Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper: 37
`Entered: December 22, 2019
`
`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
`____________
`
`
`
`Before MELISSA A. HAAPALA, Acting Vice Chief Administrative Patent
`Judge, and THOMAS L. GIANNETTI and CHRISTA P. ZADO,
`Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`DECISION ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R. § 42.121
`
`
`
`
`

`

`Case IPR2017-01607
`Patent No. 8,692,126
`
`
`I. INTRODUCTION
`Hutchinson Technology Incorporated and Hutchinson Technology
`
`Operations (Thailand) Co., Ltd. (“Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–6 and 10–12 of U.S. Patent No. 8,692,126
`(Ex. 1001, “the ’126 patent”). Paper 2 (“Pet.”). Nitto Denko Corporation
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we granted Petitioner’s request and
`instituted an inter partes review for challenged claims 1, 3–6, and 10–12.
`Paper 8 (“Institution Dec.”). We denied the Petition as to claim 2 and one
`ground of challenge directed to claims 1–6 and 10–12.
`
`Following institution, we granted Petitioner’s request for rehearing of
`the Institution Decision and added claim 2 to the trial. Paper 12 (“Rehearing
`Dec.”), 7. In addition, we added the previously denied ground of challenge
`to claims 1–6 and 10–12. Id.
`
`
`Following institution, Patent Owner filed a Response to the Petition
`(Paper 15, “PO Resp.”) and Petitioner filed a Reply (Paper 22, “Pet. Reply”).
`In addition, Patent Owner filed a Motion to Amend (Paper 16, “Mot.
`Amend”). Petitioner filed an Opposition to the Motion (Paper 23, “Mot.
`Amend Opp.”). Patent Owner filed a Reply (Paper 26, “Mot. Amend
`Reply”), and Petitioner filed a Sur-reply in Opposition (Paper 27, “Mot.
`Amend Sur-reply”).
`An Oral Hearing was held on October 2, 2018. The Hearing
`Transcript (“Tr.”) is included in the record as Paper 36. Having considered
`the evidence of record, and for the reasons set forth below, we determine
`
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`Case IPR2017-01607
`Patent No. 8,692,126
`
`that Petitioner has demonstrated by a preponderance of the evidence that
`claims 1–6 and 10–12 of the ’126 patent are unpatentable. In addition, for
`the reasons that follow, we grant the Motion to Amend. Finally, we order
`cancellation of claims 1–6 and 10–12 and replacement by new claims 13–19.
`
`
`II. BACKGROUND
`
`
`A. The ’126 Patent
`
`The ’126 patent is titled “Wired Circuit Board and Producing Method
`Thereof.” The patent is directed to a wired circuit board used for a
`suspension board with circuit. Ex. 1001, col. 1, ll. 16–20. Such boards are
`typically mounted in hard disk drives after a magnetic head is positioned
`using a reference hole formed in a metal supporting layer. Id. at col. 1, ll.
`27–30.
`
`According to the ’126 patent, the terminals of magnetic heads and the
`terminal portions of suspension boards with circuit were configured at a
`finer pitch, making it necessary to increase the reliability of connections
`between them. Id. at col. 1, ll. 31–34. Therefore, it became necessary to
`form the reference hole used in manufacturing the boards with high
`accuracy, to improve the accuracy of positioning the magnetic head. Id. at
`col. 1, ll. 34–36. The circuit board configuration described and claimed in
`the ’126 patent is directed at addressing this need.
`
`The circuit board of the ’126 patent has a specific three layer
`structure, with a “metal supporting layer,” an “insulating layer” formed
`on the metal supporting layer, and a “conductive layer” formed on the
`
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`insulating layer. A reference hole for positioning is formed in the metal
`supporting layer, and a stepped portion is formed so as to surround the
`reference hole on all sides. Id. at col. 2, ll. 22–27.
`B. Challenged Claims
`
`The ’126 patent has twelve claims. Claims 1–6 and 10–12 are
`challenged by Petitioner. Claims 1 and 12 are the independent claims.
`Claims 2–6, 10, and 11 all depend from claim 1.
