Before the Patent Trial and Appeal Board

UNITED STATES PATENT AND TRADEMARK OFFICE

______

BEFORE THE PATENT TRIAL AND APPEAL BOARD

______

KOA CORPORATION, Petitioner,

VISHAY DALE ELECTRONICS, LLC, Patent Owner.

______

Case No. IPR2019-00201 U.S. Patent No. 7,190,252

______

PETITIONER KOA’S REPLY TO PATENT OWNER’S RESPONSE

By: Scott M. Daniels, Reg. No. 32,562 Cindy H. Chen, Reg. No. 78,206 Attorneys for Petitioner Tel: 703-827-3800 / Fax: 571-395-8753 E-mail: [email protected] / [email protected] TABLE OF CONTENTS

I. INTRODUCTION ...... 1

II. BOARD’S DEFINITION OF “LEVEL OF ORDINARY SKILL IN THE ART” IS CORRECT ...... 1

III. PATENT OWNER’S PROPOSED CLAIM CONSTRUCTIONS SHOULD NOT BE ADOPTED ...... 2

A. “the upwardly presented termination surfaces of the first and second terminations forming a depression in the filler” ...... 2

B. “bonding” ...... 4

IV. NAKAMURA DISCLOSES A “DEPRESSION” IN THE FILLER ...... 7

A. Nakamura Discloses “Forming” Uncured Insulation Layer Before Folding Electrodes ...... 8

B. Forming the “Laminated Structure” in Nakamura Results in a “Depression” Being Formed in Insulation Layer ...... 9

C. Claimed “Depression” Has No Size Limits ...... 12

D. Patent Owner’s Product-by-Process Arguments are Unavailing ...... 12

V. NAKAMURA DISCLOSES “BONDING” FILLER TO THE RESISTIVE ELEMENT AND TERMINATION SURFACES ...... 14

A. Nakamura Discloses that Insulation Layer “Closely Adheres” to the Electrodes and Resistor ...... 14

B. Nakamura’s Insulation Layer is Applied as Uncured Resin That, When Cured, Bonds to Electrodes and Resistor Section ...... 17

C. Patent Owner Does Not Dispute the Board’s Obviousness Determination ...... 18

VI. NAKAMURA DISCLOSES “FORCING INTO CONTACT” AND “SQUEEZING” THE TERMINATION SURFACES ...... 20

A. Forming the “Laminated Structure” of Nakamura Involves “Forcing into Contact” and “Squeezing” ...... 20

i B. The ‘252 Patent Does Not Quantify “Forcing” and “Squeezing” ...... 22

VII. CLAIM 2 IS ANTICIPATED BY OR OBVIOUS OVER NAKAMURA .... 23

VIII. NAKAMURA DISCLOSES “PLACING A FILLER…ON THE LOWER SURFACE OF THE RESISTANCE ELEMENT” AND “BENDING THE FIRST AND SECOND TERMINATIONS DOWNWARDLY” (CLAIMS 15 & 19) ...... 24

IX. CONCLUSION ...... 25

ii TABLE OF AUTHORITIES

Cases Continental Circuits LLC v. Intel Corp. et al., 915 F.3d 788, 129 U.S.P.Q.2d 1385 (Fed. Cir. 2019) ...... 3

Daifuku Co., Ltd. v. Murata Machinery, Ltd., IPR2015-00083, Paper 63, Final Written Decision (PTAB, May 3, 2016) ...... 15

In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983) ...... 19

In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985) ...... 13

Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) ...... 19

iii TABLE OF EXHIBITS UPDATED OCTOBER 25, 2019

Exhibit Title New 1001 Declaration of Dr. Michael S. Randall with Curriculum Vitae 1002 U.S. Patent No. 7,190,252 (‘252) 1003 U.S. Patent No. 7,190,252 Patent File History (Excerpts) 1004 Merriam-Webster’s Collegiate Dictionary, 11th Ed. (2003) (Excerpts) 1005 U.S. Patent No. 5,604,477 (Rainer) 1006 Published Japanese Patent Application JP 2004-128000 to Nakamura (Certified English Translation) 1007 Published Japanese Patent Application JP 2004-128000 to Nakamura 1008 Mechanical Behavior of Laminated Steel Composites,” Lesuer, et al. International Materials Reviews, Vol. 41, No. 5, pp. 169- 197 (January 1996) 1009 “The Importance of Interlayers in Diffusion Welding – A Review,” by Akca and Gursel, Periodicals Of Engineering and Natural Sciences, Vol. 3, No. 2, (2015) 1010 Certificate of Translation for Published Japanese Patent Application JP 2004-128000 to Nakamura 1011 U.S. Patent 7,541,264 (Gardner et al.) X 1012 U.S. Patent 6,144,547 (Retseptor) X 1013 CN 102753636 A (including translation) X 1014 U.S. Patent 8,647,964 (Harkness) X 1015 Technical Data Sheet for DOWSIL™ Q1-4010 Conformal X Coating (2017, The Dow Chemical Company) 1016 Declaration of Fumika Ogawa in Support of Petitioner KOA’s X Reply to Patent Owner’s Response 1017 High Temperature Adhesives for Structural Applications: A X Review, U.S. Dept. of Commerce, National Technical Information Service (originally presented as an Institution of Production Engineers/The Design Council seminar on “Industrial Applications of Adhesives,” Nov. 10, 1952) 1018 Chambers Dictionary of Science and Technology, Chambers X Harrap Publishers Ltd, 1999 (Excerpt) 1019 TR-150-25 High Temperature Polyimide Resin, PTM&W X Industries, Inc.

