`
`
`
`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
`
`_________________
`
`
`
`SECOND DECLARATION OF PRADEEP LALL. Ph.D.
`
`
`
`
`Page 1 of 76
`
`Feinmetall Exhibit 2028
`FormFactor, Inc. v. Feinmetall, GmbH
`IPR2019-00080; 00081; 00082
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`

`

`Table of Contents
`I. INTRODUCTION ................................................................................................ 1
`II. QUALIFICATIONS ............................................................................................. 2
`III. THIS PROCEEDING AND INFORMATION I HAVE CONSIDERED ........... 3
`IV. LEGAL STANDARDS ....................................................................................... 4
`V. OVERVIEW OF THE ’460 PATENT ................................................................ 4
`VI. CLAIM CONSTRUCTION................................................................................. 4
`A.
`“An Elongate Electrical Contact Element” ........................................... 4
`B.
`“An Elongate Intermediate Region Situated Between The End
`Regions, The Elongate Intermediate Region Having An At Least
`Substantially Rectangular Cross-Section, And Is Configured Lamellar,
`Along Its Longitudinal Extent” ....................................................................... 5
`C.
`“Two Electrical Contacting End Regions” ........................................... 6
`D.
`“Lamellae” ............................................................................................. 7
`E.
`“Configured Lamellar” .......................................................................... 7
`F.
`[Being] “Configured To Bend” ............................................................. 7
`G.
`“One Piece Contact Body” .................................................................... 7
`VII. OVERVIEW OF THE REFERENCES CITED BY FORMFACTOR ........... 7
`VIII. MY GENERAL OBSERVATIONS ON MR. TABER’S AND MR.
`HUGHES’S “SIMULATIONS” ......................................................................... 10
`A. Mr. Hughes’s Declaration ...................................................................11
`B. Mr. Taber’s Second Supplemental Declaration, Part A ......................12
`IX. ALL OF THE CHALLENGED CLAIMS ARE PATENTABLE ..................... 16
`A.
`Petitioner’s Grounds Based On JP182 Fail .........................................16
`Overview ........................................................................................16
`1.
`The Asserted Combination Fails to Teach or Suggest “Two
`2.
`Electrical Contacting End Regions” .........................................................19
`The Asserted Combination Fails to Teach or Suggest The Claimed
`3.
`Relationship Between Probe Dimensions and Bending Plane .................19
`The Asserted Combination Would Not Have Resulted in an
`4.
`Intermediate Region with Both a “Substantially Rectangular Cross
`Section” and “at Least Two Lamellae” ....................................................26
`A POSITA Would Not Have Modified JP182 in View of Crippa In
`5.
`The Manner Asserted ...............................................................................27
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`B.
`
`C.
`
`A POSITA Would Not Have Modified JP182 in View of Sudin In
`6.
`The Manner Asserted ...............................................................................27
`7.
`All Challenged Claims Are Patentable ..........................................27
`8.
`Various Challenged Dependent Claims Are Patentable ................28
`Petitioner’s Grounds Based On Sudin Fail .........................................32
`Overview ........................................................................................32
`1.
`Sudin Fails to Teach or Suggest “Two Electrical Contacting End
`2.
`Regions” ...................................................................................................33
`Sudin Fails to Teach or Suggest The Claimed Relationship
`3.
`Between Probe Dimensions and Bending Plane ......................................34
`Sudin Fails To Teach Or Suggest An Intermediate Region with
`4.
`Both a “Substantially Rectangular Cross Section” and “at Least Two
`Lamellae” ..................................................................................................38
`Sudin Fails To Teach Or Suggest “Lamellae” That Are
`5.
`“Configured to Bend” ...............................................................................38
`6.
`All Challenged Claims Are Patentable ..........................................39
`7.
`Various Challenged Dependent Claims Are Patentable ................39
`Petitioner’s Grounds Based On Chen Fail ..........................................42
`Chen Fails to Teach or Suggest “Two Electrical Contacting End
`1.
`Regions” ...................................................................................................42
`Chen Fails to Teach or Suggest The Claimed Relationship
`2.
