Trials@uspto.gov
`571-272-7822
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` Paper No. 8
` Entered: September 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NHK SPRING CO., LTD.,
`Petitioner,
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`v.
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`
`INTRI-PLEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2018-00752
`Patent 6,183,841 B1
`____________
`
`Before CHRISTOPHER M. KAISER, ELIZABETH M. ROESEL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
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`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
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`IPR2018-00752
`Patent 6,183,841 B1
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`I.
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`INTRODUCTION
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`NHK Spring Co., Ltd. (“Petitioner”) requests an inter partes review of
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`claims 1, 4, 7, and 10 of U.S. Patent No. 6,183,841 B1 (“the ’841 patent,”
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`Ex. 1001). Paper 1 (“Pet.”). Intri-Plex Technologies, Inc. (“Patent Owner”)
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`timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
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`Based upon the particular circumstances of this case, we exercise our
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`discretion under 35 U.S.C. §§ 314(a) and 325(d) and do not institute an inter
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`partes review of the challenged claims.
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`II. BACKGROUND
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`A. Related Matters
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`The parties identify Intri-Plex Technologies, Inc. v. NHK
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`International Corp., 3:17-cv-01097-EMC (N.D. Cal.) as a related matter
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`under 37 C.F.R. § 42.8(b)(2). Pet. 2; Paper 4, 2.
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`B. The ’841 patent
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`The ’841 patent, titled “Optimized Low Profile Swage Mount Base
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`Plate Attachment of Suspension Assembly for Hard Disk Drive,” issued on
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`February 6, 2001, based on an application filed April 21, 1998. Ex. 1001,
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`[22], [45], [54]. The ’841 patent relates to a base plate for attaching a
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`suspension assembly to an actuator arm in a hard disk drive. Id. at Abstract.
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`The base plate includes a flat flange portion and a cylindrical hub portion.
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`Id. at 3:41–42. The base plate has several parameters, including a base plate
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`thickness (TBP), hub overall height (HH), hub inner diameter (DID), base plate
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`length (LBP), base plate width (WBP), hub outer diameter (DOD), hub inner
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`surface depth (HIS), base plate opening diameter (DBP), hub radial width
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`(WH, which is (DOD - DID)/2), and a hub counter bore depth (HCB). Id. at
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`3:48–55, 4:3–18. The ’841 patent states that “[t]he optimum parameters . . .
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`are such as to satisfy the following equation:”
`𝑊𝐻
`𝑊𝐻
`(𝐻𝐼𝑆 + 𝐻𝐻 − 𝐻𝐶𝐵) 2⁄
`𝑇𝐵𝑃
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`≥ 5
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`·
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`Id. at 3:56–63. The calculation on the left-hand side results in a Geometry
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`Metric Value (id. at 4:18), and the equation is satisfied when the Geometry
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`Metric Value is less than or equal to five (id. at 3:60).
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`The ’841 patent provides a table, reproduced below, that compares an
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`exemplary inventive base plate to a prior art base plate.
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`Id. at 4:3–18. The table above sets forth the dimensions of the parameters
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`that form the prior art and inventive base plates, and the Geometry Metric
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`Value that results for each after applying the values for WH, T BP, HIS, HH,
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`and HCB to the equation. According to the table, the dimensions of the prior
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`art base plate result in a Geometry Metric value of 3.308, which does not
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`satisfy the equation, whereas the dimensions of the exemplary inventive base
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`plate result in a Geometry Metric Value of 7.810, which satisfies the
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`equation. Id.
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`According to the ’841 patent, a base plate with parameters that satisfy
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`the equation has several advantages, including that it reduces gram load
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`change inherent in swaging and allows a large retention torque in “low hub
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`height configurations that offer limited retention torque in a standard hub
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`geometry.” Id. at 2:27–30. The ’841 patent also states that such a base plate
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`eliminates the neck region associated with prior art base plates that was
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`known to result in bending moment decoupling of the hub and flange. Id. at
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`4:23–65, Figs. 3, 4.
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`C. Illustrative Claim
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`Claim 1 is independent and illustrative of the claimed subject matter.
