Trials@uspto.gov
`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.
`____________
`
`IPR2018-00956
`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.
`____________
`
`IPR2018-00956
`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)
`
`
`
`
`
`
`
`
`
`
`IPR2018-00956
`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, 4–14, 17–24, and 26 (“the challenged claims”) of
`U.S. Patent No. 6,965,499 B1 (Ex. 1101, “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, 4–14, 17–21, and 26 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 Denkom 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 IPR2018–00955. 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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`Patent 6,965,499 B1
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`issued on November 15, 2005, from an application filed on April 23, 2003.
`Ex. 1101, [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. 1101, 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. 1101, 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 electric traces.” Id. at 2:27–31.
`
`Claims 1, 12, 19, and 26, 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;
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`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.
`26. A wireless head suspension assembly, including:
`
`a generally planar spring metal layer including:
`
`
`a slider mounting region having an edge;
`
`
`lead mounting tabs adjacent to the edge of the
`
`
`mounting region; and
`
`gaps separating the tabs from the edges of the
`
`slider mounting region for providing mechanical
`
`and thermal solder ball bonding isolation;
`a head slider having bond pads mounted to the slider
`mounting region with the bond pads over the gaps and
`non-planar with the spring metal layer;
`conductive traces having ends extending over the tabs
`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.
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`Ex. 1101, 6:48–67, 7:43–54, 8:11–24, 8:49–66.
`
`
`
`Pan in view of one of ordinary skill in
`the art (as evinced by Tsuchiya)
`Pan and Ruiz4
`Pan and Albrecht5
`
`D. Asserted Grounds of Unpatentability
`Petitioner assert the following grounds of unpatentability:
`Ground Claim(s)
`Prior Art
`§ 1022
`1, 4–14, and 17–
`Pan3
`23
`1, 4–14, and 17–
`23
`24
`26
`
`§ 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
`ordinary skill in the art at the time of the invention. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`2 Petitioner assert that Pan is prior art to the ’499 patent under at least
`§ 102(e). Pet. 6.
`3 U.S. Patent No. 6,965,501 B1 (filed September 28, 2000; issued November
`15, 2005). Ex. 1103.
`4 U.S. Patent No. 5,617,274 (issued April 1, 1997). Ex. 1110.
`5 U.S. Patent No. 5,821,494 (issued October 13, 1998). Ex. 1104
`
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`preambles of claims 1, 12, 19, and 26
`Petitioner alleges that the preamble language of claims 1, 12, 19, and
`26 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. 6–15. 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, 12, and 26 is the intended use of the claimed structure
`and does not represent a limitation of the claim. Pet. 8–10 (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, 12, and
`26 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.
`In contrast, Patent Owner argues that the claim limitation of “reduce
`mechanical and thermal effects” of claims 1, 12, and 26 should be afforded
`
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`patentable weight. Prelim. Resp. 6–10, 12. 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. 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 11–12.
`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
`claims 19 and 26 limitations of “mechanical and thermal solder ball bonding
`isolation.” Prelim. Resp. 13–14. 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
`process,’” and for the “thermal” limitation “the claimed structure ‘reduces
`the thermal transfer of heat generated during the solder ball bonding process
`
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`to the head slider mounting region through the layer of spring metal.’” Id. at
`13–14 (citing Ex. 1101, 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, 19, and 26. 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,” 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,” and in claim 26 it is part of “gaps
`separating the tabs from the edges of the slider mounting region for
`providing 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, “to
`provide mechanical and thermal solder ball bonding isolation” of claim 19,
`and “for providing mechanical and thermal solder ball bonding isolation” of
`claim 26 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,
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`Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).
`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.6 See Ex. 1101, 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
`
`
`6 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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`corrections that could be made to claim 9, such as “the [dielectric layer] is
`configured” or “the [spring metal] is configured.” Id. at 10–11. 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. 14–15.
`
`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 anticipated by Pan or rendered obvious over Pan in view of a
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`person of ordinary skill in the art. We note that the threshold for 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, 4–14, and 17–23
`by Pan
` Petitioner contends that claims 1, 4–14, and 17–23 would have been
`anticipated by Pan. Pet. 21–43. 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. 1107) to support its positions. Patent Owner counters that the
`Board should deny institution because Pan fails to disclose some claim
`limitations. Prelim. Resp. 15–22.
`
`At this stage of the proceeding, as discussed supra Section II.A, we
`will not address the merits as to the assertions for claims 9 and 10 in this
`decision. At this stage of the proceeding, as to claims 1, 4–8, 11–14, and
`17–23, we are persuaded by Petitioner’s explanation and evidence in support
`of the anticipation ground. We begin our discussion with a brief summary
`of Pan, and then address the issues, evidence, analysis, and arguments
`presented by the parties.
