Kinik Companyv.Chien-Min Sung

Patent Trial and Appeal Board

Nov 4, 2015

13239198 (P.T.A.B. Nov. 4, 2015)

Trials@uspto.gov Paper 26
571-272-7822 Entered: November 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KINIK COMPANY,
Petitioner,

v.

CHIEN-MIN SUNG,
Patent Owner.
____________

Case IPR2014-01523
Patent 8,777,699 B2
____________

Before MICHAEL W. KIM, DONNA M. PRAISS, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KIM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION

A. Background

Kinik Company (“Petitioner”) filed a Petition requesting inter partes
review of claims 1–19 of U.S. Patent No. 8,777,699 B2 (“the ’699 patent”)
(Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Paper 1. Chien-Min Sung
(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 11.
IPR2014-01523
Patent 8,777,699 B2

2
On February 20, 2015, we instituted an inter partes review of claims 1–12
and 17–19 on certain grounds of unpatentability alleged in the Petition.
Paper 16 (“Dec.”). After institution of trial, Patent Owner filed a Patent
Owner Response (Paper 18; “PO Resp.”) and Petitioner filed a Reply (Paper
20; “Reply”). An oral hearing was held on September 21, 2015. Paper 25
(“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine that Petitioner has shown by a preponderance of the
evidence that all claims for which trial is instituted, claims 1–12 and 17–19,
are unpatentable.
A. The ’699 patent
The ’699 patent relates to superabrasive tools and methods for making
the same, specifically, for Chemical Mechanical Polishing (“CMP”) pad
dressers. Ex. 1001, 1:30–31. Polishers, such as CMP pads, and grinders are
used directly on a surface of a silicon wafer, and CMP pad dressers are used
to clean the CMP pads, for example, by cleaning and removing debris.
Tr. 6:16–8:5; PO Resp. 15. The ’699 patent discloses the following:
Of central importance in all CMP processes is the attainment of
high performance levels in aspects such as uniformity of
polished wafer, smoothness of the IC circuitry, removal rate for
productivity, longevity of consumables for CMP economics,
etc.
Ex. 1001, 1:22–26. To that end, the ’699 patent discloses a method of
making CMP pad dressers including disposing a first monolayer of
superabrasive particles on a metal support layer, and disposing a second
monolayer of superabrasive particles on the metal support layer on a side
opposite the first monolayer, where the superabrasive particles of the second
IPR2014-01523
Patent 8,777,699 B2

3
monolayer are positioned to have substantially the same distribution as the
superabrasive particles of the first monolayer. Ex. 1001, 1:56–63. The
results of implementing of these method steps are illustrated in Figure 3 of
the ’699 patent set forth as follows:

Figure 3 is a schematic side view of
an exemplary CMP pad dresser.
Ex. 1001, Fig. 3. The method further includes bonding the first monolayer
of superabrasive particles and the second monolayer of superabrasive
particles to the metal support layer such that symmetrical forces due to the
substantially similar distribution between the first monolayer and the second
monolayer precludes substantial warping of the metal support layer.
Ex. 1001, 1:63–2:2. The results of implementing of these method steps are
illustrated in Figure 4 of the ’699 patent set forth as follows:

Figure 4 is a schematic side view of
an exemplary CMP pad dresser.
Ex. 1001, Fig. 4.
IPR2014-01523
Patent 8,777,699 B2

4
B. Related Matters
Petitioner and Patent Owner identify the following related district
court proceedings between Petitioner and Patent Owner that involve the ’699
patent: Chien-Min Sung v. Kinik Co. and Intel Corp., Nos. 4:14-CV-01026
(D. Del.); Chien-Min Sung v. Kinik Co. and WaferTech LLC, 4:14–CV–
01027 (D. Del.). Pet. 1; Paper 4, 1–2.
C. Illustrative Claim
Independent claim 1 is reproduced below:
1. A CMP pad dresser, comprising:
a first monolayer of superabrasive particles disposed on
and coupled to one side of a metal support layer; and
a second monolayer of superabrasive particles disposed
on and coupled to the metal support layer on an opposite side
from the first monolayer, wherein the superabrasive particles of
the second monolayer are positioned to have substantially the
same distribution as the superabrasive particles of the first
monolayer; and
further comprising a rigid support coupled to the second
monolayer of superabrasive particles opposite the first
monolayer.

E. Prior Art References Applied by Petitioner and Instituted
Grounds of Unpatentability
The Board instituted a trial concerning the patentability of claims 1–
12 and 17–19 on the basis of the following items of prior art:

US 2010/0022174 A1 (“Chou”) Jan. 28, 2010 Ex. 1004
US 2008/0271384 A1 (“Puthanangady”) Nov. 6, 2008 Ex. 1005
US 6,416,878 B2 (“An”) July 9, 2002 Ex. 1006

IPR2014-01523
Patent 8,777,699 B2

5
Specifically, the Board instituted a trial on claims 1–12 and 17–19 of the
’699 patent based on the following specific grounds of unpatentability
(Dec. 25):
Reference(s) Basis Challenged Claims
Chou § 102(b) 1–3, 5, 6, 8–12, and 17–19
Puthanagady and Chou § 103(a) 1–12 and 17–19
Chou and An § 103(a) 8, 9, and 12
II. ANALYSIS
A. Claim Construction
In an inter partes review, a claim in an unexpired patent shall be given
its broadest reasonable construction in light of the specification of the patent
in which it appears. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that
Congress implicitly approved the broadest reasonable interpretation standard
in enacting the AIA.”) Under the broadest reasonable construction standard,
claim terms are given their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. In re Van
IPR2014-01523
Patent 8,777,699 B2

