Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 40
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FORMFACTOR, INC.,
`Petitioner,
`
`v.
`
`FEINMETALL, GmbH,
`Patent Owner.
`_____________
`
`Case IPR2019-00080 (Patent 7,850,460 B2)
`Case IPR2019-00081 (Patent 7,850,460 B2)
`Case IPR2019-00082 (Patent 7,850,460 B2)
`____________
`
`Record of Oral Hearing
`Held: February 11, 2020
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, STACEY G. WHITE, and
`SHELDON M. McGEE, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 40
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FORMFACTOR, INC.,
`Petitioner,
`
`v.
`
`FEINMETALL, GmbH,
`Patent Owner.
`_____________
`
`Case IPR2019-00080 (Patent 7,850,460 B2)
`Case IPR2019-00081 (Patent 7,850,460 B2)
`Case IPR2019-00082 (Patent 7,850,460 B2)
`____________
`
`Record of Oral Hearing
`Held: February 11, 2020
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, STACEY G. WHITE, and
`SHELDON M. McGEE, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DAVID L. McCOMBS, ESQ.
`DAVID M. O'DELL, ESQ.
`KELLY GEHRKE LYLE, ESQ.
`Haynes and Boone, LLP
`2323 Victory Ave, Suite 700
`Dallas, TX 75219
`214-651-5533
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ROBERT M. MASTERS, ESQ.
`Sheppard Mullin Richter & Hampton, LLP
`2099 Pennsylvania Ave NW, Suite 100
`Washington, DC 20006-6801
`202-747-1935
`
`
`
`ALSO PRESENT:
`
`
`Jonathan R. DeFosse (Sheppard Mullin), Carl-Philipp Clarenbach
`(Gleiss & Grobe), Timothy P. Cremen (Sheppard Mullin), Dr.
`Nils Heide (Gleiss & Grobe)
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, February
`
`11, 2020, commencing at 1:00 p.m., at the U.S. Patent and Trademark
`Office, Texas Regional Office, 207 S Houston Street, Dallas, Texas 75202.
`
`
`
`2
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`
`P R O C E E D I N G S
`- - - - -
` (Proceedings begin at 1:00 p.m.)
` THE COURT REPORTER: All rise. You may be seated.
` JUDGE WHITE: Good afternoon, everyone. Welcome to
`Dallas. For those of you that traveled and for those of you
`that are in town, it's good to see you come across town for
`this.
` This is an oral hearing for IPR2019-00080, 2019-00081, and
`2019-00082 between Petitioner, FormFactor, Inc., and Patent
`Owner, Feinmetall GmbH, concerning US Patent Number 7,850,460
`B2.
` I'm Judge White. With me today is Judge Braden and
`via the magic of video conference, we have Judge McGee coming
`from Virginia.
` Let's start with getting appearances for Petitioner.
` MR. MCCOMBS: Good afternoon, Your Honors.
` JUDGE WHITE: Good afternoon.
` MR. MCCOMBS: I'm David McCombs, lead counsel for --
` JUDGE WHITE: Is your light on?
` MR. MCCOMBS: My -- ah, there we go.
` Good afternoon, Your Honors. I'm David McCombs,
`lead counsel for Petitioner, FormFactor, and with me are my
`colleagues, Kelly Lyle and David O'Dell. And, also, we have
`FormFactor's general counsel, Jason Cohen, with us today.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`3
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` My partner David O'Dell will be making today's
`presentation. Thank you.
` JUDGE WHITE: Thank you. Thank you. And for Patent
`Owner?
` MR. MASTERS: Good afternoon, Your Honors. My name
`is Robert Masters. I appear here today on behalf of the
`Patent Owners. With me are my colleagues, Timothy Cremen, my
`partner, John DeFosse, joining counsel for Feinmetall, Dr.
`Nils Heide and Carl Clarenbach.
` JUDGE WHITE: Thank you.
` So just a few administrative matters before we
`begin. We do have one Judge that is remote, so I need you to
`be explicit when you're referring to your slides by slide
`number, so that he can follow along because he may not
`necessarily be able to see everything going on in the room as
`far as demonstratives. So just be clear about what slide and
`what page of the paper you're referring to. He has electronic
`copies of everyone's demonstratives, so he can follow along
`from Virginia.
