Trials@uspto.gov
`571-272-7822
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`
` Paper No. 7
`Filed: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NITTO DENKO CORP.,
`Petitioner,
`
`v.
`
`HUTCHINSON TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`IPR2018-00955
`Patent 6,965,499 B1
`____________
`
`
`Before SHEILA F. McSHANE, STACY B. MARGOLIES, and
`ALEX S. YAP, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper No. 7
`Filed: December 4, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NITTO DENKO CORP.,
`Petitioner,
`
`v.
`
`HUTCHINSON TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`IPR2018-00955
`Patent 6,965,499 B1
`____________
`
`
`Before SHEILA F. McSHANE, STACY B. MARGOLIES, and
`ALEX S. YAP, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
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`IPR2018-00955
`Patent 6,965,499 B1
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`
`I. INTRODUCTION
`A. Background
`Nitto Denko Corp. (“Petitioner”)1 filed a Petition requesting inter
`partes review of claims 1–23 and 25 (“the challenged claims”) of U.S.
`Patent No. 6,965,499 B1 (Ex. 1001, “the ’499 patent”). Paper 1 (“Pet.”).
`Hutchinson Technology Inc. (“Patent Owner”) filed a Preliminary Response
`to the Petition. Paper 6 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the [P]etitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`We determine that Petitioner has demonstrated that there is a
`reasonable likelihood that it would prevail with respect to at least one of the
`challenged claims. For the reasons described below, we institute an inter
`partes review of claims 1–23 and 25 of the ’499 patent.
`B. Related Proceedings
`Petitioner and Patent Owner indicate that the ’499 patent is at issue in
`the district court proceeding Hutchinson Tech. Inc. v. Nitto Denko Corp.,
`Case No. 17-cv-01992 (D. Minn.). Pet. 4; Paper 4, 2. The parties also
`indicate that the ’499 patent is at issue in IPR2018-00956. See Pet. 4; Paper
`4, 3.
`
`C. The ’499 Patent
`The ’499 patent is titled “Head Suspension Configured For Improved
`
`Thermal Performance During Solder Ball Bonding To Head Slider,” and
`
`1 Petitioner also identifies other real parties-in-interest. Pet. 4.
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`issued on November 15, 2005, from an application filed on April 23, 2003.
`Ex. 1001, [22], [45], [54]. The ’499 patent claims priority to U.S.
`Provisional Application No. 60/375,596, filed on April 25, 2002. Id. at [60].
`
`The ’499 patent is directed to the head suspension for a hard disk
`drive. See Ex. 1001, 1:14–20, 2:15–28. The head suspension includes a
`supporting arm and a flexure, which includes a stainless steel support layer
`and conductive traces that transmit signals to and from the head slider,
`where the head slider is aerodynamically designed to “fly” on an air bearing
`generated by a spinning hard drive disk. Id. at 1:28–32, 3:28–36. Figure 3,
`which is a top view of a head suspension, is reproduced below. Id. at 2:63–
`65.
`
`Figure 3, reproduced above, depicts head suspension 100, head slider 105,
`head slider bonding pads 106, trace bonding pads 132, and solder balls 134.
`Ex. 1001, 3:28–43. Solder balls 134 are applied at the juncture of head
`slider bonding pads 106 and trace bonding pads 132 to electrically connect
`head slider 105 to traces 130. Id. at 3:43–45. More specifically, the
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`structure of the head suspension is directed “to reduce the mechanical and
`thermal effects of a solder ball bonding process on the head suspension or
`head suspension component during solder ball bonding of the head slider to
`the electrical traces.” Id. at 2:27–31.
`
`Claims 1, 12, and 19, reproduced below, are the challenged
`independent claims of the ’499 patent.
`1. A head suspension or head suspension component
`configured for solder ball bonding of a head slider to electrical traces
`on the head suspension or head suspension component, the head
`suspension or head suspension component comprising:
`electrical traces formed from electrically conductive
`material, the electrical traces including a bonding region being
`generally planar with other portions of the electrical traces and
`adapted for solder ball bonding to a head slider; and
`a support structure including a generally planar layer of
`spring metal providing support for at least portions of the
`electrical traces, the planar layer of suspension material
`including a head slider mounting region adapted to receive the
`head slider, with the spring metal configured not to extend in an
`area beneath the bonding region to reduce mechanical and
`thermal effects on the head suspension or head suspension
`component during solder ball bonding of the head slider to the
`electrical traces.
