Nissan North America, Inc.v.Diamond Coating Technologies, LLC

Patent Trial and Appeal Board

Apr 20, 2016

09156825 (P.T.A.B. Apr. 20, 2016)

Trials@uspto.gov Paper 55
571-272-7822 Entered: April 20, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NISSAN NORTH AMERICA, INC.,
HITACHI AUTOMOTIVE SYSTEMS, LTD., and
HYUNDAI MOTOR AMERICA,
Petitioners,

v.

DIAMOND COATING TECHNOLOGIES, LLC,
Patent Owner.
____________

Case IPR2014-015481
Patent 6,354,008 B1
____________

Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
BRIAN P. MURPHY, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

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

1 Case IPR2014-01553 has been joined with this proceeding.
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I. INTRODUCTION
Nissan North America, Inc. (“Nissan”) and Hitachi Automotive
Systems, Ltd. (“Hitachi Automotive”) filed a Petition (Paper 2, “Pet.”) to
institute an inter partes review of claims 3–5 of U.S. Patent No. 6,354,008
B1 (Ex. 1001, “the ’008 patent”). On April 21, 2015, we instituted an inter
partes review of claims 3–5 based on our determination that the information
presented in the Petition demonstrated that there was a reasonable likelihood
that Nissan and Hitachi Automotive would prevail in challenging claims 3
and 5 as unpatentable under 35 U.S.C. § 102(b) as anticipated by Hirano I,2
and claim 4 as unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Hirano I and Noda.3 Paper 26 (“Dec. on Inst.”).
Hyundai Motor America (“Hyundai”) filed a separate petition
challenging the same claims of the ’008 patent in Hyundai Motor America v.
Diamond Coating Techs., LLC, Case IPR2015-01553 (“1553 IPR”). 1553
IPR, Paper 2. Hyundai asserted the same grounds of unpatentability, and
relied on the same arguments and evidence, as presented by Nissan and
Hitachi Automotive in their Petition. See id. On April 21, 2015, we
instituted an inter partes review of claims 3–5 of the ’008 patent on the same
grounds instituted upon in this proceeding. Id., Paper 17.
On May 21, 2015, Diamond Coating Technologies, LLC (“Patent
Owner”), Nissan, Hitachi Automotive, and Hyundai filed a Joint Motion for

2 Hirano I, Japanese Unexamined Patent App. Pub. No. H8 [1996]-45022,
published Feb. 16, 1996 (Ex. 1003 and Ex. 1004 (English translation)). We
refer to Hirano I as the English translation of the original reference.
Petitioners provided an affidavit attesting to the accuracy of the translation.
See Ex. 1004; 37 C.F.R. § 42.63(b).
3 Noda, U.S. Patent No. 5,864,452, published Jan. 26, 1999 (Ex. 1005).
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Joinder of the 1553 IPR with this proceeding. Paper 30. On May 28, 2015,
we granted the motion and joined the 1553 IPR with this case. Paper 31.
Patent Owner filed a Patent Owner Response (Paper 36, “PO Resp.”).
Nissan, Hitachi Automotive, and Hyundai (collectively, “Petitioners”) filed a
Reply (Paper 40, “Reply”).
Patent Owner filed a Motion to Exclude (Paper 45) certain lines in the
deposition transcript of Dr. Richard B. Kaner (Ex. 1024), and Exhibits
1025–1027. Petitioners filed an Opposition (Paper 49), and Patent Owner
filed a Reply (Paper 51).
An oral hearing was held on January 6, 2016. A transcript of the
hearing is included in the record. Paper 54 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioners have shown by a
preponderance of the evidence that claims 3–5 of the ’008 patent are
unpatentable.
A. The ’008 Patent
The ’008 patent, titled “Sliding Member, Inner and Outer Blades of an
Electric Shaver and Film-Forming Method,” is directed to sliding members
having a sliding surface for sliding contact with a cooperative member.
Ex. 1001, 1:7–9. According to the ’008 patent, forming a protective film on
the sliding surface of an inner or outer blade of an electric shaver “results in
delamination thereof from the sliding surface or in cutout therefor at the
edges of sliding surface, which causes wear of the sliding surface.” Id. at
1:26–33. The object of the ’008 patent, therefore, is “to prevent
delamination or cutout of a protective film provided on a sliding surface of a
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sliding member,” where the protective film “exhibits a reduced level of wear
and is excellent in sliding characteristics.” Id. at 1:60–67. The Specification
states that, although “[t]he sliding member of the present invention is
illustrated as the electric shaver inner blade in the first embodiment and as
the electric shaver outer blade in the second embodiment,” it is also
applicable to other sliding members such as rotary compressor parts, thin
film magnetic heads used in hard disk drives, and sliding parts of a video
tape recorder. Id. at 4:20–30.
Figure 1 of the ’008 patent is reproduced below.