iv Exhibit Title New 1020 Report on Carcinogens, Fourteenth Edition, 4,4’‑Oxydianiline X CAS No. 101-80-4, National Toxicology Program, Department of Health and Human Services 1021 U.S. Patent No. 5,846,355 (Spencer et al.) X 1022 U.S. Patent No. 5,519,172 (Spencer et al.) X 1023 WO 96/08828 A1 (Spencer et al.) X 1024 U.S. Patent No. 8,647,964 (Harkness) X 1025 EP 0 730 017 A2 (Hutter et al.) X 1026 U.S. Patent Pub. No. 2004/0156177 (Higashitani) X 1027 U.S. Patent No. 6,558,783 (Kato et al.) X 1028 U.S. Patent No. 6,528,860 (Okamoto et al.) X 1029 DuPont™ GreenTape™ low temperature co-fired ceramic X system, E.I. du Pont de Nemours and Company, K-23365, Nov. 2009 1030 VELCRO® brand Adhesives; Pressure Sensitive, Fire X Retardant, Solvent and Heat Activated, Velcro Companies/FASTENation 1031 Dictionary of Materials and Testing, Society of Automotive X Engineers, Inc., 2nd Edition, 2000 (Excerpt) 1032 U.S. Patent No. 4,451,869 (Sakabe et al.) X 1033 U.S. Patent No. 4,558,021 (Hata et al.) X 1034 U.S. Patent No. 5,014,158 (Nishimura et al.) X 1035 U.S. Patent No. 4,290,041 (Utsumi et al.) X 1036 U.S. Patent No. 6,717,506 (Ishii) X 1037 U.S. Patent No. 6,694,613 (Nakamura et al.) X 1038 U.S. Patent No. 6,736,179 (Ito et al.) X 1039 U.S. Patent No. 7,063,768 (Tsujimoto et al.) X 1040 U.S. Patent No. 7,479,313 (Chang et al.) X 1041 Clad Materials, Engineered Materials Solutions, Wickeder X Group 1042 The Synonym Finder, Grand Central Publishing, a division of X First Hachette Book Group Edition, Rodale Press (1978) and Hachette Book Group (1986) (Excerpt) 1043 Merriam-Webster’s Collegiate Dictionary, 11th Ed. (2003) X (Additional Excerpts)

v Exhibit Title New 1044 Second Declaration of Dr. Michael S. Randall in support of X Petitioner KOA’s Reply to Patent Owner’s Response 1045 Third Declaration of Dr. Michael S. Randall in support of X Petitioner KOA’s Opposition to Patent Owner’s Motion To Amend Claims 1046 Telephonic Deposition of David W. Hughes, Ph.D., Sept. 27, X 2019 1047 Mitchaku Definition, Sanseido Web Dictionary X 1048 Pitari Definition, Weblio X 1049 Kuttsuku Definition, Weblio X 1050 Ministry of Education Science and Culture, Japan, Japanese X Scientific Terms: Chemistry 169 (Revised and Enlarged Edition, 1986) 1051 Keisuke Fujioka, Engineering Terms 50000, English-Japanese X Japanese-English 1018 (1997) 1052 Kinzoku Zairyō Gijyutsu Kenkyūjo, Zukai Kinzoku Zairyō X Gijyutsu Yōgo Jiten 442 (2d ed. 2000) 1053 Akira Kinbara, Science and Technology of Thin Film Adhesion, X 63(12) J. Surf. Finish Soc. Jpn., 710-7 (2012) 1054 Eiji Iwamura, “Improvement of Adhesion Strength in Thin X Films.” 58(5) J. Surf. Finish Soc. Jpn., 260 (2017) 1055 Kobelco Research Institute, “Evaluation of Adhesion Strength X of Thin-films,” Koberunikusu, 13 Oct. 2004 1056 JP 4623921 B2 X 1057 U.S. Patent 7,238,296 X 1058 Hasami-komu Definition, Weblio X 1059 Kaizai-suru Translation, Sanseido Web Dictionary X 1060 Henkei Definition, Sanseido Web Dictionary X 1061 Konpakuto-na Definition, Sanseido Web Dictionary X

vi I. INTRODUCTION

Claims 1-21 of U.S. Patent No. 7,190,252 (“‘252 patent”) are unpatentable over JP2004-128000 to Nakamura. In its Response (Paper 16), Patent Owner advances constructions for “forming a depression” and “bonding” limitations

(claims 1 and 14) that contradict those terms’ common and ordinary meanings.

Whereas Petitioner’s translation of the Nakamura reference is based on the full context of Nakamura’s disclosure, Patent Owner’s translation cherry-picks definitions that favor its position, and deletes the key words from Nakamura’s

disclosure that contradict Patent Owner’s narrative. The correctly translated

Nakamura reference, as understood by a person of ordinary skill in the art

(POSITA), discloses and teaches all the claimed features of the ‘252 patent,

including “depression” formed in uncured filler, “bonding” filler to the other

components, “forcing into contact,” and “squeezing.”

II. BOARD’S DEFINITION OF “LEVEL OF ORDINARY SKILL IN THE ART” IS CORRECT

The Board has correctly determined that the POSITA “would hold Master’s

Degree in Materials Science or Engineering or an analogous degree, and [would

have] at least two years of relevant/applied industry experience,” plus “the level of

ordinary skill in the art [that] is evidenced by the prior art references.” Paper 9, at

11.

1 Patent Owner proposes without explanation that the POSITA would possess

“[a] Bachelor of Engineering degree, a Bachelor of Science degree in Engineering, or a Bachelor of Science degree in Physics and, in addition, have approximately two or more years of related experience.” Paper 16, at 14.

The Board should maintain its original definition of a POSITA, with its focus on materials science and engineering, as opposed to engineering and physics.