` And make sure your light is on at on your microphone
`when you're speaking, so that he can hear you over there. If
`the light is not on, you will not be heard.
` Okay. So today's procedure is we will have 60
`minutes per side to present your arguments on the challenged
`claims.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`4
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` Petitioner, you can reserve some time for rebuttal.
`How much time would you like to reserve?
` MR. MCCOMBS: The Petitioner would like to reserve
`20 minutes.
` JUDGE WHITE: Okay. Did anyone bring hard copies of
`their demonstratives today?
` MR. O'DELL: Yes. The Petitioner has two hard
`copies here today.
` JUDGE WHITE: Did you provide one to the court
`reporter already?
` MR. O'DELL: Yes. We did, Your Honor.
` JUDGE WHITE: Okay.
` MR. MASTERS: And the Patent Owner has hard copies,
`and we did provide a copy to the court reporter.
` JUDGE WHITE: Okay. If anyone would like to provide
`us with any hard copies, it's optional. You could bring them
`now.
` MR. MASTERS: Okay. Thank you.
` JUDGE WHITE: Okay. And, Patent Owner, you will
`have 60 minutes to present your arguments, and you also can
`reserve some time for surrebuttal. How much time would you
`like to reserve?
` MR. MASTERS: 15 minutes, please.
` JUDGE WHITE: Okay. Are there any questions from
`either side before we begin?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`5
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` Okay. All right.
` Petitioner, you may begin when ready.
` MR. O'DELL: All right. I am ready. May it please
`the Board? My name is David O'Dell and I represent the
`Petitioner, FormFactor, on these three IPRs here today.
` I will not be showing a presentation on the Board.
`I will just refer to it by slide numbers as we walk through.
` Turning to Slide 2.
` Independent Claim 1 is representative and is shown
`on this slide. The claim is directed to an elongate
`electrical contact element, also called a probe, for
`physically contacting an electrical component, also referred
`to as a device under test or DUT, D-U-T.
` The claim contact element has two end regions and an
`intermediate region in between. The bulk of the claim
`discusses the intermediate region, which is described as
`having a lamellar intermediate region and at least two
`lamellae with the space in between.
` The Patent Owner does not contest that the prior art
`teaches probes with lamellar intermediate regions, but,
`instead, focuses its arguments on the two terms that I've
`highlighted in red on the slide: the phrase electrical
`contacting end region and the phrase substantially rectangular
`cross-section.
` Turning to Slide 3.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`6
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` I have listed here a summary or an agenda of the
`items that I would like to discuss. The first three items are
`directed to original independent Claim 1, the fourth item to
`some of the dependent claims that are being contested by the
`Patent Owner, and the last two items are directed to the
`substitute claims in the Motion to Amend.
` So beginning with the first item directed to the
`prior art -- that the prior art teaches, two electrical
`contacting end regions, let's turn to Slide 4.
` As mentioned before, the Claim 1 is directed to a
`contact element for physically contacting an electrical
`component or DUT. JP182, which is shown on the left of this
`slide, and Sudin, which is shown on the right of this slide,
`both teach contact elements or probes for physically
`contacting a DUT. JP182 and Sudin both teach a probe with two
`end regions, the lower end region in both figures physically
`and electrically contacting the DUT.
` The issue before us -- the first issue before us
`today is whether the upper end region of the probe is in
`electrical contacting end region. Fred Taber, the
`Petitioner's expert, explains that both ends are an electrical
`contact because a current is allowed to flow through the
`probe. Specifically, a current is allowed to flow from the
`tester through the probe and then from the probe to the device
`under test. This is highlighted by the annotated red arrows
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`7
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`that have been added to these figures in the slide.
` This is the ordinary meaning of the phrase
`electrically contacting end regions, and, further, it's
`consistent with Webster's dictionary definition of the word,
`contact, which says, “the junction of two electrical conductors
`through which a current passes.”
` Therefore, both JP182 and Sudin, which form the
`basis of the challenges that we're going to discuss today,
`teach two electrically contacting end regions under the
`ordinary meaning of that term.
` Turning to Slide 5.
