse me. Ms. Hayes,
`you are on first.
` MS. HAYES: Yes, Your Honor.
` JUDGE GIANNETTI: And you may proceed when you are
`ready.
` MS. HAYES: Good afternoon, Your Honors. May it
`please the board, I'd like to reserve 15 minutes for rebuttal
`time, please.
`
`4
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` JUDGE GIANNETTI: That's fine.
` MS. HAYES: We're here today to talk about the
`'126 patent, and as set forth in the petition petitioners
`believe that the claims of the '126 patent are anticipated by
`or obvious over the Pan reference that is set forth in
`grounds 1 through 4 of the petition.
` The claims are also anticipated by or rendered
`obvious by the Yokai reference which is grounds 5 and 6 in
`the petition, and today we'll also be addressing patent
`owner's contingent motion to amend which petitioners believe
`should be denied, and I'll address those in the order set
`forth on slide 2 of our slide deck.
` So starting first with the Pan reference, and
`claims 1 and 12 in particular are the independent claims that
`are shown on slide 4 of petitioner's slide deck. Claims 1
`and 12 are directed to a wired circuit board, and the key
`limitations that we'll be addressing today are the metal
`supporting layer in the wired circuit board and the reference
`hole formed in the metal supporting layer that has a step
`portion formed so as to surround on all sides the reference
`hole.
` And claims 1 and 12 are very similar. They both
`include a limitation that the step portion can be formed in
`the insulating layer and/or the conductive layer. Claim 1
`
`5
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`also adds --
` JUDGE ZADO: I'm sorry. I apologize for
`interrupting. I'm having -- me and Judge Haapala are having
`difficulty hearing. I think you are speaking into the
`microphone. I don't know if anyone --
` MS. HAYES: Okay. Can you hear me better now?
` JUDGE ZADO: That's great. Thank you.
` MS. HAYES: Okay. Claims -- claim 1 also includes
`the additional requirement that the step portion can be in
`the metal supporting layer. And as shown on slide 5 the Pan
`reference, figure 2B, includes a very similar figure to that
`shown in the '126 patent which is figure 7. Both the Pan
`reference and the '126 patent show a layered structure, and
`both depict a step portion.
` In both references there is a step portion in an
`insulating layer and in the conductive layer of the circuit
`board. So the key arguments that patent owner has made with
`respect to the Pan reference relate to whether Pan discloses
`the claimed metal supporting layer and whether Pan step
`portion is formed on all sides of the reference hole.
` And I have slide 6 up on the display. Patent
`owner's arguments fail because Pan explicitly discloses the
`metal supporting layer, and even if patent owner was correct
`the challenge claims are obvious over Pan in view of Mao and
`
`6
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`--
` JUDGE GIANNETTI: Ms. Hayes, just to -- on the
`metal supporting layer as I read the patent owner's
`presentation, and you'll have a chance to respond to this,
`you seem to be setting this up as a inherency argument. Do
`you agree that the doctrine of inherency is at play here, or
`is there something else?
` MS. HAYES: We do not. We believe that Pan
`explicitly discloses that the unlabeled layer is the metal
`supporting layer, and the reason why, turning to slide 8 of
`petitioner's trial demonstrative, Pan describes its flexure
`204 as being a TSA flexure, and TSA is an acronym that means
`tray suspension assembly and it has a well known meaning to
`people of skill in the art, and Pan itself explains that in
`these TSA flexures the support layer is made from stainless
`steel.
` And so petitioner's view is that the Pan reference
`explicitly discloses that the layer 204 is a metal, in
`particular stainless steel support layer, and that's
`supported by Dr. Coughlin's testimony, and we believe that
`Dr. Tarnopolsky's declaration -- or testimony is consistent
`with Dr. Coughlin's view.
` So on slide 11 we present Dr. Tarnopolsky's
`declaration and some of his deposition testimony where he
`
`7
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`addressed the metal supporting layer, and his view was that
`the unlabeled layer could be some material other than metal
`and provided two examples, but those two patents that he
`cited don't actually relate to flexures.
` They predate flexures, and they don't include that
`multi layer structure that is described in the claims in the
`'126 patent and in Pan, and in his deposition Dr. Tarnopolsky
`couldn't identify any commercial implementations of flexures
`that actually included metal, and then petitioners also
`pointed out Dr. Tarnopolsky's inconsistent testimony from the
`IPR 201800955, which related to a similar issue where a
`reference had an unlabeled flexure support layer.
