UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`FORMFACTOR, INC.
`
`Petitioner
`
`v.
`
`FEINMETALL, GmbH
`
`Patent Owner
`
`_________________
`
`Cases IPR2019-00080; IPR2019-00081; IPR2019-00082
`
`Patent No. 7,850,460
`
`Claims 1-33
`
`_________________
`
`DECLARATION OF PRADEEP LALL. Ph.D.
`
`Feinmetall Exhibit 2001
`FormFactor, Inc. v. Feinmetall, GmbH
`IPR2019-00082
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`Page 1 of 202
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`

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`Table of Contents
`INTRODUCTION ................................................................................................ 1
`I.
`II. QUALIFICATIONS ............................................................................................. 2
`III.THIS PROCEEDING AND INFORMATION I HAVE CONSIDERED ........... 8
`IV. LEGAL STANDARDS ..................................................................................... 13
`V. OVERVIEW OF THE ’460 PATENT ............................................................... 16
`A.
`Technology Background .....................................................................16
`B.
`The ’460 Patent ...................................................................................26
`C.
`Prosecution History Of The ’460 Patent .............................................30
`D.
`Level of Ordinary Skill in the Art .......................................................31
`VI. CLAIM CONSTRUCTION ............................................................................... 32
`A.
`“An Elongate Electrical Contact Element” .........................................33
`B.
`“[An Elongate Intermediate Region Situated Between The End
`Regions,] Having An At Least Substantially Rectangular Cross-
`Section” ..........................................................................................................38
`C.
`“Two Electrical Contacting End Regions” .........................................43
`D.
`“Lamellae” ...........................................................................................49
`E.
`“Configured Lamellar” ........................................................................51
`F.
`[Being] “Configured To Bend” ...........................................................52
`G.
`“One Piece Contact Body” ..................................................................54
`VII. OVERVIEW OF THE REFERENCES CITED BY FORMFACTOR ......... 56
`A.
`JP182 ...................................................................................................56
`B.
`Sudin ....................................................................................................58
`C.
`Chen .....................................................................................................60
`D.
`Crippa ..................................................................................................61
`E.
`Felici ....................................................................................................62
`F.
`Other References Cited In FormFactor’s Petitions .............................62
`VIII. ALL OF THE CHALLENGED CLAIMS ARE PATENTABLE ................ 63
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`B.
`
`Petitioner’s Grounds Based On a Combination of JP182, Sudin,
`A.
`and Crippa Fail ..............................................................................................63
`1.
`The Asserted Combination Fails to Teach or Suggest “Two
`Electrical Contacting End Regions” .........................................................64
`2.
`The Asserted Combination Fails To Teach Or Suggest An
`“Elongate Intermediate Region” With “An At Least Substantially
`Rectangular Cross Section.” .....................................................................66
`3.
`All Challenged Claims Are Patentable ..........................................85
`Petitioner’s Grounds Based On Sudin Fail .........................................86
`Sudin Fails to Teach or Suggest “Two Electrical Contacting End
`1.
`Regions” ...................................................................................................87
`2.
`Sudin Fails To Teach Or Suggest An Intermediate Region “Having
`An At Least Substantially Rectangular Cross Section” ...........................89
`3.
`Sudin Fails To Teach Or Suggest “Lamellae” That Are
`“Configured to Bend” ...............................................................................96
`4.
`All Challenged Claims Are Patentable ..........................................96
`Petitioner’s Grounds Based On Chen Fail ..........................................97
`Chen Fails to Teach or Suggest “Two Electrical Contacting End
`1.
`Regions” ...................................................................................................97
`2.
`Chen Fails To Teach Or Suggest An “Elongate Electrical Contact
`Element” ...................................................................................................99
`3.
`FormFactor Has Failed To Explain Why a POSITA Would Have
`Been Motivated to Provide Chen’s FIG. 31 Embodiment With “An At
`Least Substantially Rectangular Cross-Section” ....................................101
`4.
`All Challenged Claims Are Patentable ........................................104
`IX. CONCLUSION ................................................................................................ 106
`
`C.