` The Patent Owner is arguing that the broadest
`reasonable interpretation of the phrase, electrical contacting
`end region, requires that the end regions be separable
`electrical connections, and, therefore, the Patent Owner is
`arguing that this means the probe must be a floating or a
`loose probe and not a fixed or clamped probe. Both of these
`arguments are wrong.
` First of all, the ordinary meaning of the term
`electrical contacting means that a current is allowed to flow.
`That's what we just discussed in the previous slide, and it's
`also supported by Webster's dictionary. Second, a fixed or
`clamped probe is still separable.
` This is supported by the 1948 handbook that the
`Patent Owner brought in to -- for its definition of electrical
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`8
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`contacting. The handbook describes the contact as being
`separable and then it continues to describe a contact as being
`welded.
` So how is a welded contact still separable? And the
`Petitioner's expert, Mr. Taber, explains, “a welded contact can
`be unwelded, and, similarly, a fixed probe, such as a clamped
`or soldered probe, can be unclamped or unsoldered. Therefore,
`even a fixed probe is a separable probe.”
` So if the Board adopts the Patent Owner's claim
`construction for this term, it still reads on fixed probes.
` Turning to --
` JUDGE WHITE: But, Counselor --
` MR. O'DELL: Yes?
` JUDGE WHITE: We have testimony from Patent Owner's
`expert that one of ordinary skill in the art would not refer
`to these fixed probes as making contact. They would be
`integrated or otherwise mounted. They wouldn't be something
`that one of skill in the art would think of as making contact
`because they're built in together.
` What is your response to that testimony that we have
`from Dr. Lall?
` MR. O'DELL: So, first of all, a fixed or clamped
`probe is still soldered or clamped to the tester. So there is
`-- it was separate at a time.
` This is a temporal kind of discussion. At first,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`9
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`there's a probe, and then it's clamped or soldered onto the
`tester. And so does the probe become a contact element at
`that time?
` Now, the probe has a contacting end because it
`allows or supports the flow of current.
` I'd also like to point out that Claim 1 refers to
`both physical contacting and electrical contacting. A lot of
`the discussion by Dr. Lall and by the Patent Owner is with
`regard to physical contact; that the ideas of permanence or
`separability are ideas of the physical contact.
` Again, as we look at the claim, the claim says, An
`elongate electrical contact for physically contacting an
`electrical component. That's talking about it separably
`touching the DUT, the device under test. And, also, we talked
`about it scratching the service of the device, the pad on the
`device, and to make electrical connection with the device, and
`also to form a buckling or a deformation of the probe.
` But that's different from the claim. It's also
`requiring two electrical contacting end regions. The claim
`requires one end to be physically contacting. That's the
`device -- that's the end that's touching the DUT, and it
`requires both ends to be electrical contacting.
` JUDGE WHITE: Patent Owner also urges that we need
`to look at the claim language in light of what's in the
`specification, particularly the figures. And Patent Owner
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`10
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`asserts that the figures all show loose probes, and that, with
`that in mind, we would be misunderstanding the claim language
`if we were to allow a clamped or fixed probe to satisfy the
`claim language.
` What is your response to that?
` MR. O'DELL: Well, two responses; one is a claim can
`certainly be broader than the embodiment shown in the spec.
`Whether or not the probe is a loose probe described in the
`spec does not prevent their claim from covering both loose and
`fixed probes. What they've done is they've left off the
`physical contacting of the tester in their claim, which opens
`the door to both -- to fixed probes.
` Secondly, as the Board recognized in its Institution
`Decision, the spec never talks about loose probes or the
`permanence of a connection. Instead, those specs just
`describe a probe by itself.
` So turning to Slide 6.
` That is what the point of that slide is, is it
`reflects back on the Institution Decision, where this same
`evidence, that Dr. Lall's testimony in a declaration in this
`1948 handbook were presented in the Patent Owner's Preliminary
`Response. And the Board considered this same evidence in its
`Institution Decision and recognized that these terms, loose
`versus fixed probe, appear nowhere in the specification. And
`the specification never discusses the permanence of the probes
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`11
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`and especially with its connection to the tester. Okay. And
`so, therefore, we ask the Board to maintain this finding in
`the final written decision.
` Turning to Slide 7.
