Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 7
`Entered: December 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NITTO DENKO CORP.,
`Petitioner,
`
`v.
`
`HUTCHINSON TECHNOLOGY INCORPORATED,
`Patent Owner.
`____________
`
`Case IPR2018-00954
`Patent 7,342,750 B2
`____________
`
`
`
`Before SHEILA F. McSHANE, STACY B. MARGOLIES, and
`ALEX S. YAP, Administrative Patent Judges.
`
`YAP, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`

`

`IPR2018-00954
`Patent 7,342,750 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Nitto Denko Corp., filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1–6, 9–17, and 20–22 of
`U.S. Patent No. 7,342,750 B2 (Ex. 1001, “the ’750 patent”). Patent Owner,
`Hutchinson Technology Incorporated, filed a Preliminary Response (Paper
`6, “Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” On April 24, 2018, the Supreme Court
`held that a decision to institute under 35 U.S.C. § 318(a) may not institute on
`fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138
`S. Ct. 1348, 1355 (2018). Taking into account the arguments presented in
`Patent Owner’s Preliminary Response, we determine that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in showing the unpatentability of at least one
`challenged claim. We institute an inter partes review of all challenged
`claims (1–6, 9–17, and 20–22) of the ’750 patent, based on all grounds
`raised in the Petition.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which an inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`A.
`
`Related Matter
`
`The parties state that the ’750 patent is the subject of a pending civil
`
`action, Hutchinson Tech. Inc. v. Nitto Denko Corp., Case No. 17-cv-01992
`(D. Minn.). Pet. 3; Paper 4, 2.
`
`
`B.
`
`The ’750 Patent
`
`The ’750 patent, titled “Method for Providing Electrical Crossover in
`
`a Laminated Structure,” issued on March 11, 2008. Ex. 1001, [54], [45]. It
`issued from U.S. Patent Application No. 10/870,082, filed on June 16, 2004.
`Id. at [21], [22]. The disclosed invention generally relates to “fabricating a
`crossover structure on a laminated hard disk suspension.” Id. at 1:7–10.
`Figures 4a and 4b of the ’750 patent are reproduced below.
`
`
`
`
`
`
`Figures 4a and 4b “provide an illustration of a laminated suspension with a
`crossover electrical trace.” Id. at 3:15–17. Figure 4a shows the top view “of
`a laminated suspension using a crossover feature of the present invention,”
`while Figure 4b illustrates a cross-sectional view of the same structure. Id.
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`IPR2018-00954
`Patent 7,342,750 B2
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`at 3:51–53. The specification describes the embodiment illustrated in
`Figures 4a and 4b as follows:
`[T]he laminated suspension has a support layer 310, an insulating
`layer 320, a first electrical trace 330, a second electrical trace 340
`and an insulating covering coat 350. The second electrical trace
`340 crosses over the first electrical trace 330 at a crossover point
`410. The first electrical trace 330 may be discrete, or non-
`continuous, with a first part 420 and second part 430 of the first
`electrical trace 330 ending in contact points 440 on either side of
`the second electrical trace 340 at the crossover point 410.
`Underneath the crossover point 410, a conductive island area 450
`is patterned into the support layer 310. The conductive island
`area 450 is electrically isolated from the rest of the support layer
`310 by a gap and the second electrical trace 340 by the insulating
`layer 320. The conductive island area electrically connects the
`contact points 440 of the first electrical trace 330, allowing a
`signal to be sent from the first part 420 of the electrical trace 330
`to the second part 430. The crossover points may help to reduce
`the signal cross talk between read traces and write traces.
`Ex. 1001, 3:53–4:5.
`
`
`C.
`
`Challenged Claims
`
`Petitioner requests an inter partes review of claims 1–6, 9–17, and
`
`20–22 (“challenged claims”) of the ’750 patent. Pet. 5. Claims 1 and 12 are
`independent. Claims 2–6 and 9–11 depend directly or indirectly from claim
`1 and claims 13–17 and 20–22 depend directly or indirectly from claim 12.
`Independent claims 1 and 12, reproduced below, are illustrative of the
`challenged claims.