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`Claim 1 recites:
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`1. An optimized low profile base plate for attachment of
`a suspension assembly to an actuator arm in a hard disk drive
`comprising:
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`a flange having a flange thickness (T BP); and,
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`a hub having, a hub height (HH), a hub radial width WH, a
`land height hub inner surface depth (HIS), and a lead in shoulder
`hub counter bore height (HCB);
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`wherein:
`𝑊𝐻
`𝑇𝐵𝑃
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`·
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`𝑊𝐻
`(𝐻𝐼𝑆 + 𝐻𝐻 − 𝐻𝐶𝐵) 2⁄
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`Ex. 1001, 5:41–53.
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`≥ 5
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`D. The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1, 4, 7, and 10 of the
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`’841 patent based on the following grounds:
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`Reference(s)
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`Statutory Basis Claims Challenged
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`Braunheim1
`Braunheim
`Braunheim and Applicant
`Admitted Prior Art (AAPA)2
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`§ 102(e)
`§ 103
`§ 103
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`1, 4, 7, 10
`1, 4, 7, 10
`1, 4, 7, 10
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`Pet. 4. Petitioner relies on the Declaration of David B. Bogy, Ph.D.
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`(Ex. 1002) to support its asserted grounds of unpatentability. Patent Owner
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`disputes that Petitioner’s asserted grounds renders any of the challenged
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`claims unpatentable. See generally Prelim. Resp.
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`III. ANALYSIS
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`A. Level of Ordinary Skill in the Art
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`Petitioner, citing Dr. Bogy’s testimony, asserts that a person of
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`ordinary skill in the art at the time of the invention of the ’841 patent “would
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`have had at least a Bachelor’s degree in mechanical engineering, with at
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`least two years of work and/or academic experience in the design and/or
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`study of disk drive components.” Pet. 4 (citing Ex. 1002 ¶ 13).
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`At this stage of the proceeding, Patent Owner does not dispute
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`Petitioner’s assertion regarding the level of ordinary skill in the art, which
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`1 U.S. Patent No. 5,689,389, filed Jan. 22, 1996, and issued Nov. 18, 1997
`(Ex. 1003).
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`2 Petitioner relies on the dimensional values set forth for the parameters of
`the base plate in the ’841 patent’s table that are described as typical prior art
`dimensions. See, e.g., Pet. 15 (“Ground 3 (Braunheim in view of AAPA) is
`non-cumulative [to Grounds 1 and 2] because AAPA expressly specifies a
`‘typical’ prior art value for the flange thickness (T BP).”).
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`we adopt for purposes of this decision. Further, based on the information
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`presented at this stage of the proceeding, we consider Petitioner’s declarant,
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`Dr. Bogy, qualified to opine from the perspective of an ordinary artisan at
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`the time of the invention. See Ex. 1002 ¶¶ 3–11 (Dr. Bogy’s background
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`and qualifications), Attachment A (Dr. Bogy’s curriculum vitae).
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`B. Claim Construction
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`For an unexpired patent, the Board interprets claims using the
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`“broadest reasonable construction in light of the specification of the patent.”
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`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
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`2144–46 (2016). In this proceeding, however, Patent Owner filed a Motion
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`for District Court-Type Claim Construction (Paper 6), in which it certified
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`under 37 C.F.R. § 42.100(b) that the ’841 patent would expire within 18
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`months of March 13, 2018 (i.e., the entry of the Notice of Filing Date
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`Accorded to Petition). Paper 6, 2. Petitioner agrees that the claims of the
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`’841 patent should be interpreted “similar to that of a District Court’s
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`review.” Pet. 11–12. Because the ’841 patent will expire before we would
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`enter a final written decision, we find that district court-type claim
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`construction, rather than broadest reasonable construction, applies to this
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`proceeding. See In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340–42 (Fed.
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`Cir. 2016) (“[C]onsistent with our prior precedent and customary practice,
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`we reaffirm that once a patent expires, the PTO should apply the Phillips
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`standard for claim construction.”); Black & Decker, Inc. v. Positec USA,
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`Inc., 646 Fed. App’x 1019, 1024 (Fed. Cir. 2016); see also Amendments to
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`the Rules of Practice for Trials before the Patent Trial and Appeal Board, 81
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`Fed. Reg. 18,750, 18,750 (Apr. 1, 2016) (amending 37 C.F.R. § 42.100(b) to
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`allow a district court-style claim construction approach “for claims of
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`patents that will expire before entry of a final written decision”). Under the
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`district court standard, claim terms “are generally given their ordinary and
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`customary meaning,” which is the “meaning that the term would have to a
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`person of ordinary skill in the art . . . at the time of the invention” when read
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`“in the context of” the specification and prosecution history of the patent.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc)
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`(internal quotation marks and citation omitted).