`12. A flexure comprising:
`
`a slider bonding region on a stainless steel layer that is in
`
`a plane with other portions of the flexure adapted to receive a
`head slider;
`
`electrical traces including bonding pads located adjacent
`to the slider bonding region that are generally planar to other
`portions of the traces; and
`
`a support structure for supporting the bonding pads to
`reduce mechanical and thermal effects of a solder ball bonding
`
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`process on the flexure during solder ball bonding of a head
`slider to the electrical traces.
`
`19. A wireless head suspension assembly including:
`a generally planar spring metal layer including a slider
`mounting region having an edge;
`a head slider having bond pads mounted to the slider
`mounting region with the bond pads beyond the edge of the
`slider mounting region and non-planar with the spring metal
`layer;
`
`conductive traces having spring metal layer-free ends of
`sufficient length to provide mechanical and thermal solder ball
`bonding isolation extending from the spring metal layer and
`terminating at planar bond pads in a plane generally parallel to
`the spring metal layer and adjacent to the head slider bond pads;
`and
`
`solder ball bonds between the conductive trace bond pads
`and the head slider bond pads.
`Ex. 1001, 6:48–67, 7:43–54, 8:11–24.
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`D. Asserted Grounds of Unpatentability
`Petitioner assert the following grounds of unpatentability:
`Ground Claims
`Prior Art
`§ 1022
`1, 7, 8, 11, 12,
`Tsuchiya3
`14, 19, and 23
`Tsuchiya and Albrecht4
`4 and 17
`9, 10, and 20–22 Tsuchiya and Arya5
`5, 6, and 18
`Tsuchiya, Albrecht, and Arya
`1–3, 7–16, 19–
`Zeng6 in view of one of ordinary skill
`23, and 25
`in the art (as evinced by Arya and
`Tsuchiya)
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`Pet. 6.
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review based on a petition filed prior to November
`13, 2018, 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) (2012). Under that
`standard, and absent any special definitions, we give claim terms their
`ordinary and customary meaning, as they would be understood by one of
`
`
`2 Petitioner asserts that Tsuchiya is prior art to the ’499 patent under
`§ 102(b). Pet. 6.
`3 Japanese Unexamined Patent Application Publication No. 2001-43647
`(published February 16, 2001). Ex. 1002, 1–10. We refer to the English
`translation (id. at 12–32) of the reference. Petitioner provides an affidavit
`attesting to the accuracy of the translation. Id. at 11.
`4 U.S. Patent No. 5,821,494 (issued October 13, 1998). Ex. 1004.
`5 U.S. Patent No. 5,889,636 (issued March 30, 1999). Ex. 1005.
`6 U.S. Patent No. 6,697,216 B2 (issued February 24, 2004). Ex. 1009.
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`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`preambles of claims 1, 12, and 19
`Petitioner alleges that the preamble language of claims 1, 12, and 19,
`such as the recitation of “head suspension or head suspension component”
`that is “configured for solder ball bonding of a head slider to electrical traces
`on the head suspension or head suspension component” is not limiting
`because the rest of the claim defines a structurally complete invention. Pet.
`7–8. Patent Owner presents no arguments regarding the preamble language.
`See Prelim. Resp. 6–14. At this time, it is not necessary to address this
`issue. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`“mechanical and thermal effects”
`Petitioner argues that the term “reduce mechanical and thermal
`effects” of claims 1 and 12 is the intended use of the claimed structure and
`does not represent a limitation of the claim. Pet. 8–9 (citing Boehringer
`Ingelheim Vetmedica, Inc. v. Shering-Plough Corp., 320 F.3d 1339, 1345
`(Fed. Cir. 2003); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
`1305 (Fed. Cir. 1999)). Petitioner asserts that claims 1 and 12 require a
`“spring metal” layer or “support structure” with structural characteristics,
`that the claim language serves to limit the claims, and although that structure
`is considered, the intended purpose represented by “reduce mechanical and
`thermal effects,” “does not serve to impose any further structural limitations
`of the claims.” Id. at 9.