6
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below
in accordance with these principles.
1. “coupled” or “coupling”
Each of claims 1, 8, 9, 11, 18, and 19 recite one of “coupled” or
“coupling.” In the Decision on Institution, based on Petitioner’s position
and evidence (Pet. 13–14), we construed “coupled” or “coupling” as
“attached to, either directly or through an intermediate layer or layers.”
Neither Patent Owner nor Petitioner has expressed disagreement with this
construction. After considering anew the basis for our previous
construction, we see no need for modification.
2. CMP pad dresser
The preambles of independent claims 1 and 11 each recite “CMP pad
dresser.” Patent Owner asserts that this recitation of “CMP pad dresser”
should be considered limiting. PO Resp. 13–18. Petitioner disagrees.
Reply 4–9. We agree with Petitioner.
Generally, a preamble is not construed as a limitation. Allen Eng’g
Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In
particular, when the claim body describes a structurally complete invention
such that deletion of the preamble phrase does not affect the structure or
steps of the claimed invention,” the preamble is not considered a limitation.
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002). Accordingly, we begin from the general premise that “CMP pad
dresser” is not limiting, and from there we determine that the deletion of
“CMP pad dresser” from each of independent claims 1 and 12 would not
affect the rest of the claim. For the reasons set forth herein, we are
unpersuaded by Patent Owner that we should deviate from these principles.
IPR2014-01523
Patent 8,777,699 B2

7
Patent Owner asserts that the evidence establishes that the inventor
intended for the claims to be limited to a CMP pad dresser. Patent Owner’s
assertions are misplaced, as an inventor’s subjective intent is not relevant in
a claim construction analysis.
Patent Owner asserts further that “[w]hile the ‘699 patent
specification states at one point that the invention may be applied to a
superabrasive ‘tool’ (see, e.g., Ex. 1001, 1:31), the only such tool taught or
described by the ‘699 patent is a CMP pad dresser. (See, e.g., id. at 2:64–
3:4.).” PO Resp. 14. As noted by Patent Owner, however, the Specification
discloses expressly that the invention may be applied to superabrasive tools,
generally, and discloses in a latter portion that “while the above disclosure
refers primarily to CMP pad dressers, other precision grinding and/or
abrading tools are considered to be within the present scope.” Ex. 1001,
11:42–46.
Patent Owner asserts additionally that “[t]he Patentee chose to specify
that each independent claim recite a ‘CMP pad dresser or a method of
making a ‘CMP pad dresser.’” PO Resp. 14. We are unpersuaded, however,
as this argument is circular; that the preamble should be considered limiting
because of what the preamble recites.
Patent Owner asserts also that because there are material differences
between grinders, polishers, and CMP pad dressers, that the preamble should
be considered limiting. Patent Owner’s assertions are misplaced, as the fact
that there are differences between those three items is not relevant to
whether or not the recitation of CMP pad dressers in the preamble should be
considered limiting.
IPR2014-01523
Patent 8,777,699 B2

8
Patent Owner asserts the following:
The ‘699 patent specification reflects this specialty
application of CMP pad dressers. It teaches that the purpose of
the CMP pad dressers of the ‘699 patent is not to “grind away”
the CMP pad, but to carefully clean and remove debris from
precision CMP pads, which themselves are used in precision
polishing of semiconductor wafers . . . .
PO Resp. 15 (citing Ex. 1001, 1:22–25). Patent Owner’s assertions are
misplaced, as the purpose of the CMP pad dresser is not relevant to whether
or not the recitation of CMP pad dressers in the preamble should be
considered limiting.
More practically, however, even if we were to consider the recitation
of “CMP pad dresser” in the preamble limiting, we are unclear as to what
limitation it would place on independent claims 1 and 11. For example, the
body of independent claim 1 appears to recite a complete structure. Under
Patent Owner’s construction, however, if a prior art structure only had the
elements recited in the body of independent claim 1, it still would not meet
independent claim 1, because it is lacking “something” that would make it a
CMP pad dresser. We are unclear what that “something” would be, and at
oral argument, despite a lengthy exchange with the panel, Patent Owner
could not identify that “something” with any reasonable clarity. Tr. 28:16–
37:24, 47:1–51:2. Patent Owner makes citations to the Specification that
allude to the fact that a CMP pad dresser would need to carefully clean and
remove debris. We are unclear as to why the structure recited in
independent claim 1 cannot clean or remove debris. Perhaps Patent Owner
is asserting that some additional structure is needed to clean or remove
debris. If that is the case, however, the body of independent claim 1 needs
to recite explicitly that additional structure. Absent that, Patent Owner is
IPR2014-01523
Patent 8,777,699 B2

9
asserting essentially that we import that additional structure into independent
claim 1 based on the recitation in the preamble of “CMP pad dresser.” As
an initial matter, Patent Owner does not identify from the Specification what
that additional structure would be. Moreover, limitations in the
Specification are not to be imported into the claims, absent some narrow
exceptions. Patent Owner has not shown persuasively why any of those
narrow exceptions should apply here. The same analysis applies to the
method recited in independent claim 11.
Patent Owner asserts additionally that one of ordinary skill would
know the structural differences between CMP pad dressers and other
grinders/polishers, and, thus, that express disclosures of those differences are
not necessary. For support, Patent Owner identifies paragraph 15 of
Puthanagady for allegedly being equally as vague concerning the structural
features of CMP pad dressers. We are unpersuaded by Patent Owner’s
assertions because paragraph 15 of Puthanagady is the opening paragraph of
the “Detailed Description of the Invention” section, and, thus, we discern
that it provides merely a high level overview of the rest of Puthanagady.
This is borne out by the fact that Puthanagady goes on to describe, for
example, many shapes, sizes, and materials of particles that would be
acceptable to include in a CMP pad dresser. Thus, unlike the Specification
and claims of the ’699 patent, Puthanagady discloses its desired structural
features for its CMP pad dresser, even going so far as to place some of those
features in its claims, for example, size and material. See, e.g., Ex. 1005,
claims 1, 3, 9, 10, 11, 14, 16, 17, 18, 23, 28, 29, 31, 34, 36, 37, 41, 42, 43,
46. Thus, Puthanagady actually goes against Patent Owner’s assertion, as its
disclosure of desired structural features for its CMP pad dresser indicates
IPR2014-01523
Patent 8,777,699 B2