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`For purposes of this proceeding, Petitioner adopts the parties’ agreed-
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`upon constructions from the related district court litigation. Pet. 13–14.
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`Patent Owner does not dispute the agreed-upon constructions, which Patent
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`Owner notes the district court has adopted. Prelim. Resp. 21. Patent Owner
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`contends, however, that claim construction is not necessary to resolve the
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`parties’ dispute at this stage of the proceeding. Id. at 22. We determine that
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`no claim term requires express construction to resolve any controversy at
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`this stage of the proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
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`that are in controversy, and only to the extent necessary to resolve the
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`controversy.”).
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`C. Asserted References
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`Before turning to the parties’ arguments, we provide a brief summary
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`of the asserted references.
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`1. Braunheim (Ex. 1003)
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`Braunheim discloses a low profile swage mount for connecting a disk
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`drive actuator arm to the load beam of a head suspension assembly.
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`Ex. 1003, Abstract. The swage mount includes a base plate formed on one
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`side with an opening and a hollow hub disposed on the opposite side. Id.
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`“The hub is formed with an inner swaging surface having a diameter
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`approximating the diameter of the base plate opening to give the swage
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`mount torq[u]e retention characteristics comparable to conventional swage
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`mounts much larger in size.” Id.
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`Braunheim discloses a number of parameters for the swage mount,
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`including a base plate thickness (T BP), hub overall height (HH), hub inner
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`diameter (DID), base plate length (LBP), base plate width (WBP), hub outer
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`diameter (DOD), hub inner surface depth (HIS), base plate opening diameter
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`(DBP), and hub radial width (WH). Id. at 6:34–49 (Table 1). Table 1 of
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`Braunheim, which is reproduced below, provides approximate dimensions
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`for all of the parameters of a preferred embodiment of the swage mount.
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`TABLE 1
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`DIMENSION (MM)
`NAME
`SYMBOL
`5.080
`Base Plate Length
`LBP
`5.080
`Base Plate Width
`WBP
`0.203
`Base Plate Thickness
`TBP
`2.312
`Base Plate Opening Diameter
`DBP
`2.083
`Hub Inner Diameter
`DID
`2.731
`Hub Outer Diameter
`DOD
`0.145
`Hub Overall Height
`HH
`0.094
`Hub Inner Surface Depth
`HIS
`0.648
`Hub Radial Width
`WH
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`Id. at 6:37–49. According to Braunheim, “by adhering to particular
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`dimensional relationships” between the parameters, the swage mount “may
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`be reduced in size to exhibit a vertical profile nowhere anticipated in the art
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`while maintaining torque retention of magnitudes comparable to much larger
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`swage mount profiles.” Id. at 6:4–10. In particular, Braunheim describes
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`the relationship between the base plate opening diameter (DBP) and the hub
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`inner diameter (DID) and the relationship between hub height (HH) and hub
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`inner surface depth (HIS) as providing the advantages to its disclosed swage
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`mount. Id. at 6:11–33, 7:29–34.
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`Braunheim further explains that although the base plate thickness
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`(TBP) “is on the order of 0.20 millimeters,” it “may be reduced further in
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`accordance with the present invention.” Id. at 5:28–31. Braunheim
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`describes the relationship that exists between the hub wall radial thickness
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`and the base plate thickness, id. at 3:15–18, 30–31, and states that the
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`invention overcomes the conventional assumption that “the hub can be no
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`thicker than the base plate thickness” by maintaining the relationships
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`between DBP and DID, and HH and HIS, id. at 7:41–52.
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`2. Applicant Admitted Prior Art (“AAPA”)
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`Petitioner relies on the dimensional values set forth for the parameters
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`of the base plate in the ’841 patent’s table that are described as typical prior
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`art dimensions. Ex. 1001, 4:3–18. In particular, for its first ground––
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`anticipation based on Braunheim––Petitioner points to the “typical” known
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`hub counter bore height (HCB) of 0.038 mm from the ’841 patent’s table.