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`In contrast, Patent Owner argues that the claim limitation of “reduce
`mechanical and thermal effects” of claims 1 and 12 should be afforded
`patentable weight. Prelim. Resp. 6–11. Patent Owner alleges that the
`limitation cannot be ignored, even if it recites an intended use or purpose.
`Id. at 7. Patent Owner alleges that the cases that Petitioner relies upon for its
`view that the limitation does not impose any further structural limitation are
`distinguishable because they only apply in instances where the functional
`limitation is in the preamble of the claim. Id. at 10–11. Patent Owner
`contends that the term “configured to” of claim 1 does not merely mean
`“capable of,” but is narrower in construction, and the specification and the
`file history supports the significance of the limitation. Id. at 7–10. Patent
`Owner further alleges that claim 1 is not merely limited to spring metal that
`terminates prior to reaching the area beneath the bonding area, but also that
`the “spring metal” is “configured . . . to reduce mechanical and thermal
`effects.” Id. at 8. Patent Owner also refers to Petitioner’s failure to present
`arguments on the “mechanical and thermal” claim limitation of claim 19 and
`alleges that there is no distinction in its recitation from that of claims 1 and
`12. Id. at 12.
`Patent Owner additionally argues that there should be a distinction
`drawn between the “mechanical” and “thermal” effects limitations in the
`claim 1 and 12 limitation of “reduce mechanical and thermal effects,” and
`the claim 19 limitation of “mechanical and thermal solder ball bonding
`isolation.” Prelim. Resp. 13. Patent Owner refers to the specification and
`prosecution history of the ’499 patent, and alleges that in that light, the
`“mechanical” limitation has “disclosed support structures and the like are
`configured such that ‘traces are free to distort as needed during the bonding
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`process,’” and for the “thermal” limitation “the claimed structure ‘reduces
`the thermal transfer of heat generated during the solder ball bonding process
`to the head slider mounting region through the layer of spring metal.’” Id. at
`13–14 (citing Ex. 1001, 3:65–4:1, 4:25–28, 4:37–39; 5:33–34; Ex. 1006,
`84). Petitioner does not address this issue in its Petition.
`The phrase “mechanical and thermal” is used differently across claims
`1, 12, and 19. In claim 1, the phrase is included as part of the recitation of
`“the spring metal configured not to extend in an area beneath the bonding
`region to reduce mechanical and thermal effects . . . ,” in claim 12 it is part
`of “a support structure for supporting the bonding pads to reduce mechanical
`and thermal effects,” and in claim 19 it is part of “conductive traces having
`spring metal layer-free ends of sufficient length to provide mechanical and
`thermal solder ball bonding isolation.”
`At this juncture, and for the purposes of this decision, we consider the
`phrases “to reduce thermal and mechanical effects” of claims 1 and 12 and
`“to provide mechanical and thermal solder ball bonding isolation” of claim
`19 to be limitations of the respective claims. “[T]here is nothing
`intrinsically wrong” with defining something “by what it does rather than by
`what it is (as evidenced by [its] specific structure or material, for example).”
`In re Swinehart, 439 F.2d 210, 212 (CCPA 1971); see also In re Schreiber,
`128 F.3d 1473, 1478 (Fed. Cir. 1997) (“A patent applicant is free to recite
`features of an apparatus either structurally or functionally.”).
`We also agree with Patent Owner that, in general, the term
`“configured to” is similar to the term “made to” or “designed to” as opposed
`to the broader notion of “capable of” or “suitable for.” See Aspex Eyewear,
`Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
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`However, in claim 1 the term “configured not to” is directly applied to a
`specific structure and its configuration (“the spring metal configured not to
`extend in an area beneath the bonding region”). There is no clear indication
`in the claim that “configured” should be also applied “to reduce mechanical
`and thermal effects.” Therefore it is unclear whether the “configured”
`language has any impact as to whether the phrase “to reduce mechanical and
`thermal effects” is limiting.
