Apple Inc v. ImberaTek LLC

1. Case Identification

• Case #: IPR2025-00580
• Patent #: 8,222,723
• Filed: February 5, 2025
• Petitioner(s): Apple Inc.
• Challenged Claims: 1-9

2. Patent Overview

• Title: Electric Module Having a Conductive Pattern Layer
• Brief Description: The ’723 patent discloses an electronic module with at least one component embedded within an insulating material. The invention centers on using two distinct hardened adhesive layers—a first layer on the component's surface and a second layer contacting the first layer and a conductive-pattern layer—where the two adhesive layers have different compositions to achieve desired properties.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Tuominen967Pub in view of Capote

• Prior Art Relied Upon: Tuominen967Pub (Application # 2006/0278967) and Capote (Patent 6,335,571).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tuominen967Pub, which is the publication of the parent application to the ’723 patent, discloses every element of the challenged claims except for the specific limitation that the two required adhesive layers have different compositions. Petitioner contended that Capote remedies this deficiency. Capote allegedly teaches a "multilayer encapsulant" for flip-chip assemblies that explicitly uses two adhesive layers with different compositions, particularly with tailored thermal expansion coefficients, to improve reliability and mitigate mechanical stress.
  • Motivation to Combine: A POSITA would combine Capote’s teaching with the structure in Tuominen967Pub to solve the well-known and recognized problem of thermal expansion mismatch between an electronic component and its surrounding materials, an issue both references expressly address. The combination represented using a known technique (different adhesive compositions) to improve a known device for the predictable benefits of enhanced structural integrity and reliability.
  • Expectation of Success: Petitioner asserted a high expectation of success, arguing the combination involves the straightforward application of a demonstrated solution from Capote to a known problem in the analogous field of semiconductor packaging described in Tuominen967Pub.

Ground 2: Claims 1-9 are obvious over Asahi in view of Capote

• Prior Art Relied Upon: Asahi (Patent 6,489,685) and Capote (Patent 6,335,571).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Asahi discloses a base "component built-in module" with an embedded semiconductor connected to wiring patterns. Asahi teaches using a "sealing resin," such as an underfill resin, between the component and the wiring. Petitioner argued that a POSITA would look to Capote to implement this sealing resin. Capote’s teaching of a multilayer underfill encapsulant, with its two layers of differing compositions, would be applied to Asahi’s basic structure.
  • Motivation to Combine: A POSITA would be motivated to implement Asahi’s sealing resin using Capote’s multilayer approach to enhance system performance and reduce solder joint fatigue—a known disadvantage in conventional flip-chip processes that both references seek to solve. As Asahi does not specify the precise composition of its resin, Capote provided a logical and known method for improvement.
  • Expectation of Success: Petitioner claimed success would be expected because the combination applies a known technique for improving flip-chip package reliability (from Capote) to a similar electronic module (from Asahi) to achieve the predictable result of improved durability.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 1B) against claims 1-9 based on Tuominen967Pub alone. The argument was that even without Capote, a POSITA would have found it obvious to use different adhesive compositions for the two disclosed adhesive layers as a simple design choice to optimize adhesion and thermal properties for different surfaces.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner contended the ’723 patent is not entitled to its claimed April 1, 2003, priority date. The critical limitation requiring the two adhesive layers to have "a second composition different from the first composition" was allegedly new matter first introduced in the February 3, 2010, continuation-in-part application. This argument, if successful, establishes a later critical date and makes Tuominen967Pub (published 2006) available as prior art under pre-AIA 35 U.S.C. §102(b).

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial of institution under both 35 U.S.C. §325(d) and §314(a).
  • §325(d): The petition asserted that denial would be improper because the primary references (Tuominen967Pub, Asahi, and Capote) were never considered or applied during prosecution. Petitioner emphasized that these references teach the exact limitation—the use of two adhesive layers with different compositions—that the Examiner cited as the sole reason for allowance. It was further argued that the Examiner committed a material error by failing to properly evaluate the patent's priority claim, which would have revealed Tuominen967Pub as invalidating prior art.
  • Fintiv Factors: The petition contended that the Fintiv factors weigh in favor of institution. Key arguments included that the parallel district court litigation is in its early stages, a motion to transfer is pending, and the Board’s Final Written Decision would likely issue months before a potential trial, minimizing concerns of inefficiency or duplicative efforts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-9 of the ’723 patent as unpatentable.