The Board’s definition is consistent with the ‘252 disclosure and the prior art of record. Although the final product of the ‘252 patent is a resistor, which is an electrical component, the ‘252 disclosure and claims concern heat transmission, adhesion, and bonding, which are concerns of materials science. Not all engineering backgrounds are pertinent to the ‘252 patent, and a background in chemistry is more suitable than one in physics. Ex. 1044, ¶ 6.

III. PATENT OWNER’S PROPOSED CLAIM CONSTRUCTIONS SHOULD NOT BE ADOPTED

A. “the upwardly presented termination surfaces of the first and second terminations forming a depression in the filler”

Patent Owner incorrectly proposes construing the phrase “forming a depression in the filler” to mean “pressing into the filler material so as to create a

deformation in the filler material.” Paper 16, at 15. The phrase appears in claim

1, which is directed to an electrical resistor, that is, to a product. The plain

2 language of the claim does not specify the process by which the depression is formed.

For a process limitation to be read into a product claim, the process limitation must be “an essential part of the claimed invention.” Continental

Circuits LLC v. Intel Corp. et al., 915 F.3d 788, 799, 129 U.S.P.Q.2d 1385, 1391-

92 (Fed. Cir. 2019).

The ‘252 specification contains no indication that “pressing” is an essential element of the claimed resistor. To form the depression, the ‘252 patent requires only that the filler material be capable of being depressed or squeezed. Ex. 1002,

4: 22-24 (“In its uncured state the filler 28 should be capable of being depressed….”), 6:14-17, 6:27-31. “Pressing” is merely one means of forming the depression. This is far from explicitly stating that “pressing” is “an essential part” of the claimed resistor. The ‘252 patent does not clearly and unmistakably disavow other means of forming the depression.

The ‘252 prosecution history also does not support Patent Owner’s alleged disclaimer (Paper 16, at 18). With respect to the product claims, Applicant argued during prosecution only that the cited prior art did not teach a depression in the filler. Id. at 12-13. These arguments are hardly a clear and unmistakable disclaimer of other ways of forming the depression. The Examiner mentioned squeezing the terminations and forcing the terminations into contact with the filler,

3 but only in the context of the method claims. Id. at 13. Nowhere did Applicant argue that the “pressing” limitation is essential.

Patent Owner also misrepresents the testimony of Petitioner’s expert, Dr.

Randall, to support its proposed construction. Id. at 20. But Dr. Randall’s testimony is consistent with the clear intrinsic evidence and does not support importing a functional limitation into the claim. Ex. 1001, ¶¶ 24-25.

The “depression in the filler” in claim 1 is not limited to one formed by

“pressing.” The phrase “the upwardly presented termination surfaces of the first and second terminations forming a depression in the filler” needs no explicit construction, and its plain and ordinary meaning applies.

B. “bonding”

Patent Owner incorrectly proposes construing the term “bond” to mean “an interconnection that performs a permanent electrical and/or mechanical function.”

Paper 16 at 21.

The ‘252 claims, specification, and prosecution history do not define

“bond.” Patent Owner derives its construction from the Dictionary of Materials and Testing, 2nd Edition (2000) (Ex. 2003) and the Modern Dictionary of

Electronics, 6th Edition (1991) (Ex. 2007). Paper 16, at 25-26. But the complete definition for “bond” in the Modern Dictionary of Electronics is “[t]o make an electrical bond, an interconnection which performs a permanent electrical and/or

4 mechanical function.” Ex. 2007, 3 (emphasis added).1 The definition for “bond” that Patent Owner advances is specific to an electrical bond. Such a definition is nonsensical in the context of the ‘252 patent. Claim 1 recites that the filler bonded to the resistive element and the terminations is “thermally conductive and electrically non-conductive.” Ex. 1002, 8:27-28. If an interconnection that performs a permanent electric and/or mechanical function is understood as referring to an electrical bond, it would be unreasonable to equate such an interconnection with a bond formed by an electrically non-conductive material.

Ex. 1044, ¶¶ 17-19. Patent Owner’s insistence on heat-dissipation-functional definition (Paper 16 at 23, 26) also makes no sense since it would cover metal elements that do not adhere at all to resistive element or terminations.

Patent Owner also alleges that Dr. Randall admits that “bond” must meet certain functional “intrinsic requirements.” Id. at 25-26. This is misleading. Dr.

Randall explained that because the ‘252 patent discloses that a “bond” requires touching or engagement, that a “bond” is formed during curing and prior to hardening, and that a “bond” allows dissipation of heat from the resistive element to the terminations, the POSITA would understand that a “bond” in the context of

1 The Dictionary of Materials and Testing defines “bond” identically to the Modern Dictionary of Electronics, except for the limitation regarding electrical bonds. Dr. Hughes ignored the “electrical bond” limitation (Ex. 2004, ¶ 23; Ex. 1044, ¶ 20), and does not attempt to resolve the inconsistency between the two dictionary definitions. This inconsistency introduces ambiguity into Patent Owner’s proposed claim construction and counsels against its adoption.

5 the ‘252 patent involves firm or close adhesion. Ex. 1001, ¶¶ 40-41. This firm adhesion imparts the “bond” with the characteristics described in the ‘252 patent.

Id. at ¶ 41. Nowhere does Dr. Randall “admit” that a “bond” must be capable of performing Patent Owner’s electrical and/or mechanical functions—indeed, such a position is inconsistent with the plain and ordinary meaning of “bond.” Id. at

¶¶ 42-43.

The ‘252 patent specification and drawings do not require that the “bonds” between filler, resistive element, and terminations perform any particular functions. Those functions are the intended results of forming the bond. Ex.

1002, abstract, 3:32-36; Ex. 1044, ¶ 8.