`As to the issue of the distinction that Patent Owner advocates between
`“mechanical” and “thermal” effects, on the current record, we decline to
`limit the terms as Patent Owner argues. The specification discusses thermal
`and heat isolation in several instances, however, it identifies the instance
`where the bonded solder ball is simultaneously cooling (thermal) and
`shrinking, which may result in mechanical distortion.7 See Ex. 1001, 1:61–
`2:9. For the purposes of this decision, we will consider the term
`“mechanical and thermal effects” to include instances with simultaneous or
`concurrent mechanical and thermal effects such as could be found with
`solder ball cooling, for instance.
`Claims 9 and 10
`Petitioner points to the portion of claim 9 that recites “the dielectric
`
`layer provides support for the bonding region when the is configured not to
`extend beneath the bonding region,” noting where language appears to be
`missing. Pet. 10. Petitioner argues that there are multiple possible
`corrections that could be made to claim 9, such as “the [dielectric layer] is
`
`
`7 We recognize that the terms “heat” and “heating” are used in the
`specification and prosecution history, however, “thermal” as used in the
`claims at issue appears to be a broader term.
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`configured” or “the [spring metal] is configured.” Id. Petitioner argues that
`because there are multiple possible interpretations of the claim, the claim is
`indefinite. Id. at 11. In the event the claim is not indefinite, Petitioner
`believes that the claim should be interpreted with “spring metal” inserted.
`Id. Patent Owner states that resolution of this issue is not required to
`determine whether to institute inter partes review, and reserves the right to
`address this issue at a later time. Prelim. Resp. 14.
`
`Although we agree that claim 9 appears to have missing language, the
`record is minimal concerning multiple possible corrections and we decline to
`address the scope of the claim term at this juncture. The possible multiple
`correction issue may implicate an indefiniteness issue under 35 U.S.C.
`§ 112, which is not one of the bases for an inter partes review. See 35
`U.S.C. § 311(b). If the scope and meaning of the claims cannot be
`determined without speculation, the differences between the challenged
`claims and the prior art cannot be ascertained. See BlackBerry Corp. v.
`MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB
`Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA
`1962)). Put another way, “[w]ithout ascertaining the proper claim scope, we
`cannot conduct a necessary factual inquiry for determining obviousness—
`ascertaining differences between the claimed subject matter and the prior
`art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`Because Petitioner’s assertions challenging claim 9, and claim 10 that
`depends from claim 9, are based on the proposed corrected construction of
`claim 9, we do not further consider here Petitioner’s challenges to claims 9
`and 10 as rendered obvious over Tsuchiya and Arya or over Zeng in view of
`a person of ordinary skill in the art. We note that the threshold for
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`institution has been met because, as discussed further below, Petitioner has
`shown a reasonable likelihood that it would prevail with respect to at least
`one of the challenged claims and review is instituted on all challenged
`claims and all grounds. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60
`(2018) (“SAS”); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360
`(Fed. Cir. 2018) (reading “the SAS opinion as interpreting the statute to
`require a simple yes-or-no institution choice respecting a petition, embracing
`all challenges included in the petition”).
`B. Asserted Anticipation of Claims 1, 7, 8, 11, 12, 14, 19, and 23
`by Tsuchiya
` Petitioner contends that claims 1, 7, 8, 11, 12, 14, 19, and 23 would
`have been anticipated by Tsuchiya. Pet. 25–40. To support its contentions,
`Petitioner provides explanations as to how the prior art discloses each claim
`limitation. Id. Petitioner also relies upon the Declaration of Giora J.
`Tarnopolsky, D.Sc. (Ex. 1007) to support its positions. Patent Owner
`counters that the Board should deny institution under 35 U.S.C. § 325(d)
`because Tsuchiya was considered during the prosecution of the ’499 patent,
`and Tsuchiya fails to disclose some claim limitations. Prelim. Resp. 15–32.
`
`At this stage of the proceeding, we are persuaded by Petitioner’s
`explanation and evidence in support of the anticipation ground. We begin
`our discussion with a brief summary of Tsuchiya, and then address the
`issues, evidence, analysis, and arguments presented by the parties.