`A laminated suspension, comprising:
`1.
`a support layer;
`a non-continuous first trace electrically connecting a slider
`to a pre-amplifier;
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`a second trace electrically connecting the slider to the pre-
`amplifier,
`the second trace to cross over the non-continuous first
`trace at a first trace crossover point, and
`to remain electrically isolated from the non-continuous
`first trace; and
`an insulating layer isolating the non-continuous first trace
`and the second trace from the first support layer.
`Ex. 1001, 5:5–15.
`12. A hard disk drive, comprising:
`a data storage disk;
`a slider containing a magnetic read/write head to read and
`write date from the data storage disk;
`a pre-amplifier to amplify a control signal to the slider and
`the magnetic read/write head; and
`a laminated suspension, comprising:
`a support layer;
`a non-continuous first trace electrically connecting
`the slider to a pre-amplifier;
`a second trace electrically connecting the slider to
`the pre-amplifier,
`the second trace to cross over the non-continuous
`first trace at a first trace crossover point,
`yet remaining electrically isolated from the non-
`continuous first trace; and
`an insulating layer isolating the non-continuous first
`trace and the second trace from the first support
`layer.
`Ex. 1001, 5:57–6:15.
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`D.
`
`Prior Art
`
`Petitioner relies on the following prior art references:
`
`
`
`Exhibit
`
`1002
`
`1003
`
`1004
`
`Reference
`United States Patent No. 5,717,547, filed October 3,
`1996, issued February 10, 1998 (“Young”)
`
`PCT Application No. PCT/US97/20311, published May
`14, 1998 (“Carpenter”)
`
`Japanese Published Patent Application No. S61-26283,
`published February 5, 1986 (“Asami”)1
`
`Pet. 4–5. Petitioner also relies on the Declaration of Giora Tarnopolsky,
`D. Sc. (Ex. 1009, “Tarnopolsky Declaration”).
`
`Young (Ex. 1002)
`1.
`Young discloses “planar interleaved trace interconnect structures for
`connecting read/write heads to preamplifier/driver circuits wherein the trace
`interconnect structures provide reduced inductance and characteristic
`impedance” Ex. 1002, 1:23–28. Figure 5 of Young is reproduced below.
`
`
`1 The record includes a certified English translation of Asami. Ex. 1004, 5–
`8. All citations are to this certified translation.
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`
`Figure 5 “illustrates a four-trace interleaved transmission line trace array
`16B formed in a single plane on a single . . . polymide dielectric film layer.”
`Id. at 6:39–41. Young describes the embodiment as follows:
`The four interleaved traces 60A–60B and 62A–62B are shown
`as being of the same width, with traces 60A–60B connected by a
`trace bridge 61A at the MR element 26 end, and by a second
`bridging path 63A at the preamplifier 54 end, and with traces
`62A–62B connected by a trace bridge 61B at the preamplifier 54
`end and by a second bridging path 63B at the MR sensor 26 end.
`The sec paths 63A and 63B may be transverse traces formed on
`a separate dielectric layer and connected to terminal ends of the
`trace array 16B by vias (not shown), or wires or other bridge
`interconnect paths and devices may be employed.
`Id. at 6:41–51.
`
`Carpenter (Ex. 1003)
`2.
`Carpenter discloses a “structure and method for isolating select
`service loop pairs of a trace conductor array formed integrally with a flexure
`of a head suspension assembly from unwanted interference.” Ex. 1003,
`1:21–23. Carpenter explains that its invention “relates to an integrated
`suspension and conductor structure wherein the suspension traces are
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`arranged and configured in a manner analogous to a twisted wire
`transmission pair in order to provide self-shielding of one or multiple signal
`pairs against unwanted electromagnetic noise (EMI) or radio frequency
`interference (RFI).” Id. at 1:23–27. According to Carpenter, “[a]nother
`object of the present invention is to realize crosstalk-reduced geometries for
`a multi-path, multi-layer trace array interconnecting a flying head and an
`electronic circuit within a hard disk drive.” Id. at 5:2–4. Figure 4 of
`Carpenter is reproduced below.
