PTAB

IPR2013-00614

GoerTek Inc v. Knowles Electronics LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Miniature Silicon Condenser Microphone
  • Brief Description: The ’616 patent discloses a package for containing a transducer, such as a MEMS microphone. The package consists of five primary components: a substrate with an aperture, a transducer located near the aperture, a cover attached to the substrate to form an internal volume for the transducer, and a sealing ring on the bottom surface of the substrate surrounding the aperture to seal an acoustic path during mounting.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dehé and Halteren - Claims 1-2, 8, 11-18, and 21 are anticipated by Dehé or obvious over Dehé in view of Halteren.

  • Prior Art Relied Upon: Dehé (German Patent No. DE10303263B4), Halteren (Patent 6,324,907).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Dehé, a German patent, discloses a nearly identical surface-mounted MEMS microphone package anticipating most claims. It allegedly teaches a substrate ("support material 25") with an aperture ("sound inlet opening" 213), a transducer ("microphone" 2), a cover (21), and a sealing ring (212) on the bottom of the substrate for mounting to a circuit board. For dependent claims requiring EMI shielding (e.g., claims 11-16), Petitioner argued that Halteren teaches standard methods for shielding a similar package, such as fabricating the lid from an electrically conductive material that functions as an EMI shield.
    • Motivation to Combine: A POSITA would combine Dehé with Halteren because the microphone package in Dehé, containing both a sensor and an IC on the same chip, would predictably benefit from the well-known practice of EMI shielding. Halteren taught these standard shielding methods in the context of a nearly identical package, providing a clear reason to incorporate its teachings.
    • Expectation of Success: Petitioner argued that combining a known package structure (Dehé) with a standard solution (Halteren's EMI shielding) to address a known problem would have been a simple modification yielding predictable results.

Ground 2: Obviousness over Schuenemann, Halteren, and Premachandran - Claims 1-2, 8, and 18 are anticipated by Schuenemann; Claims 11-17 and 21 are obvious over Schuenemann in view of Halteren and/or Premachandran.

  • Prior Art Relied Upon: Schuenemann (a 1999 journal article), Halteren (Patent 6,324,907), Premachandran (a 2000 conference proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schuenemann discloses a versatile, modular MEMS packaging framework that anticipates the independent claim. Schuenemann allegedly shows a substrate with an aperture, a transducer (e.g., a "microvalve"), a cover forming a volume, and a "sealring" for sealing fluidic vias. For the dependent claims teaching EMI shielding, Petitioner relied on Halteren and Premachandran. Premachandran was cited for teaching box shielding or wrapping a package in copper foil, while Halteren was cited for making the package components themselves conductive.
    • Motivation to Combine: A POSITA would be motivated to add EMI shielding to Schuenemann's modular system to protect the "smart miniaturized sensors, actuators and control systems" it describes. Since EMI shielding was a well-known problem with many available solutions, it would have been a common-sense improvement to combine Schuenemann with the standard shielding methods taught by Halteren or Premachandran.
    • Expectation of Success: Incorporating standard EMI shielding from Halteren or Premachandran into the modular package of Schuenemann was presented as a straightforward modification with a high expectation of success.

Ground 3: Obviousness over Otani and Premachandran - Claims 1-2, 8, 17-18, and 21 are anticipated by Otani; Claims 11-16 are obvious over Otani in view of Premachandran.

  • Prior Art Relied Upon: Otani (Patent 5,783,748), Premachandran (a 2000 conference proceeding).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Otani anticipates the basic package structure by disclosing a package for a semiconductor pressure sensor that includes a substrate with an aperture, a transducer, a cover, and an O-ring (17) that serves as the claimed sealing ring. To address the EMI shielding limitations, Petitioner argued a POSITA would look to a reference like Premachandran, which teaches how to shield similar plastic/resin packages using copper foil or box shields.
    • Motivation to Combine: A POSITA would recognize that the resin-based package of Otani would benefit from EMI shielding, a known issue for such packages. Premachandran teaches how to shield a similar plastic transducer package. This combination would have been an obvious design choice to improve the robustness of Otani's package.
    • Expectation of Success: Modifying the resin package of Otani to include the standard EMI shielding taught by Premachandran was argued to be a simple, predictable design choice for a known problem.

  • Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges based on combinations of Hayashi, Koshimizu, Baumhauer, and Watabe, often in view of Halteren, Schuenemann, or Premachandran, relying on similar arguments for combining basic package structures with known sealing and shielding techniques.

4. Key Claim Construction Positions

  • Petitioner argued that the claim term "aperture" must be construed as "an opening in the package to allow external forms of energy to reach the transducer, e.g., an acoustic port."
  • This construction was argued to be critical to distinguish the "aperture" from a "back volume" opening, which serves a different function (providing a pressure reference) and was the only type of opening disclosed in the parent applications in connection with a sealing ring. This distinction underpins Petitioner's argument that the claimed invention lacks priority date support.

5. Key Technical Contentions (Beyond Claim Construction)

  • Petitioner contended that the asserted claims of the ’616 patent are not entitled to the priority date of their parent applications and should only be entitled to the February 10, 2006 filing date of the Continuation-In-Part (CIP) application.
  • The core of this argument was that the limitation "a sealing ring...surrounding the aperture" lacks written description support in the parent applications. Petitioner argued the parent applications only disclosed sealing a "back volume," which is functionally and structurally distinct from the claimed "aperture" (an acoustic port). Therefore, this key limitation was allegedly new matter added in the CIP, rendering the claims invalid over prior art published before the 2006 filing date.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 8, 11-18, and 21 of the ’616 patent as unpatentable.