` And in that declaration Dr. Tarnopolsky offered
`testimony that a person of skill in the art would immediately
`recognize that the unlabeled layer would be made from steel,
`and we believe this corroborates Dr. Coughlin's testimony
`that a person of skill in the art reading Pan would
`understand Pan to explicitly disclose that.
` JUDGE GIANNETTI: What I understand his testimony
`to be, Counsel, is that it may be metal, it may be something
`else. I don't think --
` JUDGE HAAPALA: Judge Giannetti, I apologize for
`interrupting, but we're not hearing you on the remote end.
` JUDGE GIANNETTI: Okay. Is that better?
`
`8
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` JUDGE HAAPALA: Yes, thank you.
` JUDGE GIANNETTI: I've got my microphone. Let me
`turn it on. All right. So just to go back to my question,
`my understanding of Dr. Tarnopolsky's testimony is that it
`might be metal and it might be something else, plastic or
`some other material that provides the appropriate support.
`If that's true, if that's the testimony how does that play
`into your theory?
` MS. HAYES: Well, I think it supports petitioner's
`view. Petitioner isn't making an inherency argument with
`respect to the metal supporting layer for the Pan reference.
`Petitioner's view is that Pan explicitly discloses that the
`support layer is made of metal, and that's based on the
`teaching in Pan that the TSA -- the flexure is described as a
`TSA and the Pan reference explicitly discloses that a TSA
`includes a stainless steel supporting layer.
` JUDGE GIANNETTI: So under your theory of the case
`it doesn't matter that it might be something else as long as
`there's a disclosure of using metal?
` MS. HAYES: Correct.
` JUDGE GIANNETTI: Thank you.
` MS. HAYES: And we believe that that is consistent
`with Dr. Tarnopolsky's testimony in the related IPR where he
`acknowledges that a person of skill in the art would
`
`9
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`recognize that TSAs do have the metal supporting layer as the
`underlying layer.
` JUDGE GIANNETTI: I think that the response that
`patent owner made to that is that he was talking about
`obviousness there, whereas in this context it's an
`anticipation.
` MS. HAYES: Right. So we --
` JUDGE GIANNETTI: How do you respond to that?
` MS. HAYES: Right. So we disagree with patent
`owner's characterization of Dr. Tarnopolsky's declaration.
`We believe that Dr. Tarnopolsky was making both an inherency
`and an obviousness argument with respect to the Zeng
`reference in the related IPR, and I have two examples of his
`testimony on slide 15, and in slide 15 he has paragraph 160
`of that declaration.
` There's two sentences that we highlighted. The
`first is therefore Zeng's flexure is a spring metal, so there
`Tarnopolsky is actually -- I'm sorry, Dr. Tarnopolsky is
`actually testifying that inherently that unlabeled layer in
`the Zeng flexure is a spring metal, and then separately he's
`opining in the second sentence that end spring metal would
`have been -- steel spring metal would have been one of
`ordinary skill in the art's first choice when making Zeng's
`flexure.
`
`10
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` And then he continues in paragraph 161 to offer an
`additional obviousness opinion, but we believe that first
`sentence in paragraph 160 in the immediately prior
`paragraphs, for example, slide -- on slide 13 in paragraph
`161 he has the statement, as I just explained, one of
`ordinary skill in the art would immediately recognize that
`this layer would be made from steel, so we believe Dr.
`Tarnopolsky is making both an inherency argument and an
`obviousness argument with respect to Zeng.
` Turning to slide 17 in addition to the
`anticipation argument with respect to the metal supporting
`layer petitioners also offered an obviousness opinion, an
`obviousness ground with respect to the metal supporting layer
`with Pan being combined with Mao, and patent owner does not
`contest that a person of skill in the art would combine Pan
`and Mao to use a stainless steel layer.
` So regardless of whether Pan explicitly discloses
`the metal supporting layer, which petitioners submit that it
`does, a person of skill in the art would combine Pan and Roen
`and find that the claims are unpatentable as being obvious
`over Pan in view of metal.
` The next argument that patent owner makes is with
`respect to the step portion surrounding all sides of the
`reference hole, and if you look at Pan, Pan includes two
`
`11
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`figures that are relevant to this analysis, figures 2A and
`2B. I have those shown on slide 19, and figure 2B is a
`cross-sectional view that illustrates the multi layer
`structure of the flexure that is shown in figure 2A.
` And figure 2B illustrates the step portion being
`in the insulating layer and being in the conductive feature,
`and figure 2A illustrates the conductive feature, 216 being a
`circle, and then the specification of the '126 patent further
`teaches that the conductive feature surrounds all sides of
`the reference hole.