` For the next two items on the agenda, I would like
`to focus on the grounds of unpatentability that were made in
`the petitions, specifically the JP182 base grounds and the
`Sudin base grounds. We will rely on the paper for the Chen
`base grounds.
` As I will show in the next slides, I believe that
`the Patent Owner is mischaracterizing the grounds and then
`arguing patentability based upon this mischaracterization.
`Once this mischaracterization is identified and understood,
`all of the Patent Owner's arguments for patentability of Claim
`1 will fail.
` Turning to Slide 8.
` The first set of grounds presented in the Petitions
`and in the opposition to the Motion to Amend are based on the
`JP182 prior art reference. JP182 teaches a contact element,
`as shown in the top left figure here, and this contact element
`includes two end regions and an intermediate region there
`between.
` The JP182 grounds made two obvious modifications to
`this probe based on the prior art. One is that it would be
`obvious for the intermediate region to include lamellae as
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`12
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`taught by Sudin. An example of lamellar intermediate region
`is shown here in Figure 17 in the figure on the right of
`Sudin.
` The Petition is further supported that it would be
`obvious and, in fact, advantageous for the contact element in
`general and the intermediate section in specific to have a
`substantially rectangular cross-section in view of Crippa.
`This is a quote from the Petition at the bottom that says,
`Describes the JP182 reference and that the contact element in
`general and the intermediate section in specific would be
`benefit to have a substantially rectangular cross-section.
` This is continued on the next slide, Slide 9.
` Crippa teaches that having a substantially
`rectangular cross-section has advantages. As Mr. Taber also
`explains, Crippa teaches that a probe with a circular cross-
`section would have the drawback of reduced pitch. And
`according to Crippa, one can position the probes closer
`together to increase the pitch if the cross-section of the
`probes is rectangular, rather than circular.
` Why does this matter? Now, let's turn to Slide 10.
` Referring to Slide 10, with respect to both the
`original claims and the subsequent claims, the Patent Owner
`responds to the JP182 based rejections with arguments
`represented by the figure on the left of the slide.
` The Patent Owner argues that Sudin's tip must be
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`13
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`circular, as shown by the red circle, and that Sudin's foot
`must be square, shown by the blue square. And based on these
`assumed shapes, the Patent Owner argues that Sudin's lamellae
`must be round rods to align with the tip in the foot.
` This argument in the drawings is a strawman argument
`for two reasons. First, the JP182-based grounds do not rely
`on Sudin's tip or foot. Instead, the grounds rely on the
`teachings of Sudin that it's a good idea to have lamellae to
`control the bending or buckling of the probe.
` The Patent Owner here is an attempt to bodily
`incorporate the entirety of Sudin into JP182 and then argue
`for patentability by arguing about the bodily incorporation.
`Again, the ground is that it would be obvious to have lamellae
`in light of the teaching of Sudin, not to incorporate Sudin's
`foot and tip.
` Second, the JP182 based grounds make a further
`modification and say that it would be obvious for the probe,
`the entire probe, including the intermediate region but also
`including the end regions to be substantially rectangular so
`that you could have improved pitch. So even if the Patent
`Owner were right about this embodiment of Sudin, which I'll
`show later that they're not right, it doesn't matter because
`the JP182-based grounds saying it would be obvious to make all
`these elements rectangular.
` I would like to point out that the rectangular
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`14
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`cross-section for the intermediate region is the outer
`composite of all the lamellae, not just one lamellae. And
`that's set forth in the '460 Patent in the background section.
` Turning to Slide 11.
` The Patent Owner also incorrectly characterizes the
`Sudin-based grounds and based on this mischaracterization,
`again, argues patentability. Once again, once this
`mischaracterization is understood and identified, the Patent
`Owner's arguments for Claim 1 will also fall away.
` Turning to Slide 12.
` Sudin teaches several embodiments with the
`embodiments of Figures 14 through 20 teaching a lamellar
`intermediate region. In the slide here on Slide 12, we have
`Figure 17, but all of these figures, 14, 17, 19, and 20 teach
`lamellar intermediate regions, and they're referred to
`separately for some of the dependent claims, but -- which are
`not being contested.
` Sudin also represents a first embodiment illustrated
`in its Figure 2, which does not have a lamellar intermediate
`region. In discussing this embodiment, Sudin teaches a probe
`with a conical tip and an intermediate portion shaped as a
`flat plate. We've underlined a portion of Sudin there on the
`right of the slide. It says, The middle body can have the
`shape of a flat plate.
