Tria1s@uspto.g0V
`571-272-7822
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`Paper 83
`Entered: March 23 , 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTRI—PLEX TECHNOLOGIES, INC. and MI HOLDINGS, LTD.,
`Petitioner
`
`V.
`
`SAINT—GOBAIN PERFORMANCE PLASTICS RENCOL LIMITED,
`Patent Owner
`
`Case IPR2014—OO309
`
`Patent 8,228,640 B2
`
`Before MICHAEL W. KIM, WILLIAM A. CAPP, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 USC. § 318(a) and 37 CFR. § 42. 73
`
`FRESENIUS KABI 1013-0001
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`

`
`Case IPR2014-00309
`
`Patent 8,228,640 B2
`
`Petitioner Intri-Plex Technologies, Inc. and MI Holdings, Ltd.
`
`(collectively, “Intri-Plex”) filed a Petition requesting inter partes review of
`
`claims 1-10 of U.S. Patent No. 8,228,640 B2 (Ex. 1001, “the ’640 patent”)
`
`pursuant to 35 U.S.C. §§ 311-319. Paper 1 (“Pet”). On June 10, 2014, we
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`instituted an interpartes review of claims 1-10 on certain grounds of
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`unpatentability alleged in the Petition. Paper 15 (“Dec”). After institution
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`of trial, Patent Owner Saint-Gobain Performance Plastics Rencol Limited
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`(“Saint-Gobain”) filed a Patent Owner Response (Paper 37, “PO Resp”),
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`and Intri-Plex filed a Reply (Paper 47, “Pet. Reply”). This case is before the
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`Board for a Final Written Decision following an Oral Hearing on the merits
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`conducted January 15, 2015, the transcript for which is entered as Paper 82
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`(“Tr”). Also before the Board are the following matters:
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`1. Saint-Gobain’s Motion to Exclude [Papers 51-53, 55, 66, 74];1
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`2. Intri-Plex’s Motion to Exclude Evidence [Papers 59, 65, and 73],
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`3. Motion to Seal Deposition Transcript of Ryan Schmidt [Paper 56], and
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`4. Motion to Seal Deposition Transcripts of Woodhead and Slayne
`[Papers 77, 80, and 81].2
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`After considering the evidence and arguments of counsel and for the
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`reasons set forth below, we determine that Intri-Plex has NOT met its burden
`
`of showing, by a preponderance of the evidence, that claims 1-10 of the
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`1 In Paper 51, we directed the parties to file abbreviated lists of materials in
`the record related to Saint—Gobain’s objection that Intri—Plex’s Reply and
`supporting evidence exceeded the proper scope of a Reply. We will
`consider Saint-Gobain’s objection to the scope of Intri-Plex’s Reply together
`with Saint-Gobain’s Motion to Exclude.
`
`2 In rendering our decision, we also have considered Patent Owner’s Motion
`for Observation on the Cross-Examination of l\/Ir. Ryan Schmidt and Dr.
`Michael McCarthy (Paper 54) and Petitioner’s response thereto (Paper 67)
`and have accorded the testimony the appropriate weight.
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`FRESENIUS KABI 1013-0002
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`

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`IPR2014-00309
`
`Patent 8,228,640 B2
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`’640 patent are unpatentable under 35 U.S.C. § lO3(a) as obvious over
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`Admitted Prior Art and Wing. In addition we GRANT—IN—PART Saint-
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`Gobain’s Motion to Exclude; DENY Intri-Plex’s Motion to Exclude; DENY
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`the Motion to Seal the Schmidt Deposition Transcript; and GRANT the
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`Motion to Seal the Woodhead and Slayne Deposition Transcripts.
`
`1 .
`
`BACKGROUND
`
`A. Background of the Related Technology
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`The ’64O patent is directed primarily to improving Winchester disc
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`hard drives. Representative drawings of a Winchester disc drive and the key
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`sub-components thereof that are of interest in this case are shown side-by-
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`side below. Ex. 2001, Figs. 1, 2.
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`--
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`‘<’;‘++?‘~;*’f"‘
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`Fig.
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`I
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`
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`‘ 2
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`Fiu.
