UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`NITTO DENKO CORP.,
`
`Petitioner
`
`Patent No. 5,959,807
`Original Issue Date: September 28, 1999
`Title: HEAD SUSPENSION WITH MOTION RESTRAINING TETHERS
`_________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,959,807
`PURSUANT TO 35 U.S.C. § 312 and 37 C.F.R. § 42. 104
`
`Case No. IPR2018-1043
`
`__________________________________________________________________
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42. 8) ................................................................ 4
`Real Party-in-Interest (37 C.F.R. § 42. 8(b)(1)) ...................................... 4
`Related Matters (37 C.F.R. § 42. 8(b)(2)) ................................................ 4
`Counsel (37 C.F.R. § 42. 8(b)(3)) .............................................................. 4
`Payment of Fees (37 C.F.R. § 42. 103) ................................................................ 5
`II.
`III. Requirements for IPR (37 C.F.R. § 42. 104) ....................................................... 5
`Grounds for Standing (37 C.F.R. § 42. 104(a)) ....................................... 5
`Identification of Challenge (37 C.F.R. § 42. 104(b)(1)-(3)) and
`Relief Requested (37 C.F.R. § 42. 22(a)(1)) ............................................ 5
`Claim Construction (37 C.F.R. § 42. 104 (b)(3)) .................................... 7
`1.
`Head Carrying Region of the Head Suspension Adjacent
`the Distal End/Support Region of the Head Suspension
`Adjacent the Proximal End .............................................................. 8
`“Tether of Low Stiffness Material” that is “an Extension
`of the Insulator Layer” .................................................................... 10
`The ’807 Patent ....................................................................................................... 11
`Technological Background ........................................................................ 11
`Overview of the ’807 Patent...................................................................... 13
`How Challenged Claims are Unpatentable (37 C.F.R. § 42. 104(b)(4)-
`(5)) ............................................................................................................................. 15
`Overview of the Prior Art Relied upon in this Petition ........................ 16
`1.
`Admitted Prior Art ........................................................................... 16
`2.
`Hoshino .............................................................................................. 18
`3.
`Baasch ................................................................................................ 23
`Ground 1: Claims 1-2 and 12-13 Are Anticipated by Hoshino .......... 28
`1.
`Hoshino Discloses All the Limitations of Claims 1 and
`12 ........................................................................................................ 29
`
`IV.
`
`V.
`
`2.
`
`-i-
`
`

`

`2.
`
`Hoshino Discloses All the Limitations of Claims 2 and
`13 ........................................................................................................ 36
`Ground 2: Hoshino in Combination with the Admitted Prior Art
`Renders Claims 3-6, 14 and 16-17 Obvious. ......................................... 36
`1.
`Hoshino and the Admitted Prior Art Render Claims 3, 4,
`and 14 Obvious ................................................................................ 37
`Hoshino and the Admitted Prior Art Render Claims 5-6
`and 16-17 Obvious .......................................................................... 44
`Ground 3: Hoshino in Combination with Baasch and the
`Admitted Prior Art Render Claims 1-6, 12-14 and 16-17
`Obvious. ........................................................................................................ 49
`VI. CONCLUSION ....................................................................................................... 56
`
`2.
`
`-ii-
`
`

`

`LISTING OF EXHIBITS
`
`Exhibit
`Exhibit 1001
`
`Description
`U.S. Patent No. 5,959,807 to Jurgenson
`
`Exhibit 1002
`
`Prosecution History of U.S. Patent No. 5,959,807
`
`Exhibit 1003
`
`U.S. Patent 4,819,094 to Oberg
`
`Exhibit 1004
`
`U.S. Patent 5,463,153 to Hoshino
`
`Exhibit 1005
`
`U.S. Patent 5,530,606 to Baasch
`
`Exhibit 1006
`
`Excerpt from Exhibit K of Complaint, Hutchinson Tech. Inc. v.
`Nitto Denko Corp. et al. , Case No. 17-cv-01992, pending in
`the District of Minnesota.
`
`Exhibit 1007
`
`Declaration of Dr. Giora Tarnopolsky
`
`Exhibit 1008
`
`U.S. Patent No. 5,594,607 to Erpelding et al.
`
`-iii-
`
`

