Petition for Inter Partes Review of U.S. Patent No. 8,702,883
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
`DUKANE CORPORATION,
`
`Petitioner,
`
`v.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO. KG
`
`Patent Owner.
`
`______________________________
`
`Case IPR2015-00___
`Patent 8,702,883
`
`Issue Date: April 22, 2014
`
`_____________________________
`
`DECLARATION OF LEO KLINSTEIN
`_____________________________
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 1
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`

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`TABLE OF CONTENTS
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`
`
`Page
`
`I. 
`
`INTRODUCTION ......................................................................................... 4 
`A. 
`Background and Qualifications................................................... 4 
`B. 
`Basis for Opinions ....................................................................... 4 
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 5 
`II. 
`III.  THE FIELD OF THE INVENTION OF THE ‘883 PATENT .................. 6 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ........................................ 7 
`V. 
`THE ‘883 PATENT (EXHIBIT 1001) ......................................................... 7 
`VI.  THE ‘158 PATENT (EXHIBIT 1002) ......................................................... 8 
`A. 
`Overview of the ‘158 Patent ....................................................... 8 
`B. 
`Claim 1 of the ‘883 Patent ........................................................ 10 
`C. 
`Claims 2 and 3 of the ‘883 Patent ............................................. 15 
`D. 
`Claim 6 of the ‘883 Patent ........................................................ 15 
`E. 
`Claim 8 of the ‘883 Patent ........................................................ 16 
`VII.  THE ‘816 PATENT (EXHIBIT 1004) ....................................................... 16 
`A. 
`Claim 1 of the ‘883 Patent ........................................................ 16 
`B. 
`Claim 2 of the ‘883 Patent ........................................................ 21 
`C. 
`Claims 4 and 5 of the ‘883 Patent ............................................. 21 
`D. 
`Claim 6 of the ‘883 Patent ........................................................ 23 
`VIII.  THE USER’S MANUAL FOR THE DUKANE DYNAMIC PROCESS
`CONTROLLER DPC IV PLUS (EXHIBIT 1005) ................................... 23 
`A. 
`Ex. 1005 was Publicly Accessible Prior to July 12, 2012. ....... 23 
`B. 
`The DPC Manual Discloses A Process With Up To Ten
`Welding Intervals ...................................................................... 25 
`Claim 1 of the ‘883 Patent ........................................................ 29 
`Claims 2 and 3 of the ‘883 Patent ............................................. 33 
`Claim 6 of the ‘883 Patent ........................................................ 33 
`Claim 7 of the ‘883 Patent ........................................................ 33 
`
`C. 
`D. 
`E. 
`F. 
`
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`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 2
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`

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`Claim 8 of the ‘883 Patent ........................................................ 34 
`G. 
`Claim 9 of the ‘883 Patent ........................................................ 36 
`H. 
`IX.  THE USER’S MANUAL FOR THE DUKANE iQ SERIES ES
`GENERATOR POWER SUPPLY (EXHIBIT 1006) ............................... 37 
`A. 
`Ex. 1006 was Publically Accessible Prior to July 12, 2012 ..... 37 
`B. 
`The Combination of the ‘158 Patent and the iQ Manual Would
`Have Been Obvious to A Person of Ordinary Skill in the Art
`prior to July 12, 2012. .............................................................. 38 
`The iQ Manual Discloses A Process With More Than Three
`Welding Intervals ...................................................................... 39 
`
`C. 
`
`
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 3
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`