Figure 1 depicts a sectional view of an outer blade of an electric shaver,
comprising outer blade 1, sliding surface 2, outer surface 3, and inner
surface 4. Id. at 10:66–11:5. Protective film 5a, of thickness d1, is provided
on inner surface 4, and protective film 5b, of thickness d2, is provided on
outer surface 3. Id.
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Figure 2 of the ’008 patent is reproduced below.

Figure 2 depicts a sectional view of an inner blade of an electric razor,
comprising electric shaver inner blade 11, sliding surface 12, and sides 13
and 14. Ex. 1001, 11:12–17. Protective film 15a, having thickness d1, is
provided on sliding surface 12, and protective film 15b, having thickness d2,
is provided on sides 13 and 14. Id. at 11:19–22.
The Specification states that protective films 5a, 5b, 15a, and 15b “are
respectively provided such that the ratio d1/d2 is not less than 1, preferably
in the range of 1.05~5.0, more preferably in the range of 1.1~3.3.” Id. at
11:7–11, 20–27. Examples “of the protective film are hard carbon films
comprised of diamond and/or amorphous carbon having a diamond
structure,” such as “crystalline diamond film, an amorphous diamond-like
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carbon film and a diamond-like carbon film partly containing a crystalline
structure.” Ex. 1001, 3:56–62. The hardness of the protective film
preferably is not less than 1000 Hv, and more preferably is not less than
1500 Hv (Vickers hardness). Id. at 3:5–7. The Specification further states
that depositing the protective film not only on the sliding surface, but also on
the area immediately adjacent to the sliding surface, “effectively prevents
the occurrence of delamination or cutout of the protective film.” Id. at 2:51–
55.
Claim 3 is independent, and reads as follows:
3. A sliding member having a sliding surface for sliding
contact with a cooperative member, said sliding member
having a protective film deposited not only on said sliding
surface but also on a surface region immediately adjacent
the sliding surface in such a manner that d1/d2 is
controlled to be within a range of 1.1–3.3, where d1 is a
thickness of the protective film deposited on the sliding
surface and d2 is a thickness of the protective film
deposited on the surface region immediately adjacent to
the sliding surface, the protective film comprising a hard
carbon film formed of a diamond and/or amorphous
carbon containing a diamond structure and wherein the
protective film having a thickness d1 is disposed across
the entire sliding surface of the sliding member during a
sliding operation.
Claim 4 depends from claim 3, and further recites that “said protective film
has a hardness of not less than 1000 Hv.” Claim 5 also depends from claim
3, and further requires that “said surface region adjacent the sliding surface
is on a surface angularly oriented with respect to the sliding surface.”

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II. ANALYSIS
A. Claim Interpretation
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[the claims] appear[].” 37 C.F.R. § 42.100(b). The Board, however, may
not “construe claims during IPR so broadly that its constructions are
unreasonable under general claim construction principles. . . . ‘[T]he
protocol of giving claims their broadest reasonable interpretation . . . does
not include giving claims a legally incorrect interpretation.’” Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citation
omitted). “Rather, ‘claims should always be read in light of the specification
and teaching in the underlying patent’” and “[e]ven under the broadest
reasonable interpretation, the Board’s construction ‘cannot be divorced from
the specification and the record evidence.’” Id. (citations omitted).
In the Decision on Institution, we determined that the terms in the
challenged claims did not need to be construed expressly, and we see no
reason to modify that determination in light of the record developed at trial.
B. Anticipation of Claims 3 and 5 by Hirano I
To prevail on its patentability challenge, Petitioners must establish
facts supporting its challenge by a preponderance of the evidence. 35 U.S.C.
§ 316(e); 37 C.F.R. § 42.1(d). Petitioners assert that claims 3 and 5 are
unpatentable under 35 U.S.C. § 102(b) as anticipated4 by Hirano I, and rely
on the Declaration of Dr. Mark C. Hersam (Ex. 1002, “the Hersam
Declaration). Pet. 14–22; Reply 5–23. Patent Owner disagrees with

4 Petitioners’ contentions are directed to express, not inherent, anticipation.
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Petitioners’ assertions, and relies on the Declaration of Dr. Richard B. Kaner
(Ex. 2026, “the Kaner Declaration”). PO Resp. 19–49.
1. Overview of Hirano I
Hirano I is directed to a thin film magnetic head used in a magnetic
disk device. Ex. 1004 ¶ 1. Hirano I describes “a thin film magnetic head for
writing and/or reading out information by relatively moving over a magnetic
recording medium.” Id. ¶ 8. The thin film magnetic head includes a slider
surface that faces the magnetic recording medium, and “is covered by a
carbon film with a film thickness of at most 200 Å, and an intermediate layer
is formed in at least part of a region between the carbon film and the slider
surface of the thin magnetic head.” Id. The carbon film can be a crystalline
diamond film or an amorphous diamond-like film. Id. ¶ 18.
Figures 1, 2, and 3 of Hirano I are reproduced below.

