Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: April 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DUKANE CORPORATION,
`Petitioner,
`
`Vv.
`
`HERRMANN ULTRASCHALLTECHNIK GMBH & CO., KG,
`Patent Owner.
`
`Case IPR2016-00066
`Patent 8,702,883 B2
`
`Before GRACE KARAFFA OBERMANN,Vice Administrative Patent
`Judge, BRIAN P. MURPHY and MICHELLE N. ANKENBRAND,
`Administrative Patent Judges.
`
`ANKENBRAND,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Determining Claim 6 Unpatentable
`35 U.S.C. § 318(a); 37 CFR. § 42.73
`
`

`

`IPR2016-00066
`Patent 8,702,883 B2
`
`L.
`
`INTRODUCTION
`
`This is a Final Written Decision in an inter partes review challenging
`
`the patentability of claim 6 of U.S. Patent No. 8,702,883 B2 (Ex. 1001, “the
`
`883 patent”). We havejurisdiction under 35 U.S.C. § 6. For the reasons
`
`that follow, we determine that Petitioner demonstrates, by a preponderance
`
`of the evidence, that claim 6 is unpatentable.
`
`A. Procedural History
`Dukane Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`
`requesting an inter partes review pursuant to 35 U.S.C. § 311. On April 29,
`
`2016, weinstituted trial to determine whetherclaim 6 of the ’883 patentis
`unpatentable under 35 U.S.C. § 102! as anticipated by Klinstein 816.
`
`Paper8 (‘Institution Decision”or “Inst. Dec.”).
`
`Hermann Ultraschalltechnik GmbH & Co., KG (“Patent Owner’’)filed
`
`a Response (Paper 13, “Resp.”), and Petitioner filed a Reply (Paper 14,
`
`“Reply”). Petitioner supports its Petition and Reply with the Declarations of
`
`Leo Klinstein (Ex. 1007; Ex. 1008). Patent Ownerrelies on the Declaration
`
`of Ulrich Vogler (Ex. 2005). No depositions were taken, and nofinal oral
`
`hearing was requested by either party or conducted by the Board.
`
`B, Related Proceedings
`Petitioner and Patent Ownerdo notidentify any related proceedings
`
`involving the ’883 patent. Pet. 2; Paper5, 2.
`
`! The relevant section of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112-29, took effect on March 16, 2013. Because the application
`from which the ’883 patent issued claimspriority to a patent application that
`wasfiled before March 16, 2013, our citations to Title 35 are to the pre-AIA
`version.
`2 U.S. Patent No. 8,052,816 B2, issued November8, 2011 (Ex. 1004).
`2
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`IPR2016-00066
`Patent 8,702,883 B2
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`C. The ’883 Patent
`
`The ’883 patent,titled “Method for Controlling an Ultrasonic
`
`Machining Process,” issued on April 22, 2014. The ’883 patentrelates to a
`
`method for controlling an ultrasonic machining process, morespecifically,
`
`an ultrasonic welding process. Ex. 1001, 1:5-6. In an ultrasonic welding
`
`process, a generator producesan electric alternating voltage that is converted
`
`to mechanical vibration, which, in turn, is supplied to a sonotrode, or horn,
`
`that transfers the ultrasonic vibration underpressure to one of two
`
`components to be welded together. /d. at 1:8-17. As the two components
`
`touch, boundary surface friction occurs between them in the “joining zone,”
`
`resulting in melting of the boundary surfaces and subsequentjoining or
`
`welding of the components. /d. at 1:17-23. The two components typically
`
`are pressed together with the aid of the sonotrode. Jd. at 1:23-25.
`
`Accordingto the ’883 patent specification, in order to produce an
`
`optimal weld, the welding time must be short enough to avoid heating the
`
`component material outside of the joining zone, but mustalso be long
`
`enough for a uniform melting of the boundary surfaces, to ensure a lasting
`
`welding connection. Jd. at 1:29-36. Welding methods are known that may
`
`achieve the aforementioned welding time conditions by varying the force
`
`with which the sonotrode is pressed onto the components,but the
`
`specification states that these methodsare “not optimalfor all applications.”
