NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`COLLABO INNOVATIONS, INC.,
`Appellant
`
`v.
`
`SONY CORPORATION,
`Appellee
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2018-1311
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2016-
`00941.
`
`______________________
`
`Decided: August 5, 2019
`______________________
`
`DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, Dal-
`las, TX, argued for appellant. Also represented by PATRICK
`J. CONROY, MONTE BOND, TERRY SAAD.
`
`
`

`

`2
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
` MATTHEW A. SMITH, Smith Baluch LLP, Menlo Park,
`CA, argued for appellee. Also represented by ANDREW
`BALUCH, Washington, DC; ZHUANJIA GU, JACOB ZWEIG,
`Turner Boyd LLP, Redwood City, CA.
`
` KATHERINE TWOMEY ALLEN, Appellate Staff, Civil Divi-
`sion, United States Department of Justice, Washington,
`DC, argued for intervenor. Also represented by MARK R.
`FREEMAN, SCOTT R. MCINTOSH, JOSEPH H. HUNT; THOMAS
`W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED,
`Office of the Solicitor, United States Patent and Trade-
`mark Office, Alexandria, VA.
`______________________
`
`Before TARANTO, BRYSON, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`After construing the phrases “secured . . . via an adhe-
`sive” and “wider area,” the Patent Trial and Appeal Board
`held all challenged claims of Collabo Innovations, Inc.’s
`U.S. Patent No. 5,952,714 unpatentable in an inter partes
`review. We agree with the Board’s constructions, deter-
`mine substantial evidence supports its findings regarding
`the prior art, and hold Collabo’s other arguments unper-
`suasive. Accordingly, we affirm.
`BACKGROUND
`I
`The ’714 patent “aims to provide a solid-state image
`sensing apparatus mountable to a video camera of high
`quality picture, which not only can reproduce vivid colors
`and fine pictures but also can be manufactured at a low
`cost.” ’714 patent col. 2 ll. 19–22. As shown in Figure 2,
`below, the disclosed chip package (21) for use in that appa-
`ratus has two openings (25 and 26). Id. at col. 4 ll. 53–59.
`Opening 25, through which light reaches the image-
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`3
`
`sensing CCD chip 27, is smaller than the chip, and open-
`ing 26 is larger than the chip. Id.
`
`The patent explains that the larger size of opening 26 al-
`lows chip 27 to be inserted into the package 21 through
`opening 26, positioned, and then fixed in place. See id.
`at col. 5 ll. 9–22.
`The patent claims both an apparatus and a method of
`manufacture. On appeal, Collabo focuses its arguments on
`claim 1, which reads:
`1. A solid-state image sensing apparatus compris-
`ing:
`a package having a through hole therein, openings
`on both end faces thereof, and different opening ar-
`eas of said openings,
`a lead frame comprising inner leads and outer
`leads, said lead frame being sealed in said package,
`and
`a solid-state image sensing device mounted in said
`package by being inserted from an inlet of said
`
`

`

`4
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`opening which has a wider area, and thereby seal-
`ing said through hole, said solid-state image sens-
`ing device being secured to said package via an
`adhesive.
`Id. at col. 9 ll. 20–30 (emphases added to indicate disputed
`claim terms).
`
`II
`Sony Corp. petitioned for IPR of the ’714 patent. Each
`of its proposed grounds of unpatentability relied on either
`Yoshino1 or Wakabayashi2 for disclosing the limitations re-
`cited in claim 1. Collabo responded to these grounds by
`urging the Board to construe “secured . . . via an adhesive”
`as limited to gluing, which Collabo contended distin-
`guished both references. J.A. 494. Collabo further argued
`that neither reference disclosed the claimed “wider area.”
`J.A. 500, 527.
`Following a hearing, the Board issued a final written
`decision. It disagreed with Collabo’s proposed construction
`of “secured . . . via an adhesive,” finding that the term was
`plainly broader than “gluing.” Sony Corp. v. Collabo Inno-
`vations, Inc., No. IPR2016-00941, 2017 WL 4418283, at *4–
`7 (P.T.A.B. Oct. 3, 2017). And though no party had ex-
`pressly proposed a construction of “wider area,” the Board
`recognized that the parties debated the meaning of that
`phrase. The Board construed it according to its plain and
`ordinary meaning, holding that “the opening ‘area’ is
`
`1
`JP Pat. App. Pub. No. S61-131690, T. Yoshino et al.
`(June 19, 1986). We cite the English translation provided
`at J.A. 281–83.
`2
`JP Pat. App. Pub. No. H07-45803, T. Wakabayashi
`et al. (Feb. 14, 1995). We cite the English translation pro-
`vided at J.A. 284–86. Though Collabo refers to this refer-
`ence as Takashi, see, e.g., Appellant’s Br. 19 & n.2, we
`maintain the Board’s naming convention here.
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`5
`
`‘wider’ where the image sensor is inserted.” Id. at *12. The
`Board then analyzed each of Sony’s grounds of unpatenta-
`bility and determined Sony had shown the claims un-
`patentable by a preponderance of the evidence. Collabo
`appeals. We have jurisdiction. 28 U.S.C. § 1295(a)(4)(A);
`see also 35 U.S.C. § 319.
`DISCUSSION
`On appeal, Collabo challenges the Board’s construc-
`tions of “secured . . . via an adhesive” and “wider area.” It
`further argues that even under the Board’s constructions,
`substantial evidence does not support the finding that
`Yoshino and Wakabayashi disclose the claimed “wider
`area.” And it disputes the constitutionality of IPR as ap-
`plied to patents issued prior to the Leahy-Smith America
`Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011). We ad-
`dress each argument in turn.
`I
`We first address Collabo’s argument that the Board
`erred in construing the phrases “secured . . . via an adhe-
`sive” and “wider area.” We review the Board’s ultimate
`claim constructions de novo, In re Man Mach. Interface
`Techs. LLC, 822 F.3d 1282, 1285 (Fed. Cir. 2016), and we
`review any subsidiary factual findings involving extrinsic
`evidence for substantial evidence, Teva Pharm. USA, Inc.
`v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). Because the
`’714 patent has expired, the claim construction standard
`set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
`2005) (en banc) applies. See In re Rambus Inc., 694 F.3d
`42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims
`of an expired patent is similar to that of a district court’s
`review.”).
`
`A
`The Board rejected Collabo’s argument that the phrase
`“secured . . . via an adhesive” is limited to gluing and con-
`cluded that the plain meaning of the phrase includes other
`
`