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`Figure l of Exhibit 2001, depicted above left, shows an exploded view of a
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`typical disc drive. Disc drive 100 includes a plurality of discs 200 that are
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`FRESENIUS KABI 1013-0003
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`IPR2014-00309
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`Patent 8,228,640 B2
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`mounted for rotation on a spindle motor. Ex. 2001, 3:43-44. Actuator 300
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`is mounted to bearing assembly 400, which includes stationary pivot
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`shaft 410 about which actuator 300 rotates. Id. at 3:49-51. Figure 2 of
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`Exhibit 2001, depicted above right, shows a partially exploded view of
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`actuator 300. Actuator 300 has bore 370 that receives a bearing assembly.
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`Id. at 4: 1-2. The bearing assembly includes bearing cartridge 400 and
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`tolerance ring 450 that is interposed between bearing cartridge 400 and bore
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`370. Id. at 4:3—10.
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`Of paramount interest in the instant dispute is the design of the
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`tolerance ring that is interposed between the bearing cartridge and the bore.
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`In certain instances, a tolerance ring is not formed into a continuous,
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`unbroken circle. See, e. g., Ex. 1021, Fig. 2. Rather, a gap is created that
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`allows the tolerance ring to expand or contract radially. Ex. 2018, 11 34,
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`Ex. 2008. Such radial expansion or contraction facilitates assembly of the
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`tolerance ring onto the bearing or, alternatively, into the bore. Id. For
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`purposes of this Decision, a “Shaft Variable” tolerance ring is first placed
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`over the bearing assembly, and then the bearing assembly, with the Shaft
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`Variable tolerance ring placed thereon, is inserted into the bore. A “Housing
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`Variable” tolerance ring, for purposes of this Decision, is first placed inside
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`the bore and then the bearing assembly is inserted into the tolerance ring and
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`bore.
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`B. The ’640patent (Ex. I001)
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`The ’640 patent discloses and claims a hard disk drive with a pivot
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`bearing assembly located in a bore of an actuator arm. Ex. 1001, claim 1.
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`A tolerance ring is positioned between an interior surface of the bore and an
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`FRESENIUS KABI 1013-0004
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`IPR20l4-00309
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`Patent 8,228,640 B2
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`external surface of the pivot bearing assembly. Id. A funnel shaped guide
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`portion is positioned at one axial end of the tolerance ring. Id. at Fig. 4.
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`The Specification describes problems that can occur during assembly
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`of disk drive actuator arms that use tolerance rings. Id. at 2:5—6. As
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`tolerance rings require a tight fit, abrasion between the tolerance ring and
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`other parts of the apparatus during assembly may dislodge small fragments
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`or “particles” from surfaces of the affected parts. Id. at 2:6—l0. These
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`particles can affect the function of hard disk drives adversely, where
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`cleanliness is essential. Id. at 2:13-17.
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`Another issue relative to the design of tolerance rings is a
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`phenomenon referred to as torque ripple. Id. at 2:30-36, 7:8—l8. Contact
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`points between the tolerance ring and the bearing assembly create micro-
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`indentations that influence rolling elements in the bearing assembly as they
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`pass over them. Ex. 2020 1] 29. This causes unwanted vibration and torque
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`variations. Id. Torque variation is undesirable because it can cause errors in
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`reading and writing data to and from the disc. Id.
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`According to Saint-Gobain’s expert, Dr. Slocum, a Shaft Variable
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`ring, with outwardly facing protrusions and a smooth inner surface,
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`distributes its load more evenly around the circumference of the bearing
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`assembly than a Housing Variable tolerance ring. Ex. 2020 1] 29. For this
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`reason, Shaft Variable tolerance rings outperform Housing Variable
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`tolerance rings with respect to torque ripple. Id. Nevertheless, Housing
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`Variable tolerance rings outperform Shaft Variable tolerance rings in terms
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`of minimizing the generation of undesirable particles during assembly. Id.
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`1111 27- 28.
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`FRESENIUS KABI 1013-0005
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`IPR20l4-00309
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`Patent 8,228,640 B2
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`According to Saint-Gobain, the patentable improvement in the
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`’640 patent is the provision of a funnel shaped guide portion at an axial end
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`of a tolerance ring with outwardly facing protrusions. PO Resp. 5.3 Flared
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`tolerance rings possess the enhanced torque ripple performance of the Shaft
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`Variable tolerance ring. Ex. 2020 1] 35. Also, the funnel shaped axial end of
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`the Flared tolerance ring reduces particle generation when the bearing
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`assembly is inserted into the ring axially. Id. Flared tolerance rings can be
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`placed in the bore prior to inserting the bearing assembly into the tolerance
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`rings. Id. This assembly method mimics the superior particle generation
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`performance of the Housing Variable tolerance ring, while retaining the
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`torque ripple benefits of the Shaft Variable tolerance ring. Figure 4 of the
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`’640 patent is shown below adjacent to a perspective view of a Flared
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`tolerance ring that Saint-Gobain prepared as a demonstrative illustration.