`Between Probe Dimensions and Bending Plane ......................................42
`Chen Fails To Teach Or Suggest An “Elongate Electrical Contact
`3.
`Element” ...................................................................................................44
`Chen Fails to Teach or Suggest An Intermediate Region with Both
`4.
`a “Substantially Rectangular Cross Section” and “at Least Two
`Lamellae” ..................................................................................................44
`5.
`All Challenged Claims Are Patentable ..........................................45
`6.
`Various Challenged Dependent Claims Are Patentable ................45
`X. PATENT OWNER’S CONTINGENT AMENDMENTS ARE SUPPORTED 47
`A.
`The Substitute Claims Are Supported by The ’083 Application ........48
`B.
`The Substitute Claims Are Patentable Over the Instituted
`Grounds ..........................................................................................................62
`1.
`Substitute Independent Claims 34 and 66 (Common Features) ....62
`2.
`Additional Features of Substitute Independent Claim 66 ..............68
`2
`Second Declaration of Pradeep
`Lall, Ph.D.
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`Substitute Independent Claim 61 ...................................................69
`3.
`Substitute Dependent Claims .........................................................69
`4.
`XII. CONCLUSION .............................................................................................. 72
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`I, Dr. Pradeep Lall, of Auburn, AL, hereby state and declare as follows:
`
`I.
`
`INTRODUCTION
`I am over 18 years of age and otherwise competent to make this
`1.
`
`Declaration.
`
`2.
`
`I have been engaged as an expert witness by Feinmetall, GmbH
`
`(“Feinmetall”) to: (i) review U.S. Patent No. 7,850,460 (“the ’460 patent”); (ii)
`
`review 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”); and (iii) provide expert analysis and testimony in any related
`
`Inter Partes Review proceeding. I have previously (see my July 12, 2019
`
`Declaration, which I refer to as my “previous Declaration” herein) been asked to
`
`provide my opinion on: (i) whether the challenged claims of the ’460 patent are
`
`obvious in view of the grounds that FormFactor raised in the Petitions; and (ii)
`
`whether proposed substitute claims 34-66 presented in Feinmetall’s Motion to
`
`Amend are supported by the disclosure of the ’460 patent and are obvious in view
`
`of the grounds that FormFactor raised in the Petitions.
`
`3.
`
`I have now been asked to provide my opinion on whether revised
`
`versions of substitute claims 34-66 as presented in Feinmetall’s Revised Motion to
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`Amend are supported by the disclosure of the ’460 patent and are obvious in view
`
`of the grounds that FormFactor raised in these cases. This Declaration is intended
`
`to supplement, and be read in conjunction with, my previous Declaration (Ex.
`
`2011).
`
`4.
`
`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.
`
`5.
`
`As is set forth in more detail below, it is my opinion that the
`
`challenged substitute (and original) claims are not obvious based on the grounds
`
`advanced by FormFactor in its Petitions.
`
`6.
`
`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
`7. My Qualifications are provided in my previous Declaration.
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`HI. THIS PROCEEDING AND INFORMATION I HAVE CONSIDERED
`
`8.
`
`The Petition Grounds asserted by FormFactor and the information I
`
`have considered are listed in my previous Declaration. Ex. 2011.
`
`9.
`
`I have also reviewed and am familiar with FormFactor’s Reply to
`
`Feinmetall’s Patent Owner Response (“Reply”) and FormFactor’s Opposition
`
`(“Opposition”) to Feinmetall’s original Motion to Amend, and the following
`
`additional Exhibits referenced in those documents.