`
`1. Pan (Ex. 1103)
`Pan is directed to a head suspension assembly for use in a magnetic
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`disk storage system. Ex. 1103, 1:8–10. Pan’s suspension supports a slider
`that includes a transducer for reading data from and/or writing data to the
`disk. Id. at 1:12–24. The suspension includes a load beam, a flexure, and a
`mount plate. Id. at 1:30–32. The flexure assembly is supported at its
`forward portion on a gimbal for allowing gimballing of the slider and
`mounts at its rearward portion to the load beam. Id. at 1:32–35. Pan
`discloses the use of a solder ball bonding technique to bond the electrical
`traces to a slider. Id. at 2:10–15. Annotated Figures 7A–7C, reproduced
`below, provide an exploded view of parts of the flexure assembly tip region.
`Id. at 3:26–27.
`
`
`
`In annotated Figures 7A–7C, the flexure assembly includes electrical traces
`20, polyimide insulation 18, and stainless steel backing 16, which are
`attached to each other in that order. Ex. 1103, 3:26–27, 5:32–35. The
`electrical traces terminate at one end at pads 42 near slider 40. Id. at 5:42–
`
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`46.
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`2. 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. 1107), contends that Pan anticipates independent claims 1, 12, and 19
`of the ’499 patent. Pet. 22–28, 33–34, 39–41. Petitioner asserts that Pan
`discloses the preamble of claim 1 because it discloses to a “head suspension
`assembly for use in a magnetic disk storage system,” with a “layer of
`flexible metal, and electrical traces separated from the metal layer by an
`insulation layer,” and a “solder ball bonding technique” employed to “bond
`the electrical traces to a slider.” Id. at 22. Petitioner contends that the
`limitation of electrical traces that include “a bonding region being generally
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`planar with other portions of the electrical traces” is disclosed by Pan’s
`traces and associated connection pads, which are generally planar. Id. at 22–
`23 (citing Ex. 1103, Fig. 4). Petitioner further alleges that Pan discloses a
`suspension assembly that supports a slider. Id. at 24. Petitioner relies upon
`Pan’s disclosure of two openings in the steel layer of the flexure that are
`below both the insulating pads and the copper pads, which are solder
`bonded, for the disclosure of the claim 1 limitation “the spring metal [is]
`configured [to] not to extend in an area beneath the bonding region to reduce
`mechanical and thermal effects.” Id. at 24–26. Petitioner alleges that
`although the claim language “reduce mechanical and thermal effects” of
`“solder ball bonding” is not limiting, the apertures in Pan’s stainless steel
`layer nonetheless perform these functions. Id. at 32. Petitioner alleges that
`“[w]hen the electrical traces 20, insulation 18, and steel backing 16 are
`stacked, the copper pads 42 and the polyimide insulation pads 43”—which
`constitute Pan’s bonding region—“are suspended over the opening 34
`without the support of the stainless steel backing.” Id. at 25–26. Petitioner
`alleges that “Pan inherently discloses a flexure structure that ‘reduce[s]
`mechanical and thermal effects’ of ‘solder ball bonding’” and “Pan’s head
`suspension possesses all the structural features required by claim 1.” Id. at
`26–27 (citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). In
`support, Dr. Tarnopolsky testifies that the “mechanical and thermal effects”
`limitation of claim 1 is “necessarily provided by Pan’s flexure” based on a
`comparison of the structure disclosed in Pan and the structure disclosed in,
`and illustrated in, Figure 1 of, the ’499 patent, which are “functionally
`indistinguishable.” See Ex. 1107 ¶¶ 84–86.
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`For claim 12, Petitioner provides similar evidence and argument in
`support of its anticipation challenge. Pet. 32–34. 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 Pan’s “copper pads 42 and the polyimide
`insulation pads 43 are suspended over” the openings “without the support of
`the stainless steel backing 16.” Id. at 41. With the alleged physical
`separation of cantilevered copper pads from the steel backing, Petitioner
`argues that there is sufficient length “to provide mechanical and thermal
`solder ball bonding isolation” as the claim requires. Id.
`
`Patent Owner argues that Petitioner has not established inherency
`because the Petition and Dr. Tarnopolsky’s testimony are conclusory as to
`Pan’s disclosure regarding the mechanical and thermal effects limitations.
`Prelim. Resp. 16–18. Patent Owner contends that the structures of Pan and
`the ’499 patent are not the same, and, more specifically, the relative sizes of
`the trace bonding pads are different. Id. at 18–19. Patent Owner refers to
`Pan’s disclosure and argues that its copper pads are “oversized,” and that
`structural feature alone reduces the effects of soldering. Id. at 19–20. Patent
`Owner contends that the claim requires that the metal support structure be
`configured to reduce the effects of soldering, and not the oversized pads as
`disclosed in Pan. Id. at 20. Patent Owner further avers that Pan discloses
`that suspending its trace bonding pads over openings in its stainless steel
`layer is used to prevent electrical shorting. Id. at 21.
`
`At this juncture, the evidence and argument provided by Petitioner is
`sufficient to demonstrate that Pan discloses all the limitations of claim 1.
`Petitioner, for example, sufficiently shows that Pan inherently discloses the
`
`
`
`16
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`IPR2018-00956
`Patent 6,965,499 B1
`
`“reduce mechanical and thermal effects” limitation. We consider Dr.
