Singapore Asahi Chemical & Solder Industries PTE Ltd.

Patent Trials and Appeals Board

May 27, 2020

IPR2019-00377 (P.T.A.B. May. 27, 2020)

Trials@uspto.gov Paper 40
571.272.7822 Entered: May 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

APPLE INC.,
Petitioner,

v.

SINGAPORE ASAHI CHEMICAL & SOLDER
INDUSTRIES PTE LTD.,
Patent Owner.
_______________

IPR2019-00377
Patent 6,176,947 B1
_______________

Before CHRISTOPHER L. CRUMBLEY, J. JOHN LEE, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

ORDER
Denying Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64
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I. INTRODUCTION
Petitioner Apple Inc. challenges the patentability of claim 10 of
U.S. Patent No. 6,176,947 B1 (Ex. 1001, “the ’947 patent”). We have
jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision
under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, we
determine that Petitioner has proven by a preponderance of the evidence that
claim 10 of the ’947 patent is unpatentable.
A. PROCEDURAL HISTORY
Petitioner filed a Petition seeking inter partes review of claim 10 of
the ’947 patent. Paper 2 (“Pet.”). Patent Owner filed a Preliminary
Response. Paper 5. We instituted trial. Paper 10 (“DI” or “Institution
Decision”).
During trial, Patent Owner filed a Response (Paper 14, “PO Resp.”),
Petitioner filed a Reply (Paper 28), and Patent Owner filed a Sur-reply
(Paper 32). Additionally, Petitioner filed a Motion for Additional Discovery
(Paper 16), which Patent Owner opposed (Paper 21). We granted the motion
(Paper 22). Patent Owner filed a Motion to Exclude Evidence (Paper 33),
which Petitioner opposed (Paper 34).
Petitioner relies on the declaration testimony of John W. Morris, Jr.,
Sc.D. See Ex. 1004. Patent Owner relies on the declaration testimony of
Ephraim Suhir, Ph.D. (Ex. 2012), and Jennie S. Hwang, Ph.D. (Ex. 2013).
Oral argument was held on February 28, 2020. The transcript of that
argument was entered into the record. Paper 39 (“Hearing Tr.”).
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B. RELATED MATTERS
The parties identify the following related case: Singapore Asahi
Chem. & Solder Indus. v. Apple Inc., No. 1:18-cv-01662-DCN (N.D. Ohio).
Pet. 3; Paper 4 (PO’s Mandatory Notices), 1. In the Preliminary Response,
Patent Owner stated that the case has been dismissed without prejudice, and
that the district court “gave Patent Owner leave to re-open the action within
30 days of the conclusion of the inter partes review process.” Paper 5, 22–
23.
C. THE ’947 PATENT
The ’947 patent relates to lead-free solders. E.g., Ex. 1001, code (54)
(title), claim 10. The ’947 patent discloses that, “due to lead toxicity and the
control or prohibition of the use of lead on a global landscape[,] . . . many
initiatives on a world-wide basis have been taken to find suitable lead-free
alternatives” to commonly used Pb-Sn (lead-tin) solder alloys. Id. at 1:12–
17. The ’947 patent recognizes that “[a] number of lead-free solders have
been proposed in the art,” and the ’947 patent describes several known lead-
free solders, including, e.g., a particular solder alloy disclosed by U.S. Patent
No. 5,520,752 (issued May 28, 1996) that comprises 86 to 97% Sn (tin), 0.3
to 4.5% Ag (silver), 0 to 9.3% Bi (bismuth), and 0 to 5% Cu (copper).
Compare id. at 2:35–38 (known solder alloy), with id. at 8:18–20 (claim 10).
After describing certain prior art solder alloys, the ’947 patent goes on
to identify several “advantages of this invention,” including “high-strength,”
“high fatigue resistance,”1 a “moderate melting temperature range,”

1 The parties agree that the terms “fatigue resistance” and “fatigue life” are
interchangeable. See Hearing Tr. 7:22–8:4, 54:13–17.
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desirable wettability characteristics, and “adapt[ability] to the established
electronic manufacturing process and infrastructure.” Id. at 2:58–3:10. The
’947 patent then describes the effects of modifying the concentrations of
various metals on the properties of the solder alloy. Id. at cols. 3–6. For
example, the ’947 patent discloses that “Cu and Ag combined in proper
dosages not only increase the fatigue resistance but also lower the melting
temperature.” Id. at 3:62–64.
Of particular relevance to the alloy of claim 10 (the only claim
challenged in the Petition), the ’947 patent includes the following
disclosures:
The content of 2.5–3.5% Ag is critical for solder alloys in
Sn/Cu/Ag/Bi system in contrast to 2.5–4.5% Ag for any other
systems containing In. A content of Ag beyond 3.5 in
Sn/Cu/Ag/Bi system induces alloy brittleness. For example, the
fatigue life and plasticity of an alloy (93.3 Sn/0.5 Cu/3.1 Ag/3.1
Bi) at 3.1% Ag are about 152% and 138% higher than an alloy
(90.5 Sn/1.7 Cu/4.7 Ag/3.1 Bi) at 4.7% Ag. The content of 2.5%
Ag is a minimum to provide a superior fatigue resistance. Below
2.5%, the fatigue resistance is lowered. For example, the fatigue
lives of alloys 93.3 Sn/0.5 Cu/3.1 Ag/3.1 Bi, and 92.2 Sn/1.5
Cu/3.2Ag/3.1 Bi and 91.5 Sn/2 Cu/3.4 Ag/3.1 Bi are about 538%,
366% and 281% higher than that of an alloy (93 Sn/2 Cu/2 Ag/3
Bi) at 2% Ag.
* * *
In another preferred embodiment of the invention, there is
provided a solder alloy containing about 92% Sn, 2% Cu, 3% Ag
and 3% Bi. The alloy has melting temperatures from about 209°
C. to 212° C. The tensile strength and fatigue life of the alloy are
89 MPa and 8135 cycles, respectively. The fatigue life of this
invention is 223% higher than that of 63 Sn 37 Pb, and the tensile
strength is 189% higher than that of 63 Sn/37 Pb.
Id. at 5:22–34, 6:28–35.
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The ’947 patent does not say anything about impurities that might be
present in its alloys. See generally Ex. 1001. In describing preferred
embodiments, the ’947 patent identifies the elements and weight percentages
of the elements included in the alloy, but it does not describe impurities.
See, e.g., id. at 5:62–6:43.
D. CHALLENGED CLAIM
Claim 10, the only claim challenged in the Petition, is reproduced
below (paragraph breaks added).
10. A lead-free solder alloy consisting essentially of
76% to 96% Sn,
0.2% to 2.5% Cu,
2.5% to 3.5% Ag, and
0.5% to 5.0% Bi.
E. PRIOR ART RELIED UPON
Petitioner relies on the following references, as well as the
Declaration of John W. Morris, Jr., Sc.D. (Ex. 1004).
Reference Title or Patent/Pub. No. Date Exhibit
Yamaguchi ’874 JPH08206874A Aug. 13, 1996
1005, 1006
(English
translation)
Lee
Getting Ready for Lead-
free Solders, 9 Soldering
& Surface Mount Tech. 65
1997 1007
Matsumoto JPH08132277A May 28, 1996
1010, 1011
(English
translation)
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Reference Title or Patent/Pub. No. Date Exhibit
Yamaguchi ’923 WO97/28923 Aug. 14, 1997
1023, 1024
(English
translation)
F. INSTITUTED GROUNDS OF UNPATENTABILITY
We instituted inter partes review based on the following grounds of
unpatentability asserted by Petitioner:
Claims Challenged 35 U.S.C. §2 References
10 102(b) Yamaguchi ’874
10 102(b) Lee
10 103(a) Lee
10 103(a) Matsumoto
10 103(a) Yamaguchi ’9233