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Figures 1, 2, and 3 illustrate an embodiment of a thin film magnetic head
described by Hirano I. Id. ¶ 22. Figure 3 is a perspective view, Figure 1 is a
cross-sectional view along the line A–A in Figure 3, and Figure 2 is a cross-
sectional view along the line B–B in Figure 3. Id. Intermediate layer 2 is
formed on slider surface 1a of thin film magnetic head 1, which is
configured to face a magnetic recording medium. Id. “Rail portions 10 and
11 are formed on both edge portions of thin film magnetic head 1.” Id.
Carbon film 3 is formed on intermediate layer 2 “so as to cover not only the
slider surface 1a, but also side portions 1b to 1e in the vicinity of the edges
of” slider surface 1a. Id.
Figure 4 of Hirano I is reproduced below.

Figure 4 is a partial side view of the thin film magnetic head described by
Figures 1, 2, and 3, and illustrates the side portions in the vicinity of the
edges of slider surface 1a. Id. ¶ 23. Carbon film 3 covers slider surface 1a
and side surface portion 1c in the vicinity of edge 1f of slider surface 1a. Id.
Length X from edge 1f of carbon film 3 covering side surface portion 1c “is
typically preferably formed within the range of approximately from 5 µm to
150 µm.” Id. Hirano I states that the film thickness of carbon film 3
covering side surface portion 1c “is ordinarily formed so as to be the same as
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or less than the thickness of” carbon film 3 covering slider surface 1a. Id.
According to Hirano I, “[a] thickness of at most 200 Å is typically
preferable.” Id.
2. Claim 3
The parties focus their arguments on three elements present in claim 3
of the ’008 patent: (1) “a sliding surface for sliding contact with a
cooperative member,” (2) “a surface region immediately adjacent the sliding
surface,” and (3) “a protective film deposited . . . in such a manner that
d1/d2 is controlled to be within a range of 1.1–3.3 . . . wherein the protective
film having a thickness d1 is disposed across the entire sliding surface of the
sliding member.” As to the other elements of claim 3, we have reviewed the
evidence and arguments presented in the Petition and find that Petitioners
have shown sufficiently that those elements are disclosed. Pet. 14–22. We
address the arguments regarding the disputed elements in turn.
a. A sliding surface for sliding contact
with a cooperative member
Petitioners contend that Hirano I discloses this element of claim 3
because slider surface 1a on thin magnetic head 1 makes contact with a
magnetic recording medium during the starting and stopping process. Pet.
16 (citing Ex. 1004 ¶¶ 8, 18, 21); see id. at 20 (citing Ex. 1004 ¶¶ 3, 20).
Petitioners contend that Hirano I “disclose[s] the use of a carbon film on
both a ‘slider surface’ and ‘a side surface portion which is close to an edge
of the slider surface’ of the magnetic head to resist abrasion.” Id. at 15
(citing Ex. 1004 ¶¶ 8, 18, 21).
Patent Owner makes two arguments with respect to this element of
claim 3. First, Patent Owner argues that, because “rails 10 and 11 project
outward from the slider surface 1a along the edge portions,” the rails
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“prevent slider surface 1a from contacting the magnetic recording medium.”
PO Resp. 42. Patent Owner also argues that Figure 1 of Hirano I does not
identify rail 10 or 11 and therefore “illustrates a cross-section between the
rails, not through one of the rails.” Id. at 21–22. In support of this
contention, Patent Owner relies on the following testimony from Dr. Kaner:
The cross-section in Figure 1 could be anywhere along the length
of B–B. Despite the placement of line A–A along one of the
rails, there is no label in Figure 1 to indicate that a portion of the
rail is represented. In contrast, labels for the rails appear in
Figures 2 and 3. As such, Figure 1 more likely represents a cross-
section down the middle of B–B in Figure 3.
Ex. 2026 ¶ 96.
We disagree with Patent Owner. Hirano I refers to Figures 1 and 2
when describing slider surface 1a. Ex. 1004 ¶ 22. Figure 1, which is a
cross-sectional view of line A–A cut vertically through rail 11, shows slider
surface 1a (covered by intermediate layer 2 and carbon film 3) extending
across the top of rail 11. Id. at Fig. 1; see also Reply 10 (“Because Figure 1
does not show a rail behind the cutting plane, it must reflect a cross section
through the rail, precisely consistent with Hirano I’s description.”). Figure
2, a cross-sectional view of line B–B cut through the center of the thin film
magnetic head illustrated in Figure 3, similarly shows slider surface 1a
extending over rails 10 and 11 (with cross-hatching that shows rails 10 and
11 as part of the structure of thin film magnetic head 1). Ex. 1004, Fig. 2;
see also id. ¶ 22 (“FIG. 3 is a perspective view, and FIGS. 1 and 2 are cross-
sectional views along the line A–A in FIG. 3 and the line B–B in FIG. 3,
respectively.”) Hirano I, therefore, teaches that rails 10 and 11 are part of
slider surface 1a. Neither Patent Owner nor Dr. Kaner explain persuasively
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why Figures 1, 2, and 3 illustrate something other than what Hirano I
expressly describes.
Second, Patent Owner argues that Hirano I’s discussion of a “slider
surface,” without more, is not sufficient to establish that Hirano I’s slider
surface performs a sliding operation as recited in claim 3. PO Resp. 23.
Patent Owner argues that “the thin film magnetic head is designed to fly
above the recording medium” during operation, and “[t]he thin film
magnetic head in Hirano I only comes in contact with the magnetic
recording medium when the disk operation is stopped.” Id. at 42 (emphasis
omitted). Patent Owner further argues that “[r]esting contact is [] not the
same as sliding contact,” and, therefore, Hirano I does not disclose sliding
contact during the operation of the magnetic recording medium. Id. at 43.
According to Patent Owner, “while literally [referring to] a ‘slider surface,’
Hirano I does not teach a ‘sliding surface’ as arranged in the claim because
claim 3 requires that the ‘sliding surface’ have ‘sliding contact with a