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`I, Dr. Pradeep Lall, of Auburn, AL, hereby state and declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I am over 18 years of age and otherwise competent to make this
`
`Declaration.
`
`2.
`
`I have been engaged as an expert witness by Feinmetall, GmbH
`
`(“Feinmetall”) to review U.S. Patent No. 7,850,460 (“the ’460 patent”) and three
`
`Petitions for Inter Partes Review (“Petitions”) filed by FormFactor, Inc.
`
`(“FormFactor”) in case numbers IPR2019-00080, IPR2019-00081, and IPR2019-
`
`00082, challenging the validity of claims 1-33 of the ’460 patent (the “challenged
`
`claims”). I have also been asked to provide my opinion on whether the challenged
`
`claims of the ’460 patent are obvious in view of the grounds that FormFactor raises
`
`in the Petitions.
`
`3.
`
`I am being compensated for my time in connection with the above
`
`engagement at my standard hourly rate of $475 per hour. My compensation is in no
`
`way dependent on, nor affects, the substance of my statements in this Declaration.
`
`I have no financial interest in either party or in the outcome of this proceeding.
`
`4.
`
`As is set forth in more detail below, it is my opinion that the
`
`challenged claims are not obvious based on the grounds advanced by FormFactor
`
`in its Petitions.
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`5.
`
`In reaching my opinions and conclusions as stated herein, I have
`
`considered the information identified below in the context of my own education,
`
`training, research, knowledge, and personal and professional experience, including
`
`knowledge of the state of the art and the perspective of a person of ordinary skill in
`
`the art (a “POSITA”) at the time of the invention of the subject matter described
`
`and claimed in the ’460 patent.
`
`II. QUALIFICATIONS
`6.
`Attached to this Declaration as Appendix A is a true and correct copy
`
`of my current curriculum vitae, which describes my education, publications,
`
`employment and research history, and professional activities and awards.
`
`7.
`
`I have had extensive experience and familiarity with semiconductor
`
`design, manufacturing, semiconductor packaging, reliability, test, failure analysis,
`
`modeling, simulation and specifically including the area of contact element design,
`
`and have been working in this field for over 26 years.
`
`8.
`
`I have authored or co-authored 2 books, 14 book chapters, and over
`
`550 publications in the general area of semiconductor packaging, reliability and
`
`test. I have used spring contact probes for the purpose of inline testing as part of
`
`the assembly process during my work at Motorola and more recently in my
`
`research at Auburn University. I have worked on the design of spring contacts in
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`my work at Motorola. I have studied the issues with the probe design for product
`
`testing.
`
`9.
`
`I am a named co-inventor on 2 United States Patents in the field of
`
`connectors. In addition, in my research, I have worked on the developed on
`
`prognostic health management methods for sensing degradation in connectors. I
`
`have also developed computational methods for modeling the wear of electrical
`
`contacts. I am also the lead author on a book chapter on the topic of
`
`interconnections and connectors. Examples of my papers and patents in the general
`
`area of connectors follow:
`
`• Interconnections and Connectors, Chapter 5, Lall, P., Pecht, M., in
`
`Handbook of Electronic Package Design, edited by Michael Pecht,
`
`Marcel Dekker, New York, N.Y. pp.39-100; 101-152; 239-292, 1991.
`
`• Lall, P., Sakalaukus, P., Lowe, R., Goebel, K., Leading Indicators for
`
`Prognostic Health Management of Electrical Connectors Subjected to
`
`Random Vibration, Proceedings of the 13th ITherm, pp. 632 – 638, May
`
`30-June 1, 2012.
`
`• Lall, P., Shinde, D., Rickett, B., Suhling, J., Finite Element Models for
`
`Simulation of Wear in Electrical Contacts, Proceedings of the 10th
`
`Intersociety Thermal and Thermo-mechanical Phenomena (ITherm),
`
`Orlando, Florida, pp. 836-841, May 28-31, 2008.
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`• Surface k, Mountable Flexible Interconnect, Lall, P., US Patent No.
`
`5,928,001, 1999 (with Gillette, J., Potter; S.)
`
`• Flexible Connector For Circuit Boards, Lall, P., US Patent No.