2 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
from which the ’947 patent issued was filed before that date, the pre-AIA
statutory framework applies.
3 In addition to the certified translation of Yamaguchi ’923, Petitioner
includes EP 0 878 265 A1, published Aug. 14, 1997 (Ex. 1017), which
Petitioner identifies as “the EP national phase application with an English
translation of [Yamaguchi ’923].” Pet. 54. Petitioner styles its challenge to
claim 10 as being over “[Yamaguchi] ’923/EP ’265,” and Petitioner’s
analysis includes parallel citations to Yamaguchi ’923 and EP ’265. See id.
at 54–56. In the Institution Decision, we observed that “neither party
identifies any material difference between Yamaguchi ’923 and EP ’265,”
and “we cite[d] only the certified translation of Yamaguchi ’923 (Ex. 1024)”
in the Institution Decision. DI at 5 n.2. Because neither party has objected
to that, we do the same in this Decision.
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II. DISCUSSION
A. LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is “a prism or lens” through which
we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we adopted
Petitioner’s formulation of the level of ordinary skill in the art:
For purposes of institution, we find that a person of ordinary skill
in the art would have had “an advanced degree, or equivalent
(i.e., a Bachelor’s degree and a number of years of experience),
in the field of materials science, metallurgy, or a related technical
subject,” and “two to five years of experience in the
development, analysis and/or advanced application of solder
alloys.”
DI 6–7 (quoting Pet. 5). We also observed that Petitioner’s proposal is
“supported by the prior art of record.” Id. at 7.
Following institution, Patent Owner “agree[d] with the Board’s
determination,” but, in addressing the level of ordinary skill in the art, Patent
Owner argued that a person of ordinary skill would not have been able “to
create or select the most suitable alloy for use in specific applications.” See
PO Resp. 13 (citing Pet. 5–6). We view Patent Owner’s argument as
directed to the merits of the proposed obviousness grounds, rather than as
being directly relevant to defining the level of ordinary skill in the art. We
address Patent Owner’s contentions concerning the merits of the proposed
grounds below. Given that there is not a material dispute concerning the
level of ordinary skill adopted in the Institution Decision, and the evidence
of record continues to support that definition after trial, we maintain that
level of ordinary skill for purposes of this Final Written Decision.
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B. CLAIM CONSTRUCTION
“In an inter partes review proceeding, a claim of a patent . . . shall be
construed using the same claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
§ 42.100(b) (2018). That standard “includ[es] construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005).
We discuss two terms below. No other claim term needs to be
expressly construed to reach a decision in this case. See Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms
need only be construed “to the extent necessary to resolve the controversy”);
see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
partes review).
1. “consisting essentially of”
Claim 10 recites, “[a] lead-free solder alloy consisting essentially of”
certain ingredients. Ex. 1001, 8:18–20 (claim 10) (emphasis added). The
parties agree that the commonly accepted meaning of the transitional phrase
“consisting essentially of” applies in this case. See Pet. 6; PO Resp. 15.
Both parties cite PPG Industries v. Guardian Industries Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998), as providing the accepted meaning of the
phrase. See Pet. 6; PO Resp. 15. PPG Industries states: “By using the term
‘consisting essentially of,’ the drafter signals that the invention necessarily
includes the listed ingredients and is open to unlisted ingredients that do not
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materially affect the basic and novel properties of the invention.” 156 F.3d
at 1354. Consistent with PPG Industries and the position of the parties, we
interpret the transitional phrase “consisting essentially of” to permit a
composition within the scope of claim 10 to include only (1) “listed
ingredients,” and (2) “unlisted ingredients that do not materially affect the
basic and novel properties of the invention.”4
Patent Owner also argues that “the ‘novel and basic properties’ of the
claim 10 invention includes at least fatigue resistance,” and, therefore, that
the phrase “consisting essentially of” in claim 10 “would be understood by
one of ordinary skill in the art . . . to include only the listed elements and
unlisted elements that do not materially affect at least the composition’s
fatigue resistance.” PO Resp. 16. To the extent necessary, we address that
argument below in our discussion of the proposed grounds of
unpatentability. Our findings and conclusions in this case would be the
same regardless of whether we expressly identify fatigue resistance as a
basic and novel property of the invention as part of our construction of the
term “consisting essentially of.”
2. “lead-free solder alloy”
In the Petition, Petitioner does not expressly propose a construction
for the term “lead-free solder alloy.” In Patent Owner’s Response, Patent
Owner asserts that a lead-free solder alloy is a metal alloy (1) “with a
melting temperature that is below 427 °C (800.6 °F) that wets and bonds to

4 This construction is consistent with our approach to this term in the
Institution Decision. See DI 7–8.
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other metals,” and (2) that “does not contain intentionally added lead
element.” PO Resp. 14.
In the Reply Brief, Petitioner does not dispute that a lead-free solder
alloy “does not contain intentionally added lead element.” Reply Br. 2.
Petitioner argues, however, that claim 10 “lacks any temperature limitation,”
and that “importing one into the meaning of the alloy term would be
inappropriate,” particularly given that other claims of the ’947 patent
expressly specify melting temperature requirements. See id.
In the Sur-reply, Patent Owner responds that a person of ordinary skill
would have understood a solder alloy to be “solderable, i.e., having a
melting temperature of less than 427°C,” because “[t]his was the ordinary
and customary meaning of the term ‘solder alloy’ at the time.” Sur-reply 3.
We agree with Petitioner that claim 10 does not require a melting
temperature below 427°C. The intrinsic record, including the claims
themselves, supports Petitioner’s position. See Phillips v. AWH Corp., 415
F.3d 1303, 1314, 1317 (Fed. Cir. 2005) (explaining that “the claims
themselves provide substantial guidance as to the meaning of particular
claim terms” and that the Federal Circuit has “emphasized the importance of
intrinsic evidence in claim construction”). Patent Owner does not identify
any disclosure of a temperature of 427°C in the ’947 patent, see PO
Resp. 14, and, based on our review, the ’947 patent does not mention a
temperature of 427°C in any context, much less does it indicate that the term
“solder alloy” is limited to compositions having a melting point below that
temperature, see generally Ex. 1001.
Moreover, as Petitioner points out, see Reply 2, certain claims of the
’947 patent are similar to claim 10 except that they expressly recite a
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required melting temperature for the composition, while claim 10 says
nothing about melting temperature. See Ex. 1001, 7:11–15 (claim 1), 8:10–
13 (claim 8). That indicates that claim 10 should not be interpreted as
including a melting temperature requirement. Cf. Phillips, 415 F.3d at 1314
(“Differences among claims can also be a useful guide in understanding the
meaning of particular claim terms.”).
Patent Owner cites only extrinsic evidence—Exhibit 2014—in
support of its position concerning melting temperature. See PO Resp. 14.
Extrinsic evidence is “less significant” than the intrinsic record. See
Phillips, 415 F.3d at 1317. Exhibit 2014 is a 22-page document, and Patent
Owner’s citation does not include a page number or any other specific
identification of the allegedly relevant portion of the document. See PO
Resp. 14. We observe that Exhibit 2014 defines a “solder” as “[a] metal
alloy having a liquidus melting point below 500°C (932°F),” Ex. 2014, 8,5
but we do not immediately discern a relevant discussion of 427°C. We also
observe that, according to its title, Exhibit 2014 concerns “electronic grade
solder alloys and fluxed and non-fluxed solid solders for electronic solder
applications.” See Ex. 2014. Patent Owner does not argue that claim 10 is
limited to electronic-grade alloys. See PO Resp. 14. Claim 10 broadly
recites “[a] lead-free solder alloy” and says nothing about any particular
application. Ex. 1001, 8:18–20. Even were Exhibit 2014 to support Patent
Owner’s contention that some solder alloys preferably have a melting