`1. Tsuchiya (Ex. 1002)
`Tsuchiya is directed to a hard disk drive and slider holder structure
`
`which holds a slider with heads that is able to contact a disk recording
`surface of the disk device. Ex. 1002 ¶ 1. Tsuchiya discloses the
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`conventional use of a “gold ball method,” where heat is applied to the pad of
`the slider and lead wire. Id. ¶ 4, Fig. 12. Tsuchiya states that this method
`resulted in “compress[ion] along with the temperature drop after joining,” as
`well as “distortion . . . due to the action of this compression and the rigidity
`of the flexure,” where “there was the problem of not being able to maintain
`the HG [head/gimbal assembly assembly] in a prescribed posture.” Id. ¶ 15.
`To solve the problem, Tsuchiya discloses a configuration with a “flexure
`that has elasticity, functions as suspension,” and “has an open hole and a
`flexure tongue to which a slider is attached.” Id. ¶ 17. Annotated Figures 4
`and 6, reproduced below, depict the Tsuchiya configuration.
`
`
`
`In annotated Figure 4, above left, pads 41–44 (in red) are supported in part
`by insulating layer 38 (in blue), and pads extend over the openings/apertures
`21, 22 in the flexure 8 layer (in yellow). Ex. 1002 ¶¶ 36, 40, 45, 47–50. In
`annotated Figure 6, above right, slider 25 is disposed on the flexure jack
`(tongue) 20. Ex. 1002 ¶¶ 36, 44.
`
`2. 35 U.S.C. § 325(d)
` Patent Owner contends that institution should be denied under 35
`U.S.C. § 325(d). Prelim. Resp. 23–32 (citing Becton, Dickinson & Co. v. B.
`Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (PTAB Dec. 15,
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`2017) (Paper 8) (informative)). Patent Owner asserts that when the Becton
`Dickinson factors are considered, as well as Petitioner’s alleged incorrect
`statement in the Petition, the balance weighs strongly in favor of denying
`institution under Section 325(d).
`Our institution of inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
`permitted, but never compelled, to institute an IPR proceeding”). Section
`325(d) states that “[i]n determining whether to institute . . . the Director may
`take into account whether . . . the same or substantially the same prior art or
`arguments previously were presented to the Office.” In evaluating whether
`to exercise our discretion under Section 325(d), we consider several non-
`exclusive factors, known as the Becton Dickinson factors, such as:
`(1) the similarities and material differences between the
`asserted art and the prior art involved during examination;
`(2) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(3) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis
`for rejection;
`(4) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner
`relies on the prior art or Patent Owner distinguishes the prior
`art;
`(5) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(6) the extent to which additional evidence and facts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`See Becton, Dickinson, Case IPR2017-01586, slip op. at 17–18 (Paper 8)
`(formatting supplied).
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`We have analyzed the foregoing factors, in view of the record in this
`case, and we determine that the factors weigh against exercising our
`discretion under § 325(d) to deny institution.
`Patent Owner argues that factors weigh in favor of invoking § 325(d)
`because only six references were submitted in the Information Disclosure
`Statement (“IDS”) and the references included Tsuchiya and Arya. Prelim.
`Resp. 25 (citing Ex. 1006, 60). Patent Owner alleges that in the only Office
`Action, the Examiner requested that the applicant “identify how the claimed
`structure . . . defines over all the art of record[,] not just the applied art,”
`which indicates that “the Examiner was cognizant of the potential relevance
`of other references in the record.” Id. at 25–26 (citing Ex. 1006, 66). Patent
`Owner also avers that in an amendment and response to the Office Action,
`applicant sought to distinguish another reference, Pan, relied upon by the
`Examiner in the rejection. Prelim. Resp. 26 (citing Ex. 1006, 84). Patent
`Owner argues that Tsuchiya has no material differences from Pan and “the
`same two arguments that successfully distinguished Pan during prosecution
`are equally applicable to Tsuchiya,” so, even if the Examiner overlooked
`Tsuchiya, it is cumulative. Id. at 27–28.
`The record shows that applicant submitted an IDS that lists Tsuchiya
`and Arya and that the Examiner initialed that IDS. Ex. 1006, 59–61, 79.