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`
`
`and Saint-Gobain’s
`(left)
`patent
`’640
`the
`of
`4
`Fig.
`demonstrative illustration of the invention (right).
`See PO
`Resp. 33.
`
`3 For purposes of this Decision, tolerance rings that exhibit outwardly facing
`protrusions and a funnel shaped axial end shall be referred to as “Flared”
`tolerance rings.
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`FRESENIUS KABI 1013-0006
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`

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`IPR2014-00309
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`Patent 8,228,640 B2
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`As shown in Figure 4, the Specification teaches that guide surface 15
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`provides an enlarged entrance to band 16 of ring 13 for receiving the pivot
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`bearing assembly, thereby eliminating foul on an edge of ring 13 and
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`consequently reducing particle production. Ex. 1001, 7:45-53.
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`C. Related Matters
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`Neither party disclosed the fact that Saint-Gobain currently is
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`prosecuting related patent applications before the Office. We take Official
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`Notice of the fact that the ’640 patent issued on a divisional application from
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`non-provisional application number 10/552,875, which remains pending.
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`Non-provisional applications numbered 12/870,984 and 14/600,758, which
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`also claim benefit to the ’875 application, remain pending as well.
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`D. Illustrative Claim AndAsserted Grounds
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`We instituted interpartes review on claims 1-10 of the ’640 patent on
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`an obviousness challenge over the combination of Admitted Prior Art4 and
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`Wing.5 Paper 15. Claim 1 is illustrative of the claims at issue:
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`1. A hard disk drive assembly, comprising:
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`an actuator arm having a bore with an axis, an interior surface
`and an axial length,
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`a pivot bearing assembly located in the bore and having an
`external surface; and
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`a tolerance ring positioned between the interior surface of the
`bore and the external surface of the pivot bearing assembly,
`the tolerance ring having a first axial end, a second axial
`end, and an axial length, the tolerance ring further having
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`4 Intri-Plex asserts that Figures 1, 2, and 3 of the ’640 patent and portions of
`the Specification related thereto constitute admitted prior art. Pet. 7.
`
`5 U.S. Patent No. 2,931,412, issued Apr. 5, 1960 (Ex. 1002).
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`7
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`FRESENIUS KABI 1013-0007
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`IPR2014-00309
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`Patent 8,228,640 B2
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`extending
`(i) a band including corrugated protrusions
`radially outward from unformed annular portions thereof,
`the band having an internal diameter defined by the
`unfonned annular portions and having an external diameter
`defined by the corrugated protrusions, and (ii) a guide
`portion extending from the band and defining the first axial
`end of the tolerance ring, the guide portion having a guide
`surface inclined relative to the axis of the of the band,
`wherein the first axial end of the tolerance ring defined by
`the guide portion has an opening having a diameter that is
`greater than the internal diameter of the band, and the
`tolerance ring is disposed such that the entire axial length of
`the tolerance ring is within the axial length of the bore.
`
`E. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. See 37 C.F.R. § 42.l00(b), see also In re
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`Cuozzo Speed Technologies, LLC, No. 2014-1301, 2015 WL 448667, at *6
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`(Fed. Cir. Feb. 4, 2015) (“Congress implicitly adopted the broadest
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`reasonable interpretation standard in enacting the AIA,” and “the standard
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`was properly adopted by PTO regulation”). Under the broadest reasonable
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`interpretation standard, claim terms are given their ordinary and customary
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`meaning as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Teclt, Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007)?
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`6 Citing Phillips V. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`8
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`FRESENIUS KABI 1013-0008
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`IPR2014-00309
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`Patent 8,228,640 B2
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`1.
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`“unformed annular portions” (Claim 1)
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`Intri-Plex proposed construction: none.
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`Saint-Gobain proposed construction: portions of a tolerance
`ring that have no radial protrusions and which axially flank
`radial protrusions.
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`PO Resp. 6.