5 Unless otherwise apparent (e.g., citations to columns and line numbers),
pinpoint citations to exhibits are to the stamp added to the lower right corner
of each page by the parties.
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temperature below 427°C, Patent Owner does not explain why claim 10 is so
limited.
On the record before us, we discern no persuasive reason to limit the
claim in the way that Patent Owner proposes. We determine that claim 10 is
not limited to compositions “with a melting temperature that is below
427° C.” See PO Resp. 14. Beyond that determination, we need not
expressly construe the term “lead-free solder alloy” to reach a decision in
this case.
C. ANTICIPATION OF CLAIM 10 BY YAMAGUCHI ’874
Petitioner asserts that claim 10 is anticipated by Yamaguchi ’874.
Pet. 34–38. For reasons set forth below, we determine that Petitioner’s
arguments and evidence establish by a preponderance of the evidence that
Yamaguchi ’874 anticipates claim 10.
1. Yamaguchi ’874 (Ex. 1006)
Similar to the ’947 patent, see Ex. 1001, 1:12–15, Yamaguchi ’874
discloses that, due to environmental and toxicity concerns, “there has been a
need to develop a solder material that does not contain lead (i.e., leadless
solder) but can still be used as a substitute for a solder containing lead.”
Ex. 1006 ¶ 3. Consistent with that disclosure, a purpose of Yamaguchi ’874
is “[t]o provide a lead-free solder material that offers superior mechanical
strength and wettability while allowing the melting point of the solder to be
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lowered to the extent that allows the assembly of electronic components.”
Ex. 1006, code (57) (Abstract).
Yamaguchi ’874 provides a table of “working example[s]” “according
to the present invention,” which is reproduced below and annotated by the
Board to include a dashed box around Example 7.

Yamaguchi ¶ 27 (Table 1). Annotated Table 1 shows several working
examples of lead-free solder alloys. Id. In particular, Example 7 consists of
3% Ag, 3% Bi, 0.5% Cu, and “rest” Sn. Id.
2. Analysis
Anticipation under § 102 requires “the presence in a single prior art
disclosure of all elements of a claimed invention arranged as in the claim.”
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010) (internal quotation marks and citation omitted). “As long as the
reference discloses all of the claim limitations and enables the subject matter
that falls within the scope of the claims at issue, the reference anticipates—
no actual creation or reduction to practice is required.” In re Gleave, 560
F.3d 1331, 1334 (Fed. Cir. 2009) (internal quotation marks omitted). To be
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anticipating, “a prior art reference must . . . describe the claimed invention
sufficiently to have placed it in possession of a person of ordinary skill in the
field of the invention.” Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346
(Fed. Cir. 2000) (internal quotations and alterations omitted).
In evaluating whether a prior art reference anticipates under § 102, the
reference “must be considered together with the knowledge of one of
ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (internal quotation marks omitted). A prior art patent document
is presumed to be enabling. See, e.g., In re Antor Media Corp., 689 F.3d
1282, 1287–88 (Fed. Cir. 2012).
Petitioner provides the following table showing the correspondence of
Example 7 to claim 10 (Petitioner’s table refers to Yamaguchi ’874 as
“JP ’874”).

Pet. 38. The table above shows the correspondence of Example 7 to
claim 10. Petitioner asserts that “[a] POSITA would understand, based on
the disclosure in Table 1, that Example 7 is a lead-free alloy including only
the elements listed in the table and elements that do not materially affect the
properties of the composition.” Id. at 37 (citing Ex. 1004 (Morris Decl.)
¶ 123). Petitioner states that “[w]hile Table 1 discloses ‘Rest’ for Sn, a
POSITA would understand that the Sn in Example 7 would be the percent by
weight remaining from 100% after subtracting the 0.5, 3, and 3 weight
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percent take by the other three elements.” Id. at 38 (citing Ex. 1004 ¶ 118).
According to Petitioner, “each element in example 7 of [Yamaguchi ’874]
falls squarely within the claimed ranges, ‘disclosing a point within [those]
claimed range[s]’ and therefore anticipat[es] claim 10.” Pet. 38 (alterations
in original).
Consistent with Petitioner’s arguments and evidence, it is clear from
the tables reproduced above that Example 7 includes each of the four
elements required by claim 10—Sn, Cu, Ag, and Bi. Compare Ex. 1006, 7
(Table 1), with Ex. 1001, 8:18–20 (claim 10). It is also clear that Example 7
includes those ingredients in amounts that fall squarely within the scope of
the ranges recited by claim 10,6 and that Yamaguchi ’874 provides no
indication that any other ingredients are present in any amount, much less
present in an amount that would materially affect any property of the alloy.
Compare Ex. 1006, 7 (Table 1), with Ex. 1001, 8:18–20 (claim 10).
Moreover, Yamaguchi ’874 describes the compositions of the examples of
Table 1, including Example 7, as “solder material,” and it discloses that the
melting point of Example 7 is 211°C, which Patent Owner concedes is a
temperature suitable for soldering. Ex. 1006 ¶¶ 26, 27 (Table 1); PO
Resp. 14. Yamaguchi ’874 states that its “purpose” is “[t]o provide a lead-
free solder material that offers superior mechanical strength and wettability

