UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Patent No. 6,841,737 Paper No. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Hutchinson Technology Incorporated Hutchinson Technology Operations (Thailand) Co., Ltd. Petitioners v. Nitto Denko Corp. Patent Owner Patent No. 6,841,737 Issue Date: January 11, 2005 Title: WIRED CIRCUIT BOARD Inter Partes Review No. Unassigned PETITION FOR INTER PARTES REVIEW UNDER 35 U.S.C AND 37 C.F.R ET. SEQ.

2 Table of Contents I. II. III. IV. Page Introduction... 1 A. Notice of Each Real Party in Interest... 5 B. Notice of Related Matters... 7 C. Notice of Lead and Backup Counsel... 7 D. Notice of Service Information... 8 E. Payment of Fees... 8 F. Grounds for Standing... 8 Statement of Precise Relief Requested... 9 The 737 Patent Petitioned for Review...10 A. Summary of The 737 Patent...10 B. Relevant Prosecution of the 737 patent...17 C. Person of Ordinary Skill of the Art...19 D. Priority Date of the 737 Patent...19 E. Claim Construction...20 Statement of How Each Claim is Unpatentable Based on the Prior Art...22 A. Ground 1: Obviousness Based on Ohkawa and Maeda Independent Claim Dependent Claim Independent Claim Independent Claim Dependent Claim Independent Claim Dependent Claim B. Ground 2: Obviousness Based on Applicant Admitted Prior Art (AAPA) and Maeda Independent Claim Dependent Claim i

3 Table of Contents (continued) Page 3. Independent Claim Independent Claim Dependent Claim Independent Claim Dependent Claim Statement of Non-Redundancy...85 Conclusion...85 ii

4 Patent No. 6,841,737 Petition For Inter Partes Review EXHIBITS Exhibit No. Description 1001 U.S. Patent No. 6,841,737 ( the 737 patent ) Prosecution History for U.S. Patent No. 6,841,737 ( the 737 prosecution history ). Complaint filed June 20, 2016 in Nitto Denko Corporation v. Hutchinson Technology Incorporated, United States District Court District of New Jersey, Case No. 2:16-cv MF C.N. Patent Application Publication No A ( Ohkawa ) Certified English Translation of C.N. Patent Application Publication No A (Ex. 1004) J.P. Patent Application Publication No. H ( Maeda ) Certified English Translation of J.P. Patent Application Publication No. H (Ex. 1006) 1008 U.S. Patent No. 6,388,201 ( Yamato ) 1009 U.S. Patent No. 6,942,817 ( Yagi ) 1010 U.S. Patent No. 5,668,684 ( Palmer ) 1011 Declaration of Dr. David B. Bogy iii

5 I. Introduction This petition is for inter partes review of U.S. Patent No. 6,841,737 (Ex. 1001, the 737 patent ) owned by Nitto Denko Corporation ( the Patent Owner ). Petitioners contend that there is a reasonable likelihood that one or more claims of the 737 patent will be found unpatentable. The 737 patent addresses a well-known problem with flying lead terminals they are prone to breaking/disconnecting due to stress concentrations. The 737 patent claims well-known and obvious solutions adding material to the lead itself or adding material to the insulating layers to reinforce the leads. Several prior art references describe the breaking/disconnecting problem in wired circuit boards. For example, Maeda (Ex. 1006; Ex (certified translation)), which published more than five years prior to the 737 patent s priority date, illustrates and explains: [W]hen soldering electronic components, [the] printed substrate is often subjected to sudden heating and cooling [and] sometimes open circuits are produced in the circuit pattern 2 in the vicinity of one edge 3a of the resist [I]t is believed that the thermal stress at the time of the thermal shock, such as sudden heating, is concentrated in the vicinity of the end edge 3a of the resist 3. 1

6 Ex. 1007, Ex. 1007, FIG. 7 (annotated). Maeda discloses one solution as the width of the circuit patterns 2 is increased... to effectively prevent thermal damage. Ex. 1007, Maeda illustrates the solution (reinforced portion 2b) below: 1 Petitioners note that citations to Maeda (Ex. 1006) are made to its certified English translation (Ex. 1007). 2

7 Ex. 1007, FIG. 2 (annotated). Maeda further discloses (FIG. 4 below) a second solution as in the resist 3, the end edge 3a that cover the circuit pattern 2 protrude along the circuit pattern 2, in the direction that is not covered by the resist 3... to disperse the tension that acts on the circuit pattern 2 in all directions, to thereby prevent breakage. Ex. 1007,

8 Ex. 1007, FIG. 4 (annotated). Similarly, Palmer (Ex. 1010), which published more than three years prior to the 737 patent s priority date, explains: The most common method requires that the leads have free ends or flying leads that are positioned... over contact pads on the flexible circuit or cable, whereupon solder is applied automatically to bond the lead ends to the flexible circuit.... Indeed, any method utilizing a flying lead type of solder connection can be easily damaged during the manufacturing process or while being handled because the flying lead connection does not have any support. 4

9 Ex. 1010, 1: A. Notice of Each Real Party in Interest The real parties in interest include the following: Hutchinson Technology Incorporated, a corporation organized and existing under the laws of Minnesota, having a place of business at 40 West Highland Park Drive NE, Hutchinson, MN , USA (One of the Petitioners) Hutchinson Technology Operations (Thailand) Co., Ltd., a corporation organized and existing under the laws of Thailand, having a place of business at 50 Moo 4 Rojana Industrial Park Phase 8, Tambol U-Thai, Amphur U-Thai, Pranakorn Sri Ayutthaya 13210, Thailand (One of the Petitioners) Magnecomp Precision Technology Public Company Limited having a place of business at 162 Moo 5 Phaholyothin Road, T. Lamsai, A. Wangnoi, Pranakorn Sri Ayutthaya 13170, Thailand Magnecomp Corporation, a corporation organized and existing under the laws of California, having a place of business Sky Canyon Drive, Suite 111, Murrieta, California 92563, USA 5