`
`Id. at 1:37-65.
`
`To that end, the specification describes a method for controlling
`
`ultrasonic machining or welding by altering certain welding variables
`
`(referred to as “group S”variables) until certain target variables (referred to
`
`as “group Z” variables) are met. Specitically, during a first machining
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`IPR2016-00066
`Patent 8,702,883 B2
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`interval a first welding variable of the group S is kept constant until a first
`
`target variable of the group Z reaches a predetermined value and, during a
`
`second machininginterval that adjoins the first interval, a second welding
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`variable of the group S is kept constant until a second target variable ofthe
`
`group Z reaches a predetermined value. Jd. at 2:5—-21. Group S welding
`
`variables include the: (1) frequency(f) of the ultrasonic vibration of the
`
`sonotrode, (2) amplitude (ii) of the ultrasonic vibration of the sonotrode, (3)
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`force (F) the sonotrode exerts on the material to be machined, (4) power(P)
`
`the generator consumes, and (5) speed (v) with which the sonotrode moves
`
`in the direction of the first component. Jd. at 2:6—-11. Group Z target
`
`variables include the: (1) force (F) the sonotrode exerts on the material to be
`
`machined, (2) power(P) the generator consumes, (3) welding time(t) that
`
`has passed since the beginning of the machining interval, during which the
`
`sonotrode transmits the ultrasonic vibration under a specific pressure into the
`
`material, (4) welding path (s), or distance, that the sonotrode has coveredin
`
`the direction of the first component since the beginning ofthe interval, and
`
`(5) energy (E), or product of power and time. Jd. at 2:13-20.
`
`The first and second welding variables can be the same, butthe first
`
`and secondtarget variables are different. Jd. at 2:41-42, 2:48—49, 4:18-21.
`
`The specification further explains the methodis not limited to two
`
`machining intervals, and thatit is possible to select three or more machining
`
`intervals, each having a welding variable and, preferably, different target
`
`variables. Id. at 3:39-42.
`
`D. Illustrative Claims
`
`Claim 1 is the only independent claim of the ’883 patent. Patent
`
`Ownerdisclaimed claim 1. See Ex. 2002. As we explainedin the Institution
`
`4
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`Decision, claim 1 remains relevant because claim 6 is a multiple dependent
`
`claim that depends,inter alia, from claim 1 and, therefore, retains the
`
`limitations of claim 1. Inst. Dec. 5. Claims 1 and 6 areillustrative and
`
`recite:
`
`Method for controlling an ultrasonic machining process,
`1.
`in which an ultrasonic vibration of the frequencyfis
`transmitted with the aid of a sonotrode madeto carry out an
`ultrasonic vibration under a pressure into the material to be
`machined, wherein, during a first machining interval, a first
`welding variable of the group S, consisting of the frequency f of
`the ultrasonic vibration, the amplitude ti of the ultrasonic
`vibration of the sonotrode, the force F, which the sonotrode
`exerts on the material to be machined, the power P, which the
`generator delivers, and the speed v, with which the sonotrodeis
`movedin the direction of the material to be machined,f is kept
`constant)[?] until a first target variable of the group Z,
`consisting of the force F, the power P, the welding time t since
`the beginning of this machining interval, during which the
`excited sonotrode transmits the ultrasonic vibration under
`pressure into the material to be machined, the welding path s,
`which the sonotrode has covered since the beginning of the
`machininginterval, and the energy E, calculated from the
`product of P and t, adopts a predetermined value, and, during a
`second machining interval, which adjoins the first machining
`interval, a second welding variable of the group S is kept
`constant until a second target variable of the group Z adopts a
`
`3 The language “f is kept constant)” is a mistake in the patent resulting from
`an Office printing error. See Ex. 1003, 28, 31. The claim language should
`read “is kept constant.” Jd. We explainedin the Institution Decision that the
`“error correction remains relevant despite Patent Owner’s disclaimer of
`claim 1, because the remaining claims depend from claim 1.” Inst. Dec. 5-6
`n.2. We further authorized Patent Ownertofile a request to correct the error
`pursuant to 37 C.F.R. § 1.322. Jd. The prosecutionfile history does not
`indicate that Patent Ownerfiled such a motion.