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`
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`I. INTRODUCTION
`
`A.
`
`1.
`
`Background and Qualifications
`
`I am currently employed by Dukane Corporation as the Vice President
`
`of Engineering and R&D. I have been continuously employed by Dukane since
`
`October, 2000, and have held my current position since April, 2015. Previously, I
`
`was the Director of Engineering since 2004. I have been responsible for the design
`
`and development of all new products, including ultrasonic welding equipment, as
`
`well as the technical support thereof.
`
`2.
`
`I received the equivalent of an MS in Electronics Engineering (with
`
`Honors) from the National Technical University of Lvov (Lviv), Lviv, Ukraine in
`
`1979.
`
`3.
`
`I have worked in various new product development positions for
`
`several companies in the former USSR in 1979-1989, and in the USA since 1990.
`
`I have authored and co-authored ten U.S. patents, and presented a number of
`
`papers at the Ultrasonic Industry Association (“UIA”) Symposia. I have been a
`
`Board Member of the UIA since 2006.
`
`B.
`
`Basis for Opinions
`
`4. My opinions are based on my years of education, research and
`
`experience, my personal knowledge and information from my employment at
`
`Dukane Corp., and my investigation and study of relevant materials. In forming
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 4
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`

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`
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`my opinions, I have considered the materials identified as Exhibits to Dukane
`
`Corporation’s Petition for Inter Partes Review of U.S. Patent No. 8,702,883 (the
`
`“‘883 patent”).
`
`5.
`
`This report represents only the facts presently known and the opinions
`
`that I have formed to date. I reserve the right to revise, supplement or amend this
`
`Declaration based on new information and argument raised by the patent owner,
`
`and my continuing analysis of the materials identified in the Exhibits.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`
`6.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the ‘883 patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`7.
`
`I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made.
`
`8.
`
`I understand that in this type of proceeding, the information that is
`
`used to evaluate whether an invention is new and not obvious is limited to “prior
`
`art” consisting of patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`9.
`
`I understand that because the ‘883 patent claims an effective date
`
`prior to March 16, 2013, the patent is invalid if the invention was patented or
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 5
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`

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`
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`described in a printed publication in this or a foreign country more than one year
`
`prior to the date of the application for patent in the United States. I further
`
`understand that since the application leading to the ‘883 patent was filed in the
`
`United States on July 12, 2013, the “critical date” to determine whether patents and
`
`printed publications are “prior art” to the ‘883 patent is July 12, 2012.
`
`III. THE FIELD OF THE INVENTION OF THE ‘883 PATENT
`
`10. The ‘883 patent relates to the field of ultrasonic welding.
`
`11. Ultrasonic welding is used to weld two parts, typically plastic, by
`
`pressing the parts together while vibrating at least one of them at an ultrasonic
`
`frequency. The direction of the vibration is typically in the same direction as the
`
`pressing force. The friction between the vibrating surface of the one part on the
`
`engaged surface of the other part generates enough heat to melt the surfaces of the
`
`parts while they are pressed together. Then when the parts are cooled and
`
`solidified, they are permanently joined together.
`
`12. The parts are typically pressed together via a “sonotrode,” which is
`
`the part of the ultrasonic welding machine that vibrates while it makes contact with
`
`one of the parts to be welded and while it presses that part against the other part to
`
`be welded. Another name for “sonotrode” is “horn.” The term “sonotrode” is
`
`typically used in Europe and the term “horn” is typically used in the United States.
`
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`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 6
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`

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`
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`13. A person of ordinary skill in the field of the ‘883 patent would have
`
`been someone with a good working knowledge of ultrasonic welding and prior art
`
`ultrasonic welding machines and processes. The person would have gained this
`
`knowledge through an undergraduate education in electrical or mechanical
`
`engineering, in combination with at least two years of practical working
`
`experience.
`
`V. THE ‘883 PATENT (EXHIBIT 1001)
`
`14. The ‘883 patent claims a method of controlling an ultrasonic welding
`
`process that utilizes an apparatus consisting of a generator, a converter and a
`
`sonotrode. (Ex. 1001, 1:4-11.) The term “sonotrode” in the ‘883 patent should be
`
`construed to have the meaning described in ¶12 above, namely, a device that can
`
`be pressed against one of the two components to be welded while the device is
`
`vibrated at an ultrasonic frequency. The claimed method divides the welding
`
`process into two or more “machining intervals,” and during each interval a
`
`“welding variable” is kept constant until a “target variable” reaches a
`
`“predetermined value.” The “welding variables” are selected from what is called
`
`“group S,” and the “target variables” are selected from what is called “group Z.”
`
`The patent says that the first and second “welding variables” can be the same or
`
`different, but the first and second “target values” must be different.
`
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`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 7
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`