cooperative member.” Id. at 43–44.
We are persuaded by Petitioners’ argument that Hirano I’s thin film
magnetic head makes sliding contact with the magnetic recording medium.
In support of its argument to the contrary, Patent Owner and Dr. Kaner cite
to Hirano I’s statement that “[w]hen the operation of the magnetic recording
medium is stopped, the slider surface of the thin film magnetic head comes
into direct contact with the magnetic recording medium.” PO Resp. 42; Ex.
2026 ¶ 73 (citing Ex. 1004 ¶ 3). Considered in its entirety, however, Hirano
I teaches sliding contact between the thin film magnetic head and the
magnetic recording medium during the starting and stopping operations, as
well as contact between the thin film magnetic head and the recording
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medium when the recording operation is completely stopped. See Reply 18
(citing Ex. 1004 ¶¶ 3, 21; Ex. 1002 ¶¶ 23, 63).
Specifically, Petitioners cite the following disclosures in Hirano I with
respect to the “sliding surface for sliding contact with a cooperative
member” limitation of claim 3:
When a magnetic recording medium is activated and
rotated, such a thin film magnetic head rises upward slightly
from the magnetic recording medium so that a lubricating air film
is formed between the slider surface of the thin film magnetic
head and the magnetic recording medium. However, when the
operation of the magnetic recording medium is stopped, the
slider surface of the thin film magnetic head comes into direct
contact with the magnetic recording medium. Therefore, the
slider surface of the thin film magnetic head must have abrasion
resistance.
Ex. 1004 ¶ 3.
As described above, when the magnetic recording medium is
activated and rotated, the thin film magnetic head rises upward
slightly from the surface of the magnetic recording medium, and
when the operation stops, the thin film magnetic head comes into
contact with the magnetic recording medium. At this time, the
thin film magnetic head is slightly inclined with respect to the
magnetic recording medium, so one of the edge portions of the
slider surface of the thin film magnetic head comes into contact
with the magnetic recording medium.
Id. ¶ 21.
Although Hirano I describes the thin film magnetic head resting on
the magnetic recording medium when the magnetic recording medium is
fully stopped as Patent Owner and Dr. Kaner contend, it goes on to state that
when the magnetic recording medium is activated and rotated, a lubricating
air film forms that lifts the thin film magnetic head slightly upward off of the
magnetic recording medium. Ex. 1004 ¶¶ 3, 21. The reverse is true during
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the stopping operation; Hirano I describes that the thin film magnetic head is
slightly inclined with respect to the magnetic recording medium as the
operation stops, such that the edge portions come into contact with the
magnetic recording medium. Id. ¶ 21. Accordingly, the thin film magnetic
head is in contact with the rotating magnetic recording medium when the
magnetic recording medium first starts rotating, and as it slows to a stop.
Patent Owner’s contention that Hirano I only describes contact between the
thin film magnetic head and the recording medium when the recording
medium is fully stopped ignores the starting and stopping operations also
described by Hirano I, and is unsupported by the record.
We are also persuaded that the contact between the thin film magnetic
head and the rotating magnetic recording medium during the starting and
stopping operations is “sliding contact with a cooperative member” as
recited in claim 3. As Petitioners note, “Hirano I teaches that the carbon
film is preferably amorphous diamond-like film ‘from the perspective of
slidability.’” Reply 20 (citing Ex. 1004 ¶ 18) (emphasis omitted). Although
Patent Owner argues that Hirano I’s use of the term “slider surface” does not
imply “sliding contact,” Patent Owner does not direct us to any disclosure in
Hirano I, nor have we identified any, that indicates that a “slider surface” is
something other than a surface that slides. See PO Resp. 23–24, 43–44.
Patent Owner also does not argue that the specification of the ’008 patent
provides a definition for “sliding contact” that differs from its plain and
ordinary meaning. Moreover, the ’008 patent confirms that the claimed
invention is applicable to thin film magnetic heads. See Ex. 1001, 4:28–30,
21:24–27. Because Hirano I teaches that slider surface 1a of thin film
magnetic head 1 contacts the magnetic recording medium during starting
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and stopping operations, it follows that the slider surface 1a makes sliding
contact with the magnetic recording medium as required by claim 3.
b. A surface region immediately
adjacent to the sliding surface
Petitioners contend that Hirano I discloses this element of claim 3
because Hirano I “discloses carbon film formed on both the slider surface
and a side surface portion, which is close to an edge of the slider surface.”
Pet. 17 (citing Ex. 1004 ¶¶ 8, 9, 21, 22). Petitioners further contend that “all
of the embodiments of the thin-film magnetic head depicted in the figures of
[Hirano I] show a side surface portion 1b–1e” that is “oriented at an angle
(e.g., 90°) with respect to the slider surface.” Id. at 19 (citing Ex. 1004,
Figs. 1–8).
Patent Owner argues that “Hirano I’s side surface portions cannot be
‘a surface region immediately adjacent the sliding surface’ because they too
come into contact with the magnetic recording medium.” PO Resp. 37.
According to Patent Owner, “Hirano I indicates that the side surface portions
are coated specifically to protect those surfaces from abrasion during contact
with the magnetic recording medium.” Id. at 34. Patent Owner further
argues that the combination of Hirano I’s statement that the side surface
portions are coated to protect them from severe contact and Hirano I’s
statement that the thin film magnetic head is slightly inclined with respect to
the magnetic recording medium when the operation stops such that one of
the edge portions of the slider surface contacts the magnetic recording