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`See, e.g., Pet. 22. For its second ground––obviousness over Braunheim––
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`Petitioner, in an alternative application of Braunheim, relies on the 0.038
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`value for HCB from the ’841 patent’s table. See id. at 43–45. Also for its
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`second ground, and for its third ground (obviousness over Braunheim in
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`view of the AAPA), Petitioner directs us to the “typical” prior art base plate
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`thickness (TBP) of 0.150 mm from the ’841 patent’s table. See, e.g., id. at
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`40–41 (obviousness over Braunheim in view of the knowledge of the person
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`of ordinary skill in the art), id. at 46 (obviousness over Braunheim in view of
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`the AAPA).
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`D. Petitioner’s Challenges to the ’841 Patent
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`Petitioner contends that claims 1, 4, 7, and 10 of the ’841 patent are
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`unpatentable as anticipated by Braunheim, obvious over Braunheim alone,
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`and obvious over Braunheim in view of the AAPA. See Pet. 15–50. In
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`brief, Petitioner argues that Braunheim anticipates the challenged claims
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`because, once supplemented to include a typical AAPA value for HCB, or
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`pursuant to Braunheim’s own suggestions (for T BP), Braunheim discloses a
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`base plate having dimensions that satisfy the equation recited in the
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`challenged claims. See, e.g., Pet. 15–26 (claim 1). In addition, Petitioner
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`argues that the challenged claims would have been obvious over Braunheim
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`because reducing HCB or T BP would have been within the knowledge of the
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`ordinary artisan. See id. at 37 (relying on anticipation analysis for reduction
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`of T BP), id. at 42–46 (asserting that the AAPA as background knowledge
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`would have led the skilled artisan to reduce HCB with a reasonable
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`expectation of success in achieving a Geometry Metric Value of ≥ 5). In
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`addition, Petitioner contends that the challenged claims would have been
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`obvious over Braunheim in view of the AAPA because the AAPA expressly
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`specifies a “typical” prior art value for T BP. See id. at 46–49. In all three
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`grounds, Petitioner relies on the parameters set forth in Braunheim’s Table 1
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`and directs us to the typical prior art dimensions for HCB and T BP set forth in
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`the ’841 patent’s table. See supra § II.B.2.
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`Patent Owner contends that Braunheim does not anticipate the
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`challenged claims and that the challenged claims would not have been
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`obvious over Braunheim or the combination of Braunheim and the AAPA.
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`Prelim. Resp. 39–54. First, however, Patent Owner contends that we should
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`exercise our discretion under 35 U.S.C. § 325(d) to deny institution. Id. at
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`22–36. Patent Owner argues that we should deny institution under § 325(d)
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`because “the Petition simply repackages and restyles arguments made by the
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`Examiner and overcome by [Patent Owner] during prosecution of the
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`application that led to the grant of the ’841 patent and that are being
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`simultaneously asserted by Petitioner in the District Court case.” Id. at 4.
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`Patent Owner also argues that we should deny institution under § 314(a)
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`because Petitioner filed the Petition shortly before the time-bar under
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`§ 315(b) expired and because proceeding in parallel with the district court
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`litigation is an inefficient use of our time and resources. Id. at 36–39. For
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`the reasons explained below, we agree with Patent Owner and exercise our
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`discretion under 35 U.S.C. §§ 314(a), 325(d) to deny institution.
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`1. Discretion Under 35 U.S.C. § 325(d)
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`Institution of inter partes review is discretionary. See Harmonic Inc.
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`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is
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`permitted, but never compelled, to institute an IPR proceeding”). Section
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`325(d) gives us express discretion to deny a petition when “the same or
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`substantially the same prior art or arguments previously were presented to
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`the Office.” 35 U.S.C. § 325(d). In evaluating whether to exercise our
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`discretion under Section 325(d), we weigh the following non-exclusive
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`factors: “(a) the similarities and material differences between the asserted
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`art and the prior art involved during examination; (b) the cumulative nature
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`of the asserted art and the prior art evaluated during examination; (c) the
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`extent to which the asserted art was evaluated during examination, including
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`whether the prior art was the basis for rejection; (d) the extent of the overlap
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`between the arguments made during examination and the manner in which
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`Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
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`(e) whether Petitioner has pointed out sufficiently how the Examiner erred in
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`its evaluation of the asserted prior art; and (f) the extent to which additional
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`evidence and facts presented in the Petition warrant reconsideration of prior
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`art or arguments.” Becton, Dickinson & Co. v. B. Braun Melsungen AG,
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`IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017)
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`(informative).