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`
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`15.
`
`I understand that in this proceeding, the claims of the ‘883 patent must
`
`be given their broadest reasonable interpretation consistent with the specification
`
`of that patent. The claims after being construed in this manner are then to be
`
`compared to the information in the prior art.
`
`16. The petitioner proposes constructions for the following five claim
`
`terms and phrases in the ‘883 patent, and I believe that those proposed
`
`constructions accurately state how a person of ordinary skill in the field of
`
`ultrasonic welding would construe those claim terms. The five claim terms are:
`
`a. “machining interval”
`
`b. “sonotrode”
`
`c. “target value”
`
`d. “welding path”
`
`e. “adopts a predetermined value”
`
`The remaining terms in the challenged claims have a well-understood meaning to a
`
`person of ordinary skill in the art and therefore require no further construction for
`
`purposes of these proceedings.
`
`VI. THE ‘158 PATENT (EXHIBIT 1002)
`
`A. Overview of the ‘158 Patent
`
`17. U.S. Patent No. 7,819,158 (the “’158 patent”), which is assigned to
`
`petitioner Dukane Corp., is entitled “Ultrasonic Press Using Servo Motor With
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 8
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`

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`
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`Integrated Linear Actuator” and describes an ultrasonic welding apparatus and a
`
`method for “the control of the welding process.” (Ex. 1002, 6:19-42.) The ‘158
`
`patent was issued on October 26, 2010, which was well before the July 12, 2012
`
`critical date of the ‘883 patent. The ‘158 patent describes an ultrasonic welding
`
`machine that includes an ultrasonic signal generator and welding stack 10,
`
`consisting of an electromechanical transducer 20, a booster 21, and a horn 22. (Ex.
`
`1002, 2:56-3:1 and Fig. 5.) This machine contains the features of the apparatus
`
`used to carry out the method claimed in the ‘883 patent. See Ex. 1001, 1:4-11
`
`(explaining that “an ultrasonic welding apparatus, consisting of a generator, a
`
`converter and a sonotrode” is used in the ultrasonic welding process).
`
`18. Examples of the welding procedure described in the ‘158 patent are
`
`illustrated in Figs. 9 and 10 of the drawings of that patent. The “control scheme”
`
`illustrated in Fig. 9 of the ‘158 patent includes the two welding intervals recited in
`
`claim 1 of the ‘883 patent. The first welding interval disclosed in Fig. 9 extends
`
`from the start of the weld at 0.04 second to 0.13 second, and the second welding
`
`interval extends from 0.13 second to 0.20 second. (Ex. 1002, Fig. 9.)
`
`19. The ultrasonic welding control scheme illustrated in Fig. 10 of the
`
`‘158 patent also includes the two welding intervals recited in claim 1 of the ‘883
`
`patent. The first welding interval disclosed in Fig. 10 extends from the start of the
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 9
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`