` The Sudin-based grounds argue that it would be
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`15
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`obvious for the lamellar embodiment, such as Figure 17 shown
`on this slide, to have a flat plate intermediate region and,
`thus, a substantially rectangular cross-section.
` Turning to Slide 13.
` The Patent Owner argues that a flat plate middle
`section cannot interface with a conical tip. In response, we
`presented evidence for both the original claims and the
`substitute claims that not only is that argument wrong, this
`interface was commonly known and shown in the prior art. For
`example, we presented the Kazama reference, Exhibit 1034,
`which shows a probe with, quote, Body section formed in a flat
`shape, and a, quote, Cone-shaped tip. This is shown in Figure
`10 of Kazama, which is down at the right. And what this does,
`it shows that a flat plate middle body portion can interface
`with a conical-shaped tip or a cone-shaped tip.
` So to be clear, and this is one of the Patent
`Owner's arguments, we are not modifying this ground of non-
`patentability. The ground is still based on Sudin, and Sudin
`teaches that you can have a flat plate middle body portion.
`Kazama is additional evidence that we presented and discussed
`in the Reply that said -- when the Patent Owner says a flat
`plate or rectangular shaped middle body cannot interface with
`a conical-shaped tip.
` I'd also like to point out that Mr. Taber, our
`expert, had a modified version of Figure 10 from Kazama, shown
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`16
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`on the bottom right of the slide, in which he drew lamellae,
`and he colored them yellow. And so this further shows how
`well a flat body middle portion can interface with a conical
`or cone-shaped tip. As we talked about it amongst ourselves,
`we compared this shape to a carpenter's pencil. A carpenter's
`pencil would be flat and still have a conical tip.
` Referring to Slide 14.
` The Patent Owner again makes this same strawman-type
`argument for the Sudin-based arguments. The Patent Owner's
`argument shown in the figure on the left shows a round-shaped
`tip, shown in red, and a square-shaped foot, shown in blue,
`and under that reason, the Patent Owner says the lamellae in
`Sudin must be round rods. But this is not correct and this is
`not restricted by -- or required by Sudin.
` I have a quote from Sudin on the right, and I'd like
`to point out, in looking at the items I underlined in blue,
`the post-like foot 20 can be rectangular, and in red, the tip
`22 has a conical top end, not circular, conical, and in green,
`the middle body is a flat plate or the shape of a flat plate.
` A rectangle does not have to be square. A cone or a
`conical shape does not have to be circle, and, therefore,
`these are not requirements of Sudin by which the Patent Owner
`is basing its arguments for patentability.
` Okay. I'm going to skip the next slide, and then
`I'm going to move to Slide 16.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`17
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` Turning to Slide 16.
` The Patent Owner only argues four of the original
`dependent claims in the briefing, in the record, and so we'd
`like to address each of those four. Okay.
` Turning to Slide 17.
` Original dependent Claim 13 recites a contact
`element having a thickness D that coextends with a width B of
`the lamellae. The discussion here is what does the word,
`coextend, mean.
` Figure 2 of the '460 Patent is reproduced on this
`slide and shows two measurements of the probe. One
`measurement, capital D, is a thickness of the probe and the
`measurement little b is the width of one of the lamellae.
` As to the width B of the lamellae, there are
`actually several claims that discuss the width B of the
`lamellae, and, in the other claims, it is not clear which
`direction the width is being measured, either vertically or
`horizontally as shown in this figure. I believe that when the
`Claim 13 says that the depth D and the width B coextend, that
`means they're taken in the same direction; they're both, in
`this picture, measured vertically.
` What does this mean? This means that a thickness of
`the contact element, which can be taken anywhere, it does not
`have to be taken at the end region. A thickness of the
`contact element can be measured at the intermediate region,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`18
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`which is where the lamellae is -- are. What this means is the
`thickness D can be measured at the same place as the width B
`of the lamellae. So that is the width B can also be a
`thickness of the contact probe in general.
` Referring to Slide 18.