`
`5,742,484, 1998. (with Gillette, J., Potter; S., Lall, P.)
`
`10.
`
`In addition, I have served as a session chair for HE2: Metallization
`
`and Connector Failure Mechanisms, SMTAI Conference, Ft. Worth, TX, October
`
`16-20, 2011. In all, I have held over 125 conference and session roles at national
`
`and international conferences.
`
`11.
`
`I received my M.S. (1989) and Ph.D. (1993) degrees in mechanical
`
`engineering from the University of Maryland. I received my B.S. (1988) from the
`
`Delhi College of Engineering, University of Delhi. I received the M.B.A. (2002)
`
`degree from the Kellogg School of Management at Northwestern University.
`
`12.
`
`From 1994 to 2002, I worked for Motorola. In 1994, I joined at the
`
`rank of Lead Engineer working on the manufacturing, design, reliability and test of
`
`portable communication products. Over the years till 2002, I worked in various
`
`positions of increasing responsibility rising to the position of Distinguished
`
`Member of Technical Staff. In this period, my work was recognized with Three
`
`Motorola Outstanding Innovation Awards, and Five Motorola Engineering
`
`Awards. My work published at the Motorola Advanced Manufacturing
`
`Technology Symposium (AMT) was recognized with 5 best paper awards. In
`4
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`addition, my work published at the Motorola HERMES Symposium was
`
`recognized with 3 best paper awards. During this time, I worked on a number of
`
`product categories including handheld two-way radios, mobile two-way radios,
`
`cellular phones, and telecommunication products. My work was focused on
`
`various aspects related to manufacturing, design, reliability, test, failure analysis,
`
`modeling and simulation. It was also during this time that I used spring-contact
`
`fixtures for inline testing of products on Motorola assembly lines, and had an
`
`opportunity to study issues with performance of test fixtures.
`
`13.
`
`In 2002, I joined the faculty at Auburn University in the Samuel Ginn
`
`College of Engineering at the rank of an Associate Professor. Presently, I hold the
`
`rank of John and Anne MacFarlane Endowed Professor in the Department of
`
`Mechanical Engineering. I also hold a courtesy joint appointment in the
`
`Department of Electrical and Computer Engineering and a courtesy joint
`
`appointment in the Department of Finance. In addition, I am the Director of the
`
`National Science Foundation CAVE3 Electronics Research Center. I serve on the
`
`technical council and the governing council of the NextFlex Flexible Electronics
`
`Manufacturing Institute established by the Department of Defense (DoD).
`
`14. My work in the general field of electronics has been recognized with
`
`the IEEE Sustained Outstanding Technical Contributions Award in 2018, National
`
`Science Foundation Schwarzkopf Prize for Technology Innovation in 2016, and
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`with the IEEE Exceptional Technical Achievement Award in 2014. In all, I am the
`
`recipient of over 35 awards and over 30 best-paper awards. A complete list of my
`
`awards and honors is provided in my curriculum vitae , which is an attachment to
`
`this Declaration.
`
`15.
`
`I am a Fellow of the IEEE, a Fellow of the ASME and a Fellow of the
`
`Alabama Academy of Science.
`
`16.
`
`I have previously been retained to provide expert opinion in the
`
`following proceedings:
`
`Case
`1. International Trade Commission Case: 337-TA-
`605, Tessera Technologies, Inc. v. Freescale
`Semiconductor, Spansion Inc., Qualcomm, Inc,
`ATI Technologies, ULC, Motorola, Inc. ST
`Microelectronics, NV
`2. International Trade Commission Case: 337-TA-
`630, Tessera Technologies, Inc. v. Elpida
`Memory, Inc.,
`3. International Trade Commission Case: 337-TA-
`649, Tessera Technologies, Inc. v. ASE, Inc.,
`ChipMOS Technologies Inc., Siliconware,
`STATS ChipPAC, Inc.