Further, Patent Owner’s construction is ambiguous. None of Patent Owner’s alleged “intrinsic requirements” for a “bond” (Paper 16, at 22-23) appear in the proposed construction. It is therefore unclear what “permanent electrical and/or mechanical function” must be performed by a “bond” to fall within the scope of the ‘252 claims. It is also unclear how Patent Owner defines “permanence” vis-à- vis a “function.” Ex. 1044, ¶¶ 21-26. Patent Owner refers to the “permanent mechanical function” of “enhanced dissipation of heat generated in the use of the resistance element.” Paper 16, at 26. But how much heat must be dissipated to qualify as “enhanced dissipation”? If the amount of heat dissipated decreases due

6 to natural deterioration of the resistance element, is the “permanent mechanical

function” still performed? Patent Owner has resolved none of these ambiguities.

Patent Owner’s proposed construction for “bond” introduces unnecessary

and ambiguous functional limitations into the claims, and is therefore not the

broadest reasonable interpretation in light of the ‘252 specification.

In contrast, Petitioner’s construction “bond” to mean “firmly adhere to” is

consistent with the ordinary and customary meaning of the term (Ex. 1001,

¶¶ 42-43) and with the use of the term in the ‘252 patent as understood by a

POSITA. Id. at ¶¶ 37-41; Ex. 1044, ¶¶ 27-34. Patent Owner’s mention of Velcro

(Paper 16, at 23-24) as being a material that “firmly adheres” is inapposite

inasmuch as the ‘252 patent discloses resins that bond. Ex. 1044, ¶¶ 169-170.

To the extent that the Board deems it necessary to construe “bond,” the term

should be construed to mean that filler is firmly adhered to resistive element and

terminations, as proposed by Petitioner. Alternatively, the plain and ordinary

meaning should apply.

IV. NAKAMURA DISCLOSES A “DEPRESSION” IN THE FILLER

Claim 1 recites “the upwardly presented termination surfaces of the first and second terminations forming a depression at the filler,” and “the filler engaging and being bonded to the lower surface of the resistive element and bonded at the depression of the filler to the upwardly presented termination surfaces of the first

7 and second terminations.” Nakamura teaches the claimed “depression.”

A. Nakamura Discloses “Forming” Uncured Insulation Layer Before Folding Electrodes

Patent Owner twists the word “form” in Nakamura’s disclosure of coating an insulation resin “to form the insulation layer 13” (Ex. 2006, ¶ [0025]) (emphasis added) to mean that the insulation layer 13 is necessarily “cured and hardened” before electrodes 12 are bent. Paper 16, at 34, 35 (“formed (i.e., cured and hardened)”), 36.

In fact, there is no equating “formed” with curing or hardening. A resin is a material that has not yet cured or hardened. Id. at ¶¶ 77, 80-82, 144. The word

“form” vis-à-vis Nakamura’s insulation layer means “to give a particular shape to”

the layer. Id. at ¶¶ 145, 159. This understanding is supported by other disclosures

of “form” in Nakamura. Id. at ¶¶ 145-147, 106-110.

Patent Owner argues that insulation layer must be cured and hardened

because Nakamura discloses a thickness for the layer. See, e.g., Paper 16, at 47.

But both the ‘252 patent and Patent Owner agree that an uncured layer may also

have a thickness. Id. at 4 (“a thermally conductive and electrically insulated filler

material of minimal thickness is sandwiched between the resistive element and the

terminations prior to curing and hardening the filler material” (emphasis added)).

Nakamura’s required thickness is the application thickness of the resin, not the

cured and hardened thickness of the insulation layer, particularly because the

8 laminated structure has not yet been achieved. Ex. 1044, ¶¶ 154-157.

Patent Owner argues that Nakamura’s insulation layer does not “ooze” when electrodes 22 are folded. Paper 16, at 37. But the ‘252 patent does not require oozing to form the depression. Ex. 1002, 2:61-63 (“[I]t is not necessary for purposes of the invention that the filler extend within the termination space.”);

Ex. 1044, ¶ 89. Patent Owner does not define the amount of “oozing.” Also,

Nakamura teaches that the insulation resin as applied is capable of extending or flowing—in other words, oozing—within the space between electrodes. Ex. 1044,

¶ 90. Other factors such as the thickness of the applied resin coating, the interior bend radius or diameter of the bend, and the bending angle may cause a depression without necessarily causing oozing. Id. at ¶ 91.

Patent Owner’s expert, Dr. Hughes, cites KAPTON® as evidence that the

polyimide insulation resins disclosed in Nakamura can be cured before the

electrodes 12 are folded. Ex. 2004, ¶ 63. This argument is irrelevant. KAPTON® is not a polyimide resin that can be coated to form an insulation layer 13 or to provide close adhesion with the electrodes 12, as taught in Nakamura. Ex. 1044,

¶¶ 68-69, 78-79, 221.

B. Forming the “Laminated Structure” in Nakamura Results in a “Depression” Being Formed in Insulation Layer

Nakamura teaches a “laminated structure” of insulation layer 13, resistor 11,

and electrodes 12. Exs. 1006, 2002, ¶¶ [0025], [0029]; Ex. 1044, ¶¶ 166, 180-183.

9 Contrary to Patent Owner’s arguments (Paper 16, at 30, 35), the disclosed

“laminated structure” requires more than mere contact between the component layers, as Nakamura explicitly requires that “the resistor section is secured to the electrode sections through an insulation layer.” Exs. 1006, claims 1 and 4; Ex.