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`A claim construction analysis begins with, and is centered on, the
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`claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
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`256 F.3d 1323, 1331 (Fed. Cir. 2001). Claim 1 includes a band that has
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`corrugated protrusions extending radially outward from unforrned annular
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`portions of the band. Ex. 1001, claim 1. Thus, the “band” includes at least
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`two portions, one portion with protrusions and one portion without
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`protrusions. The portion without protrusions is an “unformed annular
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`portion.” Ex. 1001 , 1:60-63 (stating that annular portions that have no
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`formations are known in the art as unformed regions of the tolerance ring).
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`Saint-Gobain’s proposed construction of unformed annular portion
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`not only describes its shape, but also specifies its location vis-a-vis another
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`element of the band, i.e., “flanking” radially protrusions on the band. Saint-
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`Gobain relies on language from the Specification describing Figure 1 of
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`the ’640 patent as depicting portions of a tolerance ring that have no radial
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`protrusions and that axially flank outwardly facing protrusions. PO Resp. 6
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`(citing Ex. 1001, 6:18-20, Fig. 1). However, Saint-Gobain’s construction is
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`ambiguous as it is unclear whether “flank” refers to residing on both sides or
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`merely one side (above or below, but not both above and below) of the
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`protrusions.
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`Claim terms generally are construed in accordance with the ordinary
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`and customary meaning that they would have to one of ordinary skill in the
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`FRESENIUS KABI 1013-0009
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`IPR2014-00309
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`Patent 8,228,640 B2
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`art in light of the specification and the prosecution history. Aventis Pnarma
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`SA. V. Hospira, Inc., 675 F.3d 1324, 1329 (Fed. Cir. 2012).7 Although
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`Saint-Gobain directs our attention to embodiments that show unformed
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`annular portions on both the upper and lower axial ends of the band, we are
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`not inclined to import this specific configuration into the claim. Arlington
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`Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir.
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`2003) (it is improper to read a limitation from the specification into the
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`claims). Nothing in the specification indicates that unformed annular
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`portions must be located both above and below the protrusions. Id at 1331
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`(nothing in specification supported construction narrower than plain and
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`ordinary meaning).
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`Under the circumstances, we are not inclined to read a limitation into
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`the construction of “unfonned annular portion” related to the location of
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`adjacent structures, i.e., “flank.” Accordingly, we construe unformed
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`annular portion as “a portion of a tolerance ring that has no radial
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`protrusions.”
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`2. “a guide portion extendingfrom the band” (Claim I)
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`Intri-Plex proposed construction: none.
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`Saint-Gobain proposed construction: a separate element of the
`tolerance ring that extends from an unformed annular portion of
`the band.
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`Response, 8.
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`We are not inclined to adopt Saint-Gobain’s proposed construction.
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`Claim 1 requires that the guide portion extend “from the band.” Ex. 1001,
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`7 The Federal Circuit imposes a stringent standard for narrowing a claim
`term beyond its plain and ordinary meaning. Id (citing TIzorner v. Sony
`Computer Entm ’tAm. L.L.C., 669 F.3d 1362 (Fed. Cir. 2012)).
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`10
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`FRESENIUS KABI 1013-0010
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`

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`IPR20l4-00309
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`Patent 8,228,640 B2
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`claim 1. The band includes corrugated protrusions as well as unfonned
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`annular portion(s). Id. The Specification merely teaches that the guide
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`portion is contiguous with, and extends axially from, the band. Id. at 3: 1-
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`l3. The Specification is, thus, broad enough to encompass embodiments
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`where the guide portion is immediately contiguous with either an unforrned
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`annular portion of the band or another portion that contains protrusions. We
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`will, therefore, construe “a guide portion extending from the band” as broad
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`enough to encompass guide portions that extend from, and are immediately
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`contiguous with, any portion of the band.
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`11. OBJECTIONS AND MOTIONS TO EXCLUDE EVIDENCE
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`A. Saint-Gobain ’s Objection to Reply (Paper 52)
`and Motion to Exclude (Paper 55)
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`I . Saint-Gobain ’s Objection to Intri-Plex ’s Reply (Paper 52)
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`Following a teleconference and in response to our Order, Saint-
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`Gobain filed an objection to Intri-Plex’s Reply in the form of an itemized list
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`of selected portions of Intri-Plex’s Reply that Saint-Gobain contends
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`exceeds the proper scope of a Reply. Paper 51, 52. Intri-Plex filed an
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`itemized list purportedly indicating where the subject matter of Paper 52 was
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`first raised in the Petition or was replying to subject matter raised in the
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`Patent Owner’s Response. Paper 53.