`
`Exhibit
`
`Exhibit #
`
`Copy of online biography referred to in FF1025 Deposition
`of Pradeep Lall
`
`Handwritten drawing by Dr. Lall from the Deposition of
`Pradeep Lall dated 9-19-2019
`
`FF1022
`
`FF1023
`
`Handwritten drawing by Dr. Lall from the Deposition of
`Pradeep Lall dated 9-19-2019
`
`
`FF1024
`
`
`
`Handwritten drawing by Dr. Lall from the Deposition of
`Pradeep Lall dated 9-19-2019
`
`First Supplementary Declaration by Frederick Taber
`
`Second Supplementary Declaration by Frederick Taber
`including Part A and Part B
`
`Declaration of Kevin Hughes including Attachment A
`
`Transcript of Deposition of Pradeep Lall held on Sept 18,
`20 l 9
`
`FF1025
`
`FF1026
`
`FF1027
`
`FF1028
`
`FF1029
`
`Transcript of Deposition of Pradeep Lall held on Sept 19,
`20 l 9
`
`FF1030
`
`Selected portions of Webster’s New Collegiate Dictionary,
`1 98 1
`
`FF1032
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`Exhibit
`
`Exhibit #
`
`Electrical Contacts Handbook, Third completely rewritten
`Edition,
`
`FF1033
`
`1 958
`
`WO2007029791 to Kazama, English translation of
`W02007029791
`
`FF1034
`
`
`
`(“KazamaJP”), with Certification
`
`US. Patent No. 7,721,429) (“Soma”)
`
`US. Patent No. 5,952,843 (“Vihn”)
`
`US. Patent Application 2007/0132466 (“Kister ’466”)
`
`US. Patent No. 7,285,966 (“Lee”)
`
`IV. LEGAL STANDARDS
`
`10.
`
`The legal standards provided to me by counsel for Feinmetall are
`
`listed in my previous Declaration.
`
`V.
`
`OVERVIEW OF THE ’460 PATENT
`
`11.
`
`I have provided a discussion of the ’460 Patent and its technological
`
`background in my previous Declaration. Ex. 201 1.
`
`VI. CLAllVI CONSTRUCTION
`
`A.
`
`“An Elongate Electrical Contact Element”
`
`12.
`
`For at least the reasons I have expressed in my previous Declaration, a
`
`POSITA would understand “elongate electrical contact element” to mean a vertical
`
`or buckling beam probe, not a cantilever probe. The same conclusion applies to the
`
`use of this term in the substitute claims.
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`B.
`
`“An Elongate Intermediate Region Situated Between The End
`Regions, The Elongate Intermediate Region Having An At Least
`Substantially Rectangular Cross-Section, And Is Configured
`Lamellar, Along Its Longitudinal Extent”
`13. As indicated below, this element in the substitute claims has been
`
`clarified from the original “an elongate intermediate region situated between the
`
`end regions, having an at least substantially rectangular cross-section.”
`
`14. A POSITA would understand the substituted phrase according to its
`
`plain meaning – that the elongate intermediate region has both lamellae and a
`
`substantially rectangular cross section that extend along its longitudinal extent (its
`
`length), not just that “one part” of the overall contact element is substantially
`
`rectangular as FormFactor had argued with regard to the original language.
`
`15. Such an understanding of the invention is also confirmed by the ’460
`
`Patent, as I discuss in my original Declaration. See, e.g., ’460 Patent at col 1:64-
`
`2:1.
`
`16. FormFactor (Opposition at 5-7) asserts, with regard to the original
`
`element, that “substantially rectangular cross-section” is indefinite based on a
`
`portion of my deposition testimony.
`
`17. But I did not state that a POSITA would not understand what a
`
`“substantially rectangular cross-section” is in the quoted portion of my testimony
`
`(or anywhere else for that matter).
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`18. Rather, in the context of a highly abstract conversation about general
`
`shapes, I was simply stating what should be a non-controversial opinion, that one
`
`would have to see an actual shape before deciding whether it was “substantially
`
`rectangular.”
`
`19. FormFactor tries to characterize my deposition testimony as
`
`“according to PO’s expert, an intermediate region ‘having an at least substantially
`
`rectangular cross-section’ can refer to many different shapes, depending on their
`
`scale and or their aspect ratio.” That is not an accurate representation of my
`
`testimony. The cross-sectional shape must actually be “substantially rectangular”
`
`to a POSITA to be within the scope of “substantially rectangular cross-section,” as
`
`described above.
`
`20. The ’460 patent provides an explanation of how to understand
`
`“substantially rectangular” that would be sufficient for a POSITA to understand the
`
`term in the context of the substitute independent claims (and original).