10 Headway Technologies, Inc., a corporation organized and existing under the laws of California, having a place of business at 682 S. Hillview Drive, Milpitas, CA 95035, USA TDK Corporation, a corporation organized and existing under the laws of Japan, having a place of business at Shibaura, Minato-ku, Tokyo , Japan TDK U.S.A. Corporation, a corporation organized and existing under the laws of New York, having a place of business at 455 RXR Plaza, Uniondale, NY 11556, USA SAE Magnetics (Hong Kong) Limited, a corporation organized and existing under the laws of the People s Republic of China, having a place of business at SAE Technology Center, 6 Science Park East Ave, Hong Kong Science Park, Shatin, N.T., Hong Kong, People s Republic of China Acrathon Precision Technologies (HK) Limited having a place of business at Unit 06 07, 17th Floor, APEC Plaza, 49 Hoi Yuen Road, Kwung Tong, Kowloon, Hong Kong Acrathon Precision Technologies (Dong Guan) Co., Ltd. having a place of business at Xiao Chong Industrial Area, Changan Town, Dongguan City, Guangdong Province, PRC

11 B. Notice of Related Matters The 737 patent is being asserted in co-pending federal court litigation titled, NITTO DENKO CORPORATION v. HUTCHINSON TECHNOLOGY INCORPORATED, C.A. No. 2:16-cv-3595-MF, pending in the United States District Court for the District of New Jersey ( the 737 District Court Action ). Ex at 1. C. Notice of Lead and Backup Counsel Lead Counsel: Jennifer Hayes (Reg. No. 50,845); Tel: Address: Nixon Peabody LLP, 300 South Grand Avenue, Suite 4100, Los Angeles, CA First Backup Counsel: Daniel J. Burnham (Reg. No. 39,618); Tel: Address: Nixon Peabody LLP, 70 West Madison Street, Suite 3500, Chicago, IL Second Backup Counsel: Ronald F. Lopez; Tel: (Pro hac vice requested) Address: Nixon Peabody LLP, One Embarcadero Center, Suite 1800, San Francisco, CA

12 FAX: D. Notice of Service Information Please address all correspondence to the lead counsel at the address shown above. Petitioners consent to service by at the following addresses: and E. Payment of Fees The petition for inter partes review is accompanied by a payment of $23,000 and requests review of all seven claims of the 737 patent. F. Grounds for Standing Petitioners hereby certify that the patent for which review is sought is available for inter partes review and that the Petitioners are not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition. 8

13 II. Statement of Precise Relief Requested Claims 1-7 of the 737 patent are unpatentable and should be canceled in view of the following prior art: Ex. Reference(s) 1004 Ohkawa (Ex. 1004) and its Certified English translation (Ex. 1005) 1006 Maeda (Ex. 1006) and its Certified English translation (Ex. 1007) 1001 Applicant Admitted Prior Art (Ex. 1001) Ohkawa (Ex. 1004) is assigned to the Patent Owner, was published on May 30, 2001, was filed on November 17, 2000, and claims priority to two Japanese patent applications (filed March 30, 2000 and November 19, 1999). Ex Ohkawa was not relied on by the Examiner nor was it cited in an IDS during the prosecution of the 737 patent. 2 Ex. 1001, References cited; Ex Ohkawa qualifies as prior art to the 737 patent under 35 U.S.C. 102(a). 2 Petitioners note that Ohkawa appears to be the Chinese counterpart to U.S. Patent No. 6,399,899 (the 899 patent), which was made of record during prosecution, but not relied upon for a rejection. Petitioners further note that the 899 patent appears to be prior art under 35 U.S.C. 102(e), whereas Ohkawa is at least prior art under Section 102(a). As such, while the 899 patent may have been 9

14 Maeda (Ex. 1006) published on June 21, 1996, and was filed on December 8, Ex Maeda was not cited during the prosecution of the 737 patent. Ex. 1001, References cited; Ex Maeda qualifies as prior art to the 737 patent under 35 U.S.C. 102(b). The Applicant Admitted Prior Art ( AAPA ) was admitted in the 737 patent filed on July 16, The AAPA was not relied on by the Examiner during the prosecution of the 737 patent. The AAPA qualifies as prior art to the 737 patent under 35 U.S.C. 311(b). Petitioners request that claim 1-7 of the 737 patent be canceled based on the following grounds: Ground Claims Description Rendered obvious under 35 U.S.C. 103(a) over Ohkawa in view of Maeda Rendered obvious under 35 U.S.C. 103(a) over AAPA in view of Maeda III. The 737 Patent Petitioned for Review A. Summary of The 737 Patent The 737 patent is generally directed to a wired circuit board and specifically to a wired circuit board used as a suspension board with circuit. Ex. 1001, 1: removable under Section 103(c), Ohkawa cannot be removed under Section 103(c). 10

15 The 737 patent describes the prior art wired circuit boards as including flying lead terminals in which the terminal portions are formed with both sides of the conductive pattern being electrically exposed. Ex. 1001, 1: One benefit of flying lead terminals is that since the both sides of the conductive pattern are exposed, the supersonic vibration is easily transmitted to the terminals[, which makes the flying leads] suitable for the bonding using the supersonic vibration. Ex. 1001, 1: The 737 patent admits as Applicant Admitted Prior Art (AAPA) that it was known in recent years and in widespread use to have flying leads in suspension boards with a circuit. Ex. 1001, 1: In the Description of the Prior Art, under the Background of the Invention Section, the 737 patent describes the prior art flying leads in a suspension board with circuit with reference to FIG. 21 of the 737 patent, reproduced below with annotations. Ex. 1001, 1:25. 11