`
`Claim 1 follows:
`1. A wired circuit board, comprising:
`a metal supporting layer;
`an insulating layer formed on the metal supporting layer;
`and
`a conductive layer formed on the insulating layer,
`wherein a reference hole for positioning is formed in the
`metal supporting layer, and a stepped portion is formed so as to
`surround on all sides the reference hole; and
`wherein the stepped portion is formed in at least one of:
`a) the same layer as the insulating layer, b) the same layer as the
`conductive layer, or c) directly in the metal supporting layer.
`Claim 12 follows:
`12. A wired circuit board, comprising:
`a metal supporting layer;
`an insulating layer formed on the metal supporting layer;
`and
`a conductive layer formed on the insulating layer,
`wherein a reference hole for positioning is formed in the
`metal supporting layer, and a stepped portion is formed so as to
`surround on all sides the reference hole; and
`wherein the stepped portion is formed in the same layer
`as the insulating layer and/or the conductive layer.
`
`
`
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`Case IPR2017-01607
`Patent No. 8,692,126
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`
`The two independent claims of the ’126 patent call for the same
`three-layer structure, and require the reference hole to be formed in the metal
`supporting layer. The claims differ in that claim 1 requires that the stepped
`portion be formed in at least one of (a) the same layer as the insulating layer,
`(b) the same layer as the conductive layer, or (c) directly in the metal
`supporting layer. Claim 12 requires that the stepped portion be formed in
`the same layer as the insulating layer, the conducting layer, or both.
`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. 2–3. Patent Owner identifies no additional real parties in interest.
`Paper 3, 1.
`D. Related Matters
`The parties identify the following related civil action involving the
`
`’126 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. 3; Paper 3, 1.
`
`
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`Case IPR2017-01607
`Patent No. 8,692,126
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`E. References and Other Evidence
`Petitioner relies upon the following publications and patents (Pet.
`
`6-7):
`Pan
`Yokai
`Roen
`Mao
`
`US 7,315,435
`US 2009/0014410
`US 6,647,621
`US 2007/0151661
`
`Jan. 1, 2008
`Jan. 15, 2009
`Nov. 18, 2003
`July 5, 2007
`
`(Ex. 1003)
`(Ex. 1004)
`(Ex. 1007)
`(Ex. 1012)
`
`In addition, both parties also rely on declaration testimony. Petitioner relies
`on first and second declarations of a technical expert, Dr. Thomas M.
`Coughlin (Ex. 1006, “Coughlin I Decl.;” Ex. 1027, “Coughlin II Decl.”).
`Patent Owner also relies on declaration testimony of a technical expert, Dr.
`Giora J. Tarnopolsky (Ex. 2001, “Tarnopolsky Decl.”). The record also
`includes deposition transcripts for these witnesses.1
`
`F. Grounds Asserted
`
`
`Petitioner challenges the patentability of the claims of the ’126 patent
`on the following grounds (Pet. 8):
`
`Claim(s)
`1, 4–6, and 12
`1, 3–6, and 12
`10 and 11
`10 and 11
`1–6 and 10–12
`2
`
`Reference(s)
`
`Basis
`Pan
`§ 102(b)
`Pan and Mao
`§ 103(a)
`Pan and Roen
`§ 103(a)
`Pan, Roen, and Mao
`§ 103(a)
`§ 102(e) Yokai
`§ 103(a) Yokai
`
`
`1 Exhibit 1020 (“Tarnopolsky Dep.”), Exhibit 2005 (“Coughlin I Dep.”), and
`Exhibit 2008 (“Coughlin II Dep.”).
`
`
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`Case IPR2017-01607
`Patent No. 8,692,126
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`
`
`
`
`III. ANALYSIS OF CHALLENGES
`
`
`
`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) (2016) 2; 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 has proposed a construction for several claim terms: (1)
`“wired circuit board”; (2) “suspension board with circuit”; and (3) “stepped
`portion.” Pet. 17–20. Patent Owner responded it is “of the view that these
`claim elements (and all the other elements not discussed) can be afforded
`their plain and ordinary meaning.” Prelim. Resp. 7. In our Institution
`Decision, we determined that these terms did not require construction at that
`stage. Institution Dec. 7 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`
`2 A recent amendment to this rule changing the claim construction standard
`does not apply here because the Petition was filed before November 13,
`2018. See “Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board,” 83
`Fed. Reg. 51,340 (Oct. 11, 2018).