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`A Reply may respond only to arguments raised in the corresponding
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`patent owner response. 37 C.F.R. § 42.23(b). Ordinarily, the Board will not
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`attempt to sort proper from improper portions of the Reply. Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012).
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`We have reviewed the itemized list submitted by Saint-Gobain
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`(Paper 51) with particular regard to citations to Intri-Plex’s Reply
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`ll
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`FRESENIUS KABI 1013-0011
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`IPR2014-00309
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`Patent 8,228,640 B2
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`(Paper 47). We have reviewed the cited passages and are not persuaded that
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`they contain any new arguments that exceed the proper scope of a reply. To
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`the extent the arguments in the Reply rely, in whole or in part, for support on
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`new evidence from Dr. McCarthy’s Declaration, we will not consider the
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`excluded portions of Dr. McCarthy’s Declaration and exhibits cited therein
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`for reasons that are further discussed below. Otherwise, we OVERRULE
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`Saint-Gobain’s Objection to Intri-Plex’s Reply.
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`2. McCarthy Declaration (Exhibit 1 038)
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`Saint-Gobain moves to exclude paragraphs 25, 26, and 50 of Dr.
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`McCarthy’s Declaration. Paper 55, 4-7. Saint-Gobain also objects to all or
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`portions of paragraphs 6, 11, 13-58, and 62-66 as exceeding the proper
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`scope of a Reply. Paper 52. Thus, paragraphs 25, 26, and 50 are included in
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`both the Motion to Exclude and Saint-Gobain’s objection to the scope of the
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`Reply.
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`Intri-Plex did not file any declaration testimony of any kind with its
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`Petition. Instead, Intri-Plex presented Dr. McCarthy’s Declaration, for the
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`first time, with Intri-Plex’s Reply. Ex. 1038. Among other things, Dr.
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`McCarthy’s Declaration gives a general background discussion on tolerance
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`ring technology. Ex. 10138 1111 13-17, 19-26. He offers an opinion as to the
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`level of ordinary skill in the art. Id. 11 18. He makes general observations
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`concerning the ’640 patent. Id. 1111 27-30. He offers a general narrative
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`discussion of the Wing reference. Id. 1111 31- 32. He engages in claim
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`construction and a claim-by-claim, element-by-element, obviousness
`
`analysis of each challenged claim, and then offers an opinion that each
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`challenged claim is obvious over the prior art. Id. 1111 33-58, 63-66.
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`12
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`FRESENIUS KABI 1013-0012
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`IPR20l4-00309
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`Patent 8,228,640 B2
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`A Reply to a Patent Owner’s Response is authorized by our Rules.
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`37 C.F.R. § 42.23(b). However, “[a] reply may only respond to arguments
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`raised in the corresponding .
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`.
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`. patent owner response.” Office Patent Trial
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`Practice Guide, 77 Fed. Reg. at 48,767. Under the rules governing inter
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`partes review proceedings, a Petition must provide a full statement of the
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`relief requested, including a detailed explanation of the significance of the
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`evidence, including material facts. 37 C.F.R. § 22(a)(2). It is axiomatic that
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`a Petition cannot provide a detailed explanation of the significance of
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`evidence when that evidence is not presented until the Petitioner files its
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`Reply. Among other things, one indication that a new issue has been raised
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`7
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`in a Reply is “new evidence that could have been presented in a prior filing.’
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767.
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`By waiting and filing its expert declaration after Saint-Gobain filed its
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`Patent Owner Response (Paper 21), Intri-Plex effectively precluded Saint-
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`Gobain from addressing Dr. McCarthy’s Declaration in its Response. This
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`also effectively precluded Saint-Gobain’s expert, Dr. Slocum, from
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`responding to Dr. McCarthy’s observations and opinions in his Declaration
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`that was filed in support of Saint-Gobain’s Response. Ex. 2020. We will
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`not countenance such tactics. Murphy V. Village ofHoflman Estates, 1999
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`U.S. Dist. LEXIS 3320, at *5—6 (N.D. Ill. 1999) (“[I]t is established beyond
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`peradventure that it is improper to sandbag one’s opponent by raising new
`
`matter in reply.”).
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`A Reply that belatedly presents evidence will not be considered.