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`predetermined value, wherein the first and the second target
`variable differ.[*]
`
`Ex. 1001, 4:23-46.
`
`Method according to any one ofclaims1 to 3,
`6.
`characterised [sic] in that the first machining interval ends
`whenthefirst target variable adopts the predetermined value or
`whena fourth target variable of the group Z adopts a
`predeterminedvalue.
`Id. at 4:58-62.°
`
`I.
`
`DISCUSSION
`
`Petitioner bears the burden of proving unpatentability of the
`
`challenged claims, and that burden nevershifts to Patent Owner. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). To prevail, Petitioner must establish the facts supportingits
`
`challenge by a preponderanceof the evidence. 35 U.S.C. § 316(e);
`
`37 C.F.R. § 42.1(d). For the reasons given below, we determine that
`
`Petitioner has met its burden with respect to claim 6.
`
`A, Level of Ordinary Skill in the Art
`
`Webegin our analysis by addressing the level of ordinary skill in the
`
`art. Petitioner and Mr. Klinstein describe one of ordinary skill as someone
`
`having a good working knowledge of ultrasonic welding andpriorart
`
`ultrasonic welding apparatus and processes. Pet. 4; Ex. 1007
`
`13.
`
`Accordingto Petitioner and Mr. Klinstein, an ordinary artisan would have
`
`4 The ’883 patent was the subject of a Certificate of Correction that issued
`on March 22, 2016. The Certificate of Correction contains an instruction to
`change the language “target value”recited in claim 1 to “target variable.”
`Ex. 2004, 1. Our decision refers exclusively to the corrected version of
`claim 1.
`> Patent Owneralso disclaimed claims 2 and 3 of the ’883 patent. Ex. 2003.
`6
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`gained that knowledge through undergraduate educationin electrical or
`
`mechanical engineering and at least two years of practical working
`
`experience. Jd. Patent Owner and Mr. Vogler do not provide a separate
`
`description or definition of the ordinary artisan. See generally Resp.;
`
`Ex. 2005. We adopt and apply Petitioner’s and Mr. Klinstein’s description
`
`of the level of ordinary skill in the art becauseit is consistent with the prior
`
`art of record.
`
`B. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted accordingto their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). Under
`
`that standard, claim terms are given their ordinary and customary meaning,
`
`as would be understood by oneof ordinary skill in the art in the context of
`
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007).
`
`The Petition sets forth several claim terms for construction. Pet. 9-13.
`
`In the Institution Decision, we provided a preliminary construction for
`
`claim 6, but determined that no other claim or claim term required express
`
`construction. See Inst. Dec. 8, 15. Specifically, we determined that because
`
`claim 6 “recites the disjunctive connector‘or,”” the scope of the claim
`
`encompassestwoalternatives for ending the first machining interval: “(1)
`
`the first machining interval ends whenthefirst target variable adopts the
`
`predetermined value,or (2) the first machining interval ends when a fourth
`
`target variable of the group Z adopts a predetermined value.” Inst. Dec. 15
`
`(citing Ex. 1001, 4:58-62). We further tound that Petitioner needed to
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`demonstrate that Klinstein ’816 teaches one of those two optionsin order to
`
`anticipate claim 6. Jd. (citing Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
`
`2001)).