`
`
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`weld at 0.04 second to 0.13 second, and the second welding interval extends from
`
`0.13 second to the end of the weld at 0.26 second. (Ex. 1002, Fig. 10.)
`
`B. Claim 1 of the ‘883 Patent
`
`1.
`
`The Preamble of Claim 1 of the ‘883 Patent
`
`20. The preamble of claim 1 of the ‘883 patent reads, “controlling an
`
`ultrasonic machining process, in which an ultrasonic vibration of the frequency f is
`
`transmitted with the aid of a sonotrode made to carry out an ultrasonic vibration
`
`under a pressure into the material to be machined.”
`
`21. The ‘158 patent discloses an ultrasonic welding system that uses an
`
`“ultrasonic welding stack,” which transfers ultrasonic vibrational energy having a
`
`known frequency to the workpiece through direct physical contact and applies the
`
`pressure necessary to force the weld. (Ex. 1002, 3:48-60.)
`
`22. The ‘158 patent discloses that the ultrasonic welding stack transmits
`
`ultrasonic vibration under pressure into the material to be welded via a horn (which
`
`is the same as a sonotrode). Id., 4:20-29 (“the tip of the horn is brought into
`
`contact with the upper workpiece . . . [p]ressure is applied and ultrasonic energy
`
`travels through the upper workpiece . . . When the vibration stops, the material
`
`solidifies forming a permanent bond.”)
`
`23. Thus, the ‘158 patent discloses a method of “controlling an
`
`ultrasonic machining process in which an ultrasonic vibration of the frequency f is
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 10
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`

`
`
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`transmitted with the aid of a sonotrode made to carry out an ultrasonic vibration
`
`under a pressure into the material to be machined.”
`
`2.
`
`The First Machining Interval of Claim 1 of the ‘883 Patent
`
`24. The first part of the body of claim 1 reads, “during a first machining
`
`interval, a first welding variable of the group S, consisting of
`
`
`
`
`
`
`
`
`
`
`
`the frequency f of the ultrasonic vibration,
`
`the amplitude ü of the ultrasonic vibration of the sonotrode,
`
`the force F, which the sonotrode exerts on the material to be
`
`machined,
`
`the power P, which the generator delivers, and
`
`the speed v, with which the sonotrode is moved in the direction of the
`
`material to be machined,
`
`is kept constant until a first target variable of the group Z, consisting of
`
`
`
`the force F,
`
`
`
`the power P,
`
`
`
`the welding time t since the beginning of this machining interval,
`
`during which the excited sonotrode transmits the ultrasonic vibration
`
`under pressure into the material to be machined,
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 11
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`

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`
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`
`
`the welding path s, which the sonotrode has covered since the
`
`beginning of the machining interval, and
`
`
`
`the energy E, calculated from the product of P and t,
`
`adopts a predetermined value.”
`
`25. Fig. 9 of the ‘158 patent discloses a first welding interval extending
`
`from the start of the weld at 0.04 second to 0.13 second, during which the velocity
`
`(i.e., weld speed) is kept constant at 0.95 mm/SEC, which is 0.09 second after the
`
`beginning of the first interval. The weld speed corresponds to the “first welding
`
`variable” (“speed v”) in claim 1 of the ‘883 patent, the weld “time” corresponds to
`
`the “first target variable” (“welding time t”) in claim 1 of the ‘883 patent, and the
`
`welding time of 0.09 second since the beginning of the first interval corresponds to
`
`the “predetermined value” adopted by the first target variable in claim 1 of the
`
`‘883 patent.
`
`26. Fig. 10 of the ‘158 patent discloses a first welding interval extending
`
`from the start of the weld at 0.04 second to 0.13 second, during which the “weld
`
`force” is kept constant at 0.525 KN, which is 0.09 second after the beginning of the
`
`first interval. The “weld force” corresponds to the “first welding variable” (“force
`
`F”) in claim 1 of the ‘883 patent, the weld “time” corresponds to the “first target
`
`variable” (“welding time t”) in claim 1 of the ‘883 patent, and the welding time of
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 12
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`