`
`
`
`Figure 4 depicts “in isometric projection of a further self-shielding
`embodiment of the invention[,] in which write traces are located in layers
`above and below a central layer for the read trace service loop pair.” Id. at
`6:11–14. Carpenter describes the embodiment as follows:
`In the presently preferred example, the interconnect structure 16
`includes a high dielectric polyimide film base 25 formed on the
`stainless steel flexure 14. Alternatively, the film base 25 may be
`formed directly upon the load beam 12. A first or inner pattern
`of trace links 60B, 62B, is formed on the dielectric layer 25. A
`second dielectric layer 27 is deposited on the dielectric layer 25
`over the first layer of trace links 60B and 62B. A second or outer
`pattern of trace links 60A, 62A is formed on the second dielectric
`layer 27. Conductive trace paths, such as vias 70, are defined
`through the second dielectric layer 27 at ends of related trace
`
`8
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`links, such that links 60A of the outer layer become connected to
`links 60B of the inner layer, and links 62B of the inner layer
`become connected to links 62A of the outer layer. This
`arrangement causes the links to cross over each other and realize
`electrical cross-talk
`immunity benefits attributable
`to a
`conventional twisted wire pair. We call this arrangement a
`“criss-cross” or “twisted” trace pattern.
`Id. at 8:4–16.
`
`Asami (Ex. 1004)
`3.
`Asami discloses “a printed wiring board where flexibility can be
`imparted at a desired location with excellent component attachability and
`solderability.” Ex. 1004, 5. Figure 1 of Asami is reproduced below.
`
`
`Figure 1 “is a perspective view that illustrates an embodiment of a printed
`wiring board” in Asami. Id. at 7. In Figure 1, a metal conductive pattern 3
`is formed on the top surface of insulating film 1 and connects the various
`electronic components. Id. at 6. Figure 2 of Asami is reproduced below.
`
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`IPR2018-00954
`Patent 7,342,750 B2
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`
`
`Figure 2 shows “a rear surface perspective view of the same printed wiring
`board.” Id. at 7. Through-holes are formed at 6 and 6’ (shown in Figure 1)
`and a thick metal connector 7 (shown in Figure 2) is used to connect the
`traces electrically at 6 and 6’. Id. at 6.
`
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1–6, 9–17, and 20–22 of the ’750 patent
`
`based on the asserted grounds of unpatentability set forth in the following
`table. Pet. 5.
`
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`

`IPR2018-00954
`Patent 7,342,750 B2
`
`
`Ground
`
`Reference(s)
`
`Young
`
`Basis2
`
`Claims
`Challenged
`§ 102(b) 1–4, 12–15, and 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Young and Asami
`
`§ 103
`
`5, 6, 9, 10, 16, 17,
`20, and 21
`
`Carpenter
`
`Carpenter
`
`Carpenter and Asami
`
`§ 102(b)
`
`1–4 and 12–15
`
`§ 103
`
`§ 103
`
`11 and 22
`
`5, 6, 9, 10, 16, 17,
`20, and 21
`
`For the reasons stated below, we institute an inter partes review of
`claims 1–6, 9–17, and 20–22 based on all grounds.
`
`
`II. ANALYSIS
`Level of Ordinary Skill in the Art
`
`A.
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted). Petitioner and Dr. Tarnopolsky propose the following
`definition of a person of ordinary skill in the relevant art:
`
`
`2 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’750 Patent issued was filed before that date, the pre-AIA
`statutory framework applies.
`
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`

`IPR2018-00954
`Patent 7,342,750 B2
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`
`One of ordinary skill in the art would have either: (1) a
`Bachelor’s degree in electrical engineering or a similar field and
`five years of work experience in the disk drive industry, or (2) a
`Master’s degree in electrical engineering or a similar field and
`two years of work experience in the disk drive industry.