medium “compel an interpretation of Hirano I where both the slider surface
and the side surface portions contact the magnetic recording medium.” Id. at
37–38.
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Petitioners reply that Patent Owner “does not cite any portion of the
disclosure or claims of the ’008 Patent that excludes the ‘surface region
immediately adjacent’ from ever making sliding contact.” Reply 15.
According to Petitioner, “Hirano I explains that the slider surface, and in
particular ‘the edge portions of the slider surface,’ makes contact with the
recording medium.” Id. (citing Ex. 1004 ¶¶ 3, 21).
We agree with Petitioner. Hirano I describes, with reference to
Figures 1 and 2, that “carbon film 3 is formed so as to cover not only the
slider surface 1a, but also side surface portions 1b to 1e in the vicinity of the
edges of slider surface 1a.” Ex. 1004 ¶ 22. Referring to Figure 4, Hirano I
describes side surface portion 1c as being “in the vicinity of the edge 1f of
the slider surface 1a.” Id. ¶ 23. Similarly, Hirano I describes Figure 6 as
illustrating “another embodiment in which the intermediate layer 2 is formed
on the side surface portion 1c.” Id. ¶ 24. Hirano I, therefore, consistently
identifies side surface portions 1b to 1e as structural features distinct from
slider surface 1a.
Moreover, as Petitioners note, “Hirano I never states that there is
abrasive contact on the side surface portions,” and, “after explaining that the
edge portions of the slider surface come into contact during starting and
stopping, Hirano I explains that coating the side surface portions effectively
protects the magnetic head from severe contact.” Reply 16 (citing Ex. 1004
¶ 21). Hirano I also states that “the carbon film is also formed on the side
surface portions in the vicinity of the edges, so the thin film magnetic head
can be positioned even closer to the medium, which makes it possible to
improve the output and to achieve high densification.” Id. We agree with
Petitioners’ argument that, in order for the side surface portions to contact
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the magnetic recording medium, “the magnetic head would need to be at a
very large angle” and “[t]he close positioning of the head to the recording
medium severely limits the angle that the magnetic head could achieve prior
to contact with the recording medium.” Reply 16.
In light of these express disclosures in Hirano I, Patent Owner does
not provide sufficient objective evidence or analysis to support its contention
that “the skilled artisan would have understood that both edge portions of the
slider surface and the side surface portions in the vicinity of the edges make
contact with the magnetic recording medium.” PO Resp. 38. In any event,
as Petitioners note, Patent Owner “does not cite to any portion of the
disclosure or claims of the ’008 patent that excludes the ‘surface region
immediately adjacent’ from ever making sliding contact” with the magnetic
recording medium. Reply 15. Petitioners’ argument and supporting
evidence, as a whole, persuasively supports its position by a preponderance
of the evidence that Hirano I discloses “a side surface region immediately
adjacent the sliding surface,” as recited in claim 3. Pet. 15–17, 20–21; Reply
15–16.
c. A protective film deposited not only on said sliding
surface but also on a surface immediately adjacent the
sliding surface in such a manner that d1/d2 is controlled
to be within a range of 1.1–3.3, where d1 is a thickness of
the protective film deposited on the sliding surface and
d2 is a thickness of the protective film deposited on the
surface region immediately adjacent the sliding surface .
. . wherein the protective film having a thickness d1 is
disposed across the entire sliding surface of the sliding
member
Petitioners contend that Hirano I discloses this limitation of claim 3
because it “discloses carbon films formed on both the slider surface and a
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side surface portion, which is close to an edge of the slider surface.” Pet. 17
(citing Ex. 1004 ¶¶ 8, 9, 21, 22). Specifically, Petitioners point to Hirano I
Embodiment 11, which describes a 100 Å thick (d1) carbon film on the
slider surface and a 50 Å thick (d2) carbon film on the side surface portions.
Id. (citing Ex. 1004 ¶ 56). According to Petitioners, Hirano I therefore
“discloses a protective film deposited to have a ratio d1/d2 of 2.0,” which
meets claim 3’s requirement that d1/d2 be controlled to be within the range
of 1.1–3.3. Id. Petitioners also contend that “all of the embodiments of the
thin-film magnetic head depicted in the figures of Hirano I . . . show a hard
carbon film present across the entire slider surface 1a,” and “[t]hus, at least
by the depiction of the figures,” Hirano I teaches that “the protective film
having thickness d1 is disposed across the entire sliding surface of the
sliding member during a sliding operation” as recited in claim 3. Id. at 19
(citing Ex. 1004, Figures 1–8).
Patent Owner argues that “Embodiment 11 does not associate the
thickness of 100 Å with the ‘slider surface 1a’ or rail 10 and 11.” PO Resp.
25–26. According to Patent Owner, “to the extent that the thin film
magnetic head of Hirano I makes any contact with the magnetic recording
medium, such contact is on the rails 10 and 11,” and a skilled artisan would
have understood that “the carbon thickness is likely to vary along the radius
of the rails.” Id. at 27 (citing Ex. 2026 ¶¶ 94, 104).
Petitioners reply that claim 3 does not “require that the thickness be an
‘average,’” and the ’008 patent, “like Hirano I, provides single values for
thickness of a surface, including for an inner blade having a curved surface.”
Reply 13 (citing Ex. 1001, 15:24–26, Figs. 2, 5). Petitioners further contend
that, even if there is some variation in the thickness of the carbon film along
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the rail surfaces, Patent Owner does not show “such a significant variance
that the ratio would change from the expressly taught 2:1 all the way down
to 1:1.” Id. at 14 (emphasis omitted). According to Petitioners, “[a]t most,