2001, claims 1 and 4 (using the word “fixed” instead of “secured”); Ex, 1044,

¶¶ 72-76, 229, 234. Nakamura discloses no securing means other than close adhesion (Ex. 1006, ¶¶ [0025], [0029]) or close contact (Ex. 2002, ¶¶ [0025],

[0029]). Ex. 1044, ¶¶ 72-76. By definition, a “laminated structure” is:

[M]ade up of layers of materials bound together to form complex shapes or to produce a material with high strength for its weight. Laminates are thin sheets of material bound together by an adhesive and, after heat and/or pressure treatment (i.e., curing), formed into a structural material.

Ex. 1044, ¶ 167 (emphasis added). To form Nakamura’s “laminated structure” in which the component layers are bonded so as to be secured or fixed to each other, curing and hardening of the insulating resin material constituting the insulation layer occurs during, not prior to, the lamination process. Id. at ¶¶ 72, 75-76, 111,

149, 151-152, 154-156, 171-179, 229; Ex. 1001, ¶¶ 106-112.

Specifically, insulation resin is applied to form a layer of insulation resin on resistance metal material 21 (Ex. 1006, Fig. 2, ¶ [0025]) or resistor 11 (id., Fig. 3,

¶ [0029]). The insulation resin is uncured and unhardened, because electrodes 12

10 still need to be folded to sandwich the layer of insulation resin between resistor 11 and electrodes 12. Id., ¶¶ [0025], [0029]; Ex. 1044, ¶¶ 152, 155, 159. Folding electrodes 12, however, does not by itself form a “laminated structure.” Rather, the folding step must be followed by a lamination process to complete the disclosed “laminated structure,” in which insulation layer closely adheres to electrodes and resistor. Ex. 1044, ¶¶ 75-76, 151-152, 155; Ex. 1001 ¶¶ 106-112.

Lamination is a well-known process. In the “laminated structures” disclosed in Nakamura, the component layers are bonded to adjacent layers either by way of pressing at elevated temperature, or by hot pressing to form a laminated structure wherein each layer is bonded to its associated adjacent layer(s). Ex. 1044, ¶ 177.

This necessary pressing during the lamination process into the uncured insulation resin produces a depression in the resulting insulation layer. Id. at ¶ 208.

Dr. Hughes does not dispute that a lamination process suitable for forming

Nakamura’s “laminated structure” involves pressure. Instead, he dismisses

Nakamura’s disclosure of a “laminated structure” as an “artifact of [] translation,”

and argues that Nakamura really means mere “one-on-top-of-the-other stacking of

layers.” Ex. 2004, ¶¶ 123-125; see also id., at ¶ 74, 119. Dr. Hughes relies solely

on Patent Owner’s own translation (id. at ¶ 125), which is unreliable and inaccurate

in the context of Nakamura. Ex. 1016, ¶¶ 12-16.

11 Further, the POSITA acknowledging Nakamura’s requirement that resistor

and electrodes be “secured” (Ex. 1006, claim 1) or “fixed” (Ex. 2002, claim 1)

through insulation layer would appreciate that such securing involves more than

mere “stacking,” especially because Nakamura does not rely on other mechanisms

to secure the components. Ex. 1044, ¶¶ 72-76.

C. Claimed “Depression” Has No Size Limits

Dr. Hughes admitted that any “non-zero” depression at all meets the

“depression” limitation. Ex. 1046, 61:11-21, 64:3-17; Ex. 1044, ¶¶ 104, 199. As

discussed above, the construction of Nakamura’s laminated structure involves

pressing the component layers to bond them together. Also as discussed above,

lamination is performed before insulation resin of the insulation layer becomes

cured and hardened. The pressure applied during lamination produces a depression

in the uncured insulation resin of the insulation layer. Id. at ¶¶ 91-103, 152, 195-

199, 206, 208.

D. Patent Owner’s Product-by-Process Arguments are Unavailing

Patent Owner argues that Nakamura does not “press” or “squeeze” electrodes 12 into insulation layer 13, and so, does not teach the claimed

“depression.” Paper 16, at 50-53.

However, claim 1 is directed to a product. Patent Owner’s arguments transform the claimed depression into a product-by-process limitation, but Patent

12 Owner never explains how a depression formed by “pressing” structurally differs from one formed by a different means (for example, machining through a cutting tool).

“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966

(Fed. Cir. 1985) (citations omitted) (emphasis added).

Patent Owner has not shown how the process of forming the depression alters the structure of the depression. Since Petitioner has shown that a depression is present in Nakamura’s resistor (see, supra Section (IV)), Nakamura discloses and teaches the claimed “depression.”

In any event, the construction of the laminated structure of Nakamura’s resistor also involves squeezing electrodes into contact with insulation layer, so that Nakamura teaches the claimed depression, even if the depression must be formed by pressing. See, infra Section VI.

13 V. NAKAMURA DISCLOSES “BONDING” FILLER TO THE RESISTIVE ELEMENT AND TERMINATION SURFACES Claim 1 recites “the filler engaging and being bonded to the lower surface of the resistive element and bonded at the depression of the filler to the upwardly presented termination surfaces of the first and second terminations.” Claim 14 recites that “the filler is bonded to both the lower surface of the resistance element and the first and second terminals.” Nakamura teaches the claimed “bonding.”

A. Nakamura Discloses that Insulation Layer “Closely Adheres” to the Electrodes and Resistor

Nakamura teaches coating uncured insulation resin to form an insulation layer, bending electrodes, and then completing the disclosed laminated structure in which “insulation layers 13 on the upper faces of the electrodes 12 closely adhere to the insulation layer 13 on the upper face of the resistor section 11.” Ex. 1006,

¶¶ [0025], [0029] (emphasis added); supra Section (IV)(B). This close adhesion

involves “bonding.” Ex. 1044, ¶¶ 29-34, 66-73, 75-76; supra Section (IV)(B).