`
`“Two Electrical Contacting End Regions”
`C.
`21. For at least the reasons I have expressed in my previous Declaration, a
`
`POSITA would understand this phrase to limit the claims to “loose” buckling beam
`
`probes - probes with both ends capable of making separable electrical connections.
`
`If a specific construction is required, a POSITA would understand this phrase to
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`mean “two end regions with contact tips for making separable electrical
`
`connections.”
`
` “Lamellae”
`D.
`22. For at least the reasons I have expressed in my previous Declaration, a
`
`POSITA would understand this phrase to mean “strips of rectangular cross
`
`section.”
`
`“Configured Lamellar”
`E.
`23. For at least the reasons I have expressed in my previous Declaration, a
`
`POSITA would understand this term to mean “having lamellae.”
`
`[Being] “Configured To Bend”
`F.
`24. For at least the reasons I have expressed in my previous Declaration, a
`
`POSITA would understand this phrase to mean that the lamellae “will buckle in a
`
`pre-determined direction.”
`
`“One Piece Contact Body”
`G.
`25. For at least the reasons I have expressed in my previous Declaration,
`
`“one-piece contact body” would have been clear on its face to a POSITA.
`
`VII. OVERVIEW OF THE REFERENCES CITED BY FORMFACTOR
`I have provided an overview of JP182, Sudin, Chen, and Crippa,
`26.
`
`along with an explanation of why FormFactor’s proposed combinations are
`
`incompatible, in my previous Declaration.
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`27. Regarding Sudin, as I have previously explained, the only sidewall
`
`cross-sectional shape consistent with FIGS. 14-20 that would allow the sidewalls
`
`to extend to the lateral edges but which would still allow the sidewalls to be
`
`covered by the disclosed tips in each embodiment would be circular.
`
`28.
`
`I illustrate an example of such circular cross-section below, showing
`
`the interrelationships between the respective cross-sections of the foot (blue),
`
`sidewalls (green), and tips (red) of FIG. 17 using sidewalls of a circular cross-
`
`section.
`
`
`
`29. A POSITA would not have provided sidewalls of rectangular cross-
`
`section in FIGS. 14 and 17 because such sidewalls, if positioned consistent with
`
`the disclosures of FIGS. 14 and 17, would not be covered by the respective tip
`
`portions – they would extend out from underneath the tips.
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`30. An example of this failure can be easily seen by looking to Mr.
`
`Taber’s assertion of obviousness for original claim 10 (or substitute claim 42),
`
`where he provides an annotated version of Sudin’s FIG. 17 showing what he is
`
`alleging to be the structure of Sudin’s FIG. 17 using rectangular sidewalls 67.
`
`
`
`FF1027, ¶150 (see also FF1004, ¶143).
`
`31. Below, I illustrate the interrelationships between the respective cross-
`
`sections of the foot (blue), sidewalls (green), and tips (red) in the context of Mr.
`
`Taber’s above assertion. For comparison purposes, I have also shown what I
`
`believe to be Mr. Taber’s position as to Sudin’s FIG. 14 embodiment.
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`32.
`
`In both cases, Mr. Taber’s alleged sidewalls, if positioned according
`
`to the requirements of FIGS. 14 and 17, would extend outside of the coverage of
`
`their respective tips. And this would be the case with any sidewall cross section
`
`that has a flat side on the lateral extents of FIGS. 14 and 17 as that flat side would
`
`be at a tangent to the circular cross-section of the tip.
`
`33. There is no teaching or suggestion in Sudin, or elsewhere in the
`
`record, that such a configuration could have been provided in a probe of this type.
`
`And a POSITA would not have been motivated to provide sidewalls that extend
`
`outside of the tip for the same reason.
`
`VIII. MY GENERAL OBSERVATIONS ON MR. TABER’S AND MR.
`HUGHES’S “SIMULATIONS”
`In addition to Mr. Taber’s analysis of the substitute claims in his
`34.
`
`Second Supplemental Declaration, he has provided a “Part A” that provides more
`
`general opinions regarding, among other things, his interpretation of Sudin’s FIG.