`

`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, Petitioner Nitto
`
`Denko Corp. (“Nitto” or “Petitioner”) respectfully requests inter partes review
`
`(“IPR”) of claims 1-6, 12-14, and 16-17 of U.S. 5,959,807 (“the ’807 patent”). The
`
`’807 patent identifies Ryan A. Jurgenson as the inventor, was filed June 24, 1997,
`
`and issued September 28, 1999. According to U.S. Patent and Trademark Office
`
`(“USPTO”) assignment records, the ’807 patent is currently assigned to
`
`Hutchinson Technology Inc. (“HTI” or “Patent Owner”). There is a reasonable
`
`likelihood that Petitioner will prevail with respect to at least one claim challenged
`
`in this Petition.
`
`The ’807 patent relates to a head suspension for a disk drive. Head
`
`suspensions—which were long known and used in the prior art—are meant to
`
`support and position a “slider” over the drive’s disk surface. The slider is a small
`
`block of material that carries the read and write heads used to access information
`
`from the disk. The read/write heads are connected to wiring traces that proceed
`
`over the surface of the suspension and connect to other hard drive electronics. The
`
`traces are electrically isolated from the metal portions of the suspension by a layer
`
`of insulation.
`
`According to the ’807 patent, prior art head suspensions are often designed
`
`to include a “tongue” or “gimbal” onto which the slider is mounted. The tongue or
`
`gimbal is formed by patterning apertures into one of the suspension’s metal
`
`-1-
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`

`

`support layers, and provides a degree of compliance to the portion of the
`
`suspension that holds the slider. This compliance allows the slider to pitch and roll
`
`so it can be properly oriented with the disk during use. But, as the ’807 patent
`
`concedes, this compliance was also known in the art to present a problem. In
`
`particular, if the drive is subject to shock, the slider may excessively move, contact
`
`the disk surface, and cause damage.
`
`In an attempt to address this issue, the ’807 patent employs “tethers.” The
`
`tethers extend from the tongue or gimbal that holds the slider to other portions of
`
`the suspension to limit the slider’s ability to pitch and roll. According to the patent,
`
`the tethers can be formed as an extension of the insulating material already present
`
`underneath the traces. The ’807 patent explains that extending the tethers from the
`
`existing insulation simplifies manufacturing when compared with other prior art
`
`methods used to control slider movement.
`
`However, at the time the ’807 patent was filed, it was well known in the art
`
`that projections from a suspension’s existing insulating layer could be used to
`
`restrain and limit the motion of slider attached to a tongue or gimbal. U.S. Patent
`
`5,463,153 to Hoshino (Ex. 1004) provides an example. Hoshino, like the ’807
`
`patent, discloses a standard hard disk drive suspension. This suspension includes a
`
`gimbal spring to which a slider is attached. The gimbal provides the slider with a
`
`degree of compliance. And, Hoshino explicitly discloses the use of multiple “lugs
`
`-2-
`
`

`

`48”—that are part of and extend from the same insulation layer below Hoshino’s
`
`wiring traces—to limit the movement of the gimbal and slider. Like the ’807
`
`patent, Hoshino explains that forming the lugs 48 as part of the insulation layer
`
`simplifies manufacturing. In view of this disclosure, Hoshino anticipates claims 1-
`
`2 and 12-13.
`
`Claims 3-6, 14 and 16-17 include a few additional limitations directed to
`
`suspension structural features. While not expressly discussed by Hoshino, the ’807
`
`patent repeatedly admits that these features were known, standard, and routinely
`
`present in prior art suspensions. And, Hoshino explains that its motion limiting
`
`lugs 48 are intended for use with a conventional suspension with conventional
`
`features. In view of this, one of ordinary skill in the art would have known to use
`
`the admittedly known suspension features set forth in the ’807 patent with
`
`Hoshino, or would have applied Hoshino’s slider motion limiting lugs to the
`
`admitted, conventional prior art suspension exemplified by Figure 1 of the ’807
`
`patent. Thus, one of ordinary skill in the art would consider the subject matter of
`
`claims 3-6, 14, and 16-17 to be highly obvious.
`
`Finally, even if not anticipatory, Hoshino would nonetheless render all the
`
`’807 patent claims at issue herein obvious. Hoshino’s figures depict its lugs 48 as
`
`having a specific shape that is not identical to that shown in the ’807 patent’s
`
`figures. But, Hoshino is expressly open to the use of lugs with different sizes and
`
`-3-
`
`