16 Ex. 1001, FIG. 21 (annotated). The 737 patent admits that FIG. 21 is a prior art flying lead portion of a suspension board by noting that FIG. 21 shows a conventional suspension board with circuit. Ex. 1001, 6: Specifically, the 737 patent explains that the suspension board with circuit includes a supporting board 1 of stainless steel foil, a base layer 2 of an insulating material formed on the supporting board 1, a 12

17 conductive pattern 3 formed on the base layer 2 in the form of a specified circuit pattern, and a cover layer 4 of an insulating material, for covering the conductive pattern 3. Ex. 1001, 1: Further, the terminal portions 5 (which include a plating layer 6 for soldering purposes) are formed as flying leads by opening the cover layer 4 to expose a top side of the conductive pattern 3 and opening the supporting board 1 and the base layer 2 to expose a bottom side of the conductive pattern 3. Ex. 1001, 6: Like the other prior art references, the 737 patent acknowledges that the problem with flying leads is that they are weak in physical strength and [are] subject to stress concentration at edge portions of the openings in the base layer and cover layer, to cause easy disconnection of the conductive pattern. Ex. 1001, 1: The alleged invention of the 737 patent solves this well-known problem in circuit boards with solutions that were also well-known. The first well-known solution includes reinforcing portions wherein the conductive pattern of the flying lead terminal has widened portions formed to extend in a widthwise direction. Ex. 1001, 2:46-50; 2: The second well-known solution includes the first insulating layer and/or the second insulating layer have projections projecting from ends of the opening onto the terminals to support them. Ex. 1001, 3:22-26; 2: These two solutions are illustrated below: 13

18 Ex. 1001, FIGS. 11(b) and 12(b) (annotated). Yet, both of these reinforcing techniques (i.e., widened portions and projections) were known in the 1990 s. See 14

19 e.g., Ex (disclosing widened portions and projections as reinforcing techniques); Ex. 1011, The 737 patent includes four independent claims. Ex. 1001, 24:2-63. Independent claim 1 is broadly directed to a wired circuit board with either of the two solutions illustrated above. Ex. 1001, 24:2-17. Independent claims 3 and 4 are directed to the first solution conductive patterns having widened portions. Ex. 1001, 24: Independent claim 6 is directed to the second solution an insulating layer having projections. Ex. 1001, 24: Independent claims 1, 3, 4, and 6 are reproduced in the claim comparison chart below with corresponding claim elements side-by-side: Claim 1 Claim 3 Claim 4 Claim 6 [1a] A wired circuit board comprising [3a] A wired circuit board comprising [4a] A wired circuit board comprising [6a] A wired circuit board comprising [1b] a metal [4b] a metal [6b] a metal supporting layer, [1c] a first insulating layer formed on the metal supporting layer, [1d] a conductive pattern formed on the first insulating layer, [1e] a second insulating layer formed on the conductive pattern, [3b] a first insulating layer, [3c] a conductive pattern formed on the first insulating layer, [3d] a second insulating layer formed on the conductive pattern, supporting layer, [4c] a first insulating layer formed on the metal supporting layer, [4d] a conductive pattern formed on the first insulating layer, [4e] a second insulating layer formed on the conductive pattern, supporting layer, [6c] a first insulating layer formed on the metal supporting layer, [6d] a conductive pattern formed on the first insulating layer, [6e] a second insulating layer formed on the conductive pattern, 15

20 Claim 1 Claim 3 Claim 4 Claim 6 and and and and [1f] an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, [3e] an opening, formed at the same position of the conductive pattern, for allowing the first insulating layer and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, [4f] an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, [1g] wherein at least any one of the first insulating layer, the second insulating layer and the conductive pattern has reinforcing portions for reinforcing the conductive pattern formed at the ends of the opening in crossing areas where ends of the opening and the conductive pattern cross each other. [3f] wherein the conductive pattern has widened portions formed to extend in a widthwise direction substantially orthogonal to an extending direction of the conductive pattern in crossing areas where ends of the opening and the conductive pattern cross each other. [4g] wherein the conductive pattern has widened portions formed to extend in widthwise direction substantially orthogonal to an extending direction of the conductive pattern in crossing areas where ends of the opening and the conductive pattern cross each other. [6f] an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, [6g] wherein at least one of the first insulating layer and the second insulating layer have projections projecting from ends of the opening onto the conductive pattern in the opening in the crossing areas where the ends of the opening and the conductive pattern cross each other. 16

21 As shown, elements [1a], [3a], [4a], and [6a] are identical. Similarly, elements [1b], [4b], and [6b] are identical. 3 Elements [1c], [3b], [4c], and [6c] are identical except that element [3b] is broader in that it does not specify that the first insulating layer is formed on the metal supporting layer as recited in elements [1c], [4c], and [6c]. Elements [1d], [3c], [4d], and [6d] are identical. Elements [1e], [3d], [4e], and [6e] are identical. Elements [1f], [3e], [4f], and [6f] are identical except that element [3e] is broader in that it does not specify that the opening is for allowing the the metal supporting layer to open as recited in elements [1f], [4f], and [6f]. The key elements of each of independent claims 1, 3, 4, and 6 include elements [1g], [3f], [4g], and [6g], which all generally relate to reinforcing portions to reinforce the terminal. Element [1g] relates generally to reinforcing portions, elements [3f] and [4g] are identical and relate to widened portions as reinforcing portions, and element [6g] relates to projections as reinforcing portions. B. Relevant Prosecution of the 737 patent The 737 patent issued on January 11, 2005 from U.S. Patent Appl. No. 10/195,392 ( the 392 application ) which was filed on July 16, 2002, with nine claims. Ex. 1001, cover; Ex at pp A first Office Action rejected 3 Claim 3 does not include an element corresponding to element [1b]. 17