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`17, buckle beam theory, buckling behavior of “probes with lamellae,” and an
`
`analysis of certain “simulation results.” The “simulation results” are based on the
`
`Declaration of Kevin Hughes (Ex. FF1027), in which Mr. Hughes reports on
`
`“simulations” he performed based on what appears to be Mr. Taber’s interpretation
`
`of FIG. 17 of Sudin.
`
`35.
`
`I have reviewed part A of Mr. Taber’s Second Supplemental
`
`Declaration and the Declaration of Kevin Hughes. I address some specific
`
`disagreements with Mr. Taber’s and/or Mr. Hughes’s positions in my Declaration
`
`as they apply in the context of the substitute claims. Additionally, I have the
`
`following general observations on the unreliability of Mr. Taber’s and Mr.
`
`Hughes’s approaches and conclusions.
`
`A. Mr. Hughes’s Declaration
`In Mr. Hughes’s Declaration, he provides a description of the probe
`36.
`
`for which he ran his simulations, which is allegedly based on the FIG. 17
`
`embodiment of Sudin. Hughes Dec., ¶¶ 7-8.
`
`37. Mr. Hughes makes express assumptions as to the structure of FIG. 17
`
`of Sudin to run his simulations, including that the sidewalls 67 were of a “uniform
`
`thickness” and that the probe depth “D” was equal to sidewall depth “d.” Beyond
`
`these, Mr. Hughes also assumed: (i) that each of the base, intermediate region, and
`
`tip of Sudin’s FIG. 17 probe has a rectangular cross section; (ii) that each of the
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`Lall, Ph.D.
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`sidewalls 67 of Sudin’s FIG. 17 embodiment have rectangular cross sections; (iii)
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`that all sidewalls 67 have the same alignment in the front/back direction of FIG.
`
`17; (iv) all sidewalls 67 have the same depth “d;” (v) that t1 = 20μm, t2 = 10μm,
`
`and t3 = 5μm; and (vi) that the gaps between the sidewalls were both 12.5 μm.
`
`Hughes Dec., ¶¶ 7-8, Attachment A, Sec. 2.
`
`38. None of these assumptions are supported by Sudin. As I discuss
`
`above, the only sidewall cross-sectional shape consistent with FIG. 17 would be
`
`circular, not rectangular.
`
`B. Mr. Taber’s Second Supplemental Declaration, Part A
`39. Mr. Taber argues that the claimed relationship between probe
`
`dimension and bending direction recited in the substitute independent claims (and
`
`discussed in detail below) is “simply the required results of buckling theory” (2nd
`
`Supp. Taber Dec., ¶1). But it is my understanding that whether or not an inventive
`
`design is consistent with the laws of physics is a separate question as to whether
`
`that inventive design was obvious.
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`40. Mr. Taber then asserts that Sudin discloses several features (2nd Supp.
`
`Taber Dec., ¶¶ 3-9) based entirely on his
`
`belief that Sudin discloses that its
`
`sidewalls are of a rectangular cross-
`
`section, referencing the same annotated
`
`version of Sudin’s FIG. 17 used by Mr.
`
`Hughes (reproduced above).
`
`41. None of these assertions are correct, for the reasons discussed above
`
`and below. Mr. Taber makes the same assumption errors as to the construction of
`
`Sudin’s FIG. 17 embodiment as that of Mr. Hughes, identified above, as he
`
`incorrectly tries to apply the “flat plate” intermediate region of Sudin’s FIG. 2
`
`embodiment to the FIG. 17 embodiment. A POSITA would not do so for the
`
`reasons identified throughout my Declarations. This error drives all of Mr. Taber’s
`
`remaining assumptions as to the shape and function of Sudin’s FIG. 17, and
`
`therefore the entirety of his opinions thereon is unsupported.
`
`42. Mr. Taber then addresses left/right biasing disclosed by Sudin’s FIG.