`Pet. 35 n.5; Ex. 1009 ¶ 41. Petitioner also asserts that “[o]ne of ordinary
`skill would be aware of the general structure of a hard drive suspension, and
`the electrical properties of that suspension’s traces.” Pet. 35 n.5. Patent
`Owner does not propose an alternative definition nor does Patent Owner
`respond to Petitioner’s proposal. See generally Prelim. Resp. Based on the
`current record, we adopt Petitioner’s definition of a person of ordinary skill
`in the art for the purposes of this decision. We further determine on the
`current record that the prior art in the instant proceeding reflects the level of
`ordinary skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`
`B.
`
`Claim Construction
`
`In an inter partes review based on a petition filed prior to November
`13, 2018, claim terms in an unexpired patent are given their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b) (2012); Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Nov. 13, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`Neither party proposes any terms for construction. See generally
`Pet. 6–7; Prelim. Resp. 12. Based on our review of the record before us, we
`determine that no claim terms require express construction at this stage of
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`12
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`IPR2018-00954
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`the proceeding to resolve the controversy regarding whether Petitioner has
`shown a reasonable likelihood to prevail in establishing the unpatentability
`of at least one of the challenged claims. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (holding that only claim terms that “are in controversy” need to
`be construed and “only to the extent necessary to resolve the controversy”).
`
`
`C. Grounds 3 Through 5 Involving Carpenter
`
`Ground 3 – Anticipation by Carpenter
`1.
`“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). “A reference may anticipate inherently if a claim
`limitation that is not expressly disclosed ‘is necessarily present, or inherent,
`in the single anticipating reference.’” The inherent result must inevitably
`result from the disclosed steps; ‘[i]nherency . . . may not be established by
`probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1379–80
`(Fed. Cir. 2012) (citations omitted); see also Endo Pharm. Solutions, Inc. v.
`Custopharm Inc., 894 F.3d 1374, 1382 (Fed. Cir. 2018) (explaining how in
`In re Omeprazole Patent Litigation, 483 F.3d 1364 (Fed. Cir. 2007), a claim
`limitation was found to be inherent in the prior art because “it would result
`each and every time a skilled artisan followed the prior art process.”)
`(emphasis added).
`Petitioner, relying on the supporting testimony of Dr. Tarnopolsky
`(Ex. 1009), contends that Carpenter anticipates claims 1–4 and 12–15.
`
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`Pet. 41–47; see also Ex. 1009 ¶¶ 124–143. Patent Owner contends,
`however, that “‘Carpenter [] fails to disclose ‘an insulating layer isolating
`the non-continuous first trace and the second trace from the first support
`layer,’ as required by claims 1 and 12.” Prelim. Resp. 20–24. On this
`record, as discussed below, we are persuaded that Petitioner has established
`a reasonable likelihood that it would prevail in showing that claims 1–4 and
`12–15 are unpatentable as anticipated by Carpenter.
`
`a. Claim 1
`With respect to independent claim 1, addressed in the Petition at pages
`41 to 47, Petitioner, on the current record and notwithstanding Patent
`Owner’s arguments, has made a sufficient showing that Carpenter
`anticipates this claim.
`Claim 1 recites a “laminated suspension.” Ex. 1001, 5:5. Petitioner,
`quoting Carpenter, states that “Carpenter explains that it relates to ‘a flexure
`for a suspension in a disk drive[,] which includes a multiple layered
`integrated conductor array arranged to provide a high level of immunity to
`electromagnetic interference and the like.’” Pet. 41–42 (citing Ex. 1003,
`4:27–29). We are sufficiently persuaded that Carpenter discloses a
`laminated suspension.
`Claim 1 further recites that the laminated suspension comprises “a
`support layer.” Ex. 1001, 5:6. Petitioner relies on the annotated version of
`Figure 4 of Carpenter as reproduced below.
`
`14
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`
`
`
`Pet. 43. Petitioner’s annotated Figure 4 of Carpenter graphically
`demonstrates how Petitioner maps the claimed limitation to Carpenter. See
`Pet. 42–43. Specifically, Petitioner points to the “lower supporting steel
`flexure 14 layer (highlighted green)” in Carpenter as the “support layer.”