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`
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`0.09 second since the beginning of the first interval corresponds to the
`
`“predetermined value” adopted by the first target variable in claim 1 of the ‘883
`
`patent.
`
`27. The ‘158 patent discloses that the values of these target variables are
`
`“predetermined” by disclosing that “[s]pecific force and speed profiles can be
`
`programmed into a welding apparatus, e.g., by storing the profiles in memory
`
`associated with the controller.” (Ex. 1002, 6:23-25.)
`
`28. Thus, the ‘158 patent discloses an ultrasonic welding process having a
`
`first welding interval that meets all the requirements of the “first machining
`
`interval” in claim 1 of the ‘883 patent.
`
`3.
`
`The Second Machining Interval of ‘883 Claim 1
`
`29. The last part of claim 1 reads, “during a second machining interval,
`
`which adjoins the first machining interval, a second welding variable of the group
`
`S is kept constant until a second target variable of the group Z adopts a
`
`predetermined value, wherein the first and the second target value differ.”
`
`30. Fig. 9 of the ‘158 patent discloses a second welding interval extending
`
`from 0.13 second to 0.20 second, during which the velocity (i.e., weld speed) is
`
`kept constant at 0.7 mm/SEC, which is 0.07 second after the beginning of the
`
`second interval. The weld speed corresponds to the “second welding variable”
`
`(“speed v”) in claim 1 of the ‘883 patent, the weld “time” corresponds to the
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 13
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`

`
`
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`“second target variable” (“welding time t”) in claim 1 of the ‘883 patent, and the
`
`welding time of 0.07 second since the beginning of the second interval corresponds
`
`to the “predetermined value” adopted by the second target variable in claim 1 of
`
`the ‘883 patent. The predetermined first and second target values of 0.09 second
`
`and 0.07 second “differ” from each other.
`
`31. Fig. 10 of the ‘158 patent discloses a second welding interval
`
`extending from 0.13 second to the end of the weld at 0.26 second, during which the
`
`“weld force” is kept constant at 0.95 KN, which is 0.13 second after the beginning
`
`of the second interval. The “weld force” corresponds to the “second welding
`
`variable” (“force F”) in claim 1 of the ‘883 patent, the weld “time” corresponds to
`
`the “second target variable” (“welding time t”) in claim 1 of the ‘883 patent, and
`
`the welding time of 0.13 second since the beginning of the second interval
`
`corresponds to the “predetermined value” of the second target variable in claim 1
`
`of the ‘883 patent. The predetermined first and second target values of 0.09
`
`second and 0.13 second “differ” from each other.
`
`32. The ‘158 patent discloses that “[o]nce the welding has started, any of
`
`the aforementioned parameters can be used to complete the weld process with the
`
`addition of velocity or weld force profile control.” (Ex. 1002, 6:41-44.) The
`
`“aforementioned” parameters include distance (same as “welding path s” in the
`
`‘883 patent), force, time, ultrasonic power, and energy. (Ex. 1002, 6:37-41.) This
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 14
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`

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`
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`means that any of these parameters can be utilized as the “target variable” for the
`
`last “welding interval” instead of “time” as illustrated in Figs. 9 and 10, and
`
`discloses that the target variables may be different for the two machining intervals.
`
`33. Thus, the ‘158 patent discloses an ultrasonic welding process having a
`
`second welding interval that meets all the requirements of the “second machining
`
`interval” in claim 1 of the ‘883 patent, and thus claim 1 of the ‘883 patent is
`
`anticipated by the ‘158 patent.
`
`C. Claims 2 and 3 of the ‘883 Patent
`
`34. Fig. 9 of the ‘158 patent discloses first and second welding variables
`
`that are both weld speed, and thus are the same. Thus, claim 2 of the ‘883 patent is
`
`anticipated by the ‘158 patent.
`
`35. Fig. 10 of the ‘158 patent discloses first and second welding variables
`
`that are both weld force. Thus, claim 3 of the ‘883 patent is also anticipated by the
`
`‘158 patent.
`
`D. Claim 6 of the ‘883 Patent
`
`36. Figs. 9 and 10 of the ‘158 patent disclose a first machining interval
`
`that has welding time as a target variable and ends when that target variable adopts
`
`a predetermined value of 0.13 second. Thus, claim 6 of the ‘883 patent is
`
`anticipated by the ‘158 patent.
`
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`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 15
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`