`4. Tessera Technologies, Inc. v. Hynix
`Semiconductor, et. al., Santa Clara County
`Superior Court Case No. 1-06-CV-076688, 2009
`5. Amkor Technology, Inc. v. Tessera, Inc.,
`International Court of Arbitration of the
`International Chamber of Commerce, Ref No. 16
`351/VRO, 2011
`
`Dr. Lall Retained by:
`ST-Microelectronics
`
`Elpida Memory
`
`STATS ChipPAC
`
`Hynix Semiconductor
`
`Amkor Technology
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`Case
`6. N.D. Cal Patent Litigation (Oakland Division):
`Tessera, Inc. v. Motorola, Inc., et.al. (No. 4:12-
`CV-0692); Related Case – Tessera, Inc. v.
`Advanced Micro Devices, Inc, et.al. (No. C 05-
`04063); Related Case - Tessera, Inc. v.
`Qualcomm, et.al., EDTX, Marshall Div., Case
`No. 2:07cv143.
`7. International Trade Commission Case, Inv. No.
`337-TA-888, Knowles Electronics, LLC v.
`GoerTek, Inc.
`8. FCA US LLC, Petitioner, v., Signal IP, Inc.,
`Inter Partes Review, Before The Patent Trial
`And Appeal Board, United States Patent And
`Trademark Office, 2015
`9. Fabrienne English And Karen Lowthert,
`individually and On Behalf Of Themselves And
`All Others Similarly Situated, Plaintiffs, v.
`Apple Inc., Applecare Service Company, Inc.,
`and Apple CSC Inc., Case No. 3:14-cv-01619-
`WHO, United States District Court, Northern
`District Of California, San Francisco Division,
`2015
`10.International Trade Commission Case 337-TA-
`1010, Tessera, Inc. et. al. v. Broadcom
`Corporation, 1:16-cv-00379 and Tessera, Inc., et.
`al. v. Broadcom Corporation, 1:16-cv-00380.
`11.Dutch court case (case number C/09/517267)
`between Invensas Corp (plaintiff) and Broadcom
`Limited c.s. (defendants)
`12.Acer Incorporated, and Luxshare Precision
`Industry Co., Ltd. v. Bing Xu Precision Co.,
`Ltd.; Petition for Inter Partes Review.
`13.Sharpe Innovations, Inc. v. T-Mobile USA, Inc.,
`Case No. 2:17-cv-00351 (E.D. Va.)
`
`Dr. Lall Retained by:
`Qualcomm
`ST Microelectronics
`FreeScale
`SPIL
`
`GoerTek
`
`Chrysler
`
`Apple
`
`Broadcom
`
`Broadcom
`
`Luxshare Precision
`Industry Co., Ltd.
`
`T-Mobile
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`Case
`14.Qualcomm v. Apple, In the United States
`District Court for the Southern District of
`California, Case. No. 3:17-CV-2402
`15.Invensas Corp. v. Samsung Elecs. Co., Ltd., et
`al., No. 2:17-cv-00670 (E.D. Tex.)
`16.Invensas Corp. v. Samsung Elecs. Co., Ltd., et
`al., No. 1:17-cv-01363 (D. Del.)
`17.TATI Corp. v. Samsung Elecs. Co., Ltd., et al.,
`No. 2:17-cv-671-JRG (E.D. Tex.)
`
`Dr. Lall Retained by:
`Qualcomm
`
`Samsung
`
`Samsung
`
`Samsung
`
`17. My curriculum vitae includes additional details about my experience
`
`and professional background.
`
`18.
`
`In light of the foregoing, I consider myself to be an expert in the areas
`
`of semiconductor design, manufacturing, packaging, and testing and specifically
`
`including the area of contact element design to which the ‘460 patent is directed.
`
`III. THIS PROCEEDING AND INFORMATION I HAVE CONSIDERED
`19.
