PTAB

IPR2019-00377

Apple Inc v. Singapore Asahi Chemical & Solder Industries Pte Ltd

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1. Case Identification

2. Patent Overview

  • Title: Lead-Free Solders
  • Brief Description: The ’947 patent is directed to lead-free solder alloy compositions for use in electronics manufacturing. The challenged claim recites a specific tin-silver-copper-bismuth (Sn-Ag-Cu-Bi) alloy, also known as a SAC-B alloy, defined by specific weight percentage ranges of its constituent metals.

3. Grounds for Unpatentability

Ground 1: Anticipation Under §102 - Claim 10 is anticipated by JP ’874

  • Prior Art Relied Upon: JP ’874 (Japanese Patent Application Publication No. JPH08-206874).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that JP ’874 explicitly discloses a specific solder alloy composition in "working example 7" that falls squarely within the compositional ranges of claim 10. JP ’874’s example 7 discloses a lead-free alloy comprising 93.5% Sn, 3% Ag, 0.5% Cu, and 3% Bi by weight. Each of these values falls within the ranges recited in claim 10 (76-96% Sn, 2.5-3.5% Ag, 0.2-2.5% Cu, and 0.5-5.0% Bi). Petitioner asserted that a POSITA would understand the composition to be a lead-free SAC-B alloy for use in electronic packaging, directly anticipating the claimed invention.

Ground 2: Anticipation Under §102 - Claim 10 is anticipated by Lee

  • Prior Art Relied Upon: Lee ("Getting Ready for Lead-free Solders," a 1997 article by Ning-Cheng Lee).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Lee, a research article reviewing lead-free solder development, discloses in Table 4 a specific SAC-B alloy made by Senju Metal Industry Co. with a composition that anticipates claim 10. The Senju alloy is disclosed as containing 91.0% Sn, 3.5% Ag, 1.0% Cu, and 4.5% Bi. As with JP ’874, Petitioner contended that each of these specific weight percentages falls within the exact ranges required by claim 10. The article discusses such alloys in the context of electronics assembly, meeting all limitations of the claim.

Ground 3: Obviousness Under §103 - Claim 10 is obvious over JP ’277

  • Prior Art Relied Upon: JP ’277 (Japanese Patent Application Publication No. JPH08-132277).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that JP ’277 discloses a lead-free SAC-B solder alloy with compositional ranges that substantially overlap with the ranges recited in claim 10, creating a presumption of obviousness. JP ’277 teaches ranges of 85-97.5% Sn, 1.0-3.0% Ag, 0.5-2.0% Cu, and 1.0-10% Bi. Petitioner contended that these ranges overlap extensively with the claimed ranges, particularly for Sn, Cu, and Bi, and that the claimed ranges are merely the result of routine optimization.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference obviousness ground. The motivation was to optimize a known alloy. A POSITA would have been motivated to adjust the known "result-effective variables" (the four metals) within the known ranges disclosed by JP ’277 to achieve a solder with desirable characteristics, such as good wetting and a specific melting temperature for electronics manufacturing.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because the effects of varying the percentages of Sn, Ag, Cu, and Bi in solder alloys were well-known and predictable at the time. Adjusting these known components to arrive at the claimed ranges was argued to be nothing more than routine experimentation.
    • Key Aspects: Petitioner argued that the Patent Owner could not overcome the presumption of obviousness, as the ’947 patent provided no evidence of unexpected results for the claimed ranges, and data submitted during prosecution actually undermined the patentee’s own assertions of criticality for the silver (Ag) range.

  • Additional Grounds: Petitioner asserted an alternative obviousness challenge against claim 10 based on Lee, arguing that even if Lee's disclosure was found to be ambiguous as to weight or atomic percent, it presented a finite number of predictable solutions that rendered the claim obvious. Petitioner also asserted an obviousness challenge over WO ’923/EP ’265 based on similar overlapping range arguments.

4. Key Claim Construction Positions

  • “consisting essentially of”: Petitioner argued this term should be construed to mean "including only the claimed elements and elements that do not materially affect the properties of the composition." This construction was important to show that the prior art examples from JP ’874 and Lee, which listed only the four key metals, met this limitation because no other materials affecting the alloy's properties were included.
  • “%”: Petitioner argued the percent symbol should be construed to mean "percent by weight," consistent with the patent’s specification and the common understanding in the field of metallurgy. This was critical for mapping the prior art's weight-percent disclosures directly onto the claim limitations.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claim 10 of the ’947 patent as unpatentable under 35 U.S.C. §§ 102 and 103.