10
that there is a wide breadth and range of CMP pad dressers, confirming that
the bare recitation of “CMP pad dresser,” by itself, is not limiting to one of
ordinary skill.
Patent Owner recites several cases in support of their position. First,
Patent Owner cites American Medical Systems, Inc. v. Biolitec, Inc., 618
F.3d 1354, 1358 (Fed. Cir. 2010), for the proposition that although a mere
“statement of use” in a preamble is not considered limiting, a preamble may
be construed as limiting “if it is necessary to give life, meaning, and vitality
to the claim.” As noted above, however, without an articulation of the
structural differences that the recitation of “CMP pad dresser” would impart,
“CMP pad dresser” is, in effect, an intended use. And without such an
articulation of the structural differences, we are unclear how it can be
considered to breathe “life, meaning, and vitality to the claim.”
Patent Owner also cites Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989), for the proposition that
any terminology in the preamble that limits the structure of the claimed
invention must be treated as a claim limitation. As set forth above, however,
we are unpersuaded that “CMP pad dresser” limits the structure, at least in
part because the body of the claim recites a complete structure, and at least
in part because we are unclear as to what those limitations on structure
would be for a “CMP pad dresser.”
Patent Owner further cites Pac-Tec Inc. v. Amerace Corp., 903 F.2d
796, 801 (Fed. Cir. 1990), as asserting that the determination of whether
preamble recitations are structural limitations can be resolved only on
review of the entirety of the application “to gain an understanding of what
the inventors actually intended to encompass by the claim.” We have
IPR2014-01523
Patent 8,777,699 B2

11
reviewed the entire application and, as set forth above, the Specification is
unambiguous that its disclosures are meant to apply to superabrasive tools in
general, and not just CMP pad dressers. See, e.g., Ex. 1001, 1:31, 11:42–46.
Accordingly, in summary, we do not construe as limiting the
recitation of “CMP pad dresser” in the preambles of independent claims 1
and 11. Moreover, even if they were limiting, we are unpersuaded that the
recitation of “CMP pad dresser” limits independent claims 1 and 11 in a
substantive manner.
3. whether the coupling step must be
performed before the bonding step of independent
claim 11
Independent claim 11 recites “bonding the first monolayer of
superabrasive particles and the second monolayer of superabrasive particles
to the metal support layer such that symmetrical forces due to the
substantially similar distribution between the first monolayer and the second
monolayer precludes substantial warping of the metal support layer; and
coupling the second monolayer of superabrasive particles to a rigid support.”
In their assertions concerning the grounds of patentability, Patent Owner
asserts that the bonding step must be performed before the coupling step.
PO Resp. 35–37. Petitioner disagrees. Reply 9–12. We agree with
Petitioner.
Patent Owner asserts that the explicit ordering of the steps in
independent claim 11 requires that they be performed in that order. Patent
Owner’s assertions are misplaced. There is no question that, grammatically,
the bonding step is recited before the coupling step. It is the general rule,
however, that “[u]nless the steps of a method actually recite an order, the
steps are not ordinarily construed to require one.” Interactive Gift Express,
IPR2014-01523
Patent 8,777,699 B2

12
Inc. v. Compuserve Inc., 256 F.3d at 1342 (citing Loral Fairchild Corp. v.
Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). Perhaps Patent Owner
is asserting that grammatically reciting the steps in an order is an actual
order for claim construction purposes. We disagree because the converse
would make superfluous Interactive Gift Express, supra. In all patent
claims, individual steps must be written grammatically in some sequence.
Unless there is something in the claim language itself, however, that would
denote a specific sequence of steps relative to each other, no order is
presumed. To that end, the sequence of the two “disposing” steps of
independent claim 11 are illustrative. The second “disposing” step recites
“disposing a second monolayer of superabrasive particles on the metal
support layer on a side opposite the first monolayer.” By logic, this second
“disposing” step requires that the first “disposing” step of “disposing a first
monolayer” have occurred. Otherwise, it is impossible to perform the
second “disposing” step. By contrast, Patent Owner has not identified, and
we are unable to determine, that there is any express language in either the
“bonding” step or the “coupling” step that requires one be performed before
the other.
Patent Owner asserts additionally that the Specification discloses
performing the “coupling” step after the “bonding” step, and that several
disadvantages, set forth in the Specification and articulated by Dr. Sung,
would result from performing the “coupling” step prior to the “bonding”
step. Patent Owner’s assertions are misplaced, as if a specific order was
desirable, for whatever reason, Patent Owner could have easily evinced that
desire, for example, by placing the phrase “after the bonding step,” prior to
“coupling the second monolayer of superabrasive particles to a rigid
IPR2014-01523
Patent 8,777,699 B2