22 claims 1-3 and 7-9 as anticipated by U.S. Patent 6,388,201 to Yamato. Ex. 1002, p A second Office Action rejected some of the claims as anticipated by U.S. Patent No. 5,446,245 to Iwayama and some as obvious over Iwayama in view of Yamato. Ex. 1002, pp. 135, 137. Further, the Examiner made U.S. Patent No. 6,399,899 of record but did not rely upon it for a rejection. Specifically, the Examiner stated: Ex. 1002, pp Ohkawa et al. (US 6,399,899 81) discloses all of the limitations of Claims 4 and 5-6 including that the conductive pattern has widened portions 35 formed to extend in a widthwise direction substantially orthogonal to an extending direction of the conductive pattern 14 (Figs ) but does not teach that the widened portions 35 extend orthogonally to an extending direction of the conductive pattern 14 in crossing areas where ends of the opening 32 and the conductive pattern 14 cross each other (see Fig. 18 wherein the widened portions 35 extend orthogonally to an extending direction of the conductive pattern 14 in the interior region of the opening 32 and not in the crossing areas where ends of the opening 32 and the conductive pattern 14 cross each other). 18

23 The Applicant responded invoking the Section 103(c) exception to remove Yamato as prior art. Ex. 1002, pp A Final Office Action was mailed acknowledging the 103(c) exception and withdrew the rejections based on Yamato. Ex. 1002, p. 32. The Applicant filed an Amendment on August 20, 2004 canceling the finally rejected claims and accepting the allowed claims. Ex at C. Person of Ordinary Skill of the Art A person of ordinary skill in the art at the time that the application was effectively filed in July 17, 2001, would have had at least a bachelor s degree in mechanical engineering, electrical engineering, or material science with two to five years of teaching or work experience in suspensions for hard disk drives and/or integrated circuits (or related fields) including terminal connections. Of course, one of ordinary skill in the art might have either more formal education with less experience, or less formal education with more experience. Ex at D. Priority Date of the 737 Patent The 737 patent claims priority to Japanese Patent Application No , filed July 17, Ex. 1001, cover. Accordingly, the earliest possible priority date of the 737 patent is July 17, Each of the prior art references 4 Petitioners reserve the right to challenge the priority date in litigation. 19

24 cited herein is prior art to the 737 patent, even if it is entitled to the July 17, 2001 priority date. E. Claim Construction Pursuant to 37 C.F.R (b), claim terms should be given their broadest reasonable construction in light of the specification. For purposes of this IPR only, Petitioners propose broadest reasonable constructions for the following terms: at the same position. All remaining terms should be given their plain and ordinary meaning. 1. at the same position The phrase at the same position appears in claims 1, 3, 4, and 6. Ex. 1001, 24:2-62. For example, in claim 1, it reads an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed. The 737 patent discloses: [T]he external-side connecting terminals 38 are formed, so that the front side of the conductive pattern 34 [is] exposed [forming] the cover-side opening 42. [T]he cover-side opening 42 [is] formed in such a rectangle shape as to include the lines of wire 34a, 34b, 34c and 20

25 34d, so as to provide the external-side connecting terminals 38 in the form of the flying lead, as mentioned later. Ex. 1001, 12: Further, the 737 patent discloses: [S]upporting-board-side openings 43 are formed in the supporting board 32 at portions thereof where the external-side connecting terminals 38 are formed or at portions thereof corresponding to the cover-side openings 42 of the cover layer [B]ase-side openings 44 are formed in the base layer 33 exposed in the supporting-board-side openings 43 of the supporting board 32, so as to expose the conductive pattern 34. Ex. 1001, 12:57-13:6. The cover-side opening 42, the supporting-board-side opening 43, and the base-side opening 44 are shown as corresponding with each other in FIG. 10(k) reproduced below: 21

26 Ex. 1001, FIG. 10(k) (annotated). Accordingly, a broadest reasonable interpretation of at the same position means that the openings in the cover, the base, and the supporting-board correspond with each other. See also Ex. 1011, 52. IV. Statement of How Each Claim is Unpatentable Based on the Prior Art Petitioners assert that each of Claims 1-7 of the 737 patent is rendered obvious in light of the prior art as set forth in detail below. A. Ground 1: Obviousness Based on Ohkawa and Maeda Ohkawa describes the fundamental well-known structure of the flying lead terminals in a wired circuit board. Maeda describes the structural problems associated with leads, and then teaches the identical solutions that the 737 patent 22

27 claims as its invention. 1. Independent Claim 1 [1a]: A wired circuit board comprising Ohkawa discloses a suspension board with circuit 11. Ex. 1005, 5 Title ( Suspension board with circuit. ), Abstract ( The present invention is to provide a suspension board with circuit. ). Ohkawa illustrates the suspension board with circuit 11 in FIGS. 1 and 16 reproduced below. 5 Petitioners note that citations to Ohkawa (Ex. 1004) are made to its certified English translation (Ex. 1005). 23

28 Ex. 1005, FIGS. 1, 16 (annotated). As shown, the suspension board with circuit 11 includes a suspension board 12, a base layer 13, a conductive layer 14, external connection terminals 17, and a cover layer 18. Id. Ohkawa notes that [a]lthough not shown in FIG. 1, in fact, a cover layer 18 made of an insulating material covers the conductive layer 14. Ex. 1005, p. 5, lines Ohkawa explains that [a] suspension board with circuit used for a hard disk driver is such a circuit board, in which the suspension board suspending a magnetic head has a wired circuit 6 Petitioners note that line numbers were added to the certified translation for citation purposes. 24