6 Other than arguments discussed below concerning impurities that “could”
be present in Example 7, Hearing Tr. 43:15–18, Patent Owner does not
dispute Petitioner’s assertion that “[w]hile Table 1 [of Yamaguchi ’874]
discloses ‘Rest’ for Sn, a POSITA would understand that the Sn in Example
7 would be the percent by weight remaining from 100% after subtracting the
0.5, 3, and 3 weight percent take by the other three elements,” i.e., 93.5 wt%.
Id. at 38 (citing Ex. 1004 ¶ 118).
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while allowing the melting point of the solder to be lowered to the extent
that allows the assembly of electronic components.” Id. at code (57)
(abstract). Patent Owner does not contend that the composition of
Example 7 falls beyond the scope of the term “lead-free solder alloy” as
recited by claim 10. See generally PO Resp.
Patent Owner acknowledges that, during prosecution of the parent
application of the application that led to the ’947 patent, the applicant
recognized that “what was literally disclosed by Yamaguchi ’874” does not
include any “statement that impurities could be present.” See PO Resp. 21–
22. Nevertheless, Patent Owner asserts that a person of ordinary skill in the
art would have believed that the composition of Example 7 “could” (Hearing
Tr. 43:15–18) have such a significant quantity and quality of impurities so as
to cause Example 7’s fatigue resistance to be materially different from that
of the composition of claim 10. PO Resp. 17–26. According to Patent
Owner, that is so because Yamaguchi ’874 is concerned with tensile strength
and melting point, but “does not contemplate fatigue resistance as a property
of its solder alloys.” PO Resp. 18, 19, 23; see also Hearing Tr. 36:16–20
(Counsel for PO: “I don’t think you can make the conclusion [that
Yamaguchi ’874 does not include impurities that materially affect its
properties], and the reason I say that is because Yamaguchi 874 says nothing
about fatigue resistance.”).
For reasons explained in detail below, Patent Owner’s arguments are
not persuasive, and we determine that a preponderance of the evidence
establishes that Example 7 anticipates claim 10. Although the parties agree
that a person of ordinary skill would have known that at least some trace
impurities necessarily would be present in every solder alloy, see Reply 5
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(“some impurities were unavoidable”); PO Resp. 19 (“impurities are
inherent in solder alloys”), the evidence of record does not support Patent
Owner’s contentions regarding the amount of impurities that would have
been present; nor does it support Patent Owner’s contention that the fatigue
life of Example 7 is materially different from that of compositions falling
within the scope of claim 10, even if we assume that Example 7 includes the
amount of impurities asserted by Patent Owner.
To support its position concerning impurities, Patent Owner relies on
a “Joint Industry Standard” document showing the following maximum
allowable impurities in certain solder alloys: Zn 0.003, Al 0.005, Pb 0.2. PO
Resp. 20 (citing Ex. 2014, 8). Patent Owner alleges that, because
“Yamaguchi ’874 itself does not contemplate fatigue resistance as a property
of its solder alloys,” “Petitioner cannot read into Yamaguchi ’874 a teaching
to exclude impurities that would have affected this unrecognized property.”
Id. at 23. In view of that, Patent Owner assumes that Example 7 “could”
include 0.2 wt% of impurities such as Sb, Zn, Al, or Pb, and Patent Owner
provides test data showing the effect of affirmatively adding those impurities
on the fatigue life of Example 7. Id. at 23–24; Hearing Tr. 43:15–18. Patent
Owner’s data is reproduced below.
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PO Resp. 24. Patent Owner’s data shows the fatigue lives of five
compositions tested by Patent Owner: (1) a “Base Composition” that
“Singapore Asahi employees made . . . according to example 7 of
Yamaguchi [’874],” Ex. 1051 (Hwang Tr.), 106:17–21, and (2) four
compositions corresponding to Example 7 but with 0.2 wt% of Zn, Sb, Al,
and Pb purposefully added, id. at 99:23–100:2. Patent Owner asserts that the
fatigue lives of the impurity-containing compositions (which are 25–39%
lower than the “base composition”) are materially different from the “base
composition” such that the impurity-containing compositions do not “consist
essentially of” the four ingredients recited by claim 10. PO Resp. 24–26.
We agree with Petitioner that it is not reasonable to assume that
Example 7 inherently would include any impurity in an amount that would
materially affect any of Example 7’s properties. See Reply 6–7; Hearing
Tr. 43:5–8. As noted above, Yamaguchi ’874 does not indicate the presence
of any amount of any impurity in Example 7. Ex. 1006 ¶ 27 (Table 1).
Because of that, Dr. Morris asserts that a person of ordinary skill in the art
would have understood that Example 7 includes “only the elements listed in
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[the example] and elements that do not materially affect the properties of the
composition.” Ex. 1004 ¶ 123. We credit Dr. Morris’s testimony because
we find the record as a whole to be more consistent with Petitioner’s
position than with Patent Owner’s position, for reasons explained in detail
below.
First, Patent Owner’s premise for adding 0.2 wt% of certain
impurities to Example 7 for purposes of obtaining the experimental results
described above is that “Yamaguchi ’874 itself does not contemplate fatigue
resistance as a property of its solder alloys.” PO Resp. 23; see also, e.g.,
Hearing Tr. 36:16–20 (Counsel for PO: “I don’t think you can make the
conclusion [that Yamaguchi ’874 does not include impurities that materially
affect its properties], and the reason I say that is because Yamaguchi 874
says nothing about fatigue resistance.”). Patent Owner acknowledged at oral
argument that, if Yamaguchi ’874 did discuss fatigue resistance, Patent
Owner’s arguments concerning impurities would be less persuasive.
Hearing Tr. 52:6–9 (The Board: “If Yamaguchi did say something about
fatigue, would that change the outcome of this ground?” Counsel for PO: “I
think it would. I think it might . . . .”).
Petitioner persuasively argues that, before the filing date of
Yamaguchi ’874, fatigue resistance was a known “material property” of
lead-free solder alloys used in electronics applications. Reply 6. Petitioner
cites the foreword to a volume of the Journal of Electronics Materials, which
states that “[s]oldering technology is indispensable for the interconnection
and packaging of essentially all electronics devices.” Ex. 1028. The
foreword goes on to state that “the required material properties” of a tin-
based lead-free solder alloy are “melting temperature, solder wetting,
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mechanical ductility, fatigue, and creep behavior, etc.” Id. (emphasis
added). Other evidence of record is consistent with that. See, e.g., Ex. 1007,
4 (recognizing fatigue resistance as property that is “considered essential” in
lead-free solders for electronic assembly use); Ex. 1020, 3 (“Critical to the
reliability of electronic circuits is thermal fatigue resistance.”); Ex. 1024, 5
(identifying “resistance to thermal fatigue” as a desirable property in lead-
free solder alloys); see also Ex. 1004 (Morris Decl.) ¶ 73 (“It was
understood that any replacement lead-free solder alloy would have to match
the reliability and manufacturability of lead-based solders, addressing issues
such as thermal fatigue resistance and wettability.”).
We find that fatigue resistance was a known desirable property of
lead-free solder alloys at the time of Yamaguchi ’874 (and at the time of the
invention), and, therefore, that a reference’s failure to expressly mention
fatigue resistance does not indicate that compositions of the reference would
have included impurities that materially affect fatigue life. See Ex. 1004
¶ 73; Ex. 1028; Ex. 1007, 4; Ex. 1020, 3; Ex. 1024, 5; see also Paulsen,
30 F.3d at 1480 (anticipatory reference “must be considered together with
the knowledge of one of ordinary skill in the pertinent art”). Accordingly,
we reject Patent Owner’s premise for assuming that a person of ordinary
skill would have understood that Example 7 implicitly includes impurities
that materially affect fatigue resistance.
Second, we consider the specific impurities and quantities that Patent
Owner adds to Example 7 to produce the fatigue life data reproduced above.
As to Zn, Patent Owner’s own submission shows a maximum allowable
amount of 0.003 wt%, which is significantly less than the 0.2 wt% used in
Patent Owner’s tests. See PO Resp. 20. Similarly, Patent Owner’s own
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submission shows a maximum allowable amount of Al of 0.005 wt%—
again, significantly less than the 0.2 wt% used by Patent Owner. See id. It
is unclear why Patent Owner used 0.2 wt% in its tests of those impurities.
See, e.g., Reply 7.
As to Sb, Patent Owner cites a portion of Exhibit 2014 indicating
allowable levels of up to 0.5 wt% in certain types of alloys (“A” alloys7), id.
at 21 (citing Ex. 2014, 8 (§ 3.2.1)), but Petitioner cites a different portion of
the same document indicating allowable levels of only 0.05 wt% for a
different type of alloy (“C” alloys”), Reply 7 (citing Ex. 2014, 8 (§ 3.2.3)).
As to lead, Patent Owner relies on a disclosure in Exhibit 2014 indicating an
allowable amount of up to 0.2 wt% for some types of alloys, PO Resp. 20
(citing Ex. 2014, 8), while Petitioner relies on a different disclosure in the
same document of allowable amounts of only 0.1 wt% in other types of
alloys (“E” alloys), Reply 7 (citing Ex. 2014, 8 (§ 3.2.5)).
Patent Owner’s use of 0.2 wt% for each of the impurities tested is
unreasonable because it assumes, based on a premise that is inconsistent
with the record (i.e., that a person of ordinary skill in the art reviewing
Yamaguchi ’874 would not have been aware of the importance of fatigue
resistance), that Example 7 of Yamaguchi ’874 would have had impurity
levels approaching or exceeding the maximum amounts listed by the Joint
Industry Standard, notwithstanding the facts that (1) Yamaguchi ’874 does
not indicate the presence of any amount of any impurity, and (2) the Joint