13
support.” Absent such language, Patent Owner asks us, essentially, to
import a limitation from the Specification into the claim. We decline to do
so.
Patent Owner may be asserting that, given the disclosures of the
Specification, the express claim limitations, and the testimony of Dr. Sung,
one of ordinary skill could not help but understand that the bonding step
must be performed before the coupling step, because to do otherwise would
result in a warped, and thus essentially useless, CMP pad dresser. We have
reviewed the cited portions of the Specification, and column 14, lines 38–45
do indicate a desire to minimize warpage, which comports with the express
limitation of independent claim 11 to “preclude[ ] substantial warping of the
metal support layer.” Neither the Specification nor the claim, however,
indicates that performing the coupling step before the bonding step would
increase warpage, and that the increase in warpage would be unacceptable.
The Specification and claim language only disclose expressly that the
symmetrical forces from the two opposing monolayers of superparticles
during bonding would preclude substantial warping, but does not provide
any indication as to what effect a prior implementation of the coupling step
would or would not have on that bonding process.
Regarding the testimony of Dr. Sung, in analogous contexts, the
Federal Circuit has held repeatedly that in order to guard “against courts
being deceived by inventors who may be tempted to mischaracterize the
events of the past through their testimony,” the law requires corroboration of
a putative inventor’s credible testimony, the sufficiency of which is
measured under a “rule of reason” standard. Gen. Elec. Co. v. Wilkins, 750
F.3d 1324, 1330 (Fed. Cir 2014) (citing Martek Biosciences Corp. v.
IPR2014-01523
Patent 8,777,699 B2

14
Nutrinova, Inc., 579 F.3d 1363, 1374 (Fed. Cir. 2009)); see also Bell &
Howell Document Mgmt. Prod. Co. v. Altek Sys., 132 F.3d 701, 706 (Fed.
Cir. 1997) (“the testimony of an inventor . . . concerning claim
construction . . . often is self-serving, after-the-fact attempt to start what
should have been part of his or her patent application”). To that end, while
Patent Owner cites paragraphs 26 and 27 of Dr. Sung’s Declaration in
support of their claim construction position here, they do not cite to any
corroborative evidence. Furthermore, the content of those paragraphs are
largely conclusory. For example, the Declaration asserts that “if a rigid
support is also present on one side of the tool but not on the other side, the
benefits of the substantially similar distribution of superabrasive particles
cannot be achieved and the warpage of the tool will not be mitigated.”
Ex. 1012 ¶ 26. The aforementioned assertion does not further analyze why
the benefits could not be achieved and the warpage mitigated, and implicit in
asserting that the warpage would not be mitigated is that even without the
rigid support, some warpage would occur. Yet, there is no analysis as to
how much warpage is or is not acceptable, and how the rigid support would
take the warpage beyond that acceptable level. A similar analysis is
applicable to the Declaration’s assertion that “[a]n attempt to couple the
rigid support before the monolayers are bonded to the metal support layer
would result in a disk that would be inoperative for CMP pad dressing.”
Ex. 1012 ¶ 27. Accordingly, we determine that Dr. Sung’s testimony is
entitled to little weight on this issue.
We determine that independent claim 11 does not require that the
“bonding” step must be performed prior to the “coupling” step.
IPR2014-01523
Patent 8,777,699 B2

15
B. Claims 1–3, 5, 6, 8–12, and 17–19 as Anticipated by Chou
Petitioner contends that claims 1–3, 5, 6, 8–14, and 16–19 are
anticipated by Chou. Pet. 16–29 (citing Exs. 1004, 1007). Patent Owner
disagrees. PO Resp. 12–27 (citing Exs. 1001, 1004, 1007, 1012, 1013).
Petitioner replied. Reply 12–16. Claims 1 and 11 are independent.
1. Chou (Ex. 1004)
Chou relates to a grinding tool and a method for fabricating the same
that can improve the precision and lifetime of products, reduce the cost of
production, and enhance the machining efficiency. Ex. 1004 ¶ 2. Chou
discloses the following under a heading entitled “Description of Related
Art”:
Grinding and polishing are ultra-precision machining
technologies with the ability to make the surface of a workpiece
have acceptable smoothness and flatness. Accordingly,
grinding and polishing are widely used in precision machining
of the surface of an object, such as hard and brittle metals,
ceramics, glass and wafers. Thereby, it is an important issue to
develop various grinding tools that can meet process
requirements.
Ex. 1004 ¶ 4. Figure 5D of Chou is illustrated as follows:

Ex. 1004, Fig. 5D. Figure 5D discloses grinding plate 530 having working
surface 530a, where grinding plate 530 includes abrasive particles 232,
combining layer 233, and soft substrate 231. Id. ¶ 54. The abrasive particles
IPR2014-01523
Patent 8,777,699 B2

16
can be directly formed on the surface of the soft substrate by brazing,
sintering, or electroplating. Id. ¶ 9. Backplane 250 is retained on a non–
working surface of grinding plate 530 via adhesive layer 240. Id. ¶ 56.
Backplane 250 can be made of a material that can be easily machined and
exhibit improved chemical resistance and be less remaining stress, such as
stainless steel, so that the stability of the products can be enhanced. Id. ¶ 12.
2. Analysis
Based on the information presented in the Petition, Patent Owner
Response, and Reply, as well as all supporting evidence, we are persuaded
that Petitioner has shown, by a preponderance of the evidence, that claims
1–3, 5, 6, 8–12, and 17–19 are anticipated by Chou. Pet. 16–29; PO Resp.
12–27; Reply 12–16. For example, independent claim 1 recites a CMP pad
dresser. Petitioner asserts that Chou discloses a grinding tool, and that
because “CMP pad dresser” is only recited in the preamble and does not
further limit the structure of the claimed invention, it should be treated as an
intended use that does not substantively limit the claim. Pet. 16–17.
Independent claim 1 further recites “a first monolayer of superabrasive
particles disposed on and coupled to one side of a metal support layer; and a
second monolayer of superabrasive particles disposed on and coupled to the
metal support layer on an opposite side from the first monolayer.” Petitioner
cites Chou for disclosing grinding plate 530 having working surface 530a,
where grinding plate 530 includes abrasive particles 232, combining layer
233, and soft substrate 231. Id. at 17–18 (citing Ex. 1004 ¶ 54).
Independent claim 1 additionally recites “wherein the superabrasive particles
of the second monolayer are positioned to have substantially the same
distribution as the superabrasive particles of the first monolayer.” Petitioner
IPR2014-01523
Patent 8,777,699 B2

