PTAB

IPR2016-00043

MrsI Systems LLC v. PaloMar Technologies Inc

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1. Case Identification

2. Patent Overview

  • Title: Double Pick and Place Device
  • Brief Description: The ’327 patent discloses a method for the high-accuracy placement of a first workpiece onto a second workpiece using a "double pick and place" operation. The method involves picking a workpiece from an origination location, placing it at an intermediate location for alignment, and then picking it from the intermediate location for final placement at an attach location on the second workpiece.

3. Grounds for Unpatentability

Ground 1: Anticipation - Claims 1, 3-10, 13, and 24 are anticipated by Isaacs.

  • Prior Art Relied Upon: Isaacs (5,446,960).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Isaacs discloses every limitation of independent claims 1 and 24. Isaacs describes an automated method for assembling modules onto circuit boards using a double pick and place operation. Specifically, a transfer head picks a module (“first workpiece”) from a supply tray (“origination location”), places it into a self-aligning nest (“intermediate location”), and a separate placement head then picks the module from the nest and places it accurately onto a printed circuit board (“second workpiece” at an “attach location”). Petitioner asserted this process directly maps to the claimed steps of providing workpieces, performing a first place step to an intermediate location, and performing a second place step to an attach location, including the presence of an inherent "error deviation" at each step.

Ground 2: Obviousness over Isaacs and Mori - Claims 2, 16-18, 26, 40-42, and 48 are obvious over Isaacs in view of Mori.

  • Prior Art Relied Upon: Isaacs (5,446,960) and Mori (4,878,610).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Isaacs teaches the core double pick and place method, but does not explicitly detail the final attachment step or the specific nature of the workpieces. Mori, which discloses a die bonding apparatus, was argued to supply these missing elements. Mori teaches attaching a semiconductor die (“first workpiece”) to a ceramic substrate (“second workpiece”) using a bonding agent like solder. This combination allegedly renders obvious the dependent claims requiring an “attaching” step (claim 2), the use of “soldering” (claim 16), the workpiece being a “die” (claim 17), and the substrate being a “circuit body” (claim 18).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Isaacs and Mori because both references address improving component placement in the highly related fields of electronic and semiconductor assembly. Both disclose double pick and place methods to enhance accuracy and throughput. A POSITA implementing Isaacs’s placement method would have been motivated to incorporate a conventional, well-known attachment technique like soldering, as taught by Mori, to complete the assembly process.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely applies a known attachment technology (Mori) to a known placement method (Isaacs) to achieve the predictable result of a fully assembled electronic component.

Ground 3: Obviousness over Isaacs and Bauks - Claims 11-13 and 35-37 are obvious over Isaacs in view of Bauks.

  • Prior Art Relied Upon: Isaacs (5,446,960) and Bauks (“Automated Hybrid-Circuit Assembly,” Microelectronic Manufacturing and Testing (1983)).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims specifying quantitative error deviation limits. While Isaacs teaches the general method of using an intermediate nest for alignment, Bauks was argued to provide specific, known alignment capabilities. Bauks discloses a commercial double pick and place system (Teledyne TAC HAS-1000) with a "programmable theta capability" to rotate and align components in precise 1.8° increments. Petitioner asserted that this explicit disclosure of a high-accuracy rotational alignment mechanism renders obvious the claimed error deviation limits, such as an attach error of "between about 0 and 2 degrees" (claims 11 and 35).
    • Motivation to Combine: A POSITA looking to optimize the alignment taught generally in Isaacs would have been motivated to look to known, commercially successful systems like that described in Bauks. Bauks provides a clear, practical solution for achieving the high-precision alignment that is the objective of Isaacs, making its teachings a natural and obvious addition.
    • Expectation of Success: There would be a high expectation of success because Bauks describes an existing, functional system, demonstrating that its rotational alignment mechanism was a proven, predictable, and effective solution for minimizing placement errors in a double pick and place process.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Isaacs with Ginsberg (teaching thermal attachment methods) and Isaacs with Taguchi (teaching repeated placement steps for multiple components).

4. Key Claim Construction Positions

  • "first workpiece": Petitioner proposed the construction "displaceable workpiece." This broad construction was argued to be supported by the specification and claim differentiation, preventing the claims from being limited to semiconductor components. This broadness supported the argument that the claimed method was a generic, well-known process.
  • "error deviation": Petitioner proposed the construction "linear distance between an actual and target location or angular difference between the orientation of an actual and target location." This construction established that the term is not limited to any particular quantum of error and can include zero, which facilitated mapping prior art that did not explicitly quantify error but inherently involved some deviation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-48 of the ’327 patent as unpatentable.