`

`6
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`types of adhesive, such as injection molding. We agree.
`The plain claim language uses “adhesive,” not the narrower
`term “glue” or “gluing.” And though the specification does
`describe gluing, it is axiomatic that patent claims are not
`construed “as being limited to [an] embodiment.” Phillips,
`415 F.3d at 1323. Neither the specification nor the prose-
`cution history states that only gluing may be used, that
`glue should be preferred over other methods, or even that
`other methods would not work as well as glue. Though Col-
`labo amended the claims to recite the “adhesive” limita-
`tions during prosecution to distinguish art allegedly using
`“a reflow solder process,” J.A. 686, Collabo did not clearly
`and unequivocally limit its claims to gluing, see Poly-Amer-
`ica, L.P. v. API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir.
`2016) (explaining that disclaimer “requir[es] clear and un-
`equivocal evidence that the claimed invention . . . does not
`include a particular feature”).
`Extrinsic evidence further supports the Board’s con-
`struction. Dictionaries define “adhesive” as “[t]ending to
`adhere,” without reference to gluing. J.A. 466. A patent
`issued to Collabo’s expert describes epoxy and thermo-
`plastic resins as “adhesives.” J.A. 968–69 at col. 4 ll. 46–
`48, col. 5 ll. 7–21. And Collabo’s expert admitted during
`deposition that the term “adhesive” encompasses more
`than merely gluing. See J.A. 808–09 (admitting “thermo-
`setting resins were known as structural adhesives” and
`that “epoxy resins can be used as an adhesive”).
`On appeal, Collabo argues that it disclaimed the prior
`art’s “imprecise” techniques of adhesion, but neither the
`claims, the specification, nor the prosecution history re-
`quire any particular level of precision. Collabo further ar-
`gues that the Board erred by first looking to the extrinsic
`evidence and particularly dictionary definitions. Oral Arg.
`at 6:33–46, http://oralarguments.cafc.uscourts.gov/de-
`fault.aspx?fl=2018-1311.mp3. But this argument is simi-
`larly unpersuasive. The Board merely noted the existence
`of dictionary definitions suggesting the ordinary meaning
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`7
`
`of “adhesive.” The Board’s approach is not inconsistent
`with our precedent. As we have explained, the Board “may
`look to extrinsic evidence so long as the extrinsic evidence
`does not contradict the meaning otherwise apparent from
`the intrinsic record.” Helmsderfer v. Bobrick Washroom
`Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008); see also
`Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
`2010) (approving of “consult[ing] a general dictionary defi-
`nition of [a] word for guidance” in determining ordinary
`meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325
`(Fed. Cir. 2008)
`(“[O]ur decisions,
`including Phil-
`lips, 415 F.3d at 1322, do not preclude the use of general
`dictionary definitions as an aid to claim construction.”).
`B
`Collabo also disputes the Board’s construction of “wider
`area,” as recited by claim 1. As a threshold issue, Collabo
`argues that the Board erred by construing this phrase be-
`cause neither party asked it to do so. Collabo argues that
`the Board’s choice to construe the term in the final written
`decision deprived it of fair notice and opportunity to pre-
`sent arguments. We disagree. Collabo itself placed the
`meaning of “wider area” at issue. It argued that the as-
`serted prior art references did not disclose the “wider area”
`limitation because they failed to show or describe the rela-
`tive areas—both length and width—of their openings. See,
`e.g., J.A. 502–08, 527–30. In response, Sony argued the op-
`posite, asserting that the plain meaning of “wider” invokes
`only the “width” dimension while noting that Collabo had
`made an “implicit construction” argument. J.A. 742–43,
`754–55. That Collabo did not expressly describe its argu-
`ment as claim construction does not preclude the Board
`from construing “wider area” to resolve the parties’ dispute,
`particularly because both Sony and the Board recognized
`that Collabo was implicitly construing the phrase and be-
`cause the Board discussed Collabo’s claim construction po-
`sition at the hearing. See, e.g., J.A. 742, 1038–40. In these
`circumstances, we conclude that Collabo had an adequate
`
`