` Claim 18 was another one of the dependent claims
`that the Patent Owner responded to. And Claim 18 recites that
`the lamellae differ in cross-sectional form or area along its
`length or along its longitudinal extent. Both JP182 and Sudin
`teach this very thing. They both teach controlling the
`elasticity of the probe; that is how easily the probe bends or
`buckles and where the probe bends or buckles.
` JP182 has a Figure 4, which is reproduced on the
`left of this slide and which describes a taper of the middle
`region, so that JP182 says you can make the thickness reduced
`or the middle portion reduced, thereby, controlling the
`elasticity of the probe.
` Similarly, Sudin --
` JUDGE BRADEN: Counselor, I believe that Patent
`Owner makes an argument that Petitioner fails to carry its
`burden in showing how -- whenever you've got these different
`cross-sectional forms, how you would apply that to the flat
`plate of Sudin in order to be able to meet the claims, based
`on your previous arguments that these aren't conical or these
`aren't round tubes, that you're relying on Sudin's disclosure
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`19
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`of flat plates?
` MR. O'DELL: So to answer that question -- thank
`you. I thought I looked around. I think I heard it coming
`from above.
` So having the shape of the middle body section taper
`does not mean that you don't -- you lose your rectangular
`shape of your lamellae. Your lamellae just decrease in one
`dimension, be it width or depth. But they're still lamellae.
` And I think that -- you know, we had our expert, Mr.
`Taber, discuss having tapering a middle body of a probe; it's
`a known feature for adjusting the elasticity. And that would
`be the case with lamellae. And, in fact, Sudin teaches this
`same thing in Figure 19.
` Sudin teaches, you can see that this lamellae, some
`are shorter and some are longer, and they're offset from each
`other, and that's controlling how the elasticity of this probe
`and where it buckles.
` So if you look at any one area, maybe the top
`portion of the middle body portion, that only has one
`lamellae. If you look -- go down a little bit, you can see a
`wider or thicker lamellae that actually gets split into two:
`the middle one and the one on the left. And then if you
`continue to work your way down, now, you've got three lamella.
`And then you go, and you've got two lamellae, one very thick,
`one very thin, and then you go and you have one lamellae.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`20
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
` So I think this is evidence that this was known in
`the art, how to vary the cross-sectional form or area of a
`lamellar intermediate region.
` I also think tapering is a straightforward
`modification to a rectangular-shaped or a flat plate lamellae.
` JUDGE BRADEN: Thank you, Counselor.
` MR. O'DELL: Sure.
` So with that said, Claim 18 is obvious over JP182,
`and it's separately obvious over the Sudin Patent.
` Turning to Slide 19.
` Claims 23 and 24 are recited, elbowed contour, that
`forms a lateral offset and a retaining step for the probe.
`For the JP182-based grounds, the Petition showed that in
`addition to its teachings of a rectangular cross-section,
`Crippa also teaches providing a dimensional difference between
`the rectangles, between the different sections of a probe.
` If you can see in Figures 8A and 8B, the rectangles,
`although they're aligned, they're different dimensions. I
`think one's called S1 and one's called S2. One's a little
`taller; one's a little wider. And what this does is this
`elbowed contour of Crippa engages with a guide plate. So you
`drop -- you position a probe in a guide plate, and the elbowed
`contour catches the guide plate, and so it does not continue
`to move. It's secured in the guide plate.
` So this -- having an elbowed contour was taught in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`21
`
`
`
`IPR2019-00080 (Patent 7,850,460 B2)
`IPR2019-00081 (Patent 7,850,460 B2)
`IPR2019-00082 (Patent 7,850,460 B2)
`
`an obvious feature in the art. Thus, Claims 23 through 24 are
`obvious over JP182 in view of Crippa.
` Turning to Slide 20.
` I'm now going to talk about the Sudin-based
`rejections.
` Sudin teaches a lamellar embodiment of Figure 20.
`As mentioned, Sudin teaches multiple lamellar embodiments. In
`Figure 20, the tip has an elbowed contour; that is, it
`provides a lateral offset for the probe.
` Sudin states, quote, Tip 81 is biased from the
`central axis of the probe 80 at a distance, end quote. That's
`Sudin at Paragraph 40. And this -- Sudin is, thus, teaching
`an elbowed contour by having this offset tip. Okay.
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