`

`shapes. And, other prior art also discloses the claimed tethers. For instance, U.S.
`
`Patent No. 5,530,606 to Baasch (“Baasch”, Ex. 1005) discloses a suspension that
`
`employs a “flexure damper”—formed from insulating material—that extends all
`
`the way from a gimbal that holds a slider to the fixed, supporting portions of the
`
`suspension. Just like the tether of the ‘807 patent and the lug of Hoshino, this
`
`damper is meant to control and limit the movement of the slider attached to a
`
`gimbal. One of ordinary skill in the art would have considered it highly obvious to
`
`modify the size and shape of Hoshino’s lugs in view of Baasch to arrive at the
`
`subject matter of Claims 1-6, 12-14 and 16-17.
`
`I.
`
`Mandatory Notices (37 C.F.R. § 42. 8)
`Real Party-in-Interest (37 C.F.R. § 42. 8(b)(1))
`Petitioner Nitto and related corporate entities Nitto, Inc., Nitto Denko Fine
`
`Circuit Technology (Shenzhen) Co., Ltd., Nitto Denko (HK) Co., Ltd., Nitto
`
`Denko Material (Thailand) Co., Ltd., and Mie Nitto Denko Corp. are the real
`
`parties-in-interest.
`
`Related Matters (37 C.F.R. § 42. 8(b)(2))
`The ’807 patent is currently at issue in Hutchinson Tech. Inc. v. Nitto Denko
`
`Corp. et al., Case No. 17-cv-01992 (D. Minn.) (the “HTI Litigation”.)
`
`Counsel (37 C.F.R. § 42. 8(b)(3))
`Lead Counsel: Alex V. Chachkes (Reg. No. 41,663)
`
`Back-up Counsel: A. Antony Pfeffer (Reg. No. 43,857), K. Patrick Herman (Reg.
`
`-4-
`
`

`

`No. 75,018)
`
`Electronic Service information: achachkes@orrick.com; apfeffer@orrick. com;
`
`pherman@orrick.com; A34PTABDocket@orrick.com;
`
`95APTABDocket@orrick.com; P52PTABDocket@orrick.com
`
`Post and Delivery: Orrick, Herrington, & Sutcliffe LLP, 51 West 52nd Street,
`
`New York, NY 10019;
`
`Telephone: 212-506-5000;
`
`Facsimile: 212-506-5151.
`
`II.
`
`Payment of Fees (37 C.F.R. § 42. 103)
`The USPTO is authorized to charge the filing fee and any other fees incurred
`
`by Petitioner to the deposit account of Orrick, Herrington, & Sutcliffe LLP: 15-
`
`0665.
`
`III. Requirements for IPR (37 C.F.R. § 42. 104)
`Grounds for Standing (37 C.F.R. § 42. 104(a))
`Petitioner certifies that the ’807 patent (Exhibit 1001) is available for IPR
`
`and that Petitioner is not barred or estopped from requesting this IPR.
`
`Identification of Challenge (37 C.F.R. § 42. 104(b)(1)-(3)) and
`Relief Requested (37 C.F.R. § 42. 22(a)(1))
`Petitioner requests inter partes review of and challenges claims 1-6, 12-14,
`
`16, and 17 of the ’807 patent. Each of these claims should be found unpatentable
`
`and cancelled because they embrace a head suspension with tethers that are
`
`-5-
`
`