` And specifically I'm pointing to, as shown on
`slide 20, column 6, lines 38 through 40 where Pan discloses
`that the conductive features may be configured such that they
`fully or partially surround the opening within the flexure of
`204, and we also offered the testimony of Dr. Coughlin who
`testified that when you look at the teachings of Pan that
`would be figures 2A, 2B and the specification a person of
`skill in the art would understand Pan to be expressly
`teaching that the conductive feature shown in figure 2B
`surrounds the reference hole on all sides.
` The key argument that patent owner makes in their
`response is that the conductive feature could be elliptical
`so that the step portion would not surround the reference
`hole on all sides. Petitioners believe that there's no merit
`
`12
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`to patent owner's argument. First of all, figure 2A of Pan
`clearly depicts a circle for the shape of the conductive
`features, and nothing in Pan suggests that that conductive
`feature of 216 could be an ellipse.
` JUDGE GIANNETTI: It doesn't describe it as a
`round structure, though, does it?
` MS. HAYES: It does not expressly say in the
`detailed description that it's a circle, but figure 2A
`clearly illustrates it as being circular.
` JUDGE GIANNETTI: So how much weight can you give
`to that? It's just one cross-section.
` MS. HAYES: It's just one cross-section, but as
`the board noted in its institution decision the board cited
`the In Re: Aslanian federal circuit decision where they found
`that a design patent could be used as an anticipatory
`reference.
` And the federal circuit said that the figures of
`the design patent together with the title and brief
`description of the figures was sufficient to be an
`anticipatory reference, and petitioners submit that the Pan
`reference includes more than the patent did in the In Re:
`Aslanian case.
` And so the teaching of Pan, even though it doesn't
`expressly say in the detailed description that the conductive
`
`13
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`feature of 216 is circular figure 2A certainly shows the
`conductive feature of 216 as being circular, so it's fair for
`the board to come to the conclusion that it is circular, and
`furthermore petitioner submitted the testimony of Dr.
`Coughlin who testified that reference pins typically have a
`circular cross-section.
` JUDGE GIANNETTI: Well, why is the shape important
`here? Isn't the more critical thing whether the -- whatever
`shape it is, whether it's flush with the hole? In other
`words, the hole could be elliptical and still be stepped.
` MS. HAYES: That's correct.
` JUDGE GIANNETTI: Not the hole, the --
` MS. HAYES: Correct. That's certainly --
` JUDGE GIANNETTI: You're getting into a two-part
`argument, one that it is elliptical, and secondly that it is
`flush with the hole, and that's what you're slicing it to
`say. It says in other words patent owner argues that the
`conductive feature could be an ellipse, part one, and
`secondly that a portion of the ellipse might not be stepped
`back. That's part two of the argument.
` MS. HAYES: My understanding of patent owner's
`argument is that it -- part of it is flush because the shape
`is or could be elliptical. If -- because the Pan reference
`teaches that the conductive feature fully or partially
`
`14
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`surrounds the reference hole, and because figure 2B shows the
`conductive feature as being stepped back a person of skill in
`the art would understand that that step back feature would
`apply on all sides of the reference hole.
` If it's circular it certainly would be that same
`step portion on all sides and their argument is well, it
`could be elliptical so it may be flush or it may not, so it
`may not be stepped back, but they don't have any evidence to
`support their view that it could be elliptical.
` JUDGE GIANNETTI: So in other words, your argument
`doesn't depend as much on shape as it does on the fact that
`it may be flush? I mean, it could be elliptical and not
`flush.
` MS. HAYES: It could be elliptical, but there's no
`evidence that it could be or should be elliptical. The only
`evidence we have is that it's circular. The only evidence
`that patent owner offers to support its view that the
`conductive feature could be elliptical is Dr. Tarnopolsky's
`testimony.
` But if you look at the paragraphs of Dr.
`Tarnopolsky's declaration that they cite to support their
`view Dr. Tarnopolsky doesn't present any corroborating
`evidence that people would combine elliptical conductive
`features with circular reference holes or that anyone has
`
`15
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`ever made a combined elliptical, and then -- elliptical
`conductive feature and circular reference hole.
` And he testified on cross-examination that the
`basis of his testimony was merely his learned opinion without
`providing any additional information or justification for his
`opinion, and as the board knows in those cases expert
`testimony that's not supported by corroborating facts or
`evidence is entitled to little or no weight.