`
`Patent Ownerdisputes that determination. Resp. 5-10. In so doing,
`
`Patent Owner advancesthree possible constructions for claim 6, but argues
`
`that not all of those constructions are reasonable. Jd. at 5. Specifically,
`
`Patent Ownercontendsthat claim 6 could be construed to meanthat:
`
`(1) only one ofthe first and fourth target variables needs to be monitored or
`
`detected® to determine whetherit has adopted its predetermined value and
`
`end the first machining interval; (2) both the first and fourth target variables
`
`are detected and the first machining interval may end when oneof the two
`
`target variables adopts its predetermined value, or the interval may continue
`
`until the other target variable adopts its predetermined variable; or (3) both
`
`the first and fourth target variables are detected simultaneously, and the
`
`machining interval ends whenthefirst of the two target variables adoptsits
`
`predetermined value. Jd. at 5-6. According to Patent Owner, as a matter of
`
`logic, “the reasonable construction is that the first machining interval is to be
`
`6 Patent Ownergenerally uses the word “monitored”to describe its view of
`what occurs during the method of claim 6. See, e.g., Resp. 5-8. But neither
`the specification nor claims of the ’883 patent use the word “monitored.”
`Patent Owner, however, indicates that “monitored” is synonymous with
`“detected” in the context of its arguments. Jd. at 5 (“only one ofa first and
`fourth target variable need be monitored(i.e. ‘detected’)’”); see also, e.g.,
`Ex. 2005, 5 (Mr. Vogler’s testimony that the ordinary artisan “would
`understand that claim 6 requires detecting both thefirst target variable and
`the fourth target variable .
`. .” (emphasis added)). The ’883 patent also uses
`the word “detected.” See, e.g., Ex. 1001, 4:52-55. Accordingly, we use the
`term “detected”in our analysis, and in discussing Patent Owner’s
`arguments.
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`ended whenthefirst of the two [simultaneously detected] target variables
`
`attains its respective predetermined value,”i.e., construction (3) above. Jd.
`
`at 6; see Ex. 2005, 5-6 (citing Ex. 1001, 3:22~—26).
`
`Similarly, Patent Owner argues that the construction we provided in
`
`the Institution Decision (construction (1) above) is not the broadest
`
`‘reasonable construction becauseit reads out of claim 6 an implicit limitation,
`
`i.e., detecting both the first and fourth target variables. Id. at 6-7.
`
`According to Patent Owner and Mr. Vogler, a person of ordinary skill in the
`art would understand claim 6 to include such detecting in orderto
`“ascertain[] that the respective predetermined values have been reached.”
`
`Id. at 9; see Ex. 2005, 4. Patent-Owner and Mr. Vogler point to an
`
`embodimentof the ’883 patent as support for those arguments. Jd. at 7
`
`(citing Ex. 1001, 3:22—26); Ex. 2005, 5 (citing same).
`
`Petitioner, on the other hand, argues that we should maintain our
`
`preliminary construction of claim 6. Reply 5-9. In that regard, Petitioner
`
`argues “claim 6 does not explicitly require that either [target] variable be
`
`detected.” Jd. at 8. Relying on the claim differentiation doctrine, Petitioner
`
`points to the differences between claims 4 and 6; namely, that claim 4
`
`expressly recites detection of a target variable, whereas claim 6 does not. Jd.
`
`at 8. Petitioner arguesin the alternative that, even if the Board were to
`
`concludethat detection is required by claim 6, the claim “clearly requires
`
`only one of the two target variables to adopt a predetermined value as the
`
`sole criterion for ending the first machining interval. Thus, claim 6 would
`
`require detection ofeither the first target variable or the fourth target
`
`variable, not both.” Jd. at 8-9 (citing Ex. 1008 J 11-15). According to
`
`Petitioner, this is so because claim 6 uses the disjunctive “or” to specify two
`
`9
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`Patent 8,702,883 B2
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`alternative options for ending the first machining interval. See Pet. 41;
`
`Reply5.