`

`indistinguishable from the prior art. This petition explains the reasons why the
`
`claims are unpatentable, provides details regarding where the various required
`
`claim limitations can be found in the prior art, and is accompanied by additional
`
`explanation and support set forth in the attached Declaration of Dr. Giora
`
`Tarnopolsky (Ex. 1007, “Tarnopolsky Dec.”).
`
`The ’807 patent was filed June 24, 1997 as U.S. application 08/881,194 and
`
`makes a facial claim of priority to U.S. provisional application 60/020,349, which
`
`was itself filed June 24, 1996. For purposes of this petition only, it is assumed that
`
`the ’807 patent’s effective filing date is June 24, 1996.
`
`Petitioner relies on the following: (1) Hoshino, which issued October 31,
`
`1995 and was filed September 23, 1994 (Exhibit 1004); (2) Baasch which was filed
`
`on December 14, 1994, as a continuation of an August 19, 1993 application
`
`(Exhibit 1005); and (3) Admitted Prior Art set forth in the ’807 patent
`
`specification. Hoshino is available as prior art under at least 35 U.S.C. 102(a) and
`
`(e). Baasch is available as prior art under at least 35 U.S.C. 102 (a) and (e).
`
` Petitioner requests that 1-6, 12-14, 16, and 17 of the ’807 patent be
`
`determined unpatentable and cancelled on the following grounds:
`
`Ground 1: Claims 1-2 and 12-13 are anticipated by Hoshino.
`
`Ground 2: Claims 3-6, 14 and 16-17 are rendered obvious by Hoshino and
`
`the Admitted Prior Art.
`
`-6-
`
`

`

`Ground 3: Claims 1-6 12-14 and 16-17 are rendered obvious by Hoshino,
`
`Baasch, and the Admitted Prior Art.
`
`Claim Construction (37 C.F.R. § 42. 104 (b)(3))
`Since the ’807 patent is expired, the same Phillips v. AWH Corp. standard
`
`used in district court applies here. See In re: CSB-System, Int’l, Inc., 832 F.3d
`
`1335, 1337 (Fed. Cir. 2016). Thus, the patent’s claim terms are to be afforded their
`
`plain and ordinary meaning as viewed by one of ordinary skill in the art, in light of
`
`the claim language itself, the patent specification, and the prosecution history.
`
`“The construction that stays true to the claim language and most naturally aligns
`
`with the patent’s description of the invention will be, in the end, the correct
`
`construction.” Phillips v. AWH Corp. , 415 F.3d 1303, 1316 (Fed. Cir. 2005)
`
`(quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed.
`
`Cir. 1998).)
`
`Here, Petitioner believes that the terms of the ’807 patent can be afforded
`
`their plain and ordinary meaning. Regardless, Petitioner discusses a few of the
`
`’807 patent’s terms below to provide context for its later arguments regarding the
`
`prior art.
`
`-7-
`
`

`

`1.
`
`Head Carrying Region of the Head Suspension Adjacent the
`Distal End/Support Region of the Head Suspension
`Adjacent the Proximal End
`Independent claims 1 and 12 both require a “head suspension” with
`
`“opposite proximal and distal ends.” The claims further specify that the
`
`suspension includes a “head carrying region” that is “adjacent to the distal end” of
`
`the suspension and a “support region” that is “adjacent to the proximal end” of the
`
`suspension. Then, there are further limitations requiring that the “support region”
`
`“support[] the head carrying region” via a connecting “compliant area.”
`
`The below annotated version of Figure 1 of the ’807 patent shows these two
`
`“ends” of the suspension. The proximal end is identified as item 18, and the distal
`
`end is identified as item 20:
`
`(Ex. 1001, ’870 patent at Fig. 1 (emphasis added).) As can be seen, these ends are
`
`physically separated by the length of the suspension. Regardless, the ’807 patent’s
`
`-8-
`
`

`

`claims require that the “support region” not only be “adjacent to the proximal end,”
`
`but also that it “support” the distally located “head carrying region” and be
`
`connected to that region via a “compliant area.”
`
`In a currently pending HTI Litigation, with respect to allegations of
`
`infringement with respect to the ’807 patent, Patent Owner has asserted that a
`
`suspension’s “support region” can be “adjacent to the proximal end” even if it is
`
`also present adjacent to the “distal end” of a suspension that carries the head. This
`
`is shown in the below Figure generated by Patent Owner (and attached to the
`
`complaint in the HTI Litigation), which shows only the head (or distal) end of a
`
`suspension:
`
`-9-
`
`