`Pet. 42. Petitioner has made a sufficient showing that Carpenter discloses
`the claimed “a support layer.”
`Claim 1 further recites that the laminated suspension comprises “a
`non-continuous first trace electrically connecting a slider to a pre-amplifier”
`and “a second trace electrically connecting the slider to the pre-amplifier.”
`Ex. 1001, 5:7–10. Petitioner notes that “Carpenter discloses an interconnect
`structure 16 that includes an ‘array of e.g. two ‘twisted’ conductive traces 60
`and 62 formed of trace links[, and t]he traces connect the read/write head of
`a slider to a preamplifier.’” Pet. 43 (citing Ex. 1003, 7:15–18, 28–37). We
`are sufficiently persuaded that Carpenter discloses the claim limitations, “a
`non-continuous first trace electrically connecting a slider to a pre-amplifier”
`and “a second trace electrically connecting the slider to the pre-amplifier.”
`Claim 1 further recites “the second trace to cross over the non-
`continuous first trace at a first trace crossover point.” Ex. 1001, 5:10–11.
`Petitioner relies on the annotated version of Figure 4 of Carpenter as
`reproduced below:
`
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`IPR2018-00954
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`
`
`
`Pet. 43–45. Petitioner’s annotated Figure 4 of Carpenter graphically
`demonstrates how Petitioner maps the claimed limitation to Carpenter. See
`Pet. 42–43. Specifically, Petitioner explains the following:
`Carpenter’s “first trace” (highlighted blue) is composed of
`separate trace segments 60A electrically connected to each other
`by lower segments 60B. This “first trace” is “non-continuous”
`in that each of the segments 60A terminate at a via 70, is
`electrically connected to a lower layer that includes segments
`60B, and then resumes after emerging from another via. The
`“second trace” (highlighted red) is composed of separate trace
`segments 62A electrically connected to each other by lower
`segments 62B. Segments 62A are located between and thus
`cross over the segments 60A that make up the “first trace.”
`Pet. 45 (emphasis added). Petitioner has made a sufficient showing that
`Carpenter discloses “the second trace to cross over the non-continuous first
`trace at a first trace crossover point.”
`Claim 1 further recites the second trace is “to remain electrically
`isolated from the non-continuous first trace.” Ex. 1001, 5:12–13. Petitioner
`notes that the “trace links that make up traces 60 and 62 are alternatively
`disposed on two different insulating layers, a lower ‘dieletric layer 25’ and
`an upper ‘second dielectric layer 27’” and the traces cross through vias 70,
`
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`IPR2018-00954
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`which “causes the links to cross over each other and realize electrical cross-
`talk immunity benefits.” Pet. 43–44 (citing 8:13–15). Petitioner further
`notes that because “segments 62A are physically separated from segments
`60A on insulating surface 27[], the segments are electrically isolated from
`each other.” Pet. 45. We are sufficiently persuaded that Carpenter discloses
`the claimed the second trace “to remain electrically isolated from the non-
`continuous first trace.”
`Claim 1 further recites that the laminated suspension comprises “an
`insulating layer isolating the non-continuous first trace and the second trace
`from the first support layer.” Ex. 1001, 5:14–15. Petitioner relies on the
`annotated version of Figure 4 of Carpenter as reproduced below:
`
`
`
`Pet. 46. Petitioner’s annotated Figure 4 of Carpenter graphically
`demonstrates how Petitioner maps the claimed limitation to Carpenter. See
`Pet. 45–46. Specifically, Petitioner points to “a ‘dielectric polyimide film
`base 25 formed on the stainless steel flexure 14’” as disclosing the limitation
`at issue. Pet. 45. According to Petitioner, “[t]his layer [] separates and thus
`insulates the traces from the bottom steel layer.” Id. Petitioner’s declarant,
`Dr. Tarnopolsky, further explains that the dielectric layer “serves to
`physically separate and insulate traces 60 and 62 from the support steel layer
`14.” Ex. 1009 ¶ 134.
`
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`
`Patent Owner argues that even though “Carpenter discloses a unique
`two insulating layer structure (dielectric film layers 25 and 27 in Fig. 4)[,
`n]either of these dielectric film layers are an insulating layer that isolates a
`non-continuous first trace and a second trace from a first support layer as
`required by claims 1 and 12.” Prelim. Resp. 21–24. Patent Owner relies on
`the annotated version of Figure 4 of Carpenter as reproduced below:
`
`
`Prelim. Resp. 23. Patent Owner’s annotated Figure 4 shows the relative
`position of dielectric layers 25 and 27 and steel flexure 14. Patent Owner
`contends that the “dielectric film layer 25, designated the ‘insulating layer’
`by Petitioner, actually isolates the second dielectric polyimide film layer 27
`from the support 14. []It does not isolate the traces 60A and 62A from the
`support layer 14.” Id. at 22 (internal citations omitted).
`On the current record, Petitioner has made a sufficient showing that
`Carpenter discloses that the laminated suspension comprises “an insulating
`layer isolating the non-continuous first trace and the second trace from the
`first support layer.” The claim requires “an insulating layer isolating the
`non-continuous first trace and the second trace from the first support layer.”
`Here, Petitioner points to dielectric layer 25 as the insulating layer. Pet. 45.
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`Patent Owner does not dispute that a dielectric layer can act as an insulating
`layer. And, as shown in Figure 4 of Carpenter, the non-continuous first trace
`60 and the second trace 62 are above the insulating layer (dielectric layer 25)
`while the first support layer (support steel layer 14) is located below the
`insulating layer. Therefore, the insulating layer (dielectric layer 25) isolates
`the non-continuous first trace 60 and the second trace 62 from the first
`support layer (support steel layer 14). Hence, based on the record before us,
`we are persuaded that Carpenter discloses “an insulating layer isolating the
`non-continuous first trace and the second trace from the first support layer.”
`For the foregoing reasons, Petitioner has shown a reasonable
`likelihood that it would prevail in establishing that claim 1 is anticipated by
`Carpenter.
`
`b. Claim 12
`Independent claim 12 recites similar limitations as in claim 1 with the
`main differences being that claim 12 requires the “laminated suspension” be
`part of a “hard disk drive,” which also includes “a data storage disk,” “a
`slider containing a magnetic read/write head to read and write date from the
`data storage disk,” and “a pre-amplifier to amplify a control signal to the
`slider and the magnetic read/write head.” Compare Ex. 1001, 5:5–15, with
`id. at 5:57–6:15. We have reviewed the evidence and arguments provided
`by Petitioner, including the relevant portions of the supporting declaration of
`Dr. Tarnopolsky, and are persuaded, based on the current record, that
`Petitioner has shown a reasonable likelihood that it would prevail in
`establishing that Carpenter anticipates claim 12. With regard to the
`limitations in claim 12 that are not in claim 1 (i.e., “a data storage disk,” “a
`slider containing a magnetic read/write head to read and write date from the
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`data storage disk,” and “a pre-amplifier to amplify a control signal to the
`slider and the magnetic read/write head”), Petitioner states the following:
`This [laminated] suspension is incorporated into a “hard disk
`drive 30.” (Id. at 6:33-36; Fig. 1.) The drive includes, among
`other things, a “storage disk 36” and a “load beam assembly 10.”
`(Id. at 7:2-10; Fig. 1.) The load beam assembly 10 includes a
`“stainless steel load beam 12” and “flexure 14.” (Id. at 7:25-26;
`Fig. 1.) The flexure includes an “array of e.g.[,] two ‘twisted’
`conductive traces” that form an “interconnect structure 16.” (Id.
`at 7:28-32.) At one end of the load beam, interconnect structure
`16 connects to a “transducer head slider 20” with a “dual-
`element (four conductor) thin film magneto-resistive read/write
`structure 26 . . . .” (Id. at 7:28-37; Fig. 1.) At the other end of
`the load beam, the interconnect structure is connected to a
`“semiconductor chip 54 forming [a] read preamplifier/write
`driver circuit.” (Id. at 7:15-18; see also Fig. 1.)
`Pet. 42 (emphases added); Ex. 1009 ¶ 128. At this juncture, Petitioner has
`sufficiently shown that Carpenter discloses the claimed hard disk drive
`comprising “a data storage disk; a slider containing a magnetic read/write
`head to read and write date from the data storage disk; [and] a pre-amplifier
`to amplify a control signal to the slider and the magnetic read/write head.”
`Therefore, for the foregoing reasons, Petitioner has shown a
`reasonable likelihood that it would prevail in establishing that claim 12 is
`anticipated by Carpenter.
`c. Claims 2–4 and 13–15
`We have also reviewed Petitioner’s evidence and arguments regarding
`dependent claims 2–4 and 13–15. Pet. 46–47; Ex. 1009 ¶¶ 135–143. In its
`Preliminary Response, Patent Owner does not raise any arguments, aside
`from those considered above with respect to claims 1 and 12. We determine
`on this record that Petitioner has sufficiently shown that Carpenter discloses
`the limitations of claims 2–4 and 13–15. Accordingly, on this record, we
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`determine that Petitioner has shown a reasonable likelihood of prevailing in
`demonstrating that Carpenter anticipates claims 2–4 and 13–15.
`
`2. Ground 4 – Obviousness by Carpenter
`A claim is unpatentable under § 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) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations).3 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`An invention “composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.” KSR, 550 U.S. at 418. Rather, to establish
`obviousness, it is petitioner’s “burden to demonstrate both that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention, and that the skilled artisan
`would have had a reasonable expectation of success in doing so.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`(quotations omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner
`
`
`3 Patent Owner, at this stage of the proceeding, has not presented evidence
`of secondary considerations.
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`cannot satisfy this burden by “employ[ing] mere conclusory statements” and
`“must instead articulate specific reasoning, based on evidence of record” to
`support an obviousness determination. Magnum Oil, 829 F.3d at 1380.
`Stated differently, there must be “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR, 550
`U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`The “factual inquiry” into the reasons for “combin[ing] references
`must be thorough and searching, and the need for specificity pervades . . . .”
`In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations
`omitted). A determination of obviousness cannot be reached where the
`record lacks “explanation as to how or why the references would be
`combined to produce the claimed invention.” TriVascular, 812 F.3d at
`1066; see Nuvasive, 842 F.3d at 1382–86 (holding that an obviousness
`determination cannot be reached where there is no “articulat[ion of] a reason
`why a [person having ordinary skill in the art] would combine” and
`“modify” the prior art teachings). This required explanation as to how and
`why the references would be combined avoids an impermissible “hindsight
`reconstruction,” using “the patent in suit as a guide through the maze of
`prior art references, combining the right references in the right way so as to
`achieve the result of the claims in suit.” TriVascular, 812 F.3d at 1066; In
`re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011). We analyze the
`asserted grounds based on obviousness with these principles in mind.
`Petitioner contends that claims 11 and 22 are unpatentable as obvious
`under 35 U.S.C. § 103 based on Carpenter. Pet. 47–48. Petitioner relies on
`the supporting testimony of Dr. Tarnopolsky (Ex. 1009). See, e.g., Ex. 1009
`¶¶ 144–151. In its Preliminary Response, Patent Owner does not raise any
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`arguments, aside from those considered above with respect to Ground 3.
`Prelim. Resp. 24. We have reviewed Petitioner’s evidence and arguments
`regarding claims 11 and 22 and, on this record, we are persuaded that
`Petitioner has established a reasonable likelihood that it would prevail in
`showing unpatentability of claims 11 and 22 with regard to Ground 4.
`
`Ground 5 – Obviousness by Carpenter in View of Asami
`3.
`Petitioner, relying on the supporting testimony of Dr. Tarnopolsky
`(Ex. 1009), contends that dependent claims 5, 6, 9, 10, 16, 17, 20, and 21 are
`obvious under 35 U.S.C. § 103 by Carpenter in view of Asami. Pet. 48–58;
`see also Ex. 1009 ¶¶ 152–186. Patent Owner contends, however, that
`(1) “the Petit