29 integrally formed therewith. Ex. 1005, p. 1, lines 6-8. Further, Ohkawa explains that [t]he circuit pattern is formed by a plurality of wired circuits 14a, 14b, 14c, 14d arranged in parallel and at a predetermined interval. Ex at p. 4, line 42 to p.5, line 1. As such, the suspension board with circuit 11 of Ohkawa corresponds to the wired circuit board of element [1a] of claim 1. Ex. 1011, [1b]: a metal supporting layer, Ohkawa discloses a suspension board 12. Ex. 1005, Abstract ( The suspension board with circuit 11 comprises: a suspension board 12. ). Ohkawa illustrates the suspension board 12 in FIGS. 1 and 16 reproduced below. 25

30 Ex. 1005, FIGS. 1 and 16 (annotated). Ohkawa explains that the suspension board act[s] as a metal support layer. Ex. 1005, p. 4, line 40; see also Ex. 1005, p. 1, lines 14-15, claim 1. As such, the suspension board 12 of Ohkawa corresponds to the metal supporting layer of element [1b] of claim 1. Ex. 1011, [1c]: a first insulating layer formed on the metal supporting layer, Ohkawa discloses a base layer 13 formed on the suspension board 12. Ex. 1005, Abstract ( The suspension board with circuit 11 comprises... a base layer 26

31 13 formed on the suspension board 12. ). Ohkawa illustrates the base layer 13 formed on the suspension board 12 in FIG. 16 reproduced below. Ex. 1005, FIG. 16 (annotated). Ohkawa explains that the suspension board with circuit [includes] an insulating layer formed on the metal support layer. Ex. 1005, p. 2, lines 1-2; see also Ex. 1005, p. 4, lines (explaining that the base layer 13 is formed as an insulating layer of an insulating material. ), claim 1. Further, Ohkawa explains that a cover layer 18 made of insulating material is included in the suspension board with circuit 11. Ex. 1005, p. 5, lines 8-9. Thus, the base 27

32 layer 13 is a first insulating layer and the cover layer 18 is a second insulating layer. Ex. 1005, FIG. 16, pp As such, base layer 13 of Ohkawa corresponds to the first insulating layer formed on the metal supporting layer of element [1c] of claim 1. Ex. 1011, [1d]: a conductive pattern formed on the first insulating layer, Ohkawa discloses a conductive layer 14 formed on the base layer 13. Ex. 1005, Abstract ( The suspension board with circuit 11 comprises... a conductive layer 14 formed on the base layer 13. ). Ohkawa illustrates the conductive layer 14 formed on the base layer 13 in FIGS. 1 and 16 reproduced below. 28

33 Ex. 1005, FIGS. 1 and 16 (annotated). Ohkawa explains that the suspension board with circuit [includes] a conductive layer formed on the insulating layer. Ex. 1005, p. 2, lines 1-3; see also Ex. 1005, claim 1. Further, Ohkawa explains that [o]n the base layer 13, a conductive layer 14 in a particular form of circuit pattern is formed by a plurality of wired circuits 14a, 14b, 14c, 14d. Ex. 1005, pp. 4-5, FIG. 17. As such, the conductive layer 14 of Ohkawa corresponds to the conductive pattern formed on the first insulating layer of element [1d] of claim 1. Ex. 1011,

34 [1e]: a second insulating layer formed on the conductive pattern, and Ohkawa discloses a cover layer 18 formed on the conductive layer 14. Ex. 1005, Abstract ( The suspension board with circuit 11 comprises... a cover layer 18 covering the conductive layer 14. ). Ohkawa illustrates the cover layer 18 formed on the conductive layer 14 in FIG. 16 reproduced below. Ex. 1005, FIG. 16 (annotated). Ohkawa explains that the base layer 13 is formed as an insulating layer of an insulating material. Ex. 1005, p. 4, lines Further, Ohkawa explains that a cover layer 18 made of an insulating material covers the conductive layer

35 Ex. 1005, p. 5, lines 8-9. Thus, the base layer 13 is a first insulating layer and the cover layer 18 is a second insulating layer of the suspension board with circuit 11. Ex. 1005, FIG. 16, pp As such, the cover layer 18 of Ohkawa corresponds to the second insulating layer formed on the conductive pattern of element [1e] of claim 1. Ex. 1011, [1f]: an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, Ohkawa discloses an opening in the suspension board 12, in the base layer 13, and in the cover layer 18 to form an external connection terminal 17, as shown in FIGS reproduced below. 31

36 32

37 33

38 Ex. 1005, FIGS (annotated). As shown, the suspension board 12 has an opening formed at a position along the conductive layer 14 (i.e., at the external connection terminal 17). Id. Similarly, the base layer 13 has an opening formed at the same position along the conductive layer 14 as the opening in the suspension board 12. Id. Further, the cover layer 18 has an opening formed at the same position along the conductive layer 14 as the opening in the suspension board 12 and the opening 34

39 in the base layer 13. Id. It is noted that FIG. 16 illustrates pad portions 19 that appear to fill the opening in the cover layer 18; however, this is only because FIG. 16 is a side cross-section view. The end cross-section view of FIG. 17 shows the cover layer 18 does have an opening therein and that the opening is not completely filled by the pad portions 19. Moreover, the pad portions 19/plating layer 35 each comprise very small (e.g., 1-2 micrometers) plating layers including a Ni plating layer 26 and an Au plating layer 27, which are the same as metal plated layers 45 of the 737 patent which include a Ni plating layer 46 and an Au plating layer 47 as shown by comparing FIG. 16 of Ohkawa with FIG. 11(a) of the 737 patent below: 35

