PTAB

IPR2013-00523

GoerTek Electronics Inc v. Knowles Electronics LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Surface Mount Silicon Condenser Microphone Package
  • Brief Description: The ’331 patent describes a surface-mountable package for a silicon condenser microphone. The invention comprises a substrate with a microphone die attached, a cover that joins with the substrate to form a protective housing, and various electrical connections for mounting to an external circuit board.

3. Grounds for Unpatentability

Ground 1: Obviousness over Minervini ’004 and Pecht - Claims 1-2, 4-5, and 12 are obvious over Minervini ’004 in view of Pecht.

  • Prior Art Relied Upon: Minervini ’004 (Application # 2002/0102004) and Pecht (a 1998 packaging treatise).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner first argued that the challenged claims were not entitled to their parent application's priority date due to the newly added term “rigid printed circuit board,” making the claims’ effective filing date May 19, 2011. Consequently, Minervini ’004, the parent application published in 2002, qualifies as prior art. Petitioner contended that Minervini ’004 discloses every feature of the challenged claims except for the explicit requirement that the printed circuit board (PCB) be “rigid.” Pecht, a treatise on electronic packaging, was cited to show it was well-known in the art before 2011 that FR-4 material, which is disclosed in Minervini ’004 for making the PCB, was commonly used to manufacture rigid PCBs.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to use the FR-4 material disclosed in Minervini ’004 to create a rigid PCB as taught by Pecht. This modification would have been a simple, obvious design choice to render a stronger and sturdier microphone package, a predictable and desirable characteristic.
    • Expectation of Success: A POSITA would have had a high expectation of success, as using FR-4 to create rigid PCBs was a standard and well-understood practice in the art at the time.

Ground 2: Anticipation and Obviousness over Halteren and Pecht - Claims 1-2, 4, and 11-13 are anticipated by Halteren, and claim 5 is obvious over Halteren in view of Pecht.

  • Prior Art Relied Upon: Halteren (Patent 6,324,907) and Pecht (a 1998 packaging treatise).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Halteren discloses every element of claims 1-2, 4, and 11-13. While the patent owner previously argued Halteren did not disclose a "rigid printed circuit board," Petitioner asserted that the substrate portion in Halteren is inherently rigid. This is because it is a multilayered structure in a small, constrained area, and Halteren further teaches adding a lid "to increase a stiffness of the supporting area," confirming its rigidity. For claim 5, which requires the rigid PCB to comprise FR-4 material, Petitioner argued this limitation was not taught by Halteren. Instead, Petitioner asserted it would have been obvious to make Halteren's rigid substrate from FR-4 material as taught by Pecht, which established that FR-4 was a common material for rigid PCBs.
    • Motivation to Combine: For claim 5, a POSITA would have been motivated to implement Halteren's rigid substrate using FR-4 material as suggested by Pecht. This was a common, available, and cost-effective material choice for achieving the desired rigidity in a PCB substrate.
    • Expectation of Success: The combination would have yielded the predictable result of a rigid, FR-4 based microphone package, as the properties of FR-4 were well-known.

Ground 3: Obviousness over Watabe, Hietanen, and Dehé - Claims 1-2, 4-5, and 11-13 are obvious over Watabe in view of Hietanen, Dehé, and/or Pecht.

  • Prior Art Relied Upon: Watabe (Japanese Unexamined Pat. App. No. S63-275926), Hietanen (Patent 6,178,249), and Dehé (a 1999 technical article).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Watabe discloses a surface mount MEMS package for a pressure sensor that matches nearly all mechanical and electrical elements of the challenged claims, including a rigid substrate, a cover, and solder pads. The primary difference is that Watabe discloses a "pressure sensing chip" rather than a "silicon condenser microphone." Hietanen and Dehé were cited for teaching the use of silicon condenser microphones in similar MEMS packages.
    • Motivation to Combine: A POSITA would have found it obvious to substitute the pressure sensor in Watabe with the known silicon condenser microphone from Hietanen or Dehé. Dehé provided explicit motivation, teaching that pressure sensors and microphones are interchangeable in packaging design because they share similar fabrication challenges and "mechanical sensitivity of the membranes." Modifying Watabe's package to house a microphone instead of a pressure sensor was a simple substitution of one known MEMS component for another to create a microphone package with predictable performance benefits.
    • Expectation of Success: Success was expected because the packaging requirements for both component types were known to be highly similar, ensuring that the resulting microphone package would function as intended.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including grounds based on combinations involving Chan (Patent 5,838,551), Schuenemann (a 1999 journal article), and Baumhauer (Patent 4,533,795), which relied on similar principles of substituting known microphone components and packaging features into existing MEMS package designs.

4. Key Claim Construction Positions

  • Petitioner argued for the broadest reasonable construction of the term "peripheral portion" as used in claims 1 and 11.
  • Petitioner contended the term should mean "a portion of the periphery of the top surface." This construction was important for the argument that Halteren meets the limitation, as its cover is attached to only one end portion of the substrate, which Petitioner argued constitutes "a portion of the periphery."

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention of the petition was that claims 1-2, 4-5, and 12 were not entitled to the priority date of their parent applications.
  • Petitioner argued that the parent applications failed to provide written description support for the limitation "rigid printed circuit board," which was added when the application for the ’331 patent was filed. Because the parent applications only disclosed a genus (PCBs generally, made of FR-4) without describing the species (rigid PCBs), they did not demonstrate possession of the later-claimed invention. This argument, if successful, would establish a later priority date for those claims, allowing Minervini '004 to be used as prior art against them.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 4-5, and 11-13 of the ’331 patent as unpatentable.