`Tarnopolsky’s testimony that the apertures, insulating layer, and bonding
`pads of the ’499 patent and Pan are functionally indistinguishable, with
`comparison of Figure 1 of the ’499 patent and Figure 4 of Pan. Ex. 1107
`¶ 85. Dr. Tarnopolsky testifies that with this structural similarity, Pan’s
`structure would necessarily “reduce mechanical and thermal effects” of
`solder ball bonding. Id. ¶ 86. In addition, apart from the comparison with
`the disclosed structure in the ’499 patent, Dr. Tarnopolsky testifies that
`Pan’s disclosed physical separation between the area where solder ball
`bonding occurs and the area on the flexure where the slider is mounted “will
`reduce the mechanical and thermal effects of solder ball bonding.” Id. ¶ 87.
`
`We are not persuaded at this stage by Patent Owner’s arguments
`based on structural differences between the structures disclosed in Pan and
`those disclosed in the challenged patent. Patent Owner raises factual
`disputes that are based primarily on unsupported attorney argument.
`
`Although the claim language of claims 1, 12, and 19 differs, the issues
`before us on this record are similar. We find the evidence and argument
`provided by Petitioner for the disclosures of the limitations of claims 12 and
`19 by Pan to also be sufficient.
`
`Based on the record before us, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that Pan
`anticipates claims 1, 12, and 19 of the ’499 patent.
`
`Claims 4–8, 11, 13, 14, 17, 18 and 20–23
`
`Petitioner contends that Pan anticipates dependent claims 4–8, 11, 13,
`14, 17, 18, and 20–23 of the ’499 patent. Pet. 28–32, 34–39, and 41–43.
`We have reviewed the evidence and argument provided by Petitioner and
`
`
`
`17
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`IPR2018-00956
`Patent 6,965,499 B1
`
`find it sufficient at this juncture. Patent Owner provides no additional
`arguments related to these claims, besides those directed to claims 1, 12, and
`19, which we address above. Prelim. Resp. 15–22.
`
`Based on the record before us, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that Pan
`anticipates claims 4–8, 11, 13, 14, 17, 18, and 20–23 of the ’499 patent.
`C. Asserted Obviousness of Claims 1, 4–14, and 17–23 over
`Pan in View of One of Ordinary Skill in the Art
`
` Petitioner contends that the subject matter of claims 1, 4–14, and 17–
`23 would have been obvious over Pan in view of one of ordinary skill in the
`art. Pet. 43–46. To support its contentions, Petitioner provides explanations
`as to how the prior art teaches each claim limitation. Id. Petitioner also
`relies upon the Tarnopolsky Declaration to support its positions. Patent
`Owner argues that Petitioner fails to adequately demonstrate the teachings of
`the limitations of the claims. Prelim. Resp. 22–29. At this stage of the
`proceeding, as discussed supra Section II.A, we will not address the merits
`as to the assertions for claims 9 and 10 in this decision. As to claims 1, 4–8,
`11–14, and 17–23, we are persuaded by Petitioner’s explanations and
`evidence in support of the obviousness ground.
`
`A patent 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;
`
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`IPR2018-00956
`Patent 6,965,499 B1
`
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art;7 and (4) objective evidence of
`nonobviousness.8 Graham, 383 U.S. at 17–18.
`
`Petitioner asserts that, as discussed in the anticipation ground, Pan
`discloses all of the structural limitations of claims 1, 4–14, and 17–23 of the
`’499 patent. Pet. 43. Petitioner contends that, if in the alternative, the
`“reduce mechanical and thermal effects” limitations are limiting, and are
`somehow not inherently disclosed by Pan, that it would have been obvious
`to employ Pan’s suspension structure to reduce the mechanical and thermal
`effects of solder ball bonding. Id. at 44. Petitioner asserts that it was known
`that the cooling of a solder ball used to bond a slider to traces on a flexure
`can result in warping of the flexure, as evidenced in Tsuchiya. Id. Petitioner
`further argues that it was known that a solution to warping caused by solder
`ball bonding was to incorporate apertures into the lower, supporting steel
`layer of a flexure and cantilevering the bonding pads over these apertures,
`which is taught by Pan. Id. at 44–45. Petitioner avers, with supporting
`testimony from Dr. Tarnopolsky, that Pan’s structure would reduce warping,
`and one of ordinary skill would consider that the structure’s reduction of the
`mechanical and thermal effects of solder ball bonding would amount to
`nothing more than the use of a known solution to address a known problem.
`Id. at 45–46 (citing Ex. 1107 ¶¶ 127–129).
`
`
`7 Petitioner proposes an assessment of the level of ordinary skill in the art.
`Pet. 21 n.2. Patent Owner does not provide proposed qualifications. At this
`juncture, we adopt Petitioner’s proposed qualifications.
`8 At this stage, neither party has presented evidence of objective indicia of
`nonobviousness.
`
`
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`19
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`IPR2018-00956
`Patent 6,965,499 B1
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`Patent Owner argues that there is no explanation provided why one
`
`would look beyond Pan’s teachings and configure Pan’s support structure to
`reduce the effects of soldering rather than rely on the oversized pads it
`teaches
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