Patent Owner argues that “closely adhere” is a mistranslation of the Japanese word “ 密着”, pronounced “mitchaku.” Paper 16, at 37-39. Patent Owner

contends that mitchaku translates into “close contact.” Id. Patent Owner’s

translation is incorrect.2

2 Petitioner served, as supplemental evidence, the certificate of the translation (Ex. 1010) on Patent Owner’s counsel on June 3, 2019.

14 Patent Owner relies on the declaration (Ex. 2006) of its translator, Mr. Frank

McGee, for support. Id. Mr. McGee does not dispute that mitchaku can be

translated as “adhere,” but cites Japanese dictionaries (Daijirin and Weblio) to

assert that mitchaku “clearly refer[s] to a physical process in which the two objects

do not physically adhere to each other and remain separable.” Ex. 2006, ¶ 3. Mr.

McGee’s translation in vacuo is flawed because he fails to analyze the word

mitchaku in the relevant context of Nakamura’s teachings.

Translation is a context-specific exercise. The word mitchaku is used in contemporary Japanese in diverse contexts. Ex. 1016, ¶¶ 5-8. A proper translation of mitchaku in this case is one that contemplates the context of Nakamura’s teachings. See, e.g., Daifuku Co., Ltd. v. Murata Machinery, Ltd., IPR2015-00083,

Paper 63, Final Written Decision (PTAB, May 3, 2016), at 21-25 (resolving translation dispute by analyzing the disputed term in the context of the relevant descriptions in the prior art).

Paragraph [0025] of Nakamura describes fabricating the resistor illustrated in Fig. 2. “[A]n insulation resin such as polyimide or epoxy is coated on one face

(an upper face side in Fig. 2) of resistance metal material 21 so as to form the insulation layer 13,” and electrodes 12 are then “folded (bent)” to form “a laminated structure…in which the insulation layer 13 is sandwiched between the resistor section 11 and the electrode sections 12.” Ex. 1006, ¶ [0025]. Paragraph

15 [0029] of Nakamura describes fabricating the resistor illustrated in Fig. 3, in which insulation layer is formed on the resistor section 11. Id. at ¶ [0029].

The insulation resins disclosed in paragraph [0025] of Nakamura (e.g.,

polyimide resin and epoxy resin) are adhesives. Ex. 1044, ¶¶ 66-72; Ex. 1001,

¶ 108. As the resins cure, they bond to the surfaces with which they are in contact.

Ex. 1044, ¶¶ 66-72; Ex. 1001, ¶ 107. Considering the nature of the resins disclosed

in Nakamura, and the context in which those resins are used, the word mitchaku in

Nakamura indicates more than mere contact, but rather connotes difficulty in

separating insulation layer 13 from resistor 11 and electrodes 12. The word

mitchaku as used in Nakamura is therefore more appropriately translated as

“closely adhere.” Ex. 1016, ¶¶ 8-10; see also Ex. 1044, ¶¶ 35-65.

The technical definitions and usage of mitchaku also support Petitioner’s translation. Ex. 1016, ¶¶ 6-7. In choosing to translate the word mitchaku as “close contact,” Mr. McGee cherry-picks one of the general definitions—“ぴったりとく

っつく”—provided for the word in the Japanese dictionary, Daijirin. Ex. 2006,

¶ 3. The phrase in that general definition consists of an adverb pittari-to (“ぴった

りと” corresponding to the kanji character “密”) and a verb kuttsuku (“くっつく”

corresponding to the kanji character “着”). Ex. 1016, ¶¶ 3-4. According to

Weblio, also cited by Mr. McGee, the adverb pittari-to, or its synonym pitari,

16 refers to “a state in which there is no gaps between [contacting objects],” and the verb kuttsuku is primarily defined as an action or state in which “things are brought into close contact without any gap therebetween, such that they become inseparable from each other; to join; to stick”. Id. at ¶ 4. Accordingly, the general definition of mitchaku reinforces the idea of a close contact, joining or sticking between objects, with an emphasis on the closeness or tightness of such an adhesive relationship. Id.

In his explanation of the general definition of mitchaku, Mr. McGee interprets the verb kuttsuku as merely “bringing things into contact with each other so as to leave no gaps” (Ex. 2006, ¶ 3), but this interpretation ignores the rest of the dictionary entry which provides rather appreciable nuance to the word’s meaning.

Ex. 1016, ¶ 4. This flawed interpretation leads to Mr. McGee’s erroneous conclusion that the Daijirin definition of mitchaku “clearly refer[s] to a physical process in which the two objects do not physically adhere to each other and remain separate” (Ex. 2006, ¶ 3). The Daijirin definition of mitchaku, on which Mr.

McGee relies, refutes his proffered translation as connoting no more than “close contact,” and actually supports Petitioner’s translation of “closely adhere.”

B. Nakamura’s Insulation Layer is Applied as Uncured Resin That, When Cured, Bonds to Electrodes and Resistor Section

Nakamura teaches a laminated structure in which the component insulation layer, electrodes, and resistor must be bonded to each other, so as to be secured or

17 fixed in the manner required by Nakamura. See supra Section (IV)(B). From these disclosures, the POSITA would understand that curing and hardening of the insulating resin material constituting the insulation layer occurs during, not prior to, lamination, because bonding occurs during lamination. Ex. 1044, ¶¶ 72, 75-76,

111, 149, 151-152, 154-156, 229. Premature curing and hardening of the insulation resin would preclude the formation of the laminated structure, in which the layers are “secured” or “fixed” to each other. Id. at ¶ 229.