` And so we believe that patent owner hasn't offered
`any evidence that the Pan reference discloses anything other
`than circular conductive features because figure 2A
`illustrates the conductive features being circular and a
`person of skill in the art would understand that if the
`conductive feature is circular then the step portion that's
`illustrated in figure 2B, then the step portion would
`surround on all sides.
` JUDGE GIANNETTI: Thank you.
` MS. HAYES: Patent owner also argues that Pan does
`not disclose the manufacturing steps for performing such a
`step, but the claims here are apparatus claims and
`manufacturing steps are irrelevant to whether Pan
`anticipates.
` And patent owner also argues that Pan never
`mentions that a step portion should be used at all, and for
`
`16
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`the same reasons that were -- we discussed with respect to
`the In Re: Aslanian case we believe that that argument is
`also irrelevant to note that patent owner doesn't cite any
`case law to support their view that Pan needs to mention the
`step portion or why you have a step portion in the detailed
`description.
` JUDGE GIANNETTI: So let me ask you this, Counsel.
`I think we're going to be hearing from patent owner about the
`fact that the step portions are provided in order to make a
`more accurate location (inaudible), and the question I have
`for you, do any of the references you cite recognize that
`problem?
` MS. HAYES: They don't recognize that problem, but
`that's not necessary for a prior art reference to be
`anticipatory, and petitioner's view is that Pan is an
`anticipatory reference and so it doesn't matter why it has a
`step portion or why the '126 patent teaches a step portion.
` JUDGE GIANNETTI: Well, might not it be a factor
`in your obviousness argument?
` MS. HAYES: There's no argument that the step
`portion is obvious in view of the prior art.
` JUDGE GIANNETTI: You're not relying on a
`secondary reference for the steps?
` MS. HAYES: Correct, and so petitioner's view is
`
`17
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`that those arguments are irrelevant to whether Pan explicitly
`discloses the step portion in limitation of the claims.
` JUDGE GIANNETTI: Okay.
` MS. HAYES: And again with respect to grounds 3
`and 4 patent owner's arguments with respect to obviousness
`don't relate to the specific claims addressed in grounds 3
`and 4. They really only relate to whether Mao and Roen
`disclose a step portion that surrounds a reference hole on
`all sides, but petitioners haven't cited Mao or Roen for that
`proposition so we think those arguments are irrelevant.
` JUDGE HAAPALA: Ms. Hayes, are you on a particularslide?
` MS. HAYES: I'm sorry. I'm on slide 25.
` JUDGE HAAPALA: Thank you.
` MS. HAYES: And if Your Honors are ready I plan to
`move on to the Yokai reference.
` JUDGE GIANNETTI: Anything further from the panel
`members on this reference?
` JUDGE HAAPALA: Not from me, thank you.
` MS. HAYES: Okay. I'm now on slide 27. As shown
`on slide 27 petitioners submit that the Yokai reference
`discloses a step portion, which is the positioning mark 9 for
`conductive layer 8 that includes a step portion around a
`reference hole which is identified as limitation 10 in figure
`8, and the -- turning to slide 28 to avoid anticipation by
`
`18
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`the Yokai reference patent owner advances an improper claim
`construction of the phrase formed on.
` The board already rejected patent owners claim
`construction of formed on in its rehearing decision, and we
`believe that patent owner has not presented any additional
`evidence that the construction of the formed on limitation
`should be anything other than that there may be intervening
`layers such as a seed layer present between the metal layer
`and the insulating layer.
` JUDGE GIANNETTI: Well, they have provided a
`dictionary definition; isn't that right, Counsel?
` MS. HAYES: Correct.
` JUDGE GIANNETTI: How do you respond to that --
` MS. HAYES: So --
` JUDGE GIANNETTI: -- because the first definition
`does talk about things being in contact with it.
` MS. HAYES: Right. So the petitioner's view is
`that the first place that you should look for evidence in
`support of a claim construction is the specification of the
`patent, and even looking at the dictionary that is offered by
`patent owner that same dictionary includes a definition that
`supports petitioner's views, so we don't believe that it
`indicates one way or another how the claim limitation should
`be interpreted.
`
`19
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` JUDGE GIANNETTI: So you're referring to example
`1?
` MS. HAYES: Correct. So turning to slide 30 of
`petitioner's trial demonstrative, example 1 of the '126
`patent teaches that you can use a chromium thin film and a
`copper thin film between the insulating layer and the
`conductive layer.
` JUDGE GIANNETTI: It's interesting. It doesn't
`refer to the chromium and copper as a layer, does it?