`

`(Ex. 1006 at 2.)
`
`For purposes of this proceeding, and consistent with Patent Owner’s own
`
`allegations, Petitioner notes that the suspension structure can be the claimed
`
`“support region” even though it is adjacent to both the “proximal” and “distal”
`
`ends of the suspension.
`
`2.
`
`“Tether of Low Stiffness Material” that is “an Extension of
`the Insulator Layer”
` Independent claims 1 and 12 both require that the claimed “head
`
`suspension” include a “tether of low stiffness material” that is “an extension of the
`
`insulator layer.” The ’807 patent does not define how “low” the stiffness of the
`
`-10-
`
`

`

`material must be to fall within the scope of the claims. But, the patent does state
`
`that a preferred low stiffness material is a polyimide. (See Ex. 1001, ’807 patent at
`
`7:28-30.) Additionally, dependent claims 2 and 13 both specify that the low
`
`stiffness material of the tether is polyimide. Accordingly, while the full scope of
`
`this claim limitation is unclear, it should include at a minimum tethers made of a
`
`polyimide extension of a flexible printed circuit/insulating layer. This is the
`
`material employed to form the tethers in the prior art references discussed herein.
`
`IV. The ’807 Patent
`Technological Background
`The ’807 patent relates generally to a “head suspension” for a disk drive.
`
`(Ex. 1001, ’807 patent at 1:8-18.) The head suspension holds and supports a
`
`slider—a small, aerodynamic block of material onto which read and write heads
`
`are attached—close to the surface of the disk while it spins. (Ex. 1007,
`
`Tarnopolsky Dec. at ¶ 62.) Suspensions are designed to allow the slider to move
`
`along various axes, so as to maintain the read and write heads in a position parallel
`
`and adjacent to the disk surface. (Id.) To accomplish this functionality, prior art
`
`suspensions routinely mounted the slider to a gimbal spring or tongue. (Id.)
`
`The existence of these standard suspension features in the prior art is
`
`confirmed by the ’807 patent. For instance, the ’807 patent explains that:
`
`The head suspensions are very precise metal springs that
`hold read/write transducer heads, such as magnetic or
`
`-11-
`
`

`

`optical heads, adjacent the surfaces of the rotating disks
`in the disk drive. The head suspensions are typically
`comprised of a proximal support region that attaches the
`head suspension to an actuator arm, a distal load region
`that carries the read/write head, and an intermediate
`spring region that biases the load region and the
`read/write head toward the rotating disk. The read/write
`heads are attached to sliders at the distal ends of each of
`the head suspensions.
`(Ex. 1001, ’807 patent at 1:41-49.) And, the ’807 patent similarly explains that it
`
`was known that:
`
`The load region of a head suspension usually includes a
`load beam and the sliders and their read/write heads are
`supported at the distal end of each head suspension
`usually on a gimbal or a tongue of a flexure on the load
`beam. Each of these permits the slider and its attached
`head to pivot about a roll axis parallel to a center
`longitudinal axis of the head suspension and a pitch axis
`that is perpendicular to the roll axis. This enables the
`read/write transducer head to be positioned at a precise
`orientation to the data storage surface of the rotating disk
`to obtain optimum performance in transferring data
`between the data storage surface of the disk and the
`read/write head.
`(Ex. 1001, ’807 patent at 2:1-12.)
`
`In addition to including gimbal springs and tongues to provide for slider
`
`movement, prior art suspensions also included structure allowing for the
`
`transmission of electrical signals from and to the read/write heads to the disk
`
`drive’s other electronic components. As of the ’807 patent’s filing date, electrical
`
`signal transmission was typically accomplished using wiring traces applied on top
`
`-12-
`
`