17
cites Figure 5D of Chou as disclosing that the particles of the first and
second monolayers are exactly aligned. Id. at 18–20. Independent claim 1
then recites “a rigid support coupled to the second monolayer of
superabrasive particles opposite the first monolayer.” Petitioner cites Chou
for disclosing that backplane 250 is retained on a non–working surface of
grinding plate 530 via adhesive layer 240. Id. at 20 (Ex. 1004 ¶ 56).
Petitioner provides similar analyses for claims 2, 3, 5, 6, 8–12, and 17–19.
Patent Owner asserts that Chou is directed to a grinding or polishing
tool, which does not correspond properly to the recited CMP pad dresser,
because the grinding or polishing tool of Chou does not account adequately
for the specialized design parameters of a CMP pad dresser. As set forth
above, we are unpersuaded that the recitation of “CMP pad dresser” in the
preambles are limiting, and even if they were, we are persuaded that at least
some of the grinding or polishing tools disclosed in Chou could be used as
CMP pad dressers.
To the extent that Patent Owner is asserting the claimed invention and
Chou are non-analogous art, we are unpersuaded. The title of the ’699
patent is “Superabrasive Tools.” The Specification discloses superabrasive
tools used in manufacturing silicon wafers (Ex. 1001, 1:15–31) and discloses
further that “while the above disclosure refers primarily to CMP pad
dressers, other precision grinding and/or abrading tools are considered to be
within the present scope.” Ex. 1001, 11:42–46. Chou discloses “[t]he
present invention relates to a grinding tool” for use in “ultra-precision
machining technologies,” for example, grinding and polishing wafers.
Ex. 1004 ¶¶ 1–2. Indeed, the ’699 patent and Chou are both categorized in
U.S. prior art class 451, and, at deposition, Dr. Sung agreed with the
IPR2014-01523
Patent 8,777,699 B2

18
following disclosure set forth in one of his other patent applications:
“Though much of the following discussion relates to CMP pad dressers, it
should be understood that the methods and tools according to aspects of the
presently-claimed invention, are equally applicable to any tool that utilizes
abrasive or superabrasive materials.” Ex. 1014, 135:2–136:15 (citing ¶ 50 of
U.S. Patent Application Publication No. 2008/0096479 A1 to Chien-Min
Sung). Thus, it is clear that the claimed invention and Chou are in the same
field and directed to the same problems. Patent Owner does cite to
paragraphs 15–17 of Dr. Sung’s Declaration in support of their position.
While we have considered these paragraphs, we determine that they are
insufficient to outweigh the aforementioned express disclosures of the
Specification and Chou, especially where the aforementioned paragraphs are
the testimony of an interested inventor that do not cite to any corroborative
evidence.
Insofar as Patent Owner is asserting that every grinding or polishing
tool disclosed in Chou must be a CMP pad dresser in order for Chou to
anticipate a CMP pad dresser, Patent Owner is mistaken. As an example, if
a claim recites a species, “the letter A,” and a prior art reference discloses a
genus of “the alphabet,” the prior art reference is still anticipating because it
discloses the entire genus, i.e., the alphabet, including the letter A, even if
the alphabet also includes other species, i.e., letters, that are not the letter A.
To that end, Chou discloses a wide range of grinding and polishing tools
made of all sorts of materials and have all sorts of configurations, and we are
persuaded that at least some of those grinding or polishing tools disclosed in
Chou could be used as CMP pad dressers.
IPR2014-01523
Patent 8,777,699 B2

19
Patent Owner asserts further that Chou does not disclose “wherein the
superabrasive particles of the second monolayer are positioned to have
substantially the same distribution as the superabrasive particles of the first
monolayer,” as recited in independent claim 1, because Petitioner’s sole
evidentiary support is Figures 3A–3D and 5A–5D of Chou, and Chou does
not add any additional disclosure concerning the alignment of the particles in
Figures 3A–3D and 5A–5D. More specifically, Patent Owner asserts Chou
does not enable one of ordinary skill to implement the disclosures of Figures
3A–3D and 5A–5D without undue experimentation. We disagree. After
considering the entire record, we are unpersuaded that arriving at the
alignment of particles disclosed in Figures 3A–3D and 5A–5D would have
involved undue experimentation, for the reasons set forth below.
Patent Owner asserts that the text of Chou is silent as to how the
alignment of particles in Figures 3A–3D and 5A–5D was achieved, and
asserts that Dr. Blanchard agrees with them. We agree to an extent, as Chou
does disclose that it is desirable to distribute the abrasive particles evenly
over both surfaces to prevent deformation (Ex. 1004 ¶¶ 9, 39), albeit the text
of Chou does not disclose any specifics as to what would be considered
“even.” Even if this factor, however, was given full weight, it is still
insufficient to persuade us that undue experimentation would have been
required, especially where Figures 3A–3D and 5A–5D disclose the exact
alignment of particles recited in the aforementioned limitations of
independent claim 1. Drawings and pictures can anticipate claims if they
clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). When the reference is a utility patent, it does not matter
that the feature shown is unintended or unexplained in the specification. The
IPR2014-01523
Patent 8,777,699 B2