7 The letter-based alloy designations such as “A” are for “convenience” in
facilitating ordering from a supplier. Ex. 1051 (Hwang Tr.), 95:9–97:7; see
also Ex. 2014, 6 (“Each alloy is identified by an alloy name . . . ending with
an arbitrarily assigned alloy variation letter (A, B, C, D, E).”).
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Industry Standard indicates that alloys with far smaller quantities of
impurities were available. E.g., Ex. 2014, 9 (§ 3.2.4) (describing “ultra-pure
alloys” with a “combined total percentage by mass of all impurity elements”
that “shall not exceed 0.05”). We discern no persuasive support for Patent
Owner’s assumption. Given that Table 1 of Yamaguchi ’874 shows no
elements other than Sn, Cu, Ag, and Bi for Example 7, the most reasonable
interpretation is that a person of ordinary skill in the art reviewing
Yamaguchi ’874 would have envisaged an alloy that does not include
impurities that materially affect properties known to be important to its
function, such as fatigue life; not an alloy that includes impurity levels that
approach or exceed the maximum amount permitted by the Joint Industry
Standard. See Ex. 1004 (Morris Decl.) ¶ 123. That understanding is
consistent with the applicant’s argument during prosecution that
Yamaguchi ’874 “does not include a statement that impurities could be
present.” Ex. 1002, 80–81. Moreover, Yamaguchi ’874 repeatedly
identifies ingredients present in as small an amount as 0.1 wt%. See, e.g.,
Ex. 1006, code (57) (abstract), 3 (claims), 5, 6, 7. It is unlikely that
Yamaguchi ’874 would affirmatively identify ingredients present at 0.1 wt%
but not acknowledge the impurities relied on by Patent Owner allegedly
present at 0.2 wt%. Cf. Ex. 1004 (Morris Decl.) ¶ 123.
Additionally, the record supports Petitioner’s contention that “the
state of the art in 1998 allowed for fairly reliable control of the presence of
impurities in solder.” Reply 5. A reference titled “SMT Soldering
Handbook” discusses “solder impurities” and states, “[p]rovided the vendor
is experienced and reliable . . . the purity of the solder can be taken as
granted, given the present state of the art.” Ex. 1052 (“Handbook”), 49
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(emphasis added). The Handbook expressly references the Joint Industry
Standard relied on by Patent Owner and states that “the purity of the solder
supplied by the experienced and reliable vendors mentioned above does
indeed keep well within these strict limits.” Id. The Handbook goes on to
provide a table setting forth some of the limits set forth by the Joint Industry
Standard, and a second table showing that “[i]mpurity limits according to
actual practice” are lower than the permissible maximums. Id. at 50.
Patent Owner argues that the Handbook’s “tolerance levels relate
specifically to wavesoldering, of which Yamaguchi ’874 makes no
mention.” Sur-reply 6–7. The relevant portion of the Handbook, however,
also contemplates “general soldering practice,” and Patent Owner does not
persuasively argue that results for wavesoldering would have been
materially different from those of “general soldering practice” in any
relevant respect. See Ex. 1052, 49 (“general soldering practice, but
particularly wavesoldering practice, shows that with some of these
impurities . . . limits tolerable in practical production are lower than those
allowed in some standards . . . .”).
Patent Owner also correctly points out that the tables in the Handbook
do not list lead (Pb) (Sur-reply 7), but the trend suggested by the Handbook
is that the impurities “according to actual practice” are lower than the limits
of the Joint Industry Standard. See id. Moreover, we observe that, like the
’947 patent, Yamaguchi ’874 is explicitly concerned with “provid[ing] a
lead-free solder material,” Ex. 1006, code (57) (emphasis added), and we
discern no persuasive evidence of record that the compositions of
Yamaguchi ’874 would have included the maximum permissible amount of
an element (lead) that Yamaguchi ’874 seeks to exclude, particularly given
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that, as noted above, Yamaguchi ’874 repeatedly identifies ingredients
present in as small an amount as 0.1 wt% but says nothing about lead being
present in that amount (or any amount) in Example 7. See Ex. 1006 ¶ 27
(Table 1).
Third, we observe that Yamaguchi ’874’s discussion of allowable
impurities is the same as that of the ’947 patent—neither says anything
about impurities. See generally Ex. 1001; Ex. 1006; see also Reply 4 (“Like
the ’947 patent, Yamaguchi ’874 does not mention impurities.”); cf. In re
Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation
that appellant did not provide the type of detail in his specification that he
now argues is necessary in prior art references supports the Board’s finding
that one skilled in the art would have known how to implement the features
of the references and would have concluded that the reference disclosures
would have been enabling.”). Although Yamaguchi ’874 does not
specifically mention fatigue life, it was a known desirable property in lead-
free solders, see, e.g., Ex. 1028; Ex. 1007, 4; Ex. 1024, 5; Ex. 1004 ¶ 73, and
Yamaguchi ’874 expressly discloses other properties (strength, wettability,
desirable melting temperature, Ex. 1006, code (57)) and purposes (electronic
components, id. ¶ 2) substantially the same as those disclosed by the ’947
patent, see Ex. 1001, code (57) (“high strength” and “high wetting” with
desirable melting temperature), 1:5–11 (disclosing “microelectronics and
electronics applications”); see also Ex. 1004 (Morris Decl.) ¶¶ 89–90
(observing that the alloy of Yamaguchi ’874 is for use in the electronics
industry and is described as having superior mechanical strength, desirable
melting points, and appropriate wettability).
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Given the similarity of the disclosures in material respects, the most
reasonable understanding of the evidence of record is that Example 7 of
Yamaguchi ’874 would have had an impurity profile similar to that which
would have been expected to be present in the compositions of the
’947 patent, and, thus, that the compositions of Yamaguchi ’874 would not
have had materially different properties—including fatigue resistance—due
to alleged impurities. Cf. Ex. 1004 (Morris Decl.) ¶ 123.
Fourth, Patent Owner’s test data and Dr. Hwang’s deposition
testimony support a determination that a person of ordinary skill in the art
would not have understood Example 7 to include such a significant level of
impurities so as to materially affect its properties. See Reply 3–7. During
her deposition, Dr. Hwang repeatedly described the “Base Composition” of
Patent Owner’s Figure 3, see PO Resp. 24, as the composition of Example 7
of Yamaguchi ’874. See Ex. 1051 at 103:18–20, 104:19–20, 106:17–21.
When asked whether the “base composition” in Patent Owner’s data was
“made . . . according to example 7 of Yamaguchi,” Dr. Hwang replied,
“Correct.” Id. at 106:17–21. Dr. Hwang did not identify particular steps
taken to remove impurities from the “base composition” and acknowledges
that it possessed the typical impurities of “a starting material.” Id. at
104:24–105:2. Nor did Dr. Hwang indicate that unique “starting materials”
were used, see generally id. at 103–107, or that the “starting materials” used
in the tests were of higher purity than what would have been used in
electronics soldering applications at the time of the invention, see generally
id.; see also Ex. 1052 at 49 (“Provided the vendor is experienced and
reliable . . . the purity of the solder can be taken as granted, given the present
state of the art.”). Only by affirmatively and purposefully adding impurities
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to what appear to be routine starting materials did Patent Owner obtain test
results showing decreased fatigue life. See PO Resp. 24; Ex. 1051 at 99:23–
100:2.8
Considering the record as a whole, we are not persuaded that
impurities allegedly present in Example 7 of Yamaguchi ’874 would cause
that composition to fall beyond the scope of claim 10. Patent Owner does
not contend that Yamaguchi ’874 fails to enable making and using high
purity alloys in which impurities do not materially affect any property of the
alloy. Cf. Ex. 2014 at 9 (§ 3.2.4) (describing “ultra-pure alloys” that have a
“combined total percentage by mass of all impurity elements” of 0.05 or
less); cf. also Antor Media, 689 F.3d at 1287–88 (prior art patent documents
presumed to be enabling). We find that Petitioner’s arguments and evidence
establish that Yamaguchi ’874’s Example 7 anticipates claim 10. See
Helifix, 208 F.3d at 1346.