`
`At issue here is whether claim 6 requires detecting more than one
`
`target variable, i.e., whether both the first and fourth target variables must be
`
`detected. We being by noting that claim 6 does not expressly recite that
`
`either the first or the fourth target variable is “detected.” It does not follow,
`
`however, that claim 6 requires no detectionat all, as Petitioner appears to
`
`argue. See Reply 8 (“even if detection were to be read into claim 6, despite
`
`its presence in claim 4 and absence from claim 6”). Petitioner’s argumentin
`
`that regard is inconsistent with other arguments in the Petition and Reply,as
`
`well as Mr. Klinstein’s testimony. See, e.g., Pet. 6-7 (describing an
`
`embodimentof the ’883 patent in which the target variable time is detected
`
`and measured). In particular, Mr. Klinstein testifies that an ordinary artisan
`
`“would understand claim6to refer to at least three alternate configurations,”
`
`each of which requires detecting at least one target variable: (1) in the first
`
`configuration, the first and fourth target variables are the same, and one of
`those target variables is detected; (2) in the second configuration,the first
`and fourth target variables are different, but only one of them is detected;
`and (3) in the third configuration, the first and fourth target variables are
`
`different, and both of them are detected. Ex. 1008 4 14. As both Petitioner
`
`and Mr. Klinstein concede, claim 6 requires detection of at least one target
`
`variable despite the fact that the claim does not expressly recite detection.
`
`Indeed, Petitioner does not explain how it would be possible for the method
`
`to determine whena target variable adopts a predetermined value without
`
`detecting that target variable. Accordingly, we find a construction of
`
`claim 6 that eliminates detection altogether to be unreasonably broad.
`
`10
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`Weare persuaded, however, by Petitioner’s alternative argumentthat
`
`claim 6 requires detecting only onetarget variable, not both. See Reply 8-9.
`
`Asnoted in ourInstitution Decision and above, claim 6 recites two options
`
`for ending the first machining interval. Inst. Dec. 15; Ex. 1001, 4:58-62
`
`(“the first machining interval ends whenthefirst target variable adopts the
`
`predetermined value or whena fourth target variable of the group Z adopts a
`
`predetermined value”). Using the disjunctive connector“or” designates the
`
`two options for ending the first machining interval “as distinct alternatives to
`
`one another.” Wasica Fin. GmbH v. Continental Auto. Sys., Inc., No. 2015-
`
`2078, 2017 WL 1228579, at *5 (Fed. Cir. Apr. 4, 2017) (citing SkinMedica,
`
`Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive
`
`‘or’ plainly designates that a series describes alternatives.”); Schumerv. Lab.
`
`Comput. Sys., 308 F.3d 1304, 1311 (Fed. Cir. 2002) (“We haveconsistently
`
`interpreted the word ‘or’ to mean that the items in the sequenceare
`
`alternatives to each other.”)). Thus, the plain language of claim 6 indicates
`
`that only one of the two recited target variables needs to be detected, and
`
`that the machining interval ends whenthe detected target variable adoptsits
`
`predetermined value.
`
`Such a construction is consistent with the ’883 patent specification.
`
`The specification describes an embodiment of the method in which “‘it is
`
`also possible for two target variables to be detected during a machining
`
`interval, for examplea first target variable and a fourth target variable[,] .
`
`.
`
`.
`
`and for the machining interval to end when oneofthe two target variables
`
`adopts it[s] predetermined value.” Ex. 1001, 3:22—26. Unlike other
`
`embodiments, the specification does not elaborate further as to the contours
`
`of this particular embodiment, by way of example or otherwise. Compare
`
`1]
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`id. at 3:22—26, with id. at 2:24-47, 2:55—-58, 3:4-19. In our view,the phrase
`
`“it is also possible” suggests that although the method can detect two target
`
`variables during the first machining interval, detection of both target
`
`variables is not required.
`
`Patent Ownercontendsthat construing claim 6 to require detection of
`
`only onetarget variable, as opposed to two target variables, results in an
`
`improper dependent claim becauseit does not further limit the scope of
`
`protection of claim 1. Resp. 8 (citing Nystrom, 424 F.3d at 1143). To avoid
`
`such impropriety, Patent Owneressentially asks us to rewrite the claim to
`
`require simultaneously detecting both target variables and ending the
`
`machining interval whenthe first of those target variables adoptsits
`
`predetermined value. Jd. at 5~8. There is no presumption ofvalidity in an
`
`inter partes review. Accordingly, we do not construe or rewrite claims to
`
`preservetheir validity.