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. We SUSTAIN
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`Saint-Gobain’s objection to paragraphs 6, 11, 13-58, and 62-66 of the
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`13
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`FRESENIUS KABI 1013-0013
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`IPR2014-00309
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`Patent 8,228,640 B2
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`McCarthy Declaration, and such evidence is hereby EXCLUDED from
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`evidence considered in rendering our final written decision.
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`3. Dictionary Definitions (Exhibits 10454 053)
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`Saint-Gobain objects to, and moves to exclude, Exhibits 1045-1053.
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`Paper 52, Paper 55, 1. These exhibits were first filed with Intri-Plex’s Reply
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`and consist of definitions taken from an on-line, common English language
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`dictionary. They include definitions of bushing (Ex. 1045); bore (Ex. 1046),
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`interior (Ex. 1047); surface (Ex. 1048); axial (Ex. 1049); external (Ex.
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`1050); cylinder (Ex. 1051), corrugate (Ex. 1052), and protrusion (Ex. 1053).
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`Intri-Plex does not cite directly to any of these Exhibits in its Reply.
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`Instead, these Exhibits are cited in Dr. McCarthy’s Declaration. Ex. 1038 1111
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`23, 33, 39. Specifically, they appear in portions of Dr. McCarthy’s
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`Declaration that we have excluded from evidence, as exceeding the
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`permissible scope of a Reply. Essentially for the same reasons discussed
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`above with respect to the McCarthy Declaration, we SUSTAIN Saint-
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`Gobain’s objections and GRANT Saint-Gobain’s Motion to Exclude these
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`exhibits.
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`5. Saint—Gobain ’s Objection to Exhibits 10114014, 1016, I019, I020—
`I 022, and 10394044 (Paper 52)
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`These Exhibits are comprised of patents and printed publications that
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`relate to either tolerance rings specifically (e.g., Ex. 1011) or mechanical
`
`engineering and manufacturing principals generally (e. g., Ex. 1040). We
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`instituted a trial based on the combination of Admitted Prior Art and Wing
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`only and, therefore, will NOT consider these Exhibits in connection with the
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`scope and content of the prior art for purposes of our obviousness analysis.
`
`However, these Exhibits are probative of the background knowledge and
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`14
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`FRESENIUS KABI 1013-0014
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`IPR20l4-00309
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`Patent 8,228,640 B2
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`skill possessed by a person of ordinary skill at the time of the invention and
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`will be considered for this limited purpose. See Randall Mfg. v. Rea, 733
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`F.3d 1355, 1363 (2013) (non-applied art should be considered as
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`background information that could explain why an ordinarily skilled artisan
`
`would have been motivated to combine or modify the cited references to
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`arrive at the claimed invention). In that regard, they are proper rebuttal
`
`evidence to submit with a Reply to rebut Saint-Gobain’s arguments and
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`evidence regarding the knowledge and capabilities of a person of ordinary
`
`skill in the art and whether such a skilled artisan would have been motivated
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`to combine and/or modify the prior art. Accordingly, we OVERRULE
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`Saint-Gobain’s objections to Exhibits 1011-1014, 1016, 1019, 1020-1022,
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`and 1039-1044.
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`5. Woodhead Deposition (Ex. I 024, 154:8-I 0); Slayne Deposition
`(Ex. 1025, 1903-1 7)
`
`Saint-Gobain moves to exclude cross-examination deposition
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`testimony of its inventors. These portions of l\/Ir. Woodhead and l\/Ir.
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`Slayne’s depositions are directed to the scope of Admitted Prior Art in
`
`the ’640 patent. Saint-Gobain argues that the questions posed are vague and
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`ambiguous. Paper 55, 7-9.
`
`The questions at issue cross-examine the inventors on their
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`declaration testimony concerning Admitted Prior Art. We are not persuaded
`
`that they are so vague and ambiguous that the witnesses reasonably were
`
`unable to understand what was asked or were otherwise unable to formulate
`
`an answer that was responsive to the question. Saint-Gobain’s Motion to
`
`Exclude this testimony is DENIED.
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`15
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`FRESENIUS KABI 1013-0015
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`

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`IPR20l4-00309
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`Patent 8,228,640 B2
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`6. Schmidt Declaration (Ex. I033 flfl 18, 22—28)
`
`Saint-Gobain moves to exclude portions of the Schmidt Declaration
`
`on the basis that l\/Ir. Schmidt lacks personal knowledge concerning the
`
`matters upon which he testified, and on grounds of hearsay. Paper 55, 10.