8 Patent Owner also argues, without citation, that because a comparative
example in Table 1 of Yamaguchi ’874 includes lead, Yamaguchi ’874 was
not using a lead-free environment, and “it is very likely that the ‘lead-free’
solder alloys tested in Yamaguchi ’874 included trace amounts of lead that
would have materially affected the fatigue resistance of the compositions.”
PO Resp. 26. We discern no persuasive reason to believe that the inclusion
of a comparative example that includes lead indicates that Example 7 would
have included 0.2 wt% lead, particularly given Yamaguchi ’874’s expressly
stated goal of “provid[ing] a lead-free solder material.” Ex. 1006, code (57)
(abstract) (emphasis added). Example 7 includes a column for lead (Pb),
and it is blank. See Ex. 1006 ¶ 27 (Table 1). That disclosure is adequate to
“place[] in possession of a person of ordinary skill” an alloy that does not
include lead impurities that would materially affect its properties. See
Helifix, 208 F.3d at 1346; Ex. 1004 ¶ 123.
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Even if we were to (1) accept Patent Owner’s arguments concerning
impurities in Yamaguchi ’874 and assume that Example 7 includes 0.2 wt%
of the impurities alleged by Patent Owner, (2) accept the fatigue life test
results reproduced above as accurate,9 and (3) assume that fatigue life is a
basic and novel property of the composition of claim 10, we would
nevertheless find that that Example 7 falls within the scope of claim 10. As
set forth above, and as the parties agree, the “consisting essentially of”
transition of claim 10 permits a composition to include “unlisted
ingredients,” such as the alleged impurities of Yamaguchi ’874, so long as
they “do not materially affect the basic and novel properties of the
invention.” See PPG Indus., 156 F.3d at 1354 (emphasis added).

9 We observe that Patent Owner provides no meaningful statistical analysis
of the relied-upon data. See PO Resp. 24–25. For example, Patent Owner
does not identify information concerning how many samples were prepared,
how many times each sample was tested, what the standard deviations of the
tests were, or any other relevant information that might assist in
meaningfully evaluating the data. See id.; see also Ex. 1050, 29:6–11 (Suhir
Tr.) (describing standard deviation as “an indication of how accurate . . .
particular results are”). We also observe that the tests were run at the
direction of an interested party, i.e., named inventor Jennie Hwang, see
Ex. 2013 ¶ 15; Ex. 1001, code (75), and that there is evidence that the tests
were conducted by Patent Owner itself rather than by a third party, see
Ex. 1051, 20:8–23 (Hwang Tr.); Ex. 1048, 4 (“These fatigue data will be
analysed and feedbacked to Asahi Solder to carry out elemental
recompositions . . . .” / “Machines/equipment will be made available to
Asahi Solder . . . .” / “The operation of some characterization equipment will
be supported by SIMTech staff.”). Cf. In re Bulina, 362 F.2d 555, 559
(CCPA 1966) (“[A]n affidavit by an applicant or co-applicant as to the
advantages of his invention is less persuasive than one made by a
disinterested person.”).
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According to Patent Owner’s test results, Example 7 of
Yamaguchi ’874 has a fatigue life ranging from 2739 to 3458 when an
impurity is present at 0.2 wt%. See PO Resp. 24. The average fatigue life of
the impurity-containing samples is 3199.5. See id. As Petitioner points out
in the Reply, Patent Owner’s own experimental data indicates that those
fatigue life figures are consistent with the fatigue lives of compositions that
fall within the scope of claim 10. See Reply 7. Specifically, Petitioner cites
Exhibit 1045, which is a collection of pages produced by Patent Owner
pursuant to our discovery order. See Paper 22. Page 3 of Exhibit 1045
includes data with a “Sample ID.” prefix of “L0.” Ex. 1045, 3. The
“Sample Alloy” associated with “L0” is 92.5 wt% Sn, 3.5 wt% Ag,
1.0 wt% Cu, and 3.0 wt% Bi. Id. Petitioner asserts in the Reply, and Patent
Owner does not dispute in the Sur-reply, that the “L0” alloy falls within the
scope of claim 10. Reply 7. Patent Owner’s data shows a fatigue life range
for the L0 samples of 2590 to 4024, and a fatigue life average for the L0
samples of 3054.4. Ex. 1045, 3. In addition to the “L0” data identified by
Petitioner, Patent Owner itself identifies several alloy samples that Patent
Owner describes as “within the scope of claim 10” that have fatigue lives
around 3000. See PO Resp. 55–56.10

10 We recognize that the ’947 patent includes the following statement: “The
present inventive solder alloy demonstrates . . . a low-cycle fatigue life at
0.2% strain of at least about 5,000 cycles.” Ex. 1001, 5:55–57. Patent
Owner does not argue that statement is limiting of the claimed subject matter
or otherwise indicative of a minimum required fatigue life for alloys within
the scope of claim 10. On the contrary, and as set forth above, Patent Owner
indicates that alloys having fatigue lives at least as low as 2960 fall within
the scope of claim 10. See PO Resp. 55–56.
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Thus, according to Patent Owner, alloys may have fatigue lives at
least as low as approximately 3000 and still fall within the scope of
claim 10. Id. As noted above, the average fatigue life of the impurity-
containing samples of Example 7 of Yamaguchi ’874 that were prepared by
Patent Owner is nearly 3200. That figure is higher than the fatigue lives of
at least some alloy samples that Patent Owner describes as falling within the
scope of claim 10. See PO Resp. 55–56.
Petitioner argues that such data proves that “Figure 3 [i.e., Patent
Owner’s fatigue data for impurity-containing samples, PO Resp. 24] shows
no ‘material effect’ on fatigue life.” Reply 7. Patent Owner fails to
acknowledge that argument in the Sur-reply.11 See generally Sur-reply.
Petitioner’s argument is supported by at least Exhibit 1045 and
Figure 10 of Patent Owner’s Response, see PO Resp. 55–56, which, as set
forth above, disclose samples prepared and tested by Patent Owner that fall
within the scope of claim 10, but that have similar or slightly lower fatigue
life than the impurity-containing samples prepared by Patent Owner. Given
that samples that admittedly fall within the scope of claim 10 have fatigue
lives comparable to and lower than the impurity-containing samples based