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`We analyze these factors below as they apply to the record in this
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`proceeding, and find that, on balance, the factors weigh in favor of
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`exercising our discretion under 35 U.S.C. § 325(d). We also decide, for
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`reasons explained below, that an additional factor supports denying
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`institution under § 314(a).
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`(a) The similarities and material differences between the asserted art and
`the prior art involved during examination
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`As explained above, Petitioner relies on Braunheim as anticipating
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`claims 1, 4, 7, and 10, and Braunheim, as well as Braunheim and the AAPA
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`for its arguments that claims 1, 4, 7, and 10 would have been obvious. Pet.
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`4. As Petitioner acknowledges, the Examiner considered Braunheim and the
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`AAPA during prosecution of the ’841 patent. Id. at 7 (“The primary
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`reference (Braunheim) in the proposed grounds of this Petition was applied
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`by the Examiner during prosecution of the ’841 patent.”), 8–9 (explaining
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`that the Examiner relied on “a side-by-side comparison of a ‘typical’
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`embodiment’s dimensions versus ‘typical’ prior art dimensions admitted by
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`the ’841 [p]atent”); see also Ex. 1001, [56] (listing Braunheim among the
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`References Cited); Ex. 1004, 47, 67 (rejecting all pending claims for
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`obviousness over “applicant’s admission of the state of the prior art in the
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`table [in the ’841 patent specification] . . . in view of Brooks . . . (U.S.
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`5,717,545) and Braunheim (U.S. 5,689,389)”). Thus, the Examiner
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`considered the prior art that Petitioner asserts here.
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`(b) The cumulative nature of the asserted art and the prior art evaluated
`during examination
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`As explained above, Petitioner relies on the same prior art that the
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`Examiner considered during prosecution of the ’841 patent. Because it is the
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`same, we need not address whether the AAPA and Braunheim are
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`cumulative of the art that the Examiner considered.
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`(c) The extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection
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`As Patent Owner points out, the Examiner cited Braunheim and the
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`AAPA, along with Brooks, during examination to reject all pending claims
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`for obviousness in the initial Office Action and the Final Office Action. See
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`Prelim. Resp. 25–26; Ex. 1004, 47 (initial Office Action), 67 (Final Office
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`Action). In those rejections, the Examiner relied on the AAPA dimensions
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`for each of the parameters listed in the ’841 patent’s table. See, e.g.,
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`Ex. 1004, 47–48. The Examiner explained that the AAPA dimensions for
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`HCB and WH were the only AAPA dimensions that differed from the
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`dimensions recited in the claims. Id. at 49. The Examiner concluded that a
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`person of ordinary skill in the art would have increased HCB based on the
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`teachings in Brooks and would have increased slightly WH based on
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`Braunheim’s disclosure. Id. at 48–49.
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`In other words, the Examiner (1) started with the AAPA dimensions
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`for the base plate parameters, and (2) increased or decreased dimensions for
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`certain parameters (i.e., HCB and WH) in the equation recited in the claims
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`based on the prior art teachings in Brooks and Braunheim in order to arrive
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`at the optimized relationship recited in the claims, i.e., a Geometry Metric
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`Value of ≥ 5. See id. at 47–49. Accordingly, we find that the Examiner
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`evaluated Braunheim and the AAPA during examination and substantively
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`applied their teachings to reject the ’841 patent’s claims.
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`(d) The extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the prior
`art or Patent Owner distinguishes the prior art
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`Although Petitioner argues to the contrary, we determine that the
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`findings the Examiner made during prosecution and the arguments Petitioner
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`makes here are substantially the same. As discussed above, Petitioner
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`contends Braunheim anticipates the challenged claims by pointing to the
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`dimensions Braunheim discloses for most of the base plate parameters and
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`by relying on the value for HCB that the AAPA discloses. For its
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`obviousness grounds, Petitioner relies on Braunheim’s dimensions, as well
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`as the typical values for HCB and T BP that the AAPA discloses.
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`Petitioner, anticipating Patent Owner’s argument under § 325(d),
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`contends that it relies on Braunheim “in an entirely different manner” than
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`the Examiner relied on Braunheim during prosecution. Id. at 7–8. In
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`particular, Petitioner contends that the asserted grounds “rely primarily on a
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`base plate exemplified in Braunheim (Table 1) and using the metric formula
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`of the challenged claims to ‘calculate a metric value’ from its dimensions,”
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`whereas the Examiner omitted a metric value calculation “and instead
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`rel[ied] on a side-by-side comparison of a ‘typical’ embodiment’s
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`dimensions versus ‘typical’” AAPA dimensions set forth in the ’841 patent.