`

`8
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`opportunity to present its position, and due process is sat-
`isfied. See AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d
`1358, 1365 (Fed. Cir. 2019) (finding no due process viola-
`tion where party had “adequate notice of the issues the
`Board w[ould] decide as well as an opportunity to be heard
`on those issues”).
`We further agree with the Board that the plain and or-
`dinary meaning of “wider area” requires only “that the
`opening ‘area’ is ‘wider’ where the image sensor is in-
`serted.” Sony, 2017 WL 4418283, at *12. The plain claim
`language supports the Board’s construction—“wider” in-
`herently suggests the width dimension. Although the spec-
`ification elsewhere discusses “smaller” and “larger” areas
`when comparing the entire opening area, see, e.g., ’714 pa-
`tent col. 2 ll. 36–38 (“the opening area is smaller than the
`entire area of CCD chip”), col. 7 ll. 46–52 (“a third open-
`ing 53 having the larger opening area than that of the
`opening 52”), claim 1 uses “wider” rather than one of these
`broader terms, further suggesting that the claim is com-
`paring only the width dimension of the openings. The pros-
`ecution history contains no contrary statements.
`Collabo nonetheless urges us to hold that “wider”
`means “larger,” arguing that the specification uses “wider”
`to “mean[] greater or larger.” Appellant’s Br. 53. The in-
`trinsic record undermines Collabo’s position. The specifi-
`cation uses both “wider” and “larger,” as discussed. And
`Collabo used “larger” rather than “wider” in other claims.
`See, e.g., ’714 patent col. 10 ll. 6–22 (reciting “larger of two
`openings”).3
`
`II
`We next address Collabo’s assertion that even under
`the Board’s constructions, the Board erred by finding that
`
`3 Collabo does not separately argue these claims on
`appeal.
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`9
`
`the prior art discloses a “wider area.” We review this find-
`ing, a question of fact, for substantial evidence. See Med-
`tronic, Inc. v. Barry, 891 F.3d 1368, 1375 (Fed. Cir. 2018);
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
`1342, 1361 (Fed. Cir. 2012). Substantial evidence is “such
`relevant evidence as a reasonable mind might accept as ad-
`equate to support a conclusion.” Biestek v. Berryhill,
`139 S. Ct. 1148, 1154 (2019) (quoting Consol. Edison Co. v.
`NLRB, 305 U.S. 197, 229 (1938)).
`Substantial evidence supports the Board’s finding that
`Yoshino discloses the recited “wider area.” Yoshino’s Fig-
`ure 1, reproduced below with Sony’s annotations, shows
`the tapered upper opening 23 and the alleged “wider” lower
`opening, marked by the red dotted line:
`
`
`J.A. 199. The Board was called to decide whether the lower
`opening highlighted in red is wider than the narrowest
`point of the tapered opening 23. See Oral Arg. at 11:19–52
`(“[W]e’re looking at that narrowest part . . . .”), 16:35–45
`(“[T]he relevant opening is at the bottom . . . of the anvil.”).
`Yoshino itself discloses that the chip 25 “is placed” after
`“glass plate (22) is hermetically secured . . . so as to cover
`the tapered opening (23).” J.A. 282. It follows that the
`lower opening is at least as wide as the chip, to permit in-
`sertion. Yoshino explains that the chip sits against a lip
`
`