`
`17 and 20 embodiments (2nd Supp. Taber Dec., ¶¶ 6-9). While these embodiments
`
`do provide some directional control, they do so using sidewalls with circular cross-
`
`sections, not rectangular. Directional control itself does not somehow dictate a
`
`rectangular cross-section, or particular dimensions for the alleged rectangular
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`features. The FIG. 17 and 20 probes will bend in the same manner using sidewalls
`
`with a circular cross-section as with the rectangular cross-sections alleged by Mr.
`
`Taber.
`
`43. Mr. Taber then addresses buckling beam theory generally (2nd Supp.
`
`Taber Dec., ¶¶ 10-17). I generally agree with Mr. Taber’s explanation of buckling
`
`beam theory as it applies to beams with a rectangular cross-section. However, the
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`buckling theory formulas explained by Mr. Taber merely provide a method to
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`analyze the buckling load for simple rectangular cross-sections and ideal end
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`conditions and does not provide a way to synthesize complex realistic probe
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`geometries and architectures using the prediction of buckling load. In contrast, Mr.
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`Hughes concedes that buckling is a nonlinear phenomenon, which is difficult to
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`model when he states that (pg.13, Hughes Declaration): “[t]e majority of FEA
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`solvers have significant numerical difficulties in the modeling of buckling
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`structures.” In addition, Sudin does not teach or suggest rectangular cross-sections
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`for the sidewalls of its FIG. 17 embodiment. Thus, Mr. Taber’s opinions on
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`buckling beam theory are not applicable.
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`44. Mr. Taber then addresses his analysis of the ways what he alleges to
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`be the sidewalls of Sudin’s FIG. 17 would bend under different designs, based on
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`Mr. Hughes’s simulations (2nd Supp. Taber Dec., ¶¶ 21-41). But, again, Mr. Taber
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`uses rectangular cross-sections for the alleged sidewalls of FIG. 17, which are not
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`Lall, Ph.D.
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`taught or suggested by Sudin for the reasons discussed above. And there is no need
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`for such a searching analysis as to what Sudin teaches. Sudin’s FIG. 17, using
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`circular sidewalls, provides directional bending just as Sudin describes.
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`45. Finally, Mr. Taber asserts that the simulation analysis, in particular
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`the simulation entitled Scenario 1, supports his reading of Sudin as: (i) having
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`sidewalls with rectangular cross-sections; and (ii) with a tip that rotates (2nd Supp.
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`Taber Dec., ¶¶ 42-47). It does not.
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`46. First, the fact that a simulation using sidewalls with a rectangular
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`cross-section constructed according to Mr. Taber’s assumptions (theoretically)
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`physically works merely shows (at best) that Mr. Taber’s proposed construction is
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`not impossible. It does not show that a POSITA would have read Sudin at the time
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`of the invention of the claims of the ’460 patent to have that construction. It does
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`not change my conclusion that a POSITA would not read Sudin’s FIG. 17 as Mr.
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`Taber asserts, for the reasons expressed above.
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`47. Second, Mr. Taber’s assertion that the simulation shows that “the tip
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`of the [FIG. 17] probe will rotate during buckling” is completely contrary to the
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`disclosure of Sudin’s FIG. 2, which illustrates no rotation, in which a round rod or
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`flat plate is used for its intermediate region. Whether or not the simulations relied
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`upon by Mr. Taber here are accurate (they are likely not, for the reasons identified
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`above), a POSITA at the time would not understand Sudin to be teaching or
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`suggesting a configuration that provides tip rotation.
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`IX. ALL OF THE CHALLENGED CLAIMS ARE PATENTABLE
`In my opinion, as detailed below, none of FormFactor’s Grounds (in
`48.
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`the Petitions or Opposition, which is largely duplicative of the Petitions as to the
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`common features of the independent claims) demonstrates that any of the substitute
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`claims are obvious.
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`49. The following addresses the failures of FormFactor’s obviousness
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`assertions to features common to substitute independent claims 34, 61, and 66.
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`Revised substitute claim 66 now has additional features not recited in claims 34
`
`and 61, which I address in Section X, below.
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`Petitioner’s Grounds Based On JP182 Fail
`A.
`50. FormFactor argues that each of the substitute independent claims 34,
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`61, and 66 are obvious over JP182 in view of Crippa and Sudin.