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`Id. at 8–9; see also Ex. 1002 ¶¶ 39, 41 (Dr. Bogy’s testimony to the same
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`effect).
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`We disagree. Patent Owner argues persuasively that the Petition
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`“simply applies the same references in the opposite order.” Prelim. Resp.
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`33–34. As explained above, in rejecting the claims, the Examiner started
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`with the AAPA base plate dimensions from the ’841 patent’s table and
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`modified two of them (including WH) based on Braunheim to arrive at a
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`value for the metric equation of ≥ 5. Ex. 1004, 47–48. Here, Petitioner
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`starts with Braunheim’s base plate dimensions, including WH, and either
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`supplements those dimensions with HCB as disclosed by the AAPA or
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`modifies the value for T BP based on the AAPA. For example, in arguing that
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`Braunheim anticipates the challenged claims, Petitioner directs us to the
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`parameters Braunheim’s Table 1 discloses for a base plate (e.g., T BP, WH,
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`HIS, and HH). Pet. 21. Because Braunheim does not disclose HCB, Petitioner
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`uses the “‘typical’ known HCB admitted by the ’841 Patent”—0.038 mm. Id.
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`at 22. Similarly, in arguing that Braunheim and Braunheim in view of the
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`AAPA would have rendered the challenged claims obvious, Petitioner relies
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`on the values in Braunheim’s Table 1 for all of the parameters in the metric
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`equation except T BP. See, e.g., id. at 37 (referring back to anticipation
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`argument). Petitioner then directs us to the “‘typical prior art” T BP of 0.150
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`mm set forth in the ’841 patent’s table. Id. at 40, 47.
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`Thus, Petitioner’s analysis here is substantially the same as the
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`Examiner’s during prosecution: both rely upon prior art values for base
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`plate parameters and conclude that the ordinary artisan would have modified
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`certain of the values for parameters in the metric equation to achieve the
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`relationship of ≥ 5 that is recited in the claims.
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`(e) Whether Petitioner has pointed out sufficiently how the Examiner
`erred in its evaluation of the asserted prior art
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`Petitioner contends that the Examiner “overlooked” Braunheim’s
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`Table 1 and that “[h]ad the Examiner considered the Braunheim base plate
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`and applied its dimensions to the claimed metric formula, the claims would
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`not have been allowed.” Pet. 8, 11. The flaw in Petitioner’s argument,
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`however, is that none of Petitioner’s asserted grounds relies solely on
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`Braunheim’s Table 1 values. Rather, as previously explained, Petitioner
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`relies on Braunheim’s Table 1 for some of the parameters of the metric
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`equation recited in the challenged claims and relies on the AAPA for other
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`parameters. See, e.g., Pet. 22, 40, 47. Petitioner, therefore, does not point
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`out sufficiently how the Examiner erred in evaluating the asserted prior art.
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`(f) The extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of prior art or arguments
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`For the reasons discussed in subsection (d) above, we find that
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`Petitioner’s arguments substantially overlap the Examiner’s findings during
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`examination. Petitioner explains that the Petition presents declaratory
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`evidence—Dr. Bogy’s declaration—that the Office did not consider during
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`examination. Pet. 7. Although Dr. Bogy’s declaration was not before the
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`Examiner, the declaration does not persuade us that we should reconsider
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`Braunheim, the AAPA, or Petitioner’s arguments because the declaration is
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`substantially similar to the Petition (i.e., contains the same arguments that
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`we find substantially overlap the Examiner’s findings)3 and Dr. Bogy fails to
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`3 Although Dr. Bogy’s declaration is substantially similar to the Petition in
`most respects, Dr. Bogy’s testimony differs from the Petition with regard to
`HCB. For Ground 1, Petitioner contends that Braunheim anticipates an HCB
`value that satisfies the metric equation recited in the claims. Pet. 15–23.