`

`of layers of insulation and support metal, rather than employing separate physical
`
`wires attached to the read/write head. As an example, the ’807 patent discusses a
`
`prior art structure that includes “electrical conductors 50” that are layered on top of
`
`an “insulating material 56,” which is applied to the “metal material of” the
`
`suspension’s “load beam 12 and flexure 16.” (Ex. 1001, ’807 patent at 7:10-30;
`
`Ex. 1007, Tarnopolsky Dec. at ¶65.) Polyimide was a commonly used, flexible
`
`insulation material. (Ex. 1007, Tarnopolsky Dec. at ¶ 65.)
`
`According to the ’807 patent, there was a known problem with the use of
`
`gimbals and tongues to provide a slider with a degree of motion (to pitch and roll)
`
`relative to the disk surface. In particular, in the event the suspension was subject to
`
`a shock, the slider could move excessively, contact the disk surface, and cause
`
`damage. (See Ex. 1001, ’807 patent at 2:13-54; Ex. 1007, Tarnopolsky Dec. at ¶
`
`66.) The ’807 patent acknowledges that certain solutions to this problem were
`
`known and used in the prior art. For instance, some suspensions employed
`
`“mechanical shock movement limiters” such as “mechanical tabs” to prevent
`
`sudden, excessive movement. (Ex. 1001, ’807 patent at 2:67-3:13; Ex. 1007,
`
`Tarnopolsky Dec. at ¶ 66.)
`
`Overview of the ’807 Patent
`After detailing and discussing the features possessed by standard, prior art
`
`suspensions and the movement limiters used by those suspensions, the ’807 patent
`
`-13-
`
`

`

`lists a few alleged issues with these suspensions. In particular, according to the
`
`’807 patent, prior art motion limiters were only able to cause an abrupt stop, and
`
`they required additional manufacturing steps. (See Ex. 1001, ’807 patent at 3:13-
`
`21; Ex. 1007, Tarnopolsky Dec. at ¶ 66.)
`
`In an attempt to address these problems, the ’807 patent employs “tethers of
`
`low stiffness material.” (Ex. 1001, ’807 patent at 1:14-16.) The tethers are applied
`
`to a suspension that includes a “compliant area”—i.e., a typical gimbal or tongue—
`
`that allows the suspension’s “head carrying region to move freely relative to the
`
`support region when in use in a rotary data storage device.” (Id. at 1:9-14.) The
`
`tethers “are connected between the head carrying region and support region” and
`
`“restrain the movement of the read carrying region relative to the support region to
`
`a limited range of movement.” (Id. at 1:14-18.) This “reduces the probability of
`
`the head suspension slider and/or transducer head, and possibly the surface of the
`
`disk … being damaged” by an excessively moving slider. (Id. at 1:18-25.) Further,
`
`since the tether “is formed as an extension of the insulating material layer” already
`
`used in connection with the suspension’s wiring traces, “including the tether …
`
`does not appreciably increase … manufacturing costs.” (Id. at 4:13-16.)
`
`Different, non-limiting examples of tethers are provided in the ’807 patent’s
`
`figures. For instance, Figure 3A shows a tether 72 that lays laterally across a
`
`suspension tongue 44 and void 64:
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`-14-
`
`

`

`(Id. at Fig. 3A; see also id. at 8:44-59.) And, Figure 5 shows two tethers 96 that
`
`project from a tongue 84 out over a void 98 and towards a supporting flexure 80:
`
`(Id. at Fig. 5; see also id. at 9:16-36.)
`
`V.
`
`How Challenged Claims are Unpatentable (37 C.F.R. § 42. 104(b)(4)-
`
`-15-
`
`

`

`(5))
`
`Overview of the Prior Art Relied upon in this Petition
`All of the features required by the claims of the ’807 patent—including the
`
`use of an extension of an insulating layer to reduce movement of a slider attached
`
`to a head suspension—were known in the prior art as of the patent’s effective filing
`
`date. A summary of this prior art follows.
`
`Admitted Prior Art
`1.
`The ’807 patent discloses that many of the features set forth in the claims
`
`are, in fact, present in the prior art. Indeed, Figure 1 of the ’807 patent, which is
`
`reproduced below, is labeled as “PRIOR ART”:
`
`(Ex. 1001, ’807 patent at Fig. 1.) This figure shows a “conventional construction
`
`of a prior art head suspension.” (Id. at 5:19-20.) As shown, the suspension
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`-16-
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`