`I understand that FormFactor’s three Petitions assert the following
`
`grounds of alleged obviousness under 35 U.S.C. § 103:
`
`Obviousness Basis
`
`Challenged Claims
`
`Petition /
`Ground
`’80, Ground 1 JP182 + Sudin + Crippa
`‘80, Ground 2 JP182 + Sudin + Crippa + Felici
`‘80, Ground 3 JP182 + Sudin + Crippa + Kister
`‘80, Ground 4 Sudin
`‘80, Ground 5 Sudin + Kister
`‘80, Ground 6 Sudin + Felici
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`1-2, 11-12, 14, 18-19, 22
`15-16, 33
`3
`1, 11-12, 14, 18-19, 22
`3
`15-16 and 33
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`Petition /
`Ground
`‘80, Ground 7 Chen
`
`Obviousness Basis
`
`Challenged Claims
`
`‘81, Ground 1 JP182 + Sudin + Crippa
`‘81, Ground 2 JP182 + Sudin + Crippa + Bove
`‘81, Ground 3 Sudin
`‘81, Ground 4 Sudin + Bove
`‘81, Ground 5 Chen
`‘81, Ground 6 Chen + Bove
`‘82, Ground 1 JP182 + Sudin + Crippa
`‘82, Ground 2 JP182 + Sudin + Crippa + Nguyen
`‘82, Ground 3 JP182 + Sudin + Crippa + Yu
`‘82, Ground 4 Sudin
`‘82, Ground 5 Sudin + Byrnes
`‘82, Ground 6 Sudin + Nguyen
`‘82, Ground 7 Sudin + Yu
`‘82, Ground 8 Chen
`
`1-3, 11-12, 14-16, 18-19,
`22, 33
`1, 4-10, 13, 17, 20-21, 31-32
`25
`1, 4-10, 13, 17, 20-21
`25
`1, 4-10, 13, 17, 20-21
`25
`1, 15-16, 23-24, 27-30, 33
`26
`31-32
`1, 15-16, 23, 27, 33
`24
`26
`28-32
`1, 23, 26, 27
`
`20. As can be seen in the Table above, the same three primary Grounds
`
`are applied against independent claim 1 of the ’460 Patent in each of the three
`
`Petitions: (1) “JP182 + Sudin + Crippa” (’80, Ground 1, ’81, Ground 1, ’82,
`
`Ground 1); (2) “Sudin” (’80, Ground 4, ’81, Ground 3, ’82, Ground 4); and (3)
`
`“Chen” (’80, Ground 7, ’81, Ground 5, ’82, Ground 8).
`
`21.
`
`22.
`
`I address each of these primary Grounds in turn below.
`
`In forming my opinions and preparing for this Declaration, I have
`
`reviewed and am now familiar with the contents of FormFactor’s three Petitions
`
`and each of the Exhibits thereto, which are listed in the following chart.
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`Exhibit
`‘82
`‘81
`‘80
`FF1001 FF1001 FF1001 U.S. Patent 7,850,460
`FF1002 FF1002 FF1002 File History of U.S. Patent 7,850,460
`FF1003 FF1003 FF1003 File History of EP 2 117 081 (German),
`• Attachment A – English Translation of the EP
`Search Report;
`• Attachment B – English Translation of the
`Response to the EP Search Report
`FF1004 FF1004 FF1004 Declaration of Frederick Taber
`• Attachment A - Curriculum Vitae of Frederick
`Taber
`FF1005 FF1005 FF1005 Japanese Publication JP 2000-214182
`FF1006 FF1006 FF1006 English translation of JP 2000-214182 (“JP182”),
`with Certification
`FF1007 FF1007 FF1007 Declaration of Toyu Yazaki
`FF1008 FF1008 FF1008 U.S. Patent Publication No. 2006/0170440 to Sudin
`(“Sudin”)
`FF1009 FF1009 FF1009 U.S. Patent Publication No. 2006/0238209 to Chen
`et al. (“Chen”)
`FF1010 FF1010 FF1010 U.S. Patent Publication No. 2005/0110506 to
`Crippa et al (“Crippa”)
`FF1011 U.S. Patent No. 6,529,021 to Yu et al (“Yu”)
`FF1012 U.S. Patent Publication No. 2002/0113612 to
`Nguyen (“Nguyen”)
`U.S. Patent Publication No. 2002/0070743 to Felici
`et al (“Felici”)
`FF1014 FF1014 FF1014 U.S. Patent No. 3,806,801 to Bove (“Bove”)
`FF1015
`n/a
`n/a
`U.S. Patent No. 7,671,610 to Kister (“Kister”)
`FF1016 FF1016 FF1016 U.S. Patent No. 4,027,935 to Byrnes et al
`(“Byrnes”)
`
`n/a
`n/a
`
`FF1013
`
`n/a
`n/a
`
`n/a
`
`n/a
`
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`FF1017 FF1017 F1017 U.S. Patent Publication No. 2009/0183898 to
`Kazama et al
`FF1018 FF1018 FF1018 Selected portions of Webster’s II New College
`Dictionary, Third Edition, 2005
` Declaration of Adam Fowles
`FF1019 FF1019 FF1019
`FF1020 FF1020 FF1020 U.S. Patent No. 7,659,739 to Kister et al.