`
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`200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy
`need be construed and only to the extent necessary to resolve the
`controversy)). Neither party has argued post-institution that these terms
`need be construed. We conclude that no further construction of these terms
`is necessary.
`In our Rehearing Decision, we construed the term “conductive layer
`formed on the insulating layer” appearing in all the challenged claims.
`Rehearing Dec. 4–7. Petitioner contended that the broadest reasonable
`construction of “formed on the insulating layer” should not require the
`conductive layer to be formed directly on the insulating layer, without any
`intervening layer. Paper 11, 4. In granting the rehearing request, we agreed
`with that construction, reversing our construction of “formed on” in the
`Institution Decision. Rehearing Dec. 5. We were persuaded mainly by the
`example (Example 1) described in the ’126 patent in which the conductive
`layer is formed directly on a thin metallic seed layer3 of chromium:
`Then, over the metal supporting board, the insulating base
`layer, and the stepped base layer, a chromium thin film and a
`copper thin film were successively formed by a sputtering
`method to form a metal thin film. Thereafter, on the surface of
`the metal thin film, a plating resist was formed from a dry film
`resist into a pattern reverse to that of a conductive layer and a
`stepped conductive layer. Then, the conductive layer and the
`stepped conductive layer were simultaneously formed by
`electrolytic copper plating.
`Ex. 1001, col. 15, ll. 38–46 (emphasis added). We relied also on the Federal
`Circuit’s decision in AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239
`
`3 The ’126 patent does not specifically use the term “seed layer.” However,
`expert testimony establishes that the ’126 patent discloses the need for
`sputtered chromium seed films before forming the copper conductive layers
`on the insulating layer. Coughlin I Decl. ¶ 174.
`
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`(Fed. Cir. 2001). There, the Federal Circuit determined that the claim term
`“formed on” does not mean “directly in contact with.” Id. at 1251. As the
`Court explained:
`[T]he court has determined that the claim language and the
`specification permit the presence of interlayers between layers.
`Notably, the claim does not state that each layer is “formed
`directly on” the preceding layer. Accordingly, we determine
`that “formed on” does not mean “directly in contact with.”
`Rehearing Dec. 6 (quoting AFG Indus., 239 F.3d at 1251). As a
`consequence, we reconsidered our decision and instituted trial on
`Petitioner’s §§ 102 and 103 challenges based on Yokai. Id. at 7. In Yokai,
`as in Example 1, a seed film layer 7 separates the conductive layer from the
`insulating layer. See Ex. 1004, Fig. 8m; ¶ 191.
`Patent Owner contends this construction “departs from the plain and
`ordinary meaning of the claims and was erroneous.” PO Resp. 23. Patent
`Owner proposes a construction of “formed on” that would require contact
`between the conductive and insulating layers. Id. at 24–25. For support,
`Patent Owner relies on a dictionary excerpt (Ex. 2002) that defines “on” as
`“in contact with,” and points to instances in the ’126 patent where the term
`“formed on” refers to layers that are in contact with no intervening layers.
`PO Resp. 24–27.
` Patent Owner addresses Example 1 by arguing that the example “is
`not the only way to achieve the claimed subject matter.” Id. at 27–28. We
`are not persuaded by this argument. The fact that “other ways” may be
`available does not alter the fact that Patent Owner contends that Example 1,
`with its seed layer, is within the scope of the ’126 patent claims. Id. at 30;
`Tr. 55:4–16.
`
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`Alternatively, Patent Owner asserts that because chromium is
`
`conductive, the chromium seed layer should be identified as the claimed
`conductive layer. Id. at 30. This argument is unavailing for several reasons.