`

`includes a “load beam 12,” a “support base 14,” and a “flexure 16.” (Id. at 5:21-
`
`24.) The load beam has “a longitudinal length with opposite proximal 18 and
`
`distal 20 ends.” (Id. at 1:66-67.) The flexure is attached to the surface of the load
`
`beam. (Id. at 2:37-40.) The flexure includes a “tongue 44” surrounded by a “void
`
`64.” (Id. at 2:49-56.) The tongue and void are part of a “head carrying region 38.”
`
`(Id.) While not shown, a slider is mounted to the tongue. (Id. at 6:39-40.) The
`
`void “create a compliant area” that allows for movement of the tongue (and thus
`
`the slider) “about pitch and roll axes of the head suspension.” (Id. at 6:54-56.)
`
`The suspension also includes “[a] series of electrical conductors 50” that extend
`
`along the length of the suspension. (Id. at 7:10-14.) The conductors are “insulated
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`from the metal material of the load beam 12 and flexure 16 by a layer of insulating
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`material.” (Id. at 7:14-17.) This prior art flexure preferably uses an insulating
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`material that “is a low stiffness material,” such as “polyimide.” (Id. at 7:28-30.)
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`In view of Figure 1 of the ’807 patent and the associated description
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`spanning col. 5, l. 19 through col. 7, l. 40, all of the limitations of claim 1 and 12,
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`with the exception of the claimed “tether,” are admittedly present in prior art head
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`suspensions. Similarly, the majority of the limitations required by dependent
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`claims 3-6 and 14 are all also admitted art. This includes, among other things, the
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`claimed “load beam” (see Ex. 1001, ’807 patent at 6:51-56), “void” (see id. at
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`6:42-45), “tongue” (see id. at 6:49-51.) In fact, the ’807 patent itself makes clear
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`-17-
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`that the only “novel feature of the invention is the addition of tethers that tie the
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`read/write head carrying portion of the head suspension, which is designed to move
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`freely about pitch and roll axes of the head suspension in use, to more stationary
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`portions of the head suspension.” (Id. at 5:26-31.)
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`Hoshino
`2.
`Hoshino is not identified on the face of the ’807 patent and was not
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`considered by the examiner during prosecution.
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`Hoshino discloses a “magnetic head assembly incorporated in a magnetic
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`disk drive and capable of suppressing the resonance of the suspension arm and
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`gimbal spring effectively.” (Ex. 1004, Hoshino at 1:39-41.) Hoshino’s
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`suspension, like that of the ’807 patent, is specifically designed to “support” a
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`“head 14” and hold it in “parallel with the surface of the” disk “medium 12.” (Id.
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`at 2:35-38.) As explained above, as of the ’807 patent’s filing date, it was well
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`known that the head used to access information from a disk must have the ability to
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`move by pitching and rolling, so it stay in proper alignment with the disk surface.
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`(Ex. 1007, Tarnopolsky Dec. at ¶ 80; see also Ex. 1004, Hoshino at 1:21-27.)
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`Hoshino’s suspension provides this required head movement and compliance via
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`the use of a gimbal spring. (Id.; see also Figures 14A and 14B; Ex. 1007,
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`Tarnopolsky Dec. at ¶ 80). The ’807 patent recognized that a gimbal spring was
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`one of the methods, equivalent to the use of a tongue, that could be used to support
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`-18-
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`read/write heads at the distal end of a head suspension. (Ex. 1001, ’807 patent at
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`2:2-4; Ex. 1007, Tarnopolsky Dec. at ¶80.)
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`As shown in Figure 1, Hoshino’s suspension arm 16 has a head 14 at its
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`distal end. (Ex. 1004, Hoshino at Fig. 1.) The arm holds and supports the head
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`over the surface of disk 12. (Id.; see also id. at 2:30-40.) The suspension also
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`includes a “head 14a,” a “movable leaf spring or girohal spring 22 for allowing the
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`head 14 to behave flexibly, and a flexible printed circuit (FPC) 24 for transmitting
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`an electric signal to the head 14a.” (Id. at 2:43-47.) Figure 5 provides an exploded
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`view of the distal end of the suspension arm 16, and shows the head, gimbal
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`spring, and FPC in more detail:
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`-19-
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`

