PTAB

IPR2013-00108

Analog DevIces Inc v. KNowles ElecTronics LLC

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1. Case Identification

2. Patent Overview

  • Title: Miniature Silicon Condenser Microphone
  • Brief Description: The ’616 patent discloses a package for a microelectromechanical systems (MEMS) transducer, such as an acoustic sensor. The package includes a substrate with an aperture, a cover defining a volume for the transducer, and a sealing ring on a surface of the substrate opposite the volume.

3. Grounds for Unpatentability

Ground 1: Obviousness over Giasolli and Kaschke - Claim 2 is obvious over Giasolli in view of Kaschke.

  • Prior Art Relied Upon: Giasolli (“MEMS Packaging Introduction” slides, Nov. 2000) and Kaschke (Patent 5,999,821).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Giasolli discloses every element of the challenged claim. Giasolli's slide 41 illustrates a MEMS acoustic sensor (transducer) package with a lead frame (substrate) containing an aperture. A plastic cap (cover) is secured to the substrate, defining a volume for the transducer. Giasolli shows an "Adhesive" on the bottom surface of the substrate at the periphery of the aperture, which Petitioner contended is the claimed "sealing ring." The transducer is shown completely covering the aperture, a necessary arrangement for the device to function.
    • Motivation to Combine (for §103 grounds): Petitioner asserted that Kaschke confirms a person of ordinary skill in the art (POSITA) would understand Giasolli's "Adhesive" functions as a sealing ring. Kaschke, which also discloses a MEMS microphone, explicitly teaches using an adhesive layer arranged in a sandwich configuration to provide an "acoustic seal" around an aperture. A POSITA reviewing Giasolli’s similar structure would be motivated to look to a reference like Kaschke in the same field, which clarifies that such an adhesive ring inherently provides the necessary sealing function.
    • Expectation of Success: A POSITA would have a high expectation of success, as Kaschke does not modify the structure of Giasolli but merely explains the known, inherent function of an adhesive ring used in this context.
    • Key Aspects: Petitioner emphasized that in a co-pending inter partes reexamination (95/001,364), the USPTO had already issued an Action Closing Prosecution finding parent claim 1 of the ’616 patent unpatentable over the same Giasolli/Kaschke combination.

Ground 2: Obviousness over Henning 1, Henning 2, and Harris - Claim 2 is obvious over Henning 1 and Henning 2 in view of Harris.

  • Prior Art Relied Upon: Henning 1 (“Microfluidic MEMS,” 1998 IEEE Aerospace Conference Proceedings), Henning 2 (“Microfluidic MEMS for Semiconductor Processing,” Nov. 1998 IEEE Transactions), and Harris (Patent 5,865,417).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Henning references disclose a mass flow controller (MFC) package containing transducers (a pressure sensor and a proportional valve) on a ceramic substrate with apertures and a metal lid (cover) that forms a hermetic volume. Petitioner asserted that diagrams in Henning 1 (Fig. 10) and Henning 2 (Fig. 9) show black ovals on the substrate surface opposite the volume, surrounding the apertures, which represent the claimed sealing rings. The petition contended that the transducers in Henning must completely cover their respective apertures as a functional necessity to maintain a vacuum reference pressure within the hermetic volume and prevent gas leakage.
    • Motivation to Combine (for §103 grounds): Petitioner introduced Harris to remove any ambiguity regarding the sealing rings in Henning. Harris, which discloses a remarkably similar microfluidic valve from the same company and co-authors as Henning, explicitly teaches that its device can be "bolted to a gas manifold with the inlet port 52 and outlet port 114 surrounded by O-rings." A POSITA seeking to implement Henning's MFC, which is designed for use in a gas-flow system, would be motivated to use the explicit O-ring sealing solution taught by Harris to ensure a predictable, leak-free connection to a manifold.
    • Expectation of Success: A POSITA would have a clear expectation of success in applying Harris’s O-ring teaching to Henning’s device, as it involves using a standard sealing component for its intended purpose in a nearly identical system to achieve the predictable result of a functional, sealed fluidic connection.
    • Key Aspects: Petitioner highlighted that the Henning and Harris references were not of record during the original prosecution of the ’616 patent, meaning the examiner had not previously considered this combination of art teaching sealing rings.

4. Key Claim Construction Positions

  • "substrate": Petitioner asserted that the Patent Owner, in a related reexamination proceeding, effectively conceded that the term "substrate" is broad enough to encompass the lead frame structure disclosed in Giasolli. This concession supports Petitioner's mapping of Giasolli to the claim.
  • "package": Petitioner argued that the preamble term "package" is not a limitation on the claim. However, it contended that even if it were considered limiting, the prior art references each disclose a qualifying package (e.g., Giasolli's lead frame package, Henning's advanced ceramic package).

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claim 2 of the ’616 patent as unpatentable under §103.