40 As such, the cover layer 18 has an opening forming the external connection terminal 17. Ex. 1011, Ohkawa explains that [a]t the rear end portion of the suspension board 12, an external connection terminal 17 is formed as a terminal portion for connection between a terminal 28 of a read/write board 29 and the wired circuits 14a, 14b, 14c, 14d. Ex. 1005, p. 5, lines 5-7. Ohkawa also highlights that the external connection terminal 17 is exposed for electrical bonding on both its top side and its bottom side. Ex. 1005, p. 12, lines Ohkawa states that in the external connection terminal 17, an opening is made to the cover layer 18 [and] the conductive layer 14 [is] exposed through the opening. Ex. 1005, p.10, line 43 to p.11, line 3, FIGS. 16 and 17; see also, Ex. 1005, p. 10, lines 39-43; Ex. 1005, p. 11, lines Further, Ohkawa states that an opening is made to the suspension board 12 and the base layer 13 [and] the 36

41 conductive layer 14 [is] exposed through the opening 32. Ex. 1005, p. 11, lines 5-7, FIG. 18; see also, Ex. 1005, p. 10, lines 39-43; Ex. 1005, p. 11, lines 29-32; Ex. 1005, p. 11, line 46 to p.12, line 1. As such, the suspension board with circuit 11 including an opening in the suspension board 12, the base layer 13, and the cover layer 18 forming the external connection terminal 17 with front and back sides of the conductive layer exposed of Ohkawa corresponds to an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed of element [1f] of claim 1. Ex. 1011, [1g]: wherein at least any one of the first insulating layer, the second insulating layer and the conductive pattern has reinforcing portions for reinforcing the conductive pattern formed at the ends of the opening in crossing areas where ends of the opening and the conductive pattern cross each other. Claim element [1g] teaches three alternatives for the reinforcing portions. They can be on (i) the first insulating layer (base layer), (ii) the second insulating layer (the cover layer), or (iii) the conductive pattern. While Maeda only needs to teach one alternative for this obviousness position, Maeda actually teaches two. Ohkawa does not specifically disclose reinforcing portions. However, Maeda does so. Maeda discloses reinforced portions 2b in the form of the 37

42 width of the circuit patterns 2 is increased in the vicinity of the boundary line L. Ex. 1007, 9, see also Ex. 1007, 5, 6, 15, FIG. 2. Maeda also discloses reinforced portions in the form of the shape of the resist 3 has been modified [such that] the end edge 3a that cover the circuit pattern 2 protrude along the circuit pattern 2, in the direction that is not covered by the resist 3. Ex. 1007, 11, see also Ex. 1007, 16, FIG. 4. Maeda discloses a printed substrate with a circuit pattern 2 formed on a substrate main body 1 and a resist 3 that covers portions of the circuit pattern 2 and the substrate main body 1, shown in FIG. 2 below. 38

43 Ex. 1007, FIG. 2 (annotated); see also Ex. 1007, 8. Accordingly, the printed substrate of Maeda is a wired circuit board. Ex. 1011, Maeda explains a problem with stress is that it concentrates in the vicinity wherein the end edge 3a of the resist 3 crosses the circuit patterns 2 (that is, in the vicinity of the boundary line L). Ex. 1007, 9. Thus, Maeda explains a width of the circuit pattern in the vicinity of the boundary line is increased to form a reinforced portion in the circuit pattern. Ex. 1007, 3, 5, FIG. 2. Further, Maeda notes that [b]ecause the width of the circuit patterns is increased at the part wherein stresses become concentrated in the circuit pattern in the vicinity of the end edge of the resist, to reinforce the circuit patterns, open circuits will not be produced in the circuit pattern even if there is a concentration of stresses. Ex. 1007, 6; see also Ex. 1007, 9. Further, Maeda notes that its solution effectively prevent[s] thermal damage through increasing the strength in only the vicinity of the boundary line L. Id. at 9. As such, the reinforced portions 2b of Maeda correspond to the reinforcing portions for reinforcing the conductive pattern of element [1g] of claim 1. Ex. 1011, FIG. 4 of Maeda illustrates another example of reinforcing the terminals by using the insulating resist/cover 3 to project outwardly and support the terminals: 39

44 Ex. 1007, FIG. 4 (annotated). Specifically, Maeda discloses that the shape of the resist 3 [is] modified [such that] the end edge 3a that cover the circuit pattern 2 protrude along the circuit pattern 2, in the direction that is not covered by the resist 3. Ex. 1007, 11, FIG. 4. As such, the protrusions of the resist/cover 3 on the circuit pattern 2 of Maeda also correspond to the reinforcing portions for reinforcing the conductive pattern of element [1g] of claim 1. Ex. 1011, Maeda is directed to a printed substrate where the circuit pattern 2 is only exposed through the resist/cover 3 at the terminal. However, the same principle of adding reinforcing portions applies to other terminals adding reinforcing portions 40

45 (e.g., widened portions/reinforced portions 2b and/or projections projecting onto the circuit pattern 2) at the boundary line where the circuit pattern crosses the end edge of the cover layer reinforces the terminal and reduces the susceptibility to breaking and disconnection. Ex. 1011, 103. A person of ordinary skill in the art ( POSITA ) would know that the external connection terminal 17 of Ohkawa, being exposed on both the top and bottom sides, is susceptible to breaking (damage) at both ends of the opening of the external connection terminal 17, caused by stress concentrations, resulting in an electrical disconnect. Ex. 1011, 104. Thus, a POSITA seeking to prevent damage of the exposed conductive layer 14 at both ends of the opening of the external connection terminal 17 would be motivated to modify Ohkawa by adding Maeda s reinforcing portions at both ends of the opening at least because (1) Maeda teaches that its reinforced portions 2b (FIG. 2) increase its strength and thereby prevent damage and (2) Maeda teaches its protruding cover/resist 3 onto the circuit pattern 2 (FIG. 4) disperses tension, thereby preventing breakage. Ex. 1011, 105. A POSITA would be further motivated to combine Ohkawa and Maeda because a POSITA would recognize that they both experience identical problems in bonding terminals of wired circuit boards using heat soldering and Maeda provides two solutions to this known problem. Id.; Ex. 1007, 3. In other words, 41