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`(Id. at Fig. 5.) As shown, a “u-shaped mounting portion 26” is “mounted on a
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`suspension arm 16. A rectangular intermediate portion 28 is positioned inside of
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`the mounting portion 26 and connected to the latter only by two bridges 30. More
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`specifically, the intermediate portion [28] is physically separated from the
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`mounting portion 26 by slits 32a, 32b and 32c except for the bridges 30.” (Id. at
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`3:4-10.) This structure grants the intermediate portion 28 a rotational degree of
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`freedom around the imaginary axis passing through the bridges 30. (Ex. 1004,
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`Hoshino at 3:5-11; Ex. 1007, Tarnopolsky Dec. at ¶ 81.) “A head support portion
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`34 is positioned inside of the intermediate portion 28 and connected to the latter by
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`only two bridges 36, i.e., separated from the latter by discontinuous slits 38a and
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`38b.” (Ex. 1004, Hoshino at 3:11-14.) This additional structure grants the head
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`support portion 34 a rotation degree of freedom around the imaginary axis passing
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`through the bridges 36 and this second axis is orthogonal to the one passing
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`through bridges 30. (Ex. 1007, Tarnopolsky Dec. at ¶ 81.)
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`In other words, the device disclosed by Hoshino allows a head carrying
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`region to move about two separate axes of rotation. (Id. at ¶ 82.) An inner gimbal
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`allows head carrying region to rotationally move about an axis parallel to the
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`length of the support. (Id.) And, an inner gimbal enables rotational movement of
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`the head carrying about an axis perpendicular to the axis of movement of the first
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`gimbal. (Id.)
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`-20-
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`The below annotated versions of Figures 6 and 7 show the gimbal spring
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`structure of Hoshino with and without the flexible printed circuit that overlays that
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`structure:
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`(Ex. 1004, Hoshino at 2:9-14.) As seen in Figure 6, the inner portion (not colored)
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`holds the head and slider. Hoshino refers to this portion as a “head support portion
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`34.” (Ex. 1004, Hoshino at 3:11-15; Ex. 1007, Tarnopolsky Dec. at ¶ 83.)
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`Element 34 is surrounded by discontinuous slits 38a and 38b, marked in red, and is
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`attached to an intermediate ring (in blue, referred to by Hoshino as the
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`“intermediate portion 28”) by two bridges, denoted 36. (Id.) This blue
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`intermediate ring is in turn surrounded by discontinuous slits 32 a, 32b, and 32c
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`(also marked in red), and is attached to an outer region (in purples, referred to by
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`Hoshino as the “mounting portion 26”) by two small bridges 30. (Ex. 1004,
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`Hoshino at 3:6-10; Ex. 1007, Tarnopolsky Dec. at ¶ 83.) Both the mounting
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`-21-
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`

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`portion 26 and the intermediate portion 28 support the regions internal to them.
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`(Ex. 1007, Tarnopolsky Dec. at ¶ 83.) The intermediate portion 28 supports the
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`head support portion 34, while the mounting portion 26 supports both the
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`intermediate portion and the head support portion. (Id.) The narrow bridges are
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`described by Hoshino as forming gimbal springs that allow for rotational
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`movement about the axis formed by the bridges. (Ex. 1004, Hoshino at 3:19-26;
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`Ex. 1007, Tarnopolsky Dec. at ¶ 83.)
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`Figure 7 is a plan view that shows the gimbal structure of Figure 6 together
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`with a flexible printed circuit (FPC) 24. (Ex. 1004, Hoshino at 2:11-13.) The FPC,
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`highlighted green above, includes mounting portion 24a, cable portion 24b and a
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`pair of lugs 48 in an assembled condition. (Ex. 1004, Hoshino at 3:39-42). While
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`not shown in the figure, Hoshino explains that “[a] plurality of leads are printed on
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`the cable portion 24b to set up electrical connection of the head 14a” and the
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`drive’s other “circuitry.” (Id. at 3:42-44.) According to Hoshino, the FPC is
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`manufactured of polyimide. (Ex. 1004, Hoshino at 3:39-40.)
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`As shown in Figure 7, the lugs 48 are integrated with and extend from the
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`rest of the FPC, including the cable portion 24b that carries the leads. (Id. at Fig. 7;
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`see also id. at 3:64-65.) The cable portion 24b of the FPC extends across the slit
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`32b, causing it to obstruct the view of the bottom bridge 36 in Figure 7. (Ex. 1007,
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`Tarnopolsky Dec. at ¶ 84.) The mounting portion 24a attaches to the head support
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`-22-
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`portion 34. (Id.) The two lugs 48 extend across the slits 38a and 38b that separate
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`the head support portion 34 fr