`
`The result here would not change if we applied such a presumption,
`
`because weare not persuaded by Patent Owner’s argumentthat a
`
`construction requiring detection of one target variable renders claim 6 an
`
`improper dependent claim. Rather, we agree with Petitioner that such a
`
`construction further limits the methodset forth in claim 1 by specifying that
`
`the machining interval ends. See Reply 7-8. In other words, claim 1
`
`specifies what occurs during the first and second machiningintervals(i.e., a
`
`welding variable is kept constant until a target variable adopts a
`
`predetermined value), but does not recite that each machining interval ends
`
`once that predetermined value is adopted. Claim 6, on the other hand,
`
`narrowsclaim 1 by specifying that what occurs during the first machining
`
`interval is one of the two options for ending that machininginterval.
`
`12
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`Ex. 1001, 4:59-60 (“the first machining interval ends whenthefirst target
`
`variable adopts the predetermined value. . .”).
`
`Further, we note that, with Patent Owner’s proposed construction,
`
`claim 6 includes two temporal limitations:
`
`(1) the method must detect the
`
`first target variable and the fourth target variable simultaneously, and (2)the
`
`machining interval ends whenthefirst of the two detected target variables
`
`adopts its predetermined value. See Resp. 5-6. We need not address those
`
`temporal limitations because we determine that claim 6 does not require
`
`detection of two target variables.
`
`Had we determined that claim 6 requires such detection, however, we
`
`remain unpersuadedthat the claim additionally requires the temporal
`
`limitations Patent Ownerurgesus to adopt. In that regard, Patent Owner
`
`does not direct us to any claim languageor description in the ’883 patent
`
`specification that sets forth simultaneously detecting the two target variables
`
`during a machininginterval, or ending the machining interval whenthefirst
`
`of the two target variables adopts its predetermined value.
`
`Given the foregoing, we determinethat, under the broadest reasonable
`
`construction, the method of claim 6 need only detect one target variable (the
`
`first target variable or the fourth target variable) and end the machining
`
`interval when that target variable adopts its predetermined value.
`
`C. Anticipation ofclaim 6 by Klinstein ’816
`Petitioner contends that Klinstein 816 anticipates claim 6. Pet. 31—
`
`42. Patent Owner respondsthat Klinstein ’816 cannot anticipate claim 6
`
`because Petitioner failed to provide an analysis of each claim from which
`
`claim 6 depends, and because Klinstein ’816 does not disclose the criteria
`for ending the first machining interval that claim 6 requires(i.e., detecting
`
`13
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`both target variables). Based on our review of the arguments and evidence
`
`of record, we determine that Petitioner demonstrates, by a preponderance of
`
`the evidence, that Klinstein anticipates claim 6, as explained below.
`
`1. Klinstein ’816
`
`Klinstein ’816 discloses an ultrasonic welding system and method,
`
`during which an ultrasonic welding stack mountedfor linear movementis
`
`pressed against a first workpiece and the energy from the welding stack is
`
`applied to the first workpiece to initiate welding. Ex. 1004, Abstract. The
`
`welding system comprises an electrically powered linear actuator coupled to
`
`the welding stack that moves the stack while applying a controlled force,
`
`speed, or combination of force and speedto the stack, and the welding
`
`system includes an ultrasonic signal generator, a booster, and a horn. Jd. at
`
`1:30-35, 3:21-43, Figs. 5, 6. The system further comprises a controller and
`
`at least one sensorthat is configured to measure at least one corresponding
`
`control variable and to provide a signal corresponding to the control variable
`
`to the controller. Jd. at 1:39-45.
`
`During one welding method, called a delayed motion technique, an
`
`initial force is applied to the welding stack and the welding distanceis
`
`maintained at or near zero inches until a decrease in force to a predetermined
`
`threshold force of 17 poundsis reached. Jd. at 7:16—51, Figs. 9-11.
`
`Following that decrease in force, the control system continues the weld in
`
`accordance with a selected weld processprofile. Jd. at 7:51-55. For
`
`example, after the decrease in force, the weld speed can be held constant
`
`until a predetermined weld distance is reached, thereby ending the
`
`machininginterval. /d. at 7:16—-23, Figs. 9-11.