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`
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`E. Claim 8 of the ‘883 Patent
`
`37. Fig. 9 of the ‘158 patent discloses a third welding interval extending
`
`from 0.20 second to 0.26 second, during which the velocity (i.e., weld speed) is
`
`kept constant at 0.325 mm/SEC, which is 0.06 second after the beginning of the
`
`third interval. Thus, the weld speed corresponds to the “third welding variable”
`
`(“speed v”) in claim 8 of the ‘883 patent, and the welding time of 0.06 second
`
`since the beginning of the third interval corresponds to the “fifth target variable”
`
`(“welding time t”) in claim 8 of the ‘883 patent. The predetermined values of 0.07
`
`second and 0.06 second for the second and fifth target variables “differ” from each
`
`other. Thus, claim 8 of the ‘883 patent is anticipated by the ‘158 patent.
`
`VII. THE ‘816 PATENT (EXHIBIT 1004)
`
`A. Claim 1 of the ‘883 Patent
`
`1.
`
`The Preamble of Claim 1 of the ‘883 Patent
`
`38. The preamble of claim 1 reads, “controlling an ultrasonic machining
`
`process, in which an ultrasonic vibration of the frequency f is transmitted with the
`
`aid of a sonotrode made to carry out an ultrasonic vibration under a pressure into
`
`the material to be machined.”
`
`39. U.S. Patent No. 8,052,816 (“the ‘816 patent”) discloses an ultrasonic
`
`welding system that uses an “ultrasonic welding stack,” which transfers ultrasonic
`
`vibrational energy having a known frequency to the workpiece through direct
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 16
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`

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`
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`physical contact and applies the pressure necessary to force the weld. (Ex. 1004,
`
`4:14-26.)
`
`40. The ‘816 patent discloses that the ultrasonic welding stack transmits
`
`ultrasonic vibration under pressure into the material to be welded via a horn (which
`
`is the same as a sonotrode). Id., 4:52-61 (“the tip of the horn is brought into
`
`contact with the upper workpiece . . . [p]ressure is applied and ultrasonic energy
`
`travels through the upper workpiece . . . When the vibration stops, the material
`
`solidifies forming a permanent bond.”)
`
`41. Thus, the ‘816 patent discloses a method of “controlling an ultrasonic
`
`machining process in which an ultrasonic vibration of the frequency f is
`
`transmitted with the aid of a sonotrode made to carry out an ultrasonic vibration
`
`under a pressure into the material to be machined.”
`
`2.
`
`The First Machining Interval of Claim 1 of the ‘883 Patent
`
`42. The first part of the body of claim 1 reads, “during a first machining
`
`interval, a first welding variable of the group S, consisting of
`
`
`
`
`
`
`
`the frequency f of the ultrasonic vibration,
`
`the amplitude ü of the ultrasonic vibration of the sonotrode,
`
`the force F, which the sonotrode exerts on the material to be
`
`machined,
`
`
`4835-2083-2041.1
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`Petitioner Dukane Corp. – Exhibit 1007, p. 17
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`

`
`
`
`
`
`
`
`the power P, which the generator delivers, and
`
`the speed v, with which the sonotrode is moved in the direction of the
`
`material to be machined,
`
`is kept constant until a first target variable of the group Z, consisting of
`
`
`
`the force F,
`
`
`
`the power P,
`
`
`
`the welding time t since the beginning of this machining interval,
`
`during which the excited sonotrode transmits the ultrasonic vibration
`
`under pressure into the material to be machined,
`
`
`
`the welding path s, which the sonotrode has covered since the
`
`beginning of the machining interval, and
`
`
`
`the energy E, calculated from the product of P and t,
`
`adopts a predetermined value.”
`
`43. The ‘816 patent discloses, in the example of the delayed motion
`
`technique (Ex. 1004, 7:16-55 and Figs. 9-11), a first welding interval extending
`
`from the start of the weld (indicated at 0 seconds) until a decrease in the force to a
`
`predetermined threshold of 17 pounds is reached (indicated at 0.08 seconds),
`
`during which “the weld distance [is] maintained substantially at 0 inches.” A
`
`person of ordinary skill in the art would have understood, when reading the ‘816
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 18
`
`