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`l\/Ir. Schmidt’s testimony in the challenged paragraphs relates to the motives
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`and mental state of Intri-Plex’s customers and potential customers, which are
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`third-party commercial entities, in their making of complex business
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`decisions. Ex. 1033 W 18, 22-28.
`
`l\/Ir. Schmidt testified that he is responsible for new business at Intri-
`
`Plex and that, in such capacity, he regularly interfaces with customers who
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`make hard disk drives. Ex. 1033 1] 6. As we understand his testimony, the
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`information that l\/Ir. Schmidt acquires in interfacing with customers is relied
`
`on by Intri-Plex in making business decisions to assist Intri-Plex in serving
`
`its customers. We detennine that the information l\/Ir. Schmidt has obtained,
`
`while it may be hearsay in character, contains circumstantial guarantees of
`
`trustworthiness and appears to be more probative on the point for which it is
`
`offered than any other evidence that Intri-Plex could have obtained through
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`reasonable efforts. Under the circumstances, we will admit Mr. Schmidt’s
`
`testimony under Fed. R. Evid. 807 as best serving the purposes of the Rules
`
`of Evidence. We will consider Saint-Gobain’s objections to the reliability of
`
`this testimony as going to the weight, rather than the admissibility, of the
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`evidence.
`
`Saint-Gobain’s Motion to Exclude portions of the Schmidt
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`Declaration is DENIED.
`
`l6
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`FRESENIUS KABI 1013-0016
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`

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`IPR2014-00309
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`Patent 8,228,640 B2
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`B. Intri-Plex ’s Motion to Exclude (Paper 59)
`
`1. Exhibit 2030
`
`Intri-Plex moves to exclude Exhibit 2030. Saint-Gobain timely filed
`
`an opposition to the motion. Paper 65. Exhibit 2030 is a 194-page, single-
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`spaced document that purports to make public disclosures related to a
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`security offering of Intri-Plex. Intri-Plex moves to exclude Exhibit 2030
`
`based on lack of authentication. Essentially, Intri-Plex reasons that the only
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`company witness that it produced in this proceeding on business related
`
`matters, l\/Ir. Schmidt, was unwilling to concede the authenticity of the
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`document and, therefore, Saint-Gobain failed to lay a foundation for its
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`admission into evidence. Paper 59, 2; Ex. 2038, 48:13-25. Saint-Gobain
`
`contends that Mr. Schmidt’s testimony is not required to lay a foundation for
`
`the admissibility of the document. Paper 65, 5-6. Saint-Gobain contends
`
`that the document is essentially self—authenticating owing to its contents and
`
`its public availability on the intemet. Id. Intri-Plex does not deny that
`
`Exhibit 2030 is publicly available, neither does Intri-Plex offer any
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`affirmative evidence that the document is a fabrication or an alteration of the
`
`original. Thus, Intri-Plex does not refute Saint-Gobain’s position that
`
`Exhibit 2030 was authored and published by Intri-Plex, as evidenced by its
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`internal contents and public availability.
`
`Saint-Gobain has established sufficiently the authenticity of the
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`Exhibit under Fed. R. Evid. 90l(b)(4). Intri-Plex’s Motion to Exclude
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`Exhibit 2030 is DENIED.
`
`2.
`
`Exhibits 2032-203 6
`
`Exhibits 2032 through 2036 are annotated excerpts of Figures from
`
`the Wing reference. Ex. 1002. Saint-Gobain used Exhibits 2032-2036
`
`17
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`FRESENIUS KABI 1013-0017
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`IPR20l4-00309
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`Patent 8,228,640 B2
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`during the deposition of Intri-Plex’s expert, Dr. McCarthy. Ex. 2038,
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`42:17-67:22. Intri-Plex seeks exclusion under Rule 403 of the Federal
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`Rules of Evidence. Paper 59, 2.
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`Under the Federal Rules of Evidence, “[t]he court may exclude
`
`relevant evidence if its probative value is substantially outweighed by a
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`danger of one or more of the following: unfair prejudice, confusing the
`
`issues, misleading the jury, undue delay, wasting time, or needlessly
`
`presenting cumulative evidence.” Fed. R. Evid. 403. In this case, there is no
`
`jury. The excerpts and annotations are demonstrative in nature and may
`
`have been useful in focusing Dr. McCarthy’s attention to specific features in
`
`Wing and, thus, facilitated oral examination of the witness. We discern little
`
`danger of unfair prejudice. Our Decision regarding patentability rests
`
`primarily on the actual teaching of Wing, which is already in the record as
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`Exhibit 1002. We are able to differentiate between the actual figures in
`
`Exhibit 1002 and counsel’s demonstrative annotations thereto. There is no
`
`indication that McCarthy was confused by these exhibits, and we discern no
`
`danger that we will be confused by them. Intri-Plex’s Motion to Exclude
`
`Exhibits 2032-2036 is DENIED.