`
`14
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`2. Analysis
`
`Wefirst address whether, in order to establish that Klinstein °816
`
`anticipates claim 6, Petitioner must also demonstrate that Klinstein 7816
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`anticipates each of the alternative claims from which claim 6 depends(1.e.,
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`claims 1, 2, and 3 or claim combinations 6/1, 6/2/1, and 6/3/2/1). We then
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`considerthe parties’ substantive arguments regarding Klinstein *816.
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`a. Multiple dependency ofclaim 6
`Patent Owner arguesthat because claim 6 is a multiple dependent
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`claim that depends from claims 1, 2, or 3, Petitioner must demonstrate, by a
`preponderanceof evidence, that Klinstein 816 anticipates each ofclaims1,
`2, 3, and 6 in orderto establish that Klinstein ’816 anticipates claim 6. Resp.
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`4. In other words, Patent Owner contendsthat it was incumbent upon
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`Petitioner to set forth in the Petition how Klinstein ’816 anticipates each of
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`claim combinations 6/1, 6/2/1, and 6/3/2/1 to render claim 6 unpatentable.
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`Id. Wedisagree.
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`Asset forth in 35 U.S.C. § 112:
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`A claim in multiple dependent form shall contain a reference, in
`the alternative only, to more than one claim previously set forth
`and then specify a further limitation of the subject matter
`claimed. ... A multiple dependent claim shall be construed to
`incorporate by referenceall the limitations ofthe particular
`claim in relation to whichit is being considered.
`
`35 U.S.C. § 112, fifth paragraph (emphasis added). Thus, section 112
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`provides that we must consider separately the limitations of each claim
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`incorporated by reference into the multiple dependent claim. Consistent
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`with that language, the Federal Circuit has addressed a multiple dependent
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`claim in view ofthe asserted claim from which it depends, as opposed to
`
`each claim from which it depends. See Dow Chem. Co. v. Mee Indus., Inc.,
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`Patent 8,702,883 B2
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`341 F.3d 1370, 1377 (Fed. Cir. 2003) (affirming district court’s obviousness
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`conclusion as to a multiple dependent claim without considering separately
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`each claim combination because although“[c]laim 21 of the [asserted]
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`patent is a multiple-dependent claim, .
`
`.
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`. only independent claim 14 from
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`which it dependsis asserted”).
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`Likewise, the Manual of Patent Examining Procedure (“MPEP”)
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`advises examiners and practitioners that “a multiple dependent claim. ..
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`does not contain all the limitations of all the alternative claims to whichit
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`refers, but rather contains in any one embodimentonly those limitations of
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`the particular claim referred to for the embodiment under consideration.”
`MPEP§ 608.01(n)(I)(B)(4) (Eighth Edition, Rev. 9 (Aug. 2012)).’ The
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`MPEPfurther explains that examiners should consider a multiple dependent
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`claim “in the same manneras a plurality of single dependent claims.” Id.
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`Although the MPEP doesnot have the force of law, the courts give
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`deference to an agency’s interpretation of the statutes it enforces. Ethicon,
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`Inc. v. Quigg, 849 F.2d 1422, 1425 (Fed. Cir. 1988) (“The MPEPstates that
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`it is a reference work on patent practices and procedures and does not have
`the force of law, but it ‘has been held to describe procedures on which the
`public can rely.’” (quoting Patlex Corp. v. Mossinghoff, 785 F.2d 594, 606
`(Fed. Cir. 1985)); see Hyatt v. Dudas, 492 F.3d 1365, 1369 n.2 (Fed. Cir.
`
`2007).
`
`7 Wecite to the version of the MPEPthat wasin effect at the time Patent
`Ownerfiled the application that issued as the ’883 patent. The current
`version of the MPEP, however, includes the same language regarding
`multiple dependent claims. See MPEP § 601.08(n) (Ninth Edition, Rev.
`07.2015 (Nov. 2015)).