20
drawings must be evaluated for what they reasonably disclose and suggest to
one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA
1979) (“a drawing in a utility patent can be cited against the claims of a
utility patent application even though the feature shown in the drawing was
unintended or unexplained in the specification of the reference”).
Patent Owner asserts further that paragraphs 9 and 39 of Chou, which
disclose only that particles are distributed over both surfaces of the substrate
in Chou, is inconsistent with a finding that Chou discloses a precise
alignment of particles. We disagree. The aforementioned paragraphs
disclose that particles are distributed, but make no comment on their
alignment, while Figures 3A–3D and 5A–5D show a particular, exemplary
alignment. We see nothing inconsistent between those two findings.
Patent Owner asserts additionally that Figures 3A–3D and 5A–5D
show other schematic details, such as identical particle sizes and shapes, that
even Dr. Blanchard agrees were probably for the ease of the draftsmen, and
do not actually reflect, for example, hexagonal particles in the real world.
We agree that some schematic details are more the result of a draftman’s
convenience, and do not reflect an actual reality. We disagree, however, that
alignment is one of those schematic details. Even at a schematic level,
figures must convey some information, and while we agree such things as
shape and color of objects in Figures 3A–3D and 5A–5D are not meant to
convey much information, we discern that Figures 3A–3D and 5A–5D, if
nothing else, disclose to one of ordinary skill the alignment of certain objects
relative to other objects. And as the distribution of particles is one of those
alignments disclosed, we are unpersuaded that the symmetrical alignment
should be interpreted as being primarily for the draftman’s convenience.
IPR2014-01523
Patent 8,777,699 B2

21
Patent Owner provides paragraphs 19 and 20 of Dr. Sung’s
Declaration in support their position concerning alignment. Those
paragraphs suffer from the same deficiency as Dr. Sung’s Declaration
generally, namely, conclusory assertions with little analysis, and no
corroborative evidence. Furthermore, in paragraph 18, Dr. Sung asserts that
“aligning the diamond particles on each monolayer in a substantially similar
manner is technically cumbersome (low yield and high cost).” We agree.
Being technically cumbersome, with a low yield and high cost, however,
indicates that such an ability was known –– to be sure, difficult, but known
nonetheless –– and thus within the abilities of one of ordinary skill.
Patent Owner cites MPEP § 2121.01 and Elan Pharm., Inc. v. Mayo
Found. For Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed. Cir. 2003)
in support of their positions concerning alignment. Regarding MPEP
§ 2121.01, it has been considered, but we are unpersuaded that it outweighs
the other considerations set forth above. Regarding Elan, the case is
distinguishable because it is directed to the more unpredictable arts, such as
chemistry. In the present proceeding, we consider the claimed physical
alignments as being more readily apparent and predictable.
Patent Owner asserts further that Chou’s disclosure of “brazing” at
paragraph 9 is insufficient to correspond properly to the “braze alloy” recited
in claims 8, 9, and 12. Specifically, Patent Owner asserts that since Chou
only discloses brazing, but not what is used for brazing, Petitioner must
show that Chou inherently discloses that brazing necessarily requires using
braze alloys. As the evidence from both experts shows, however, brazing
can be performed with pure metals, Chou does not necessarily require using
a braze alloy, and so Petitioner cannot meet its burden of showing inherency.
IPR2014-01523
Patent 8,777,699 B2

22
Patent Owner’s assertion is misplaced. We are persuaded that Chou
discloses brazing, and thus inherently discloses using a brazing material, i.e.,
a genus. We are persuaded also that this genus would consist of only two
species, pure metals and metal alloys, because those are the only two options
available. Furthermore, Dr. Blanchard testified that while perhaps brazing
would be possible to do without an alloy, it would be unlikely in practice.
Ex. 1013, 51:2–53:8. Thus, we are persuaded that Chou’s disclosure of
brazing discloses, inherently, both pure metals and metal alloys, and metal
alloys in particular.
Patent Owner asserts additionally that Chou does not disclose two
layers of superabrasive particles have “the same distribution,” as recited in
dependent claim 10, or the superabrasive particles of the two layers “are
positioned to align with [one another],” as recited in dependent claim 17, for
reasons similar to those set forth previously for “wherein the superabrasive
particles of the second monolayer are positioned to have substantially the
same distribution as the superabrasive particles of the first monolayer,” as
recited in independent claim 1. On this record, our analysis is the same as
set forth above, and need not be repeated here.
Patent Owner asserts further that some weight should be given to the
fact that the Examiner found the Chou reference in a search, and yet chose
not to make a rejection based on Chou. We agree with Patent Owner that
this factor should be given some weight, however, we are unpersuaded that
it outweighs Petitioner’s identification and our express consideration herein
of the actual disclosures of Chou, especially where the Examiner did not
make any express substantive representations concerning Chou, listing it
only as a relevant reference.
IPR2014-01523
Patent 8,777,699 B2

23
3. Conclusion
For the foregoing reasons, we determine that Petitioner has shown, by
a preponderance of the evidence, that claims 1–3, 5, 6, 8–12, and 17–19 are
anticipated by Chou.
C. Claims 1–12 and 17–19 as Obvious over Puthanangady and
Chou
Petitioner contends that claims 1–12 and 17–19 are obvious over
Puthanangady and Chou. Pet. 43–54 (citing Exs. 1004, 1005, 1007)1. Patent
Owner disagrees. PO Resp. 27–38 (citing Exs. 1001, 1004, 1007, 1012,
1013). Petitioner replied. Reply 17–20.
1. Puthanangady (Ex. 1005)
Puthanangady relates to tools and techniques for conditioning
polishing pads such as CMP pads used in the microelectronics industry.
Ex. 1005 ¶ 2. Figure 6 of Puthanangady is illustrated as follows:

Ex. 1005, Fig. 6. Figure 6 discloses a CMP pad conditioning tool having a
single layer of abrasive particles brazed to a front side and a single layer of
abrasive particles brazed to a back side of the CMP pad conditioning tool.