`
`
`
`patent when it was published in 2009, that the distance being “maintained
`
`substantially at 0 inches” is the same as the speed being maintained at a constant
`
`value, namely 0 inches/second. Thus, the weld speed corresponds to the “first
`
`welding variable” (“speed v”) in claim 1 of the ‘883 patent, and a threshold of
`
`force corresponds to the “predetermined value” of the “first target variable” (“force
`
`F”) in claim 1 of the ‘883 patent.
`
`44. A person of ordinary skill in the art would have also understood in
`
`November, 2011, that the weld profiles (both default weld profiles and weld
`
`profiles that could be selected by the user), see ‘816 patent at 1:54-60, would be
`
`stored in memory before beginning a welding operation, and were thus
`
`“predetermined.” One of ordinary skill would have further understood that these
`
`welding profiles would necessarily have an endpoint (i.e., a predetermined value
`
`that, when reached, ends the welding interval).
`
`45. Fig. 9 of the ‘816 patent graphically shows a welding profile in which
`
`the control variable is distance. The graph shows distance over time, and a person
`
`of ordinary skill in the art when the ‘816 patent issued in November, 2011, would
`
`have known that the fact that a portion of the graph is linear meant that the weld
`
`speed (velocity) had been kept constant during that portion of the weld.
`
`46. The ‘816 patent further discloses two other predetermined conditions
`
`for ending the first welding interval, during which the speed is a constant value of
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 19
`
`

`
`
`
`0 inches/second, each of which is a member of the target variable group Z in the
`
`‘883 patent. Specifically:
`
` “specified power” in 6:62-7:15 and claim 2, which corresponds to
`
`“power P” of the ‘883 patent
`
` “specified cumulative power” in 6:62-7:15 and claim 2, which
`
`corresponds to “energy E” of the ‘883 patent
`
`47. Thus, the ‘816 patent discloses an ultrasonic welding process having a
`
`first welding interval that meets all the requirements of the “first machining
`
`interval” in claim 1 of the ‘883 patent.
`
`3.
`
`The Second Machining Interval of Claim 1 of the ‘883
`Patent
`
`48. The last part of claim 1 reads, “during a second machining interval,
`
`which adjoins the first machining interval, a second welding variable of the group
`
`S is kept constant until a second target variable of the group Z adopts a
`
`predetermined value, wherein the first and the second target value differ.”
`
`49. The ‘816 patent discloses, in the example of the delayed motion
`
`technique (Ex. 1004, 7:16-55 and Figs. 9-11), a second welding interval, extending
`
`from the end of the first interval (indicated at 0.08 seconds) until the predetermined
`
`weld distance of 0.012 inches is reached (indicated at 0.47 seconds by the
`
`ultrasound power being terminated as shown in Fig. 11), during which the speed is
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 20
`
`