46 a POSITA would easily understand from Maeda that adding Maeda s reinforcing portions would strengthen Ohkawa s conductive layer 14 and reduce the chance of damage and disconnection of the conductive layer 14 at Ohkawa s external connection terminal 17. Ex. 1011, 106. And because these modifications of Ohkawa merely amount to the simple and well-known step of adding reinforcement material to the metal layer or the insulating layer to reinforce the terminal, the POSITA would understand that the modification would clearly succeed to a high degree of certainty. Ex. 1011, 107. In other words, the combination of Ohkawa with Maeda provides a reasonable expectation of success. Id. Accordingly, the combination of Maeda with Ohkawa renders claim 1 of the 737 patent obvious. 2. Dependent Claim 2 [2a]: The wired circuit board according to claim 1, wherein the wired circuit board is a suspension board with circuit. Ohkawa discloses a suspension board with circuit 11. Ex. 1005, FIG. 1, Title ( Suspension board with circuit. ), Abstract ( The present invention is to provide a suspension board with circuit. ). As such, the suspension board with circuit 11 of Ohkawa corresponds to the suspension board with circuit of element [2a] of claim 2. Ex. 1011,

47 Accordingly, the combination of Maeda with Ohkawa renders claim 2 of the 737 patent obvious. 3. Independent Claim 3 [3a]: A wired circuit board comprising As discussed above, [3a] is identical to [1a]. Accordingly, [3a] is disclosed by Ohkawa as explained in Section [1a], which is incorporated by reference into Section [3a]. Ex. 1011, [3b]: a first insulating layer, As discussed above, [3b] is identical to [1c] except that [3b] is broader. Accordingly, [3b] is disclosed by Ohkawa as explained in Section [1c], which is incorporated by reference into Section [3b]. Ex. 1011, [3c]: a conductive pattern formed on the first insulating layer, As discussed above, [3c] is identical to [1d]. Accordingly, [3c] is disclosed by Ohkawa as explained in Section [1d], which is incorporated by reference into Section [3c]. Ex. 1011, [3d]: a second insulating layer formed on the conductive pattern, and As discussed above, [3d] is identical to [1e]. Accordingly, [3d] is disclosed by Ohkawa as explained in Section [1e], which is incorporated by reference into Section [3d]. Ex. 1011,

48 [3e]: an opening, formed at the same position of the conductive pattern, for allowing the first insulating layer and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, As discussed above, [3e] is identical to [1f] except that [3e] is broader. Accordingly, [3e] is disclosed by Ohkawa as explained in Section [1f], which is incorporated by reference into Section [3e]. Ex. 1011, [3f]: wherein the conductive pattern has widened portions formed to extend in a widthwise direction substantially orthogonal to an extending direction of the conductive pattern in crossing areas where ends of the opening and the conductive pattern cross each other. Ohkawa does not specifically disclose the conductive pattern has widened portions. However, Maeda does so. Maeda discloses reinforced portions 2b in the form of the width of the circuit patterns 2 is increased in the vicinity of the boundary line L. Ex. 1007, 9, see also Ex. 1007, 5, 6, 15, FIG. 2. Maeda discloses a printed substrate with a circuit pattern 2 formed on a substrate main body 1 and a resist 3 that covers portions of the circuit pattern 2 and the substrate main body 1, shown in FIG. 2 below. 44

49 Ex. 1007, FIG. 2 (annotated); see also Ex. 1007, 8. Accordingly, the printed substrate of Maeda is a wired circuit board. Ex. 1011, Maeda explains a problem with stress is that it concentrates in the vicinity wherein the end edge 3a of the resist 3 crosses the circuit patterns 2 (that is, in the vicinity of the boundary line L). Ex. 1007, 9. Thus, Maeda explains a width of the circuit pattern in the vicinity of the boundary line is increased to form a reinforced portion in the circuit pattern. Ex. 1007, 3, 5, FIG. 2. Further, Maeda notes that [b]ecause the width of the circuit patterns is increased at the part wherein stresses become concentrated in the circuit pattern in 45

50 the vicinity of the end edge of the resist, to reinforce the circuit patterns, open circuits will not be produced in the circuit pattern even if there is a concentration of stresses. Ex. 1007, 6; see also Ex. 1007, 9. Further, Maeda notes that its solution effectively prevent[s] thermal damage through increasing the strength in only the vicinity of the boundary line L. Id. at 9. As such, the reinforced portions 2b of Maeda correspond to the widened portions formed to extend in a widthwise direction substantially orthogonal to an extending direction of the conductive pattern of element [3f] of claim 3. Ex. 1011, Maeda is directed to a printed substrate where the circuit pattern 2 is only exposed through the resist/cover 3 at the terminal. However, the same principle of adding widened portions/reinforced portions 2b applies to other terminals adding widened portions/reinforced portions 2b at the boundary line where the circuit pattern crosses the end edge of the cover layer reinforces the terminal and reduces the susceptibility to breaking and disconnection. Ex. 1011, 149. A POSITA would know that the external connection terminal 17 of Ohkawa, being exposed on both the top and bottom sides, is susceptible to breaking (damage) at both ends of the opening of the external connection terminal 17, caused by stress concentrations, resulting in an electrical disconnect. Ex. 1011, 150. Thus, a POSITA seeking to prevent damage of the exposed conductive layer 46