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`1. Overview
`51. FormFactor’s Petition concedes that JP182 lacks the core inventive
`
`features of the ’460 patent – an intermediate region that has both (i) “an at least
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`substantially rectangular cross-section,” and (ii) “at least two lamellae extending in
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`the longitudinal extent of the intermediate region.” E.g., ’80 Pet. at 27.
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`52. To satisfy these claim limitations, FormFactor argues that it would
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`have been obvious to modify the probe of JP182 to include a substantially
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`rectangular cross-section in view of Crippa and, at the same time, sidewalls (the
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`alleged lamellae) in view of Sudin. In other words, FormFactor is asserting that a
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`POSITA would have been motivated to change almost every aspect of JP182 in
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`view of Crippa and Sudin.
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`53.
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`I disagree for the many reasons discussed in both my previous
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`Declaration and below. To begin, I summarize my reasons for disagreement in the
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`next few paragraphs.
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`54. As a general matter, a POSITA starting with JP182 would not have
`
`looked to the teachings of Crippa. First, Crippa does not teach adopting particular
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`cross sections for no reason – it teaches different cross-sections to a loose probe
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`that interfaces with guide plates so that the probe does not fall out of the guide
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`plates. JP182 does not have this problem because one end of its probe is fixed to
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`the test head. Hence, a POSITA would not have been motivated to use Crippa’s
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`cross-sections in the fixed probe structure of JP182. Second, the main objective of
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`JP182 is a structure that allows rotational movement of its end region that contacts
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`the DUT. Crippa’s teachings necessarily prevent a probe end region from rotating.
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`A POSITA would not have changed JP182 in a way that would have destroyed its
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`main objective. Hence, a POSITA starting with JP182 would not consider Crippa,
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`at least in the manner asserted.
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`55. Similarly, a POSITA starting with JP182 would not have looked to the
`
`teachings of Sudin. First, Sudin does not teach using the different cross sectional
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`sidewalls of its Figure 17 embodiment for no reason – it teaches using such a
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`structure to provide directional control of its bending in an environment without
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`guide plates. But JP182 has guide plates which are offset to control the bending
`
`direction of its probes. As a result, there is no need to use any teaching from
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`Sudin’s Figure 17 in the structure of JP182. Second, Sudin (like Crippa) teaches
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`that its end region in contact with the DUT does not rotate, which is contrary to the
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`main objective of JP182. Hence, a POSITA starting with JP182 would not consider
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`Sudin, at least in the manner asserted.
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`56.
`
`In my view, FormFactor has started its analysis with the invention of
`
`the ’460 Patent and, through the use of hindsight, worked backwards to find
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`individual features from disparate prior art references to put them together without
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`thought as to their incompatibility or why a POSITA would possibly have done so
`
`in the manner asserted. There is clearly no motivation for a POSITA to combine
`
`these three references.
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`57.
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`I will now address with specificity why FormFactor’s obviousness
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`argument fails for multiple reasons.
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`2.
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`The Asserted Combination Fails to Teach or Suggest “Two
`Electrical Contacting End Regions”
`58. For at least the reasons I have expressed in my previous Declaration,
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`“two electrical contacting end regions,” as recited in substitute independent claims
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`34, 61, and 66, are not taught or suggested by FormFactor’s proffered combination.
`
`3.
`
`The Asserted Combination Fails to Teach or Suggest The
`Claimed Relationship Between Probe Dimensions and
`Bending Plane
`59. Substitute independent claims 34, 61, and 66 each recite a specific
`
`relationship between overall probe dimensions and the bending plane provided by
`
`the lamellar structure, specifically, that:
`
`(i) the “contact element has a length L, a width B and a thickness D, the
`
`length L is greater than the width B, and the width B is greater than the
`
`thickness D;”
`
`(ii) “at least two lamellae have an arched form comprising a first arc in a
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`bent, contacting condition of said contact element;” and
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`(iii) the “first arc is positioned in a plane defined by the length L of the
`
`contact element and the width B of the contact element.”
`
`60. This combination of features is illustrated, for example, in the ’460
`
`Patent in