`FF1021
`n/a
`n/a
`U.S. Patent No. 6,411,112 to Das et al.
`
`23.
`
`I have also reviewed and am familiar with the file history of the ’460
`
`patent and references of record therein listed in the following chart. Most of the
`
`references of record were not included as Exhibits to FormFactor’s Petitions, and
`
`were not discussed therein. FormFactor does cite Sudin (FF1008), Byrnes
`
`(FF1016), and Nguyen (FF1012). I discuss Tamburro (Ex. 2002), Matheiu (Ex.
`
`Exhibit #
`
`FF1016
`2002
`
`2003), and Felici ’496 (Ex. 2004) below.
`
`Patent / Publication No.
`U.S. Patent No. 4,026,011
`U.S. Patent No. 4,027.935 (“Byrnes”)
`U.S. Patent No. 4,076,356 (“Tamburro”)
`U.S. Patent No. 4,116,523
`U.S. Patent No. 4,737,114
`U.S. Patent No. 4,773,877
`U.S. Patent No. 5,225,777
`U.S. Patent No. 5,399,982
`U.S. Patent No. 5,865,641
`U.S. Patent No. 5,917,707
`U.S. Patent No. 5,952,843
`
`Inventor(s)
`Walton
`Byrnes et al.
`Tamburro
`Coberly et al.
`Yaegashi
`Kruger et al.
`Bross et al.
`Driller et al.
`Swart et al.
`Khandros et al.
`Vinh
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`Inventor(s)
`Patent / Publication No.
`Bennett
`U.S. Patent No. 6,024,579
`Peters
`U.S. Patent No. 6,358,097
`Nakano et al.
`U.S. Patent No. 6,471,524
`Mathieu et al.
`U.S. Patent No. 6,491,968 (“Mathieu”)
`U.S. Patent No. 6,515,496 (“Felici ’496”) Felici et al.
`U.S. Patent No. 6,758,682
`Kosmala
`U.S. Patent No. 6,855,010
`Yen
`U.S. Patent No. 6,859,054
`Zhou et al.
`U.S. Patent No. D507,198
`Kister
`U.S. Patent No. 6,945,827
`Grube et al.
`U.S. Patent No. 7,690,925
`Goodman
`U.S. Pub. No. 2002/0113612 (“Nguyen”) Nguyen
`U.S. Pub. No. 2002/0142669
`Phillips
`U.S. Pub. No. 2004/0121627
`Grube et al.
`U.S. Pub. No. 2005/0064765
`Simpson et al.
`U.S. Pub. No. 2005/0070170
`Zhang et al.
`U.S. Pub. No. 2006/0046528
`Beaman et al.
`U.S. Pub. No. 2006/0073712
`Suhir
`U.S. Pub. No. 2006/0170440 (“Sudin”)
`Sudin
`U.S. Pub. No. 2008/0001612
`Kister
`Swiss Pub. CH 661129
`Kruger
`German Pub. DE 4104215
`Hauber
`UK Pub. GB 1470007
`Cobaugh et al.
`International Pub. WO 2007/097559
`Baek et al.
`
`Exhibit #
`
`2003
`2004
`
`FF1012
`
`FF1008
`
`24.
`
`I have also reviewed and am familiar with the following additional
`
`Exhibits to Feinmetall’s Preliminary Response:
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`• Ex. 2005, Holm, R., Electrical Contacts, 3rd Edition, Springer-Verlag,
`
`1958, pp.1.