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`Wefind the decision in Dow instructive, and the MPEP’s guidance
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`persuasive, as to how courts, examiners, and practitioners consider multiple
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`dependent claims. Indeed, we considered claim 6 in the same manner when
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`weinstituted this inter partes review based on its dependency from claim 1,
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`but not claims 2 and 3. Inst. Dec. 15 (noting that the Petition addresses the
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`limitations of claim 6 and claim 1) see alsoid. at 5 (explaining that claim 6
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`retains the content of claim 1). Patent Owner’s arguments to the contrary in
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`its Response do not persuade us that we were in error, or that Petitioner was
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`obligated to show in the Petition how Klinstein ’816 anticipates each of
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`claim combinations 6/1, 6/2/1, and 6/3/2/1.
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`b. Anticipation ofclaim combination 6/]
`Anticipation under 35 U.S.C. § 102 requires “the presencein a single
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`prior art disclosure of all elements of a claimed invention arrangedas in the
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`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
`
`(Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
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`(Fed. Cir. 2008). Petitioner argues that Klinstein ’816 discloses every
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`limitation of the claim combination 6/1 and, therefore, anticipates claim 6.
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`Pet. 34-42. Petitioner supports its argument with citations to Klinstein ’816
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`that correspondto each limitation of claims 1 and 6, and with the Klinstein
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`Declaration. Jd. at 32-34 (citing Ex. 1004, Abstract, 3:21—28, 4:14—26,
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`4:52-61, 6:62-7:15, 7:16-55, 9:31-33, Figs. 9-11; Ex. 1007 {ff 38-51, 57).
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`Patent Ownerchallenges Petitioner’s showing with respectto the
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`limitations that claim 6 adds to claim 1, but does not address the merits of
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`Petitioner’s assertions regarding the claim 1 limitations. See generally Resp.
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`In the Scheduling Order, we cautioned Patent ownerthat any arguments for
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`patentability tut raised in the Response would be deemed waived. Paper 9,
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`2-3; see also 37 C.F.R. § 42.23(a) (‘Any material fact not specifically
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`denied may be considered admitted.”). After having reviewed the
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`unrebutted arguments and evidence presented by Petitioner concerning the
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`limitations of claim 1, we are persuaded by those arguments. For example,
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`we agree with Petitioner that the ultrasonic welding methodthat Klinstein
`816 disclosesis a “[mJethod for controlling an ultrasonic machining
`process, in which an ultrasonic vibration of the frequencyf is transmitted
`
`with the aid of a sonotrode madeto carry out an ultrasonic vibration under a
`
`pressure into the material to be machined.” As Petitioner points out,
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`Klinstein ’816 discloses an ultrasonic welding method during whichthetip
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`of the vibrating horn or sonotrodeis brought into contact withafirst
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`workpiece. The horn transfers ultrasonic vibrational energyto thefirst
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`workpiece, through direct physical contact, and appliesto the first workpiece
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`the pressure necessary to force a weld betweenthe first workpiece and a
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`second workpiece. Pet. 32, 35-36; Ex. 1004, 4:14—26, 4:53-61; Ex. 1007
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`q4 39-41.
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`Wealso agree with Petitioner that Klinstein ’816 discloses: (1) a first
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`machining interval during which a first welding variable of the groupS is
`
`kept constant until a first target variable of the group Z adopts a
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`predetermined value; (2) a second adjoining machininginterval during
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`which a second welding variable of the group S is kept constant until a
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`secondtarget variable of the group Z adopts a predetermined value; and
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`(3) the first and secondtarget variables differ. Pet. 32-34, 36-41; Ex. 1007
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`{7 43-47, 49-50. As explained above, Klinstein ’816 describes a delayed
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`motion technique with two machining (welding) intervals. During thefirst
`
`interval, a first welding variable, distance, is kept at zero inches untila first
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`target variable, force, adopts a predetermined threshold at 0.08 seconds.
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`Ex. 1004, 7:32-55, Figs. 9, 10. During the secondinterval, a second
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`welding variable, speed, is kept