`The Examiner, however, did not rely on either reference in rejecting the
`claims or otherwise address those references. In addition, the applicant
`submitted a machine translation of Tsuchiya, which appears to be of poor
`quality in that many of the translated words are indecipherable or difficult to
`understand in context. Id. at 37–61. Given the poor quality of the machine
`translation, the evidence does not show that the Examiner considered the
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`configuration disclosed in Tsuchiya, particularly as it relates to the support
`structure and pads for soldering. See, e.g., id. at 48–50, ¶¶ 40, 47, 48, 54.
`Moreover, the record is limited as to whether Pan is cumulative of
`Tsuchiya, and there is no indication that the Examiner considered the
`references to be cumulative. Id. Although the issue of thermal effects was
`raised in the prosecution history, which overlaps with issues here, the
`applicant distinguished Pan on some different grounds, such as its structure
`with a suspension layer with spring metal directly under the bonding region,
`unlike the structure of Tsuchiya. See Ex. 1006, 84; infra Section II.B.3.
`Therefore, we do not find that factors 1–4 favor the exercise of our
`discretion to deny the Petition.
`For factors 5 and 6, Patent Owner argues that Petitioner and its expert
`incorrectly contend that Tsuchiya does not appear on the face of the ’499
`Patent and was not considered during prosecution. Prelim. Resp. 29. Patent
`Owner also contends that Petitioner does not provide any additional
`evidence that was not available to the Examiner that would warrant
`reconsideration of Tsuchiya. Id. The evidence indicates that Tsuchiya was
`submitted during the prosecution of the ’499 patent. However, in the IDS,
`the applicant did not identify the full document number of Tsuchiya—
`identifying it as “01043647A” rather than “2001–43647A”—and that partial
`number is what appears on the cover of the ’499 patent. See Ex. 1006, 60;
`Ex. 1001, [56]. Also, the Examiner did not discuss Tsuchiya in the
`prosecution history. Additionally, Petitioner provides a different, clearer
`translation of Tsuchiya here that contains additional detail. Therefore, we do
`not find that factors 5 and 6 favor the exercise of our discretion to deny the
`Petition.
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`
`
`Weighing the Becton Dickinson factors, we determine that they weigh
`against exercising our discretion under § 325(d) to deny institution of inter
`partes review. We further consider the Petition below.
`3. Anticipation Discussion
`
`“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). The principle of inherency under anticipation requires
`that any information missing from the reference would nonetheless be
`known to be present in the subject matter of the reference, when viewed by
`persons experienced in the field of the invention. However, “anticipation by
`inherent disclosure is appropriate only when the reference discloses prior art
`that must necessarily include the unstated limitation.” Transclean Corp. v.
`Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (internal
`citation omitted); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
`1999) (that a feature in the prior art reference “could” operate as claimed
`does not establish inherency).
`
`Claims 1, 12, and 19
`
`Petitioner, relying on the supporting testimony of Dr. Tarnopolsky
`(Ex. 1007), contends that Tsuchiya anticipates claims 1, 12, and 19 of the
`’499 patent. Pet. 25–40, Ex. 1007 ¶¶ 73–97. Petitioner asserts that Tsuchiya
`discloses the preamble of claim 1 because it relates to a head gimbal
`assembly that includes a flexure that has a “plurality of leads” to electrically
`connect the slider to other hard drive components and a “solder jointing
`method” is used to connect the slider bonding pad to the lead pad. Id. at 27.
`
`
`
`17
`
`
`
`IPR2018-00955
`Patent 6,965,499 B1
`
`Petitioner contends that the limitation of electrical traces that include “a
`bonding region being generally planar with other portions of the electrical
`traces” is disclosed in Tsuchiya with its four leads and pads being generally
`planar. Id. at 28–29. Petitioner further alleges that Tsuchiya discloses a
`head slider mounting region that receives the head slider by its stainless steel
`layer and that includes a flexure jack with the head slider mounted on it. Id.