Patent Owner’s argument that Nakamura’s resistor is formed by “one-on- top-of-the-other stacking of layers” (Ex. 2004 ¶¶ 123-124) ignores Nakamura’s requirement that resistor and electrodes be “secured” or “fixed” through insulation layer. Ex. 1006 and 2002, claims 1 and 4. In the absence of disclosure in

Nakamura of means for securing the layers other than “close adhesion” or “close contact” (Ex. 1044, ¶¶ 74-76, 161-165), Patent Owner has not explained how mere

“stacking” would accomplish the necessary securing or fixing.

C. Patent Owner Does Not Dispute the Board’s Obviousness Determination

As noted by the Board, Dr. Randall provides detailed and comprehensive testimony as to why “it would have been obvious to one of ordinary skill in the art to modify the teachings of Nakamura to ‘ensure that the gap filling materials completely cover (i.e., wet or engage) at least the upper presented surface of the terminals as well as the lower presented surface of the resistive element,’ and

18 ‘bond said filler materials to the lower presented surface of each of the terminals to the gap filler material(s)’,” and the motivation to do so “in order to ensure that no air (low k) is trapped at either interface” and “to impart structural integrity to the resistor device.” Paper 9, at 30 (citing to Ex. 1001, ¶¶ 81, 84).

Patent Owner dismisses Dr. Randall’s detailed testimony as conclusory and hindsight-driven. Paper 16, at 63-64. Tellingly, neither Patent Owner, nor its expert, present any counter-testimony.

Patent Owner attempts to rebut Dr. Randall’s testimony by referring myopically to a single embodiment of Nakamura (id. at 63), while ignoring the

remainder of Nakamura. A reference may be relied upon for all that it would have

reasonably suggested to one having ordinary skill the art. Merck & Co. v. Biocraft

Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S.

975 (1989); In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir.

1983) (holding that patents used as references “are part of the literature of the art,

relevant for all they contain”).

As the Board also noted, Patent Owner misstates Petitioner’s position as

being that the filler materials “must bond,” when in fact Petitioner’s assertion is

that the POSITA would be motivated to select those conditions and materials in

which the filler material would bond, “for the purpose of imparting structural

integrity.” (Paper 9, at 31).

19 Since Patent Owner has made no genuine attempt to address either the relevant technical or legal issues, Petitioner asks that the Board maintain its determination in the Institution Decision that claims 1-11 are obvious over

Nakamura.

VI. NAKAMURA DISCLOSES “FORCING INTO CONTACT” AND “SQUEEZING” THE TERMINATION SURFACES

Claim 15 recites “forcing the first and second terminations into contact with the filler material while the filler material remains in the uncured and unhardened state.” Claim 19 recites “squeezing the upwardly presented surfaces of the first and second terminations toward the uncured filler whereby the uncured filler will be pressed against the lower surface of the resistance element.” Nakamura teaches these features.

A. Forming the “Laminated Structure” of Nakamura Involves “Forcing into Contact” and “Squeezing”

Nakamura teaches a “laminated structure.” See supra Sections (IV)(B),

(V)(B). Nakamura also discloses that the laminated structure is a “compact,”

“sandwiched” structure with insulation layer 13 sandwiched and interposed between resistor 11 and electrodes 12. Ex. 1006, ¶¶ [0014], [0025], [0027],

[0029]; Ex. 1044, ¶¶ 195-196, 202, 205-208. This laminated structure is formed by a lamination process that involves pressing and as the term “sandwiched” means,

“squeezing.” Id. at ¶¶ 202-204; see also, supra Sections (IV)(B).

20 Nakamura discloses applying 50-150 μm of insulation resin. Exs. 1006 and

2002, ¶ [0025]. When folding electrodes 12, an interior bend radius that is less than the thickness of the coated insulation resin would result in depressing or squeezing the resin, thus forming a depression in the resin. Ex. 1044, ¶¶ 92-96.

An external bend radius that is less than twice the thickness of the coated insulation resin would also cause depression to form in the resin. Id. at ¶¶ 97-98.

Nakamura teaches that the gap between the resistor 11 and the electrodes 12 is significantly less than twice the thickness of the coated insulation resin. Ex. 1006,

Figs. 1-4; Ex. 1044, ¶ 98. In other words, the bend radii of electrodes 12 in

Nakamura are smaller than the thickness of the coated insulation resin, so that folding electrodes 12 squeezes the insulation resin and forms a depression in the resin. Ex. 1044, ¶¶ 99-100, 102-103.

Patent Owner alleges that Nakamura folds electrodes 12 by 180° or 90°, which would result in the filler material doubling in thickness without squeezing to form a depression. Paper 16, at 48. This argument contradicts the ‘252 disclosure, which discloses only bending terminations 24 at 180°. Ex. 1044, ¶¶ 87-88, 101;

Ex. 1002, 5:43-45, 6:19-23. Patent Owner’s argument also misrepresents Dr.

Randall’s testimony, who never opined that folding electrodes exactly doubles the thickness of insulation resin in Nakamura. Quite the contrary, Dr. Randall stated

21 that insulation layer’s thickness may be reduced depending on the parameters of the lamination process. Ex. 1044, ¶ 158; Ex. 1001, ¶¶ 156-157.

Thus, the POSITA would understand Nakamura as disclosing a laminated structure that is a “sandwiched” structure, the formation of which by the laminated process would involve pressing and squeezing. The POSITA would have found it obvious to press, whether by forcing into contact or by squeezing, Nakamura’s electrodes and resistor into uncured and unhardened insulation layer, so that the component layers could be laminated to bond or closely adhere to each other to produce the laminated structure disclosed in Nakamura, in which the resistor sections are secured or fixed to the electrodes through the insulation layer.