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`support his testimony with objective evidence. For example, Dr. Bogy
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`testifies that one of ordinary skill in the art would have changed certain
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`values of Braunheim’s base plate parameters based on the AAPA and
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`suggestions in Braunheim. See, e.g., Ex. 1002 ¶¶ 54–61, 62–65. But
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`Dr. Bogy fails to explain why a change in the value of one parameter would
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`not have affected the other parameters of Braunheim’s base plate, including
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`DBP, DID, HH, and HIS, which Braunheim identifies as having “unexpected
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`relationship[s] deemed critical to the successful operation of the swage
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`mount.” Ex. 1003, 6:11–33; see also id. at 7:29–31 (“Important advantages
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`result from constructing the swage mount . . . with the aforedescribed
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`relationships between DBP and DID, and between HH and HIS.”); id. at 7:49–
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`52 (“[B]y maintaining the aforedescribed relationships between DBP and DID,
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`and HH and HIS, the profile of the swage mount . . . may be greatly reduced
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`while still maintaining sufficient torque retention for fastening the actuator
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`arm to the load beam.”).
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`Further, as support for adjusting the value of T BP from that disclosed
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`in Braunheim’s Table 1 to something less than 0.145 mm, Petitioner argues
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`that “[t]he only lower limit to [T BP] suggested by Braunheim is the hub
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`height (HH).” Pet. 25 (citing Ex. 1003, 2:59–60, 7:41–43 (“[T]he hub can be
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`no thicker than base plate thickness.”)). Dr. Bogy offers similar testimony in
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`that regard. Ex. 1002 ¶¶ 63, 65. Absent from Petitioner’s analysis and
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`Dr. Bogy’s testimony, however, is a persuasive reason why the skilled
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`artisan would have understood Braunheim’s disclosure of TBP as the upper
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`But Dr. Bogy testifies that “one of ordinary skill in the art would have found
`it obvious to include an HCB of 0.038 mm [the AAPA HCB] in Braunheim’s
`base plate.” Ex. 1002 ¶ 58; see id. ¶ 61.
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`limit for hub thickness to necessarily disclose the converse—i.e., that hub
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`thickness is the upper limit for T BP. Moreover, Petitioner and Dr. Bogy do
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`not explain why Braunheim’s disclosure of an upper limit for hub thickness
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`means hub height, HH, as opposed to hub radial thickness, WH, in view of
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`Braunheim’s disclosure that a relationship exists between WH and T BP. See
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`Ex. 1003, 3:30–31 (disclosing relationship between WH and T BP). Rather,
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`Petitioner and Dr. Bogy simply presume that Braunheim’s disclosure that
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`“the hub can be no thicker” than T BP refers to HH not WH. Pet. 25; Ex. 1002
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`¶ 63 (“Specifically, because ‘the hub can be no thicker than the [base plate]
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`thickness,’ the lower limit for the [base plate] thickness (T BP) is the hub
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`height (HH).”).
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`Given the foregoing, we are not persuaded that we should reconsider
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`Braunheim or the arguments Petitioner presents in the Petition.
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`2. Weighing the 325(d) Factors
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`Taking into account the above factors, we find that the factors weigh
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`in favor of exercising our discretion and denying institution under § 325(d).
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`Importantly, the asserted art is a subset of the same prior art that the
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`Examiner applied in rejecting the claims during prosecution. Further, the
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`arguments Petitioner advances in its Petition are substantially similar to the
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`findings the Examiner made to reject the claims, and that Patent Owner
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`overcame. Thus, we deny institution under § 325(d). Although a weighing
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`of the § 325(d) factors alone is sufficient to support an exercise of our
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`discretion to deny institution, we also consider Patent Owner’s additional
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`arguments under § 314(a).
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`3. Discretion under § 314(a)
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`Patent Owner contends that two additional factors weigh in favor of
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`denying institution under § 314(a). First, Patent Owner argues that
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`Petitioner knew about the ’841 patent for more than 10 years, yet provides
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`no explanation for why it waited so long to file the Petition. Prelim. Resp.
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`37–38. We are not persuaded that this lapse in time favors denying review.
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`As Patent Owner acknowledges, Petitioner filed the Petition shortly before
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`the one-year bar in 35 U.S.C. § 315(b) expired. The Petition, therefore, was
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`timely, and Patent Owner does not apprise us of any tactical advantage, or
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`opportunity for tactical advantage, that Petitioner gained by waiting to file
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`the Petition. Thus, we find this proceeding distinguishable from the facts in
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case
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`IPR2016-01357 (Paper 19) (PTAB Sept. 6, 2017) (precedential as to
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`§ II.B.4.i) (“General Plastic”)—the de