`

`10
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`formed by bonding pads (26) at the interior edge (202) of the
`packaging. Id. As the Board found, Sony’s contention that
`the upper opening is narrower than the lower opening—at
`least by the width of the bonding pads—is thus “consistent
`with the geometry necessary to seal the image sensor into
`the package.” Sony, 2017 WL 4418283, at *12; see also
`J.A. 197–98 (providing expert testimony that one of ordi-
`nary skill would understand the lower opening to be wider
`based on Yoshino’s assembly process).
`Yoshino and other record evidence further suggest a
`technical benefit from using an upper opening that is nar-
`rower than the chip, and thus also narrower than the lower
`opening. Yoshino states that the upper opening should be
`set to “at least cover the effective photosensitive section” of
`the chip. J.A. 282. It explains that using the tapered shape
`to control the light shining onto the chip through the upper
`opening “prevent[s] unnecessary light from being reflected
`and intruding inside to adversely affect the photoelectric
`properties” of the CCD chip. J.A. 281; see also J.A. 405–06
`(showing chip geometry with “effective pixel region” in cen-
`ter of chip and describing methods of “preventing the [chip]
`from receiving any unwanted or stray light” outside of this
`area), 906 (describing problem of extra light interfering
`with chip function); Oral Arg. at 30:03–43 (“[W]e’re talking
`about light here, getting only on the photosensitive ele-
`ments of the chip and not others.”).
`Similar structural characteristics provide substantial
`support for the Board’s finding that Wakabayashi discloses
`a lower opening that is wider than the upper opening.
`Wakabayashi’s Figure 1, again as annotated by Sony, illus-
`trates the upper and lower openings:
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`11
`
`
`J.A. 263. Like Yoshino, Wakabayashi describes that the
`chip (6) sits against a lip formed by bumps (7) within the
`package (4). J.A. 285. And like Yoshino, Wakabayashi ex-
`plains the desirability of shaping the upper opening “to
`form desirable shapes” for “the optical characteristics” of
`the chip. Id.; see also Oral Arg. at 30:03–43.
`Collabo argues that the Board erred by relying on the
`figures reproduced above, citing cases for the general prop-
`osition that patent figures are not assumed to be drawn to
`scale. See Appellant’s Br. 55–61. For example, Collabo
`cites Hockerson-Halberstadt, Inc. v. Avia Group Interna-
`tional, Inc., 222 F.3d 951 (Fed. Cir. 2000), for the proposi-
`tion that “patent drawings do not define the precise
`proportions of the elements and may not be relied on to
`show particular sizes if the specification is completely si-
`lent on the issue.” Id. at 956. But the cases cited by Col-
`labo are inapplicable—the references are not “completely
`silent” on the relative dimensions of the openings. Con-
`trary to Collabo’s assertion, the Board’s findings have sup-
`port beyond the figures alone, and substantial evidence
`supports the Board’s conclusions.
`III
`Finally, we address Collabo’s challenge to IPR as ap-
`plied to patents issued prior to passage of the America In-
`vents Act, which created these proceedings. Collabo avers,
`
`

`

`12
`
`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`correctly, that the Supreme Court did not address the con-
`stitutionality of such IPR proceedings in Oil States Energy
`Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct.
`1365 (2018). It asks us to hold that IPR is either unlawful
`or is a taking that entitles it to compensation under the
`Fifth Amendment.
`This court, however, recently considered these issues
`in Celgene Corp. v. Peter, No. 18-1167, slip op. at 26–36
`(Fed. Cir. July 30, 2019). Our decision there forecloses Col-
`labo’s argument. When the Celgene patent issued, it was
`already subject to both judicial and administrative validity
`challenges. Id. at 35–36. We acknowledged that IPR dif-
`fers from both district court proceedings and prior admin-
`istrative validity proceedings, but we held that the
`variations from the administrative validity review mecha-
`nisms in place upon patent issuance are not so significant
`as to render IPR unconstitutional or effectuate a taking.
`Id.; see also id. at 27 & n.13 (affirming that our prior deci-
`sions ruling that retroactive application of reexamination
`does not violate the Fifth Amendment, the Seventh
`Amendment, or Article III “control the outcome” of similar
`challenges to IPR).
`Like the patent at issue in Celgene, when the ’714 pa-
`tent issued, patent owners already expected that their pa-
`tents could be challenged in district court and “[f]or forty
`years” had expected that “the [Patent Office] could recon-
`sider the validity of issued patents on particular grounds,
`applying a preponderance of the evidence standard.” Id.
`at 35–36. Accordingly, application of IPR to Collabo’s pa-
`tent, on grounds that were available for Patent Office re-
`consideration when the patent was issued and under the
`same burden of proof, does not create a constitutional is-
`sue, and we reject Collabo’s constitutional challenge.
`
`

`

`COLLABO INNOVATIONS, INC. v. SONY CORPORATION
`
`13
`
`CONCLUSION
`We have reviewed the parties’ remaining arguments
`and find them unpersuasive. Accordingly, we affirm the
`Board.
`
`AFFIRMED
`COSTS
`
`Costs to appellee.
`
`