[Patent Owner’s] evidence, cited for the premise that coating thickness on
curved surfaces varies, shows a variation of approximately 20%,” and that
with a 20% variation, “the thickness would be 80 Å resulting in a ratio of
80/50 (or 1.6), well within the scope of the claim.”) Id. at 15.
We are persuaded by Petitioner’s arguments. Hirano I states that, in
Embodiment 11, “a carbon film with a thickness of 100 Å was formed” on
an intermediate layer with a film thickness of 20 Å. Ex. 1004 ¶ 56. Hirano I
further states that the carbon film in Embodiment 11 “can cover not only the
slider surface portion, but also the edge portions by wrapping over the side
surface portions, as illustrated in FIGS. 1 to 3.” Id. Embodiment 11 also
discloses that “the value of X illustrated in FIG. 4 was 100 µm,” and “the
thickness of the carbon film was 50 Å on the side surface portions.” Id.
Because Embodiment 11 explicitly refers to Figures 1–4 in describing the
carbon film applied on the thin film magnetic head, it follows that the 100 Å
thick carbon film described therein is associated with slider surface 1a,
which includes rails 10 and 11. Patent Owner’s contention that Embodiment
11 does not associate the thickness of 100 Å with slider surface 1a or rails 10
and 11 is inconsistent with Hirano I’s explicit disclosure, and is
unpersuasive based on the evidence of the record.
Accordingly, based on the explicit description in Hirano I described
above, we are persuaded that Embodiment 11 expressly discloses a carbon
film having a thickness d1 of 100 Å disposed across sliding surface 1a
(including rails 10 and 11) as depicted in Figures 1–4, and a carbon film
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having a thickness d2 of 50 Å on side surface portions 1c to 1e. As a result,
Embodiment 11 discloses a d1/d2 ratio of 2, which is within the 1.1. to 3.3
range recited in claim 3. Patent Owner has not provided persuasive
reasoning or evidence in support of its assertion that the thickness
measurements reported in Embodiment 11 are not consistent across the
surfaces with which the measurements are associated.
d. Conclusion
After considering Petitioners’ and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioners have shown, by a
preponderance of the evidence, that claim 3 is unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Hirano I.
3. Claim 5
Claim 5 depends from claim 3, and further recites “wherein said
surface region adjacent the sliding surface is on a surface angularly oriented
with respect to the sliding surface.” Petitioners assert that Hirano I discloses
this additional element of claim 5 because “all of the embodiments of the
thin-film magnetic head depicted in the figures” illustrate side surface
portions 1b–1e “oriented at an angle (e.g., 90°) with respect to the slider
surface.” Pet. 19–20 (citing Ex. 1004, Figs. 1–8). Patent Owner relies on
the arguments it made with respect to claim 3, and does not present an
argument directed to the additional limitation recited in claim 5. PO Resp.
44.
As set forth above, we are persuaded that Petitioners have established
that Hirano I discloses all of the limitations of claim 3. We are also
persuaded by Petitioners’ argument and supporting evidence regarding claim
5, and find that Hirano I discloses a surface region adjacent to the sliding
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surface that is angularly oriented with respect to the sliding surface. Pet. 19–
22.
Accordingly, we determine that Petitioners have shown, by a
preponderance of the evidence, that claim 5 is unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Hirano I.
C. Obviousness of Claim 4 over Hirano I and Noda
Petitioners assert that claim 4 is unpatentable under 35 U.S.C.
§ 103(a) as being obvious over the combination of Hirano I and Noda. Pet.
18–19; Reply 23–25. Petitioners explain how the combination of Hirano I
and Noda allegedly discloses or suggests the claimed subject matter, and
also rely on the Hersam Declaration. Id. Patent Owner disagrees with
Petitioners’ assertions, and relies on the Kaner Declaration. PO Resp. 49–
53.
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious to a person
having ordinary skill in the art to which the subject matter pertains. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). A party that petitions
the Board for a determination of obviousness must show that “a skilled
artisan would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so.” Procter &
Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)
(citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
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1. Overview of Noda
Noda is directed to a sliding member that includes a diamond film
having a low coefficient of friction and a high degree of wear resistance,
which does not cause wear to any mating part. Ex. 1006, 1:6–10. Noda
states that the diamond film preferably has a thickness of 0.5 to 100 microns,
and has a Vickers hardness of 8000 or more. Id. at 2:66–3:4. Noda further
states that hard carbon film can be used in place of the diamond film, in
which case “it is most desirable to form a film having a Vickers hardness of
at least 5000, as any film having lower hardness is liable to deformation or
wear as a result of a sliding motion.” Id. at 4:33–37. According to Noda,
“[t]he mating part may be one which is made of a relatively hard material
having a Vickers hardness of at least 400.” Id. at 5:4–6. If the mating part
has a Vickers hardness lower than 400, contact with the hard diamond film
will result in deformation and abrasion of the mating part, which results in a
higher coefficient of friction. Id. at 5:11–16.
2. Analysis
Claim 4 depends from claim 3, and further recites “wherein said
protective film has a hardness of not less than 1000 Hv.” Petitioners
contend that it would have been obvious to use hard carbon films with a
hardness exceeding 1000 Hv as described in Noda in the structures described
in Hirano I “to obtain additional resistance to abrasion and wear as taught by
Noda.” Pet. 19. Petitioners contend that a person having ordinary skill in
the art “would have been motivated to do so based on the teachings of Noda