1 The ground of obviousness based on Puthanagady and Chou refers also to
certain sections of pages 29–43 of the Petition, which are directed to the
ground of anticipation based on Puthanagady alone. Additionally, a trial
was not instituted as to dependent claims 13, 14, and 16.
IPR2014-01523
Patent 8,777,699 B2

24
Ex. 1005 ¶ 10. Figure 6 discloses the CMP pad conditioning tool being
supported by a zirconia support while it is being fired in a furnace. Ex. 1005
¶ 14. Puthanangady discloses that numerous abrasive grain pattern and sub-
pattern schemes are possible, and that inter-particle spacing may be
substantially the same for all particles. Ex. 1005 ¶¶ 27–28.
2. Analysis
Based on the information presented in the Petition, Patent Owner
Response, and Reply, as well as all supporting evidence, we are persuaded
that Petitioner has shown, by a preponderance of the evidence, that claims
1–12 and 17–19 are obvious over Puthanangady and Chou. Pet. 29–54;
PO Resp. 27–38; Reply 17–20. For example, independent claim 1 recites a
CMP pad dresser. Petitioner cites Puthanangady for disclosing tools and
techniques for conditioning polishing pads such as CMP pads used in the
microelectronics industry. Pet. 45–46 (citing Ex. 1005 ¶ 2). Independent
claim 1 further recites “a first monolayer of superabrasive particles disposed
on and coupled to one side of a metal support layer; and a second monolayer
of superabrasive particles disposed on and coupled to the metal support layer
on an opposite side from the first monolayer.” Petitioner cites Puthanangady
for disclosing a CMP pad conditioning tool having a single layer of abrasive
particles brazed to a front side and a single layer of abrasive particles brazed
to a back side of the CMP pad conditioning tool. Pet. 46–47 (Ex. 1005
¶ 10). Independent claim 1 additionally recites “wherein the superabrasive
particles of the second monolayer are positioned to have substantially the
same distribution as the superabrasive particles of the first monolayer.”
Petitioner cites Puthanangady for disclosing that numerous abrasive grain
pattern and sub-pattern schemes are possible, and that inter-particle spacing
IPR2014-01523
Patent 8,777,699 B2

25
may be substantially the same for all particles. Pet. 47–49 (Ex. 1005 ¶¶ 27–
28). Petitioner then cites the Declaration of Dr. Blanchard to support the
following:
One of ordinary skill in the art would appreciate that applying
the same brazing alloy to both the first and second sides to
apply the above-described pattern of superabrasive particles
would provide for superabrasive particles of a second
monolayer that are positioned to have substantially the same
distribution as superabrasive particles of a first monolayer.
Pet. 48–49 (citing Ex. 1007). Independent claim 1 then recites “a rigid
support coupled to the second monolayer of superabrasive particles opposite
the first monolayer.” Petitioner cites Chou for disclosing that backplane 250
is retained on a non-working surface of grinding plate 530 via adhesive layer
240. Pet. 49–50 (citing Ex. 1004 ¶ 56). For combining the aforementioned
disclosures of Puthanangady and Chou, Petitioner provides the following
rationale:
Chou specifically teaches a backplane, such as a stainless steel
rigid support, that is coupled to the second monolayer of
superabrasive particles through an adhesive resin. See Ex.
1004, ¶¶ 12–16, 49–52, 58, at Fig. 5D. As Chou explains, the
inclusion of a backplane advantageously enhances the stability
of the resulting device or abrasive tool. Id. ¶ 12. Thus, Chou’s
disclosure provides additional teachings that one of ordinary
skill in the art would be motivated to use to further improve the
embodiments described in Puthanangady. Ex. 1007, at tbl. C,
r. 5. More specifically, one of ordinary skill in the art would
have been motivated to combine the backplane disclosed by
Chou with the aforementioned embodiments of Puthanangady
to arrive at a more stable abrasive tool. Id.
Pet. 50 (citing Ex. 1007); see also Pet. 43–45 (citing Ex. 1004, 1005, 1007).
Petitioner provides similar analyses for claims 2–12 and 17–19.
IPR2014-01523
Patent 8,777,699 B2

26
Patent Owner asserts that one of ordinary skill would not look to
combine Puthanangady and Chou in the manner set forth by Petitioner
because Chou relates to grinding tools, which serve a different purpose and
have different considerations than the CMP polishing tools of Puthanangady.
We are not persuaded by Patent Owner’s assertion, because Chou discloses
expressly that grinding and polishing wafers are, at a minimum, related arts.
Ex. 1004 ¶ 4.
Patent Owner asserts further that Chou is non-analogous art, and cites
paragraphs 15–17 of Dr. Sung’s Declaration in support. We have addressed
these assertions and evidence above, and that analysis need not be repeated
here.
Patent Owner asserts additionally that one of ordinary skill would not
have modified Puthanangady to include the backplane of Chou to provide
support, the rationale for modification proffered by Petitioner, because
Puthanangady already discloses that its support member is sufficiently rigid.
We disagree, as whether Puthanangady is sufficiently rigid is a subjective
determination, and we are unpersuaded that just because an object is rigid,
that indicates that the object could not be made more rigid, should more
rigidity be desired.
Patent Owner asserts also that modifying Puthanangady to include the
backplane of Chou would eliminate a purported advantage of Puthanangady,
namely having two working surfaces. As an initial matter, we note that the
purported advantage is, again, a subjective determination. Furthermore,
Figures 1 and 3 of Puthanangady disclose substrates with only one working
surface. To be sure, those substrates do not have particles disposed on both
sides, but nevertheless, Puthanangady discloses that having only one
IPR2014-01523
Patent 8,777,699 B2