`First, chromium is a poor conductor; also, the purpose of the seed layer is
`not to conduct signals, but to assist in electroplating by promoting adhesion
`of the conductive layer. Coughlin I Decl. ¶¶ 173, 174; Coughlin II Decl. ¶ 7;
`Tarnopolsky Dep. 55:18–22; Tr. 57:19–22. Second, the ’126 patent does not
`refer to the chromium layer as a conductive layer. The description of
`Example 1 distinguishes between the copper conductive layer and the
`chromium layer. Ex. 1001, col. 15, ll. 38–46. Moreover, we are not
`persuaded by Patent Owner’s dictionary definition of “on.” This extrinsic
`evidence is, at best, inconclusive,4 and in any event, unconvincing because it
`conflicts with the intrinsic record. Phillips v. AWH Corp., 415 F.3d 1303,
`1322–23 (Fed. Cir. 2005) (en banc) (‘‘[J]udges . . . may also rely on
`dictionary definitions when construing claim terms, so long as the dictionary
`definition does not contradict any definition found in or ascertained by a
`reading of the patent documents.’’) (citation omitted).
`
`In summary, we are persuaded that the broadest reasonable
`interpretation of “conductive layer formed on the insulating layer” does not
`require the conductive layer to be formed directly on the insulating layer
`without any intervening layer.
`B. Level of Ordinary Skill
`
`Petitioner contends a person or ordinary skill at the relevant time
`frame (August 2009) would have had “(1) a Bachelor’s degree in electrical
`
`
`4 As Petitioner points out, among the many alternative dictionary definitions
`of “on” is “in close proximity.” Pet. Reply 3.
`
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`Case IPR2017-01607
`Patent No. 8,692,126
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`engineering or computer engineering, and approximately five years of
`experience working in the area of circuit board design in the Hard Disk
`Drive (HDD) industry or (2) a Master’s degree in engineering and up to two
`years of experience working in the area of disc drive technology, including
`circuit board design.” Pet. 16 (citing Coughlin I Decl. ¶ 29).
`
`Patent Owner does not contest this definition in its Preliminary
`Response or Response. Patent Owner’s expert, Dr. Tarnopolsky, however,
`states a disagreement: “In my opinion, this definition is not precise and does
`not fully articulate the level of skill.” Tarnopolsky Decl. ¶ 73. According to
`Dr. Tarnopolsky,“the ordinarily skilled artisan in the technology field of the
`’126 patent would have either a Bachelor’s degree in electrical engineering,
`chemistry, materials’ science, or a similar field and three years of work
`experience in the disk drive industry, or a Master’s degree in electrical
`engineering, chemistry, materials’ science, or a similar field and one year of
`work experience in the disk drive industry.” Id. at ¶ 74.
`
`For purposes of this Decision, we adopt Petitioner’s formulation.
`However, we regard any differences with Dr. Tarnpolsky’s definition as
`immaterial, for our decision would be the same under either definition.
`C. Challenges Based on Pan alone and Pan and Mao
`
`1. Overview of Pan
`
`Pan discloses that “[a] typical hard disk drive includes a head disk
`assembly (HDA) and a printed circuit board assembly.” Ex. 1003, col. 1, ll.
`15–16. The HDA includes at least one magnetic disk, a spindle motor for
`rotating the disk, and a head stack assembly (HSA) that includes a slider
`with at least one transducer or read/write element for reading and writing
`data. Id. at col. 1, ll. 17–20. The typical HSA includes a head gimbal
`
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`assembly (HGA) that extends from the actuator assembly and biases the
`slider toward the disk. Id. at col. 1, ll. 25–27.
`The HGAs described in Pan include a trace suspension assembly
`(TSA) flexure 204 with a conductive layer, an insulating layer, and a
`supporting layer. Id. at Figs. 2A, 2B; col. 5, ll. 53–54; col. 6, ll. 3–35. The
`conductive traces on flexure 204 form a wired circuit board. Id. at col. 6,
`ll. 3–9; Coughlin I Decl. ¶70.
`These features are illustrated in Figure 2B of Pan, reproduced here (as
`annotated by Petitioner):
`
`
`
`Pet. 25. Figure 2B (annotated) is a cross-sectional view of a head gimbal
`assembly. Ex. 1003, col. 5, ll. 40–44. The HGA includes load
`beam 202 that attaches to an actuator arm of an HSA. Id. at col. 5, ll. 49–53.