that hardness above 5000 Hv are preferred for reliable protection to wear
and deformation as a result of the sliding motion.” Id. (citing Ex. 1002
¶ 68).
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Patent Owner makes two arguments with respect to claim 4. First,
Patent Owner states that Noda “indicates that the appropriately selected
diamond film typically has a Vickers hardness of ‘8000 or more.’” PO
Resp. 50. Patent Owner argues that Noda’s disclosure of 8000 Hv or more
“does not overlap significantly” with the range “not less than 1000 Hv”
recited in claim 4. Id. at 51.
We agree with Petitioner’s arguments regarding obviousness. As
Petitioners note, Noda’s diamond films having a hardness of 8000 Hv or
more are “encompassed in the range recited in claim 4 as there is no upper
end limit claimed.” Reply 25. Noda also teaches that film hardness above
5000 Hv is preferred for reliable protection against wear and deformation as
a result of the sliding motion. Because claim 4 only requires a hardness of
“not less than 1000 Hv,” there is substantial overlap between the claimed
range and the range of wear-resistant film hardness disclosed by Noda. In
cases involving overlapping ranges, the Federal Circuit and its predecessor
court have consistently determined that overlapping ranges establish a prima
facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) (citing, for example, In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) (concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1–5% carbon monoxide”)
abutted the claimed range (more than 5% to about 25% carbon monoxide”));
In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (acknowledging that a
claimed invention was rendered prima facie obvious by a prior art reference
whose disclosed range (50–100 Angstroms) overlapped the claimed range
(100–600 Angstroms)); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)
(concluding a claimed invention was rendered prima facie obvious by a prior
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art reference whose disclosed range (0.020–0.035% carbon) overlapped the
claimed range (0.030–0.070% carbon))).
Patent Owner has not provided a persuasive justification for its
contention that the hardness range of diamond films disclosed in Noda do
not significantly overlap with the claimed range. For example, Patent
Owner argues that “a gap in the range from 1000 Hv to 8000 Hv would have
been considered significant to the skilled artisan, because the increase in
hardness between these two values is substantial, and produces distinct and
divergent physical effects in application,” and “the skilled artisan would
have regarded Noda’s requirement of hardness in excess of 8000 Hv to
contradict the claimed tolerance for hardness of not less than 1000 Hv.” PO
Resp. 51 (citing Ex. 2026 ¶ 121). Patent Owner cites Dr. Kaner’s testimony
in support of this contention, but Dr. Kaner’s statements regarding what a
person having ordinary skill in the art would have considered to be
significant are not supported by any objective evidence or analysis. Neither
Patent Owner nor Dr. Kaner points to anything in the ’008 patent that
supports Patent Owner’s contention that using a diamond film with a
hardness of 8000 Hv or greater contradicts the claimed tolerance for
hardness of not less than 1000 Hv. Claim 4, moreover, does not recite an
express upper limit on film hardness.
Second, Patent Owner argues that “[t]he skilled artisan would have
understood that film properties, such as thickness and hardness, can vary
widely depending on the application,” and therefore “would not have looked
to Noda for its hardness teaching, given that Noda’s applications require
diamond film thicknesses of 5,000 Å to 1,000,000 Å.” PO Resp. 52 (citing
Ex. 2026 ¶¶ 123–124). According to Patent Owner, “Hirano I’s requirement
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that the film not exceed 200 Å (in order to avoid output reduction) teaches
away from a combination with the teachings of Noda, where Noda requires
that the film must not be smaller than 5,000 Å (to ensure sufficient
concavities).” Id. at 53 (citing Ex. 2026 ¶ 124).
As an initial matter, demonstrating there are differences between the
prior art references is insufficient, by itself, to conclude the references teach
away from Petitioners’ proposed combination. See In re Beattie, 974 F.2d
1309, 1312–13 (Fed. Cir. 1992). “Under the proper legal standard, a
reference will teach away when it suggests that the developments flowing
from its disclosure are unlikely to produce the objective of the [patented]
invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed.
Cir. 2005) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). A prior
art reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect. See EWP Corp. v. Reliance Universal Inc., 755 F.2d
898, 907 (Fed. Cir. 1985).
We do not agree that a person having ordinary skill in the art, upon
reading Hirano I, would be discouraged from combining it with the
teachings of Noda. Patent Owner cites Dr. Kaner’s testimony in support of
its contention that a person having ordinary skill in the art would not have
looked to Noda for its hardness teaching because film properties can vary
depending on the application. Dr. Kaner’s statements regarding what a
person having ordinary skill in the art would have understood, however, are
not supported by any objective evidence or analysis. See Ex. 2026 ¶ 123.
Moreover, as Petitioners note, Dr. Kaner testified at deposition that the
hardness of a crystalline diamond film does not vary with thickness, only
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that it may be more difficult to measure hardness as the film gets thinner.
Reply 25 (citing Ex. 1024, 71:19–72:23). Given the inconsistency in
Dr. Kaner’s testimony, we do not credit Dr. Kaner’s opinion that a person
having ordinary skill in the art would not have looked to Noda for its
hardness teaching.
After considering Petitioners’ and Patent Owner’s positions, as well as
their supporting evidence, we determine that Petitioners have shown, by a
preponderance of the evidence, that claim 4 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over the combination of Hirano I and Noda.

III. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude lines 26:23–27:23, 29:5–20, 32:2–15,
34:2–14, 36:18–25, and 121:6–122:4 of Exhibit 1024 (Kaner Deposition
Transcript), and Exhibits 1025–1027. Paper 45. Because our Decision does
not rely on any of the challenged exhibits, we dismiss Patent Owner’s
Motion to Exclude as moot.

IV. CONCLUSION
For the reasons given, Petitioners have shown, by a preponderance of
the evidence, that claims 3 and 5 of the ’008 patent are unpatentable under
35 U.S.C. § 102(b) as anticipated by Hirano I, and that claim 4 of the ’008
patent is unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Hirano I and Noda.

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V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 3–5 of the ’008 patent are determined to be
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
(Paper 45) is dismissed; 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.

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FOR PETITIONER NISSAN NORTH AMERICA INC.:

Reginald J. Hill
Chad J. Ray
JENNER & BLOCK
rhill@jenner.com
cray@jenner.com

FOR PETITIONER HITACHI AUTOMOTIVE SYSTEMS, LTD.:

Pavan K. Agarwal
Michael R. Houston
FOLEY & LARDNER LLP
pagarwal@foley.com
mhouston@foley.com

FOR PETITIONER HYUNDAI MOTOR AMERICA:

Richard V. Wells
Kevin M. O’Brien
Matthew S. Dushek
Daniel A. Tallitsch
BAKER & McKENZIE LLP
Hyundai-DCT@bakermckenzie.com

FOR PATENT OWNER:
Donald R. Banowit
Robert Greene Sterne
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
dbanowit-PTAB@skgf.com
rsterne-PTAB@skgf.com

Jonathan H. Takei
Boaz Brinkman
IPVALUE MANAGEMENT, INC.
jonathan.takei@ipvalue.com
boaz.brickman@ipvalue.com