`
`III. OBVIOUSNESS ANALYSIS
`
`A patent is invalid for obviousness “if the differences between the
`
`subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art to which said subject
`
`matter pertains.” 35 U.S.C. § 103. Obviousness is a question of law based
`
`on underlying factual findings: (1) the scope and content of the prior art;
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`18
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`FRESENIUS KABI 1013-0018
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`IPR2014-00309
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`Patent 8,228,640 B2
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`(2) the differences between the claims and the prior art, (3) the level of
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`ordinary skill in the art; and (4) objective indicia of nonobviousness.
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`Graham V. John Deere Co. ofKansas City, 383 U.S. l, l7—l8 (1966).
`
`Courts must consider all four Graham factors prior to reaching a conclusion
`
`regarding obViousness. In re Cyclobenzaprine Hydrochloride Extended—
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`Release Capsule PatentLitig., 676 F.3d 1063, 1076-77 (Fed. Cir. 2012).
`
`As the party challenging the patentability of the claims at issue, Intri-
`
`Plex bears the burden of proving obviousness by a preponderance of the
`
`evidence. 35 U.S.C. §3l6(e).
`
`A. Scope and Content of the Prior Art
`
`Saint-Gobain challenges both of Intri-Plex’s prior art references as
`
`falling outside the scope and content of the prior art.
`
`I . Admitted Prior Art
`
`Figures 1-3 and 5 of the ’640 patent are labeled “Prior Art.”
`
`Ex. 1001. The section of the ’640 patent under the heading “Brief
`
`Description of the Drawings,” furnishes the following descriptions of
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`Figures 1-3:
`
`shows in cross section a bearing and a known
`1
`FIG.
`tolerance ring, which are about to be inserted into a bore in a
`pivotable actuator am of a hard disk drive;
`
`FIG. 2 shows in cross section another known tolerance ring
`with outward protrusions located in a bore in an actuator arm,
`and a bearing ready to be inserted into the tolerance ring,
`
`FIG. 3 shows in cross section another known tolerance ring
`with inward protrusions located in a bore in an actuator arm,
`and a bearing ready to be inserted into the tolerance ring, .
`.
`.
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`l9
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`FRESENIUS KABI 1013-0019
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`IPR2014-00309
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`Patent 8,228,640 B2
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`Ex. 1001, 5:52-65 (emphasis added). The Specification later states that:
`
`“FIGS 1 to 3 illustrate use of a known tolerance ring to mount a shaft in a
`
`bore.” Id. at 6:8-10 (emphasis added). The Specification further states:
`
`1, a known tolerance ring with
`Thus, as shown in FIG.
`outwardly facing protrusions 2 in the form of waves and is
`fitted around a bearing 3 or bearing assembly 3 (hereinafter
`referred to as the bearing 3). The bearing 3 and tolerance ring 1
`comprise a subassembly, which is axially inserted into the bore
`4 of a body which may be an actuator arm 5 of a hard disk
`drive, indicated in FIG. 1 by the arrow 6.
`
`Id. at 6: 12-18 (emphasis added). Finally, the Specification further states
`
`that:
`
`An alternative known assembly method comprises inserting the
`tolerance ring 1 into the bore 4 so that the tolerance ring 1 sits
`concentrically in the bore 4. The bearing 3 is inserted into the
`bore 4 and slides into the tolerance ring 1, as shown by the
`arrow 9 in FIG. 2. The bearing 3 may foul on the edge 10 of
`the ring as the bearing 3 is axially inserted into the ring 1,
`causing fragments of the ring 1 and/ or bearing 3 to be
`removed. The fragments are known in the art as particles.
`
`Id. at 6:49-56 (emphasis added).
`
`Saint-Gobain raises two arguments in support of its contention that the
`
`above referenced Admitted Prior Art is, nevertheless, outside of the scope
`
`and content of the prior art for purposes of this IPR