`The TSA also includes flexure 204 that is coupled to load beam 202. Id. at
`col. 5, ll. 53–56. Insulating layer 205 may be formed of or include
`polyimide. Id. at col. 6, ll. 34–35. Pan describes conductive features 216 as
`follows: “[a]lso, the conductive features may be configured such that they
`
`
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`fully or partially surround the opening within the flexure 204.” Id. at col. 6,
`ll. 39–41.
`As shown in Fig. 2B, load beam 202 also includes a load beam
`registration feature, through hole 220, formed within the load beam. Id. at
`col. 5, ll. 57–61. The load beam registration feature serves as a positional
`reference. Id. at col. 5, ll. 63–66.
`
`2. Anticipation of claims 1, 4–6 and 12 by Pan
`Petitioner contends that claims 1, 4–6, and 12 of the ’126 patent are
`
`anticipated by Pan. Pet. 21–35. “A claim is anticipated only if each and
`every element as set forth in the claim is found, either expressly or
`inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
`v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When
`evaluating a single prior art reference in the context of anticipation, the
`reference must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`Petitioner sets forth an element-by-element analysis of these claims in
`relation to Pan at pages 21–35 of the Petition. Petitioner contends that Pan
`meets each element of these claims. For example, Petitioner relies on Pan’s
`Figure 2B, reproduced supra, as illustrating the “reference hole” and
`“stepped portion” recited in the claims. Pet. 27–28 (claim 1); 34 (claim 12).
`Petitioner also identifies the “unlabeled supporting layer” in Figure 2B as the
`claimed metal supporting layer. Id. at 25 (citing Coughlin Decl. ¶ 75).
`
`Petitioner identifies the “stepped” portions recited in the claims with
`the features illustrated in following Figure 2B annotated by Petitioner:
`
`
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`
`
`
`Pet. 29. Figure 2B of Pan, annotated by Petitioner, shows “stepped”
`portions in insulating layer 205 and conductive feature 216.
`
`Patent Owner challenges this analysis on two grounds. First, Patent
`Owner argues that Pan does not disclose the “metal supporting layer” recited
`in the claims. PO Resp. 12–15. Next, Patent Owner asserts that Pan does
`not disclose a “stepped portion” that surrounds the reference hole “on all
`sides.” Id. at 15–21. We are not persuaded by either of these arguments.
`
`Petitioner identifies the “unlabeled supporting layer” shown in
`annotated Figure 2B of Pan, supra, as the metal supporting layer. Pet. 25.
`Petitioner asserts that a person of ordinary skill would understand that the
`unlabeled supporting layer is metal. Id. We find this argument persuasive.
`Among other reasons, Petitioner points to the statement in Pan that the
`laminate flexure is “welded onto the load beam.” Id. (citing Pan, Ex. 1003,
`col. 2, ll. 12–14). Petitioner also points out that Pan, in describing TSA
`flexures of the type shown in Figure 5B, states that they include a stainless
`steel support layer. Ex. 1003, col. 1, ll. 58–59. Petitioner supports this
`
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`conclusion with credible expert testimony. Coughlin I Decl. ¶¶ 73–76.
`Moreover, Patent Owner’s argument to the contrary is contradicted by the
`testimony of its expert, Dr. Tarnopolsky, in another proceeding (IPR2018-
`00955) involving similar technology and the same parties. Ex. 1034 ¶ 161.
`There, Dr. Tarnopolsky, testifying for Patent Owner, refers to “the routine
`use of spring metal as the lower, supporting layer of a flexure.” Id. He
`further testifies that “one of ordinary skill in the art would have recognized
`that the lower supporting layer of a hard disk drive flexure is routinely made
`from spring metal.” Id. at ¶ 156.
`
`We are not persuaded by Patent Owner’s attempt to explain this
`inconsistency by arguing that “Dr. Tarnopolsky never stated that metal is the
`only material that can be used when forming the lower supporting layer of a
`flexure as would be required for anticipation.” Paper 33, 2. As noted supra,
`when evaluating a single prior art reference in the context of anticipation, the
`reference must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d at 1480.