`
`IV. LEGAL STANDARDS
`25.
`This section sets forth certain legal standards provided to me by
`
`counsel for Feinmetall that have guided my analysis.
`
`26.
`
`I understand that the scope of the issues to be considered in an Inter
`
`Partes Review (“IPR”) are limited to those grounds disclosed in the Petition.
`
`Therefore, I have focused my analysis on those grounds.
`
`27.
`
`I understand that in IPR proceedings, the claim terms in an unexpired
`
`patent are interpreted according to their broadest reasonable interpretation
`
`consistent with the specification of the patent in which they appear.
`
`28.
`
`I understand that the proposed grounds for the institution of the ’80,
`
`’81, and ’82 IPRs rely upon allegations that all claims of the ’460 patent are
`
`obvious.
`
`29.
`
`I have been informed that a claimed invention is not patentable if it is
`
`obvious. I understand that a claimed invention is obvious if the differences
`
`between the claimed subject matter and the prior art reference or references are
`
`such that the subject matter as a whole would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention (a “POSITA”).
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`30.
`
`I understand that several factual inquiries underlie a determination of
`
`obviousness. These inquiries include (1) the scope and content of the prior art, (2)
`
`the level of ordinary skill in the field of the invention, (3) the difference between
`
`the claimed invention and the prior art, and (4) any objective evidence of non-
`
`obviousness. Such objective evidence of non-obviousness include the invention’s
`
`commercial success, commercial acquiescence (i.e., licensing), a long felt but
`
`unresolved need, the failure of others, skepticism by experts, praise by others,
`
`teaching away by others, recognition of a problem, laudatory statements by
`
`infringers, and copying of the invention by competitors.
`
`31.
`
`I have been informed that obviousness is determined by looking at the
`
`claimed subject matter as a whole through the eyes of a person of ordinary skill in
`
`the art (“POSITA”).
`
`32.
`
`It is my understanding that a claim is not obvious if the asserted
`
`combination of prior art references fail to disclose, or teach or suggest, at least one
`
`element of the claim.
`
`33.
`
`I have been further informed that a claim is not proven obvious by
`
`merely identifying each of the claim elements in the prior art. Many inventions rely
`
`on known building blocks, and the inventive discovery is a new combination of
`
`what is already known.
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`34.
`
`Thus, I understand that even if each element of a claim can be
`
`identified in a group of prior art references that is not the end of the obviousness
`
`analysis. Rather, there must also have been a reason why a POSITA would have
`
`been motivated to combine the elements from each of the prior art references in the
`
`specific manner recited in the claim, and would have had a reasonable expectation
`
`of success in doing so.
`
`35.
`
`I understand that hindsight must not be used when undertaking an
`
`obviousness analysis. Rather, a conclusion of obviousness must be based on
`
`knowledge and skill of a POSITA at the time the invention was made without the
`
`use of post-filing knowledge.
`
`36.
`
`I have also been informed that dependent claims include all of the
`
`limitations of the claims from which they depend. Therefore, I understand that if an
`
`independent claim is found to be nonobvious, then every dependent claim which
`
`depends on that independent claim is also nonobvious.
`
`37.
`
`I understand that the concept of antecedent basis means that claim
`
`elements may refer back to a prior recitation of the same element by using terms
`
`such as “said” or “the.” For example, if a claim recites “a widget” and later recites
`
`“said widget,” the former term provides antecedent basis for the latter term.
`
`38.
`
`I understand that the initial portions of claims are called the claim
`
`“preamble,” and that terms in preambles may be considered a claim limitation if
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`they recite essential structure and/or are “necessary to give life, meaning, and
`
`vitality” to the claim. I understand that, in other instances, such as when the term in
`
`the preamble recites only an intended use, it is not a limitation.
`
`39.
`
`I understand that, when elements in the body of the claim rely upon
`
`and derive antecedent basis from a term in the preamble, then the preamble may
`
`act as a necessary component of the claimed invention.
`
`40.
`
`I discuss additional legal standards below as they arise.
`
`V.