51 14 at both ends of the opening of the external connection terminal 17 would be motivated to modify Ohkawa by adding Maeda s widened portions/reinforced portions 2b at both ends of the opening at least because Maeda teaches that its reinforced portions 2b (FIG. 2) increase its strength and thereby prevent damage. Ex. 1011, 151. A POSITA would be further motivated to combine Ohkawa and Maeda because a POSITA would recognize that they both experience identical problems in bonding terminals of wired circuit boards using heat soldering and Maeda provides a solution to this known problem. Id.; Ex. 1007, 3. In other words, a POSITA would easily understand from Maeda that adding Maeda s widened portions/reinforced portions 2b to the conductive layer 14 of Ohkawa would strengthen Ohkawa s conductive layer 14 and reduce the chance of damage and disconnection of the conductive layer 14 at Ohkawa s external connection terminal 17. Ex. 1011, 152. And because these modifications of Ohkawa merely amount to the simple and well-known step of adding reinforcement material to the metal layer to reinforce the terminal, the POSITA would understand that the modification would clearly succeed to a high degree of certainty. Ex. 1011, 153. In other words, the combination of Ohkawa with Maeda provides a reasonable expectation of success. Id. 47

52 Accordingly, the combination of Maeda with Ohkawa renders claim 3 of the 737 patent obvious. 4. Independent Claim 4 [4a]: A wired circuit board comprising As discussed above, [4a] is identical to [1a]. Accordingly, [4a] is disclosed by Ohkawa as explained in Section [1a], which is incorporated by reference into Section [4a]. Ex. 1011, [4b]: a metal supporting layer, As discussed above, [4b] is identical to [1b]. Accordingly, [4b] is disclosed by Ohkawa as explained in Section [1b], which is incorporated by reference into Section [4b]. Ex. 1011, [4c]: a first insulating layer formed on the metal supporting layer, As discussed above, [4c] is identical to [1c]. Accordingly, [4c] is disclosed by Ohkawa as explained in Section [1c], which is incorporated by reference into Section [4c]. Ex. 1011, [4d]: a conductive pattern formed on the first insulating layer, As discussed above, [4d] is identical to [1d]. Accordingly, [4d] is disclosed by Ohkawa as explained in Section [1d], which is incorporated by reference into Section [4d]. Ex. 1011,

53 [4e]: a second insulating layer formed on the conductive pattern, and As discussed above, [4e] is identical to [1e]. Accordingly, [4e] is disclosed by Ohkawa as explained in Section [1e], which is incorporated by reference into Section [4e]. Ex. 1011, [4f]: an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, As discussed above, [4f] is identical to [1f]. Accordingly, [4f] is disclosed by Ohkawa as explained in Section [1f], which is incorporated by reference into Section [4f]. Ex. 1011, [4g]: wherein the conductive pattern has widened portions formed to extend in widthwise direction substantially orthogonal to an extending direction of the conductive pattern in crossing areas where ends of the opening and the conductive pattern cross each other. Ohkawa does not specifically disclose the conductive pattern has widened portions. However, Maeda does so. As discussed above, [4g] is identical to [3f]. Accordingly, [4g] is disclosed by Maeda as explained in Section [3f], which is incorporated by reference into Section [4g]. Ex. 1011, As explained above in Section [3f], a POSITA would combine Maeda with Ohkawa. Accordingly, the combination of Maeda with Ohkawa renders claim 4 of the 737 patent obvious. Ex. 1011,

54 5. Dependent Claim 5 [5a]: The wired circuit board according to claim 4, wherein the wired circuit board is a suspension board with circuit. Ohkawa discloses a suspension board with circuit 11. Ex. 1005, FIG. 1, Title ( Suspension board with circuit. ), Abstract ( The present invention is to provide a suspension board with circuit. ). As such, the suspension board with circuit 11 of Ohkawa corresponds to the suspension board with circuit of element [5a] of claim 5. Ex. 1011, Accordingly, the combination of Maeda with Ohkawa renders claim 5 of the 737 patent obvious. 6. Independent Claim 6 [6a]: A wired circuit board comprising As discussed above, [6a] is identical to [1a]. Accordingly, [6a] is disclosed by Ohkawa as explained in Section [1a], which is incorporated by reference into Section [6a]. Ex. 1011, [6b]: a metal supporting layer, As discussed above, [6b] is identical to [1b]. Accordingly, [6b] is disclosed by Ohkawa as explained in Section [1b], which is incorporated by reference into Section [6b]. Ex. 1011, [6c]: a first insulating layer formed on the metal supporting layer, 50

55 As discussed above, [6c] is identical to [1c]. Accordingly, [6c] is disclosed by Ohkawa as explained in Section [1c], which is incorporated by reference into Section [6c]. Ex. 1011, [6d]: a conductive pattern formed on the first insulating layer, As discussed above, [6d] is identical to [1d]. Accordingly, [6d] is disclosed by Ohkawa as explained in Section [1d], which is incorporated by reference into Section [6d]. Ex. 1011, [6e]: a second insulating layer formed on the conductive pattern, and As discussed above, [6e] is identical to [1e]. Accordingly, [6e] is disclosed by Ohkawa as explained in Section [1e], which is incorporated by reference into Section [6e]. Ex. 1011, [6f]: an opening, formed at the same position of the conductive pattern, for allowing the metal supporting layer and the first insulating layer, and the second insulating layer to open, so as to form a terminal portion in which front and back sides of the conductive pattern are exposed, As discussed above, [6f] is identical to [1f]. Accordingly, [6f] is disclosed by Ohkawa as explained in Section [1f], which is incorporated by reference into Section [6f]. Ex. 1011, [6g]: wherein at least one of the first insulating layer and the second insulating layer have projections projecting from ends of the opening onto the conductive pattern in the opening in the crossing areas where the ends of the opening 51