`In consideration of the entire record, we find, by a preponderance of the
`evidence, that a person of ordinary skill would have understood the
`supporting layer in Pan is metal.
`Patent Owner’s second argument relies on the fact that Pan’s Figure
`2B is a cross–sectional view of a gimbal assembly shown in Figure 2A.
`Prelim. Resp. 15–16. Thus, according to Patent Owner, “it does not show
`the location of the conductive feature on all sides of the opening.” Id. at 16.
`We are not persuaded by this argument. Figures 2A, 3, and 4 of Pan provide
`a top plan view of the same part. Figure 2A (annotated by Petitioner)
`follows:
`
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`
`
`
`Pet. 30. Figure 2A of Pan, annotated by Petitioner, taken together with
`cross-sectional view, 2B, supra, shows circular conductive feature 216
`surrounding the opening in flexure 204. Pet. 31. Because the conductive
`feature 216 surrounds the opening in TSA flexure 204 (the conductive
`feature 216 is illustrated in Figure. 2A by the solid-line concentric circles
`“216”), then the underlying insulating layer 205 must also surround the
`opening. Pet. 31; Coughlin I Decl. ¶ 88,
`We find that by a preponderance of the evidence those figures, taken
`together and considered in light of the Pan specification, show the
`conductive feature surrounding the opening on all sides. Consistent with the
`figures, Pan states that the conductive features “fully or partially surround
`the opening.” Ex. 1003, col. 6, ll. 39–40.
`We find no persuasive evidence supporting Patent Owner’s assertion
`that this can reasonably be read to mean that Pan’s conductive feature may
`be elliptical, while the opening is circular, producing a stepped portion on
`some but not all sides. PO Resp. 16. We are not persuaded by Patent
`Owner’s argument and expert testimony that “one of ordinary skill in the art
`would not consider Pan to foreclose” other structures. Tarnopolsky Decl. ¶
`
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`129; PO Resp. 17. Patent Owner acknowledges that inherency is not at
`issue. Tr. 45:1–3. See In re Preda, 401 F.2d 825, 826 (CCPA 1968)
`(noting that “in considering the disclosure of a reference, it is proper to take
`into account not only specific teachings of the reference but also the
`inferences which one skilled in the art would reasonably be expected to draw
`therefrom”). Instead, the test is that set forth in Kennametal, Inc. v.
`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).:
`[A] reference can anticipate a claim even if it “does not
`expressly spell out” all the limitations arranged or combined as
`in the claim, if a person of skill in the art, reading the reference,
`would “at once envisage” the claimed arrangement or
`combination. In re Petering, 49 CCPA 993, 301 F.2d 676, 681
`(1962).
`(alterations in original omitted).
`
`We have, moreover, considered Patent Owner’s additional arguments
`as to the “stepped portion” limitation and find them unconvincing. PO Resp.
`18. For example, we find Patent Owner’s argument (PO Resp. 18–20) and
`Dr. Tarnopolsky’s testimony (Tarnopolsky Decl. ¶¶ 133–135) based on the
`appearance of the concentric rings in opening 220 in Figure 2A
`unconvincing because it looks at a small feature in that figure in isolation
`from the other figures in Pan (including Figure 2B) and the descriptions of
`those figures in the specification. Because it is more consistent with the
`specification and figures of Pan, taken as a whole, we credit Dr. Coughlin’s
`testimony that Pan describes a stepped portion that surrounds the reference
`hole on all sides. Coughlin I Decl. ¶¶ 85–89.
`
`Patent Owner presents no arguments directed to Petitioner’s analysis
`of other claim elements of the ’126 patent. Nor does Patent Owner
`
`
`
`17
`
`

`

`Case IPR2017-01607
`Patent No. 8,692,126
`
`separately argue independent claim 12 or any of the dependent claims
`(claims 4–6) included in this challenge.
`Accordingly, after reviewing the entire record, and for the foregoing
`reasons and those in Petitioner’s analysis (Pet. 32–35), we find that Pan
`meets the other elements of the challenged claims. We therefore find that
`Petitioner has demonstrated by a preponderance of the evidence that claims
`1, 4–6, and 12 are anticipated by Pan.