`
`OVERVIEW OF THE ’460 PATENT
`A.
`Technology Background
`41.
`The “electrical contact element” of the ’460 patent is one component
`
`of a device (referred to as a “probe card” or a “test head”) that electrically tests
`
`integrated circuits (a “Device Under Test” or “DUT”) during manufacturing.
`
`42.
`
`The circuit testing procedure is used to detect any faulty integrated
`
`circuits directly at the manufacturing stage of the circuits. Testing heads are
`
`generally employed to electrically test the integrated circuits on the wafer itself
`
`before the circuits are separated and inserted into a chip package.” Ex. 2004 (Felici
`
`’496), 1:16-21.
`
`43. A testing head holds an array of contact elements, which “are
`
`typically small wires … with good electrical and mechanical properties.” Ex. 2004
`
`(Felici ’496), 1:22-33.
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`44.
`
`These contact elements, which are also called “probes,” form a
`
`physical connection between the testing device and the component being tested,
`
`which allow “test current paths [to be] created to the electrical component under
`
`test.” Ex. FF1001 (’460 patent), 1:23-25.
`
`45.
`
`There are various designs of contact elements, including “helical
`
`spring supported” probes, “cantilever” probes and “buckling beam” probes.
`
`46.
`
`FormFactor’s expert, Mr. Taber, agrees that there are at least these
`
`three types of probes, stating: “the field of probe technology is not limited to
`
`vertically oriented buckle beam probing. Numerous other probing techniques were
`
`also known, including spring, cantilever probing, and the like.” FF1004 (Taber
`
`Dec.) at par. 37.
`
`47.
`
`The ’460 patent mentions a “helical spring probe,” (Ex. FF1001 (’460
`
`patent, 1:29-31), but “cantilever” probes and “buckling beam” probes are the
`
`relevant technologies to the present discussion. Buckling beam probes are relevant
`
`because they are the focus of the ’460 patent. The cantilever beam probes are
`
`relevant because they are distinguished in the prior-art considered in the
`
`prosecution of the ’460 patent. Each of the probes are distinct in terms of their
`
`characteristics, features and challenges.
`
`48.
`
`In paragraph 37 of his declaration, Mr. Taber states that all three types
`
`of probes share common features and challenges. This is incorrect. For example,
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`the helical spring probes do not buckle and thus do not need a predictable direction
`
`of buckling in the probe design. In addition, the spring contact normal force is
`
`determined by the spring constant of the helical spring instead of the intrinsic
`
`elasticity of the contact-buckling probe. Similarly, the deformation direction of the
`
`cantilever beam probes do not need direction control like the buckling beam probes
`
`because the direction of lateral deformation of the cantilever beam probe is always
`
`perpendicular to the test surface. The challenge in maintaining the predictability of
`
`buckling direction is unique to the buckling beam probes and not shared by the
`
`helical probes or the cantilever probes. FF1004 (Taber Dec.), par. 37.
`
`49. U.S. 6,491,968 to Mathieu
`
`discloses an example of a cantilever probe. As
`
`reflected in Figure 2 of Mathieu, a cantilever
`
`probe is fixed at one end and extends
`
`horizontally (roughly in parallel) along the substrate being tested 20 (the contact
`
`plane).
`
`50. When engaged, the cantilever probe is designed to deflect toward the
`
`testing head 9 when tip 16 contacts terminal 21 of the substrate being tested 20.
`
`Ex. 2003 (Mathieu) at 11:18-47.
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`51. Chen, one of the primary
`
`references in FormFactor Petitions,
`
`also discloses a cantilever probe in
`
`Figure 31.
`
`52. Buckling beam probes, to which the ’460 patent is directed, are
`
`substantially different from cantilever probes in both design and use.
`
`53. Buckling beam probes are arranged vertically in a configuration that is
`
`“approximately perpendicular[]” to the device under test. Ex. FF1001 (’460
`
`patent) at 2:7-11. To perform a test, one side is electrically connected with the
`
`testing device while the other side contacts the device under test. (Id.) Upon
`
`contact, the probe is “able to buckle laterally.” (Id.)