`
`
`
`kept constant as indicated by the linear increase in the distance shown in Fig. 9.
`
`Thus, the weld speed corresponds to the “second welding variable” (“speed v”) in
`
`claim 1 of the ‘883 patent, and the weld distance corresponds to the “second target
`
`variable” (“welding path s”) in claim 1 of the ‘883 patent.
`
`50. Since the first and second target variables, “force” and “weld
`
`distance,” respectively, are different, their values necessarily differ.
`
`51. Thus, the ‘816 patent discloses an ultrasonic welding process having a
`
`second welding interval that meets all the requirements of the “second machining
`
`interval” in claim 1 of the ‘883 patent, and thus claim 1 of the ‘883 patent is
`
`anticipated by the ‘816 patent.
`
`B. Claim 2 of the ‘883 Patent
`
`52. The ‘816 patent discloses first and second welding variables that are
`
`both weld speed, so they are the same variable. Thus, the ‘816 patent anticipates
`
`claim 2 of the ‘883 patent.
`
`C. Claims 4 and 5 of the ‘883 Patent
`
`53. The subject matter of claims 4 and 5 would have been obvious to a
`
`person of skill in the art reading the ‘816 patent prior to the critical date of July 12,
`
`2012.
`
`54. Claim 4 of the ‘883 patent requires that the selection of the “second
`
`target variable” is dependent on the detection of a “third target variable” during the
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 21
`
`

`
`
`
`“first machining interval.” Claim 5 is dependent on claim 4 and requires that the
`
`“third target variable” is the “welding time t.”
`
`55. A person of skill in the art would have understood from the ‘816
`
`patent, as of the critical date, that the monitoring and detection of a certain target
`
`variable during the first machining (welding) interval allows the selection of
`
`another target variable for the second machining interval. For example, if the
`
`“third target variable” is set to “welding time t,” the selection criteria could be as
`
`follows: if the “welding time t” is detected during the “first welding interval” to be
`
`greater (or lower) than a predetermined value, then the “second target variable” is
`
`selected to be the “welding path s”; otherwise, the “second target variable” is
`
`selected to be the “force F.” A person skilled in the art could have selected the
`
`“welding time t” value to be such that the time detected always exceeds (or is
`
`below) that selected value, which would have ensured that a particular “second
`
`target variable” is always selected, such as the “welding path s.” This example,
`
`when combined with selections of “speed” for the “first and second welding
`
`variables,” and “force” for the “first target variable,” would yield the same weld
`
`sequence as the delayed motion technique of the ‘816 patent.
`
`56. Thus, the ‘816 patent renders claims 4 and 5 of the ‘883 patent
`
`obvious.
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 22
`
`

`
`
`
`D. Claim 6 of the ‘883 Patent
`
`57. Claim 2 of the ‘816 patent discloses that the first machining interval
`
`can end when either of the first target variables ultrasound power (“power P” in
`
`claim 1 of the ‘883 patent) or cumulative power adopts a predetermined value.
`
`“Cumulative power” is the same as “energy E” in claim 1 of the ‘883 patent, e.g.,
`
`if power is measured in Watts, “cumulative power” is Watt-seconds or Joules,
`
`which is energy. The ‘816 patent also discloses a first machining interval that ends
`
`at 0.08 second when the first target variable, “force,” adopts the predetermined
`
`value. Thus, the ‘816 patent anticipates claim 6 of the ‘883 patent.
`
`VIII. THE USER’S MANUAL FOR THE DUKANE DYNAMIC PROCESS
`CONTROLLER DPC IV PLUS (EXHIBIT 1005)
`
`A.
`
`Ex. 1005 was Publicly Accessible Prior to July 12, 2012.
`
`58. The User’s Manual for the Dynamic Process Controller DPC IV Plus
`
`Generator (the “DPC Manual”), which has been marked as Ex. 1005, was available
`
`to the public before July 12, 2012.
`
`59. The DPC manual shows on its face the publication date of the manual.
`
`Specifically, pages iii and iv of Ex. 1005 show all revisions of the manual, with the
`
`last revision dated 2009-May-26.
`
`60. Dukane is an ISO9001-2008 certified company. In accordance with
`
`this certification, Dukane is required to -- and does -- keep proper track of its
`
`
`4835-2083-2041.1
`
`Petitioner Dukane Corp. – Exhibit 1007, p. 23
`
`

`
`
`
`controlled documents. The DPC Manual is an ISO9001-2008 “controlled
`
`document.” Accordingly, Dukane’s records demonstrate that this manual was