` MS. HAYES: Correct. It's a --
` JUDGE GIANNETTI: Do you attach any significance
`to that?
` MS. HAYES: I don't. I think that it's called a
`seed layer in Yokai, but a person of skill in the art would
`understand that the chromium thin film and copper thin film
`are equivalent to the seed layer in Yokai. They're just
`using different terminology to refer to the same thing.
` JUDGE HAAPALA: Counsel, doesn't patent owner say
`that a chromium thin film in this example is the conductive
`layer?
` MS. HAYES: That's one of the arguments that they
`make. They do argue that the chromium thin film can be a
`conductor and --
` JUDGE HAAPALA: How would you respond to that
`
`20
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`argument?
` MS. HAYES: So turning to slide 33 of petitioner's
`trial demonstrative petitioner's view is that the chromium
`thin film cannot be a conductive layer because it would be
`inconsistent with the way the phrase is used in the '126
`patent.
` Specifically the '126 patent defines the claim
`conductive layer as being wires and terminals for
`electrically connecting the magnetic head to the rewrite
`board, and that's described in particular at column 5, lines
`13 through 22 of the '126 patent, and --
` JUDGE GIANNETTI: It's -- you're not disputing the
`fact that chromium is conductive, are you?
` MS. HAYES: Chromium is less conductive than
`copper. It is still conductive, but it's not sufficiently
`conductive that it can function as the wires and terminals
`for electrically connecting the magnetic head to the rewrite
`board as required by the specification of the '126 patent.
` JUDGE GIANNETTI: So your argument is that while
`it is conductive that it's not a conductive layer that the
`patent calls for?
` MS. HAYES: Correct, and in addition we note that
`the '126 patent describes the materials that can be used for
`its conductive layer, and none of the examples of the
`
`21
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`materials that can be used for the conductive layer include
`the chromium film at all.
` They don't mention chromium as being a material
`that can be used as the claimed conductive layer, and that's
`consistent with the function, the purpose of the chromium
`layer, so the purpose -- both Dr. Tarnopolsky and Dr.
`Coughlin agree that the purpose of the chromium thin film is
`to promote adhesion of the copper to the insulating layer.
` The '126 patent also describes that there are two
`types of methods that can be used to make the conductive
`layer. One is the subtractive method, and the other is the
`additive method, and a person of skill in the art would
`understand that the additive method refers to electrolytic
`plane.
` And that's the same process that's described in
`example 1 of the '126 patent and described in the Yokai
`reference, and specifically the '126 patent teaches that
`preferably the additive method is used and so that's another
`reason why example 1 is particularly relevant to whether the
`formed on claim limitation can include intervening seed
`layers.
` Patent owner also argues that it is not necessary
`to use chromium to make the conductive layer, but patent
`owner doesn't cite any evidence to support that assertion,
`
`22
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`and Dr. Coughlin testified that in order to do electroplating
`you do actually need to have a chromium thin film seed layer
`in order to electroplate copper onto the insulating layer.
` Turning to slide 32 of petitioner's trial
`demonstrative, patent owner also argues that the copper
`plating and seed layers are all part of a single layer and
`that they are coextensive and not meaningfully
`distinguishable from each other.
` And again in support of this argument patent owner
`does not cite any evidence and the technical experts actually
`disagree with their argument. Both Dr. Coughlin and Dr.
`Tarnopolsky testified that there are imaging methods or
`analytical methods that can be used to actually see that the
`chromium seed layer is separate from the copper layers.
` And then turning to slide 36 of petitioner's trial
`demonstrative we've pointed out several examples where we
`believe that Dr. Tarnopolsky's testimony is consistent with
`Dr. Coughlin's testimony that the chromium thin layer does
`not increase the conductivity of the electroplated copper,
`that the thin film improves adhesion between the
`electroplated copper and insulating layer, and that you can
`differentiate the thin chromium film from the copper
`conductive layer material.
` Also in support of petitioner's view that
`
`23
`
`
`
`
`Case IPR 2017-01607
`Patent 8,692,126
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`intervening layers are within the scope of the formed on
`claim limitation the claims also recite that the insulating
`layer can be formed on the metal supporting layer, and the
`'126 patent teaches that there can be intervening adhesive
`layers between the insulating layer and the metal supporting
`layer, so this additional example supports petitioner's view
`that formed on contemplates intervening layers and doesn't
`require direct contact.
` Turning to slide 38 of petitioner's trial
`demonstratives I have on this screen the dictionary definition
`that p
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