`
`3. Obviousness of claims 1, 3–6, and 12 over Pan and Mao
`
`Petitioner contends that claims 1, 3–6, and 12 of the ’126 patent
`would have been obvious over Pan and Mao. Pet. 35–36. A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) where in evidence, so-called secondary considerations,
`including commercial success, long-felt but unsolved needs, failure of
`others, and unexpected results. Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966) (the Graham factors).5
`
`
`5 Patent Owner did not present evidence on the fourth Graham factor. We
`therefore do not consider that factor in this decision.
`
`
`
`
`18
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`

`Case IPR2017-01607
`Patent No. 8,692,126
`
`
`Petitioner presents this challenge as an alternative to its anticipation
`challenge based on Pan alone. Id. at 35. Specifically, this challenge is
`provided “[i]f the Board does not find the ‘metal supporting layer’ recited in
`claim 1 is found in the TSA flexure 204 of the [Pan] for purposes of
`anticipation.” Id. According to Petitioner, a person of ordinary skill “would
`look to combine the stainless steel material of the supporting layer of the
`TSA flexure in [Mao] with the unlabeled supporting layer of the TSA
`flexure 204 in [Pan].” Id. at 39 (citing Coughlin I Decl. ¶ 112).
`Petitioner provides an element-by-element analysis showing where
`each claim element is present in the combination of Pan and Mao. Id. at
`36–46. Petitioner also provides an explanation of the rationale for
`combining the teachings of the references. Id. at 39–41.
`Patent Owner contends that Petitioner’s obviousness analysis fails to
`address all limitations of the claims. PO Resp. 21. Patent Owner repeats its
`argument, discussed supra, that Pan does not disclose a “stepped portion”
`that surrounds a “hole” in a circuit board on “all sides.” Id. Patent Owner
`contends that Petitioner relies on Mao only for its alleged teaching of a
`“metal supporting layer.” Id. Thus, according to Patent Owner, “Petitioner
`has failed to point to disclosure of all the required claim limitations in the
`prior art.” Id. For the reasons discussed supra, we are not persuaded by
`these arguments. We have found after reviewing the record that Petitioner
`has demonstrated by a preponderance of the evidence that Pan meets these
`elements of the claims. See discussion supra. In discussing Petitioner’s
`anticipation challenge based on Pan, we determined that Pan meets the
`limitations regarding the metal supporting layer and the stepped portion
`surrounding the reference hole on all sides. See supra. We are also
`
`
`
`19
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`

`Case IPR2017-01607
`Patent No. 8,692,126
`
`persuaded, for the reasons given, by Petitioner’s argument that Mao
`describes a stainless steel supporting layer, and that a person of ordinary
`skill would have combined this teaching with Pan. Pet. 39–40. Patent
`Owner does not challenge this. Tr. 36:11–15 (“[W]e agreed that it would be
`obvious to use metal in -- for the unmarked white layer in 204 and Pan.”).
`
`Patent Owner argues further that “the petition makes no attempt to
`explain why it would have been obvious to use a ‘stepped portion’ that
`surrounds a ‘hole’ in a circuit board on ‘all sides’ when making Pan’s
`suspension.” PO Resp. 21–22. According to Patent Owner, this
`“evidentiary deficiency” cannot be remedied by production of additional
`evidence because Pan fails to mention or “attribute any significance to such
`a step.” Id. at 22.
`
`We are not persuaded by this argument for several reasons. First, in
`our discussion of anticipation, supra, we find that Pan discloses a “stepped
`portion . . . formed so as to surround on all sides the reference hole.” Thus,
`Patent Owner’s argument that because Pan does not disclose such a feature,
`Petitioner has not carried its burden for failure to “point to disclosure of all
`the required claim limitations in the prior art,” is unavailing. See id. at 21.
`For the same reason, we disagree with Patent Owner that this is an
`“evidentiary deficiency” in the Petition. Id. at 22. Finally, in light of the
`foregoing, we regard the alleged failure of Pan “to even mention or attribute
`any significance to such a step” as not convincing.
`
`Patent Owner presents no arguments directed to Petitioner’s analysis
`of other claim elements of the ’126 patent, nor does Patent Owner chall