11 We recognize that Patent Owner’s declarants state that the data
represented in Figure 3 of Patent Owner’s Response, see PO Resp. 24,
demonstrates a “material[] [e]ffect” on the properties of a solder alloy due to
0.2 wt% impurities. E.g., Ex. 2012 ¶ 74; Ex. 2013 ¶ 85. The declarants,
however, do not identify what is meant by “material,” and Patent Owner
does not identify any assertion, for example, that the fatigue lives of the
Yamaguchi ’874 Example 7 impurity-containing compositions render those
compositions unsuitable for use in electronics soldering applications, or that
the fatigue lives of the impurity-containing compositions are lower than the
fatigue lives of all compositions that fall within the scope of claim 10.
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on Example 7 of Yamaguchi ’874, the record does not support Patent
Owner’s contention that Example 7 of Yamaguchi ’874 has a “materially”
different fatigue life than compositions falling within the scope of claim 10,
even assuming that Example 7 includes the impurities asserted by Patent
Owner.
On the contrary, a preponderance of the evidence supports Petitioner’s
contention that, even assuming Example 7 includes 0.2 wt% of the
impurities alleged by Patent Owner, resulting in the fatigue lives identified
by Patent Owner, see PO Resp. 24, Example 7 demonstrates a fatigue life
that is substantially similar to that of compositions that fall within the scope
of claim 10, as evidenced by Patent Owner’s own data. Accordingly, the
alleged impurities “do not materially affect the basic and novel properties of
the invention,” see PPG Indus., 156 F.3d at 1354 (emphasis added), and
Example 7 of Yamaguchi ’874 falls within the scope of claim 10, even if it
includes the impurities asserted by Patent Owner.
For all of the reasons set forth above, we find that a preponderance of
the evidence supports Petitioner’s contention that Example 7 of
Yamaguchi ’874 anticipates claim 10.
D. ANTICIPATION OF CLAIM 10 BY LEE
Petitioner asserts that claim 10 is anticipated by Lee. Pet. 38–44. For
reasons set forth below, we determine that Petitioner’s arguments and
evidence establish by a preponderance of the evidence that Lee anticipates
claim 10.
1. Lee (Ex. 1007)
Lee discloses that concerns “about the toxicity of lead ha[ve] led to an
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increase in controls and legislation on the use of lead.” Ex. 1007, 4. Lee
explains that, “[a]lthough the use of lead in solders for electronics assembly
has not yet been banned, the strong trend of moving towards a green world is
driving the industry to develop lead-free solder alternatives with immense
enthusiasm.” Id. Lee teaches that, “[t]o become a viable lead-free solder
alternative for electronic assembly use, it is considered essential for the
candidate solder to meet” certain “criteria,” one of which is “good fatigue
resistance.” Id. Lee goes on to “review[]” and “discuss[]” “the status of
lead-free developmental works.” Id.
As part of its review and discussion, Lee includes a Table 4 labeled
“Lead-free Solder Alloys Investigated Recently,” reproduced below as
cropped and annotated by Petitioner.

Pet. 40; Ex. 1007, 6. Annotated Table 4 describes an example (the “Senju”
example) with a composition of “91.0Sn–4.5Bi–3.5Ag–1.0Cu.” Pet. 40;
Ex. 1007, 6.
Lee also includes a table (Table 5) titled “Pros and Cons of Lead-free
Solders Investigated Recently,” which appears to include most or all of the
compositions from Table 4, including the Senju example. See Ex. 1007, 8.
Table 5 includes columns listing “advantages” and “disadvantages” for each
composition. Id. For some compositions, poor fatigue is expressly listed as
a disadvantage. See id. (identifying fatigue in the “disadvantages” column
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for the compositions 52In-48Sn and 96.5Sn-3.5Ag). No disadvantage is
listed for the Senju example. Id.
2. Analysis
Petitioner provides the following table showing the correspondence of
the Senju example of Lee to claim 10.

Pet. 41. The table above shows the correspondence of the Senju example of
Lee to claim 10. Petitioner acknowledges that Lee does not expressly state
that its disclosure of “91.0Sn–4.5Bi–3.5Ag–1.0Cu” refers to the “weight
percent” of each listed element.12 Pet. 41–42. Petitioner asserts, however,
that because Tables 1 and 2 of Lee—which list elements often added to lead-
free solder compositions—describe the elements in terms of “[p]ossible wt
[a]ddition (%),” a person of ordinary skill in the art would have understood
Table 4 likewise to be using weight percent numbers. Pet. 42 (citing
Ex. 1004 (Morris Decl.) ¶ 132). Petitioner also asserts that, because Table 4
discloses “63Sn–37Pb” as a “(Control)” composition, and 63Sn–37Pb is a
well-known solder alloy that consists of 63 weight percent Sn and 37 weight
percent Pb, a person of ordinary skill in the art would have understood the