27
working surface was known, and we are persuaded that one of ordinary skill
would have been able to assess the readily apparent tradeoff for making the
proffered modification, namely, rigidity versus two working surfaces.
Furthermore, Puthanagady discloses the following: “FIG. 2 illustrates a pad
conditioner that has two working surfaces (although both need not be
used).” Ex. 1005 ¶ 18 (emphasis added). Accordingly, Puthanagady
discloses expressly that even if you had two working surfaces, it was known
to only use one. Patent Owner cites to paragraphs 22 and 23 of Dr. Sung’s
Declaration, however, we do not discern anything in those paragraphs that
would alter our analysis on this issue.
Patent Owner asserts further that independent claim 11 recites that the
coupling step must be performed after the brazing step, and that Petitioner
has not shown adequately that Puthanangady and Chou suggests that
sequence. As set forth above in our claim construction analysis, we are
unpersuaded that the coupling step must be performed after the brazing step.
Accordingly, given that the coupling step and the brazing step do not need to
be performed in a particular order, it is inapposite that Petitioner did not set
forth how a combination of Puthanangady and Chou suggests that sequence.
3. Conclusion
For the foregoing reasons, we determine that Petitioner has shown, by
a preponderance of the evidence, that claims 1–12 and 17–19 would have
been obvious over Puthanangady and Chou.
D. Dependent Claims 8, 9, and 12 as Obvious over Chou and An
Petitioner contends that claims 8, 9, and 12 would have been obvious
over Chou and An. Pet. 55–58 (citing Exs. 1004, 1006, 1007). Patent
IPR2014-01523
Patent 8,777,699 B2

28
Owner disagrees. PO Resp. 38–42 (citing Exs. 1001, 1004, 1006, 1007).
Petitioner replied. Reply 21.
1. An (Ex. 1006)
An relates to an abrasive dressing tool used for mechanical and
chemical planarization abrasion of the surface of the work pieces as can be
used for semiconductor wafers or the like which require precise, planar and
micro polishing, and a method for manufacturing the same dressing tool.
Ex. 1006, 1:5–10. Figure 3 of An is reproduced below:

Ex. 1006, Fig. 3. Figure 3 discloses a metal substrate 12 with diamond
particles 16, parts of diamond particles 16 being enclosed by sintered metal
layers 15. Ex. 1006, 3:65–67. In one example, brazing metal slurry solution
14 is coated on metal substrate 12. Ex. 1006, 5:33–34. Brazing metal slurry
solution 14 may include at least 60 wt. % of nickel as the main component,
and as the additional components, respective 5 wt. % to 15 wt. % of one or
more metals chosen from the group of chromium, silicone, cobalt, tungsten,
tungsten carbide, and boron. Ex. 1006, 5:45–49. Diamond particles 16 are
then uniformly distributed on coated brazing metal slurry solution 14, and
the assembly is dried. Ex. 1006, 5:50–56. After completion of drying,
IPR2014-01523
Patent 8,777,699 B2

29
brazing metal slurry solution 14 is sintered so as to form sintered metal layer
15. Ex. 1006, 5:58–6:3.
2. Dependent Claims 8, 9, and 12
Based on the information presented in the Petition, Patent Owner
Response, and Reply, as well as all supporting evidence, we are persuaded
that Petitioner has shown, by a preponderance of the evidence, that claims 8,
9, and 12 would have been obvious over Puthanangady, Chou, and An.
Pet. 55–58; PO Resp. 38–42; Reply 21. Specifically, each of claims 8, 9,
and 12 recite coupling the superabrasive particles to the metal support layer
with a braze alloy. Petitioner cites An for disclosing using brazing metal
slurry solution 14 to enclose diamond particles 16 on metal substrate 12 with
sintered metal layers 15.
Patent Owner asserts that An does not disclose a first and second
monolayer of superabrasive particles with substantially the same
distributions, as required by claims 8, 9, and 12. Patent Owner’s assertion is
misplaced, as Petitioner cites Chou for disclosing the first and second
monolayer of superabrasive particles with substantially the same
distributions.
Patent Owner asserts that one of ordinary skill would not look to
combine An and Chou in the manner set forth by Petitioner, because Chou
relates to grinding tools, which serve a different purpose and have different
considerations than the abrasive dressing tool used to process semiconductor
wafers in An. We are not persuaded by Patent Owner’s assertion for the
same reasons as discussed above with respect to Chou and CMP pad
dressers, the analysis of which need not be repeated here.
IPR2014-01523
Patent 8,777,699 B2

30
3. Conclusion
For the foregoing reasons, we determine that Petitioner has shown, by
a preponderance of the evidence, that claims 8, 9, and 12 would have been
obvious over Puthanangady, Chou, and An.
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–12 and 17–19 of the ’699 patent are held
unpatentable; and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-01523
Patent 8,777,699 B2

31
For PETITIONER:

Brian McCormack
William McSpadden
BAKER & MCKENZIE LLP
brian.mccormack@bakermckenzie.com
william.mcspadden@bakermckenzie.com

For PATENT OWNER:

Timothy Devlin
DEVLIN LAW FIRM LLC
tdevlin@devlinlawfirm.com