B. The ‘252 Patent Does Not Quantify “Forcing” and “Squeezing”

The ‘252 patent nowhere quantifies “forcing” and “squeezing.” Ex. 1002,

4:22, 6:29-30, claims 15 and 19; Ex. 1044, ¶¶ 198-199. The lamination process for forming Nakamura’s laminated structure involves pressing, which Patent Owner does not dispute. See supra Section (IV)(B). The manner in which Nakamura folds electrodes 12, for example, as shown in Figs. 2(c)-(e), would cause compression in the insulation layer at the region next to the inner bend radii. Ex.

1044, ¶¶ 95-103. Since the ‘252 patent does not limit the amount of “forcing” and

“squeezing,” the compression of insulation layer in Nakamura meets the “forcing”

(claim 15) and “squeezing” (claim 19) limitations of the ‘252 patent.

22 VII. CLAIM 2 IS ANTICIPATED BY OR OBVIOUS OVER NAKAMURA

Cladding is also known as cold welding. Ex. 1044, ¶¶ 168, 185, 188. Cold welded metals are commonly known to POSITA in the electronics industry. Id. at

¶¶ 188, 192. Cold welding is commonly used to cold weld highly conductive metals to other metals to form a laminated electrode structure in the manner disclosed in Nakamura. Id. at ¶¶ 168, 185-189. Nakamura discloses that this is beneficial for increasing both electrical conductivity and heat conductivity of the electrodes. Ex. 2002, ¶ [0030]; Id. at ¶¶ 193-194. Clad metals, made by a cold welding process, have superior electrical and heat conduction, and thus are preferred for applications requiring high levels of heat dissipation such as those disclosed in Nakamura. Ex. 1044, ¶ 193.

Dr. Hughes erroneously asserts that Nakamura’s laminated electrode is made by plating or a process other than cladding or cold welding. Ex. 2004, ¶ 118.

These non-cladding or non-cold welding methods do not involve joining two metal pieces together as disclosed in Nakamura. Exs. 1006, 2001, 2002, ¶¶ [0019],

[0030]; Ex. 1044, ¶¶ 190-191.

Further, the Applicant-admitted prior art U.S. Patent No. 5,604,477 (“‘477 patent”) (Ex. 1002, 5:15-18) details welding of terminations to resistor elements throughout. Ex. 1044, ¶ 194. It would have been obvious to employ such welding of resistor to electrodes in Nakamura, in order to confer improved electrical and

23 thermal conduction to electrodes and to obtain a structure having “excellent conductivity and heat dissipating properties and is thus preferred.” Ex. 2002,

¶ [0030]; Ex. 1044, ¶¶ 193-194. The application of such welding would be simple and would yield predictable results. Ex. 2002, ¶ [0030]; Ex. 1044, ¶ 194. Claim 2 is therefore anticipated by, or obvious over, Nakamura.

VIII. NAKAMURA DISCLOSES “PLACING A FILLER…ON THE LOWER SURFACE OF THE RESISTANCE ELEMENT” AND “BENDING THE FIRST AND SECOND TERMINATIONS DOWNWARDLY” (CLAIMS 15 & 19)

As discussed in Sections (IV)(A) and (V)(B) above, Nakamura teaches coating uncured insulation resin, folding electrodes into the uncured insulation resin, and then laminating to form the laminated structure of Nakamura’s resistor device. Dr. Randall testified that as taught in Nakamura, the uncured insulation resin is applied to the lower surface of resistor section 11, and electrodes 12 are bent downwardly so as to be folded into insulation resin. Ex. 1001, ¶¶ 207-208.

Since Nakamura teaches all other limitations of claims 15 and 19 (Petition, at 49-

55), claims 15 and 19 of the ‘252 patent are not patentable over Nakamura.

24 IX. CONCLUSION

For the above reasons, claims 1-21 of the ’252 patent are unpatentable over the prior art, and should be canceled.

Respectfully submitted,

/ Scott M. Daniels /

Scott M. Daniels, Reg. No. 32,562 Cindy H. Chen, Reg. No. 78,206 Attorneys for Petitioner Tel: 703-827-3800 / Fax: 571-395-8753 E-mail: [email protected] / [email protected]

Date: October 25, 2019

25 CERTIFICATION OF WORD COUNT

Pursuant to 37 C.F.R. § 42.24(d), Petitioner hereby certifies, in accordance with and reliance on the word count provided by the word processing system used to prepare this Petitioner KOA’s Reply to Patent Owner’s Response, that the number of words in Petitioner’s Reply is 5,594. This word count is under the limit of 5,600 words set forth in 37 C.F.R. § 42.24(c), excluding the tables and certificates exempted therein.

Date: October 25, 2019 By: / Scott M. Daniels / Scott M. Daniels, Reg. No. 36,562 Cindy H. Chen, Reg. No. 78,206 WESTERMAN HATTORI DANIELS & ADRIAN LLP Attorneys for Petitioner Tel: 703-827-3800 Fax: 571-395-8753 Email: [email protected] and [email protected]

CERTIFICATE OF SERVICE

The undersigned certifies that, on this 25th day of October 2019, a true and

correct copy of the foregoing Petitioner KOA’s Reply to Patent Owner’s

Response, including the Table of Exhibits Updated October 25, 2019 and

Exhibits 1011-1061, was served by email to counsel of record for Patent Owner in

accordance with the service information provided by Patent Owner:

Charles F. Koch, Reg. No. 58,669 Gregory S. Bishop, Reg. No. 41,621 PEPPER HAMILTON LLP Attorneys for Patent Owner 333 Twin Dolphin Drive, Suite 400 Redwood City, CA 94065 Tel: 650-802-3600 Fax: 650-802-3650 Email: [email protected], [email protected] and [email protected]