12 The parties agree that the “%” symbol in claim 10 refers to weight
percentage. See Pet. 7; PO Resp. 14–15; see also Ex. 1001, 3:60–61
(“Unless otherwise identified in the description and claims, all parts and
percentages are by weight.”).
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remainder of Table 4 likewise to refer to weight percentages. Pet. 42–43
(citing several references). Petitioner asserts that the Senju example of Lee
includes “only the listed ingredients . . . and elements that do not materially
affect the properties of the composition,” and that it anticipates claim 10.
Pet. 41–44 (citing Ex. 1004 (Morris Decl.)).
Consistent with Petitioner’s arguments and evidence, it is clear from
the tables reproduced above that the Senju example includes each of the four
elements required by claim 10—Sn, Cu, Ag, and Bi. Compare Ex. 1007, 6,
with Ex. 1001, 8:18–20 (claim 10). As explained in more detail below in our
discussion of Patent Owner’s arguments, we also find that the Senju
example includes those ingredients in amounts that fall within the scope of
the ranges recited by claim 10, and that Lee provides no indication that any
other ingredients are present. Compare Ex. 1007, 6, with Ex. 1001, 8:18–20
(claim 10). Moreover, Lee describes the alloys of Table 4, including the
Senju example, as “Lead-free Solder Alloys,” and it discloses that the
melting point of the Senju example is 210°C, which Patent Owner concedes
is a temperature suitable for soldering. Ex. 1007, 6; PO Resp. 14. Patent
Owner does not contend that the composition of the Senju example falls
beyond the scope of the term “lead-free solder alloy” as recited by claim 10.
See generally PO Resp.
Patent Owner argues that Lee does not anticipate claim 10 because
“Lee does not expressly or inherently disclose whether the listed values are
weight percentages.” PO Resp. 27. Patent Owner argues that, even if the
“63Sn-37Pb” composition would have been understood to represent weight
percentages, it does not necessarily and inherently mean that the other
compositions of Table 4 are likewise represented by weight percentage,
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because they “may also be defined in atomic percentages.” Id. at 27–29.
Patent Owner also argues that, the mere fact that “Tables 1 and 2 of Lee
mention weight percent” “gives no indication that Table 4 imports the
weight percentages of Tables 1 and 2.” Id. at 29. Patent Owner argues that
it is “uncontroverted fact” that solder alloys may be defined in terms of
weight % or atomic %. Id. at 30 (citing Exs. 2017–2020, 2027).
Consistent with Petitioner’s arguments, in two tables that precede
Table 4, Lee refers to “wt Addition (%)” of elements to an alloy. See
Ex. 1007, 4. Dr. Morris cites those disclosures and explains that, after using
weight % in Tables 1 and 2, “[i]t would be impractical to recite a
composition that was made in terms of atomic percent.” Ex. 1004 ¶¶ 132,
133. Dr. Morris also states that, if an author changes from weight % to
atomic % “in the course of a paper,” “the change is always clearly noted and
explained.” Id. ¶ 135.
Dr. Morris also explains that the “control” alloy of Table 4, 63Sn-
37Pb, is “known in the art to consist of 63 wt% Sn and 37 wt% Pb.”
Id. ¶ 134 (citing Ex. 1001, 3:60–61, 5:45–46; Ex. 1012, 1:23–25; Ex. 1017,
2:21–22; Ex. 1020, 56; Ex. 1022, 1). Patent Owner admits that 63Sn-37Pb
“usually contains 63 wt% Sn with the remainder comprising Pb,” and Patent
Owner fails to identify a single example in the record to the contrary. PO
Resp. 28; Hearing Tr. 57:12–15 (The Board: “Is there any reference in the
record that uses the 63 Sn/37 Pb as atomic percent?” Counsel for PO: “I’m
not aware of one.”). Dr. Morris states: “In my 50 years of experience in
metallurgy, which includes review of thousands of technical papers that
include alloy compositions and tables of compositions, I have never
encountered a case where an author mixed compositions in weight % and
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atomic % in a single table.” Ex. 1004 ¶ 135. One of Patent Owner’s
declarants, Dr. Suhir, agreed with Dr. Morris, stating that “usually authors
are consistent.” Ex. 1050, 64:2–9; see also Hearing Tr. 57:16–20 (counsel
for PO acknowledging that no evidence of record mixes atomic % and
weight % in a single table). Dr. Morris also asserts that, “when a person
skilled in the art in this field discloses a solder alloy composition in terms of
percent, absent some express statement to the contrary, that percent is
understood to be weight percent.” Id. ¶ 136; accord Ex. 2014 (Joint Industry
Standard) at 6 (§ 1.2.1) (“Each alloy is identified by an alloy name, which is
composed of a series of alphanumeric characters that identify the component
elements in the alloy by chemical symbol and nominal percentage by
mass.”).
In view of the foregoing, although we agree with Patent Owner that,
in some references, solder alloys are defined by atomic %, see PO Resp. 30
(citing Exs. 2017–2020, 2027), we credit the testimony of Dr. Morris
because it is consistent with the evidence of record, discussed above, and we
find that a preponderance of the evidence of record supports Petitioner’s
contention that the 63Sn-37Pb “control” alloy of Lee’s Table 4 is 63 wt%
Sn, 37 wt% Pb. See Ex. 1004 ¶ 134; Ex. 1001, 3:60–61, 5:45–46; Ex. 1012,
1:23–25; Ex. 1017, 2:21–22; Ex. 1020, 56; Ex. 1022, 3. We find that a
preponderance of the evidence also supports Petitioner’s contention that a
person of ordinary skill would have understood that the remainder of
Table 4, including the Senju example, is likewise expressed in terms of
weight percentage. See Ex. 1004 ¶ 132–135; Ex. 1050, 64:2–9; Ex. 1050,
64:2–9; Ex. 1007, 4 (Tables 1 & 2).
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Those findings do not fully resolve the issue of whether the Senju
example anticipates claim 10, however, because Patent Owner also argues
that “Lee does not anticipate for the same reason that Yamaguchi ’874 does
not anticipate claim 10,” i.e., “a person of ordinary skill in the art would
have understood the Senju composition to include the presence of impurities,
such as Pb, Sb, Zn, and Al.” PO Resp. 33. Patent Owner argues that “these
impurities would have a material effect on the basic and novel properties of
claim 10—namely, its fatigue resistance.” Id. In the Sur-reply, Patent
Owner observes that “Lee contains no discussion of whether the Senju
composition has a good fatigue resistance and even states that all of the
compositions ‘exhibit some shortcomings.’” Sur-reply 10 (citing Ex. 1007,
7–8).
Those arguments are unpersuasive for the reasons set forth above in
our discussion of the ground based on Yamaguchi ’874. As with the ground
based on Yamaguchi ’874, we credit Dr. Morris’s testimony that a person of
ordinary skill in the art would have understood the Senju example to include
“only the listed elements . . . and elements that do not materially affect the
properties of the composition,” Ex. 1004 ¶ 144, because his testimony and
Petitioner’s position are more consistent with the record as a whole than is
Patent Owner’s position.
Like Example 7 of Yamaguchi ’874, the Senju example of Lee lists
only the ingredients recited by claim 10, and it lists them in amounts that fall
within the scope of claim 10. Ex. 1007, 6 (Table 4). Lee provides no
indication that any other ingredients are present, id., and Patent Owner does
not dispute the enablement of high purity alloys that do not include
impurities that materially affect the properties of the alloy. Lee’s disclosures
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are adequate “to have placed [the claimed invention] in possession of a
person of ordinary skill in the field of the invention.” See Helifix, 208 F.3d
at 1346.
Patent Owner’s arguments concerning impurities are less persuasive
with respect to Lee than they were as to Yamaguchi ’874 for at least three
reasons. First, Lee repeatedly discusses fatigue resistance and describes it as
an “essential” property of lead-free solder alternatives. See Ex. 1007, 4; see
also Ex. 1050 (Suhir Tr.), 66:7–19 (agreeing that “Lee considered a good
fatigue resistance to be an essential criteria for a lead-free alloy”); Reply
Br. 10. As noted above, Yamaguchi ’874’s failure to expressly discuss
fatigue resistance is the premise of Patent Owner’s addition of 0.2 wt%
impurities to Example 7 of Yamaguchi ’874. See, e.g., PO Resp. 22–23. It
is unclear what basis Patent Owner has for asserting that the Senju
composition of Lee includes significant amounts of impurities that would
affect fatigue resistance.
Second, as Petitioner observes (Reply 10), at least in one instance, Lee
discusses an impurity present at only 0.002% when it had an impact on the
properties of the alloy. Lee discloses that, “[a]lthough the wetting of 58Bi-
42Sn seems to be acceptable, the allowed concentration of foreign elements
is an order of magnitude lower for eutectic 58Bi-42Sn than for eutectic Sn-
Pb solder. Therefore, the presence of 0.002% phosphorous would cause
wetting to degrade.” Ex. 1007, 5 (emphasis added). Lee says nothing about
foreign elements or impurities in the Senju example. See generally id. In
the Sur-reply, Patent Owner does not address Petitioner’s discussion of
“foreign elements” in Lee. See Sur-reply 9–10.
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Third, and as noted above, Table 5 of Lee describes certain
compositions as having poor fatigue resistance but does not indicate that as a
disadvantage for the Senju composition. Patent Owner’s apparent
assumption that the Senju example would have had poor fatigue resistance
due to impurities is inconsistent with Lee because Lee identifies no
impurities in the Senju example and because Lee says nothing about poor
fatigue resistance for the Senju example. Cf. Ex. 1004 ¶ 144. Of itself,
Lee’s statement that all compositions listed in Table 4 “exhibit some
shortcomings,” see PO Resp. 10 (citing Ex. 1007 at 7–8), does not
persuasively suggest that the Senju example includes impurities that
materially affect its fatigue resistance at least because fatigue resistance is
not listed as a disadvantage of the Senju composition in Table 5, and
because Lee identifies “good fatigue resistance” as an “essential” criteria for
lead-free solder alloys. See Ex. 1007, 4, 8. Indeed, Lee does not identify
any specific shortcoming for the Senju composition. Id. As noted above,
Patent Owner does not argue that Lee is not enabling or that high purity
starting materials were unavailable. Cf. Ex. 2014 at 9 (§ 3.2.4) (describing
“D” alloys as “ultra-pure alloys . . . the combined total percentage by mass
of all impurity elements shall not exceed 0.05 . . . .”).
On the complete trial record, we discern no persuasive basis to believe
that the Senju example of Lee would have included such significant
quantities and/or types of impurities as to have materially different
properties from the composition of claim 10. On the contrary, and as set
forth above, we find by a preponderance of the evidence that a person of
ordinary skill would have understood the Senju example did not include
impurities that materially affect its properties.
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We find that Petitioner has adequately established that the Senju
example of Lee anticipates claim 10.
E. OBVIOUSNESS OF CLAIM 10 IN VIEW OF YAMAGUCHI ’923
Petitioner asserts that claim 10 would have been obvious in view of
Yamaguchi ’923. Pet. 54–57. For reasons set forth below, we determine
that Petitioner’s arguments and evidence establish