`at 29–30. Petitioner relies upon Tsuchiya’s disclosure of a steel supporting
`layer with open holes, where the pads for “the most part float[] in the air”
`over the holes, for the limitation of claim 1 that “the spring metal [is]
`configured [to] not to extend in an area beneath the bonding region to reduce
`mechanical and thermal effects.” Id. at 30. Petitioner alleges that although
`the claim language “reduce mechanical and thermal effects” of “solder ball
`bonding” is not limiting, the apertures in Tsuchiya’s stainless steel layer
`nonetheless perform these functions. Id. at 32. Petitioner refers to
`Tsuchiya’s discussion of absorbing “distortion that occurs due to the
`compression of the solder joining portion” for support. Id. at 32.
`For claim 12, Petitioner provides similar evidence and argument in
`support of its anticipation challenge. Pet. 34–36. For the claim 19 limitation
`“conductive traces having spring metal layer-free ends of sufficient length to
`provide mechanical and thermal solder ball bonding isolation,” Petitioner
`alleges that the pads of Tsuchiya are free of lower stainless steel support and
`have sufficient length “to provide mechanical and thermal solder ball
`bonding isolation.” Id. at 39. Petitioner refers to Tsuchiya’s pads that are
`“in part supported on the platform 39” of the stainless steel layer, but in “the
`most part float[] in the air” over the apertures. Id. (citing Ex. 1002 ¶ 48,
`Figs. 4, 8.) Petitioner avers that “[t]his construction reduces the ‘rigidity of
`
`
`
`18
`
`
`
`IPR2018-00955
`Patent 6,965,499 B1
`
`the flexure’ in the area of the apertures and pads and absorbs the ‘distortion
`that occurs due to the compression of the solder joining portion’ as it cools.”
`Id. (citing Ex. 1002 ¶¶ 15, 60).
`
`Patent Owner argues that, at most, Tsuchiya teaches the “mechanical
`effects” limitation of claim 1, but fails to teach the “thermal” effects portion
`of the limitation, which is reduction of the transfer of heat generated during
`solder ball bonding to the stainless steel flexure. Prelim. Resp. 16–18. More
`specifically, Patent Owner asserts that “Tsuchiya does not discuss heat
`transfer between the solder ball and spring metal layer that supports the
`slider, let alone reducing or isolating such thermal effects.” Id. at 18. Patent
`Owner also contends that Petitioner does not attempt to argue that
`Tsuchiya’s support structure inherently reduces thermal effects of solder ball
`bonding. Id. That is, according to Patent Owner, Petitioner does not provide
`evidence or argument that Tsuchiya’s apertures (holes) necessarily reduce
`the thermal effects of solder ball bonding nor does Petitioner argue that the
`mechanical effects also necessarily reduce the thermal effects. Id.
`
`Patent Owner additionally argues that Tsuchiya fails to disclose the
`planar layer of spring metal limitation of claim 1. Prelim. Resp. 20–23.
`Patent Owner refers to Tsuchiya’s Figure 5, alleging that the stainless steel
`layer is disclosed as being in “a slightly warped state” and has double bends.
`Id. at 23.
`
`For claims 12 and 19, Patent Owner makes similar arguments. See
`Prelim. Resp. 16–23.
`
`Upon this record, Petitioner has made a sufficient showing of the
`Tsuchiya’s disclosure of all the limitations of claim 1. See Pet. 26–32. As
`shown in Petitioner’s annotated version of Figure 8 of Tsuchiya, reproduced
`
`
`
`19
`
`
`
`IPR2018-00955
`Patent 6,965,499 B1
`
`below, pad 42 (in red) from the ends of the leads 32 is cantilevered over an
`opening (in yellow) in the stainless steel layer, and is bonded to the slider
`pad 29 by solder joining portion 48. See Pet. 31–32.
`
`
`As identified in the Petition, and with Dr. Tarnopolsky’s supporting
`testimony, we agree that the evidence provided, as shown in annotated
`Figure 5, supports that Tsuchiya discloses that pad 42 extends over a hole in
`the stainless steel layer, where the stainless steel portion does “not to extend
`in an area beneath the bonding region.” See Pet. 31–32; Ex. 1007 ¶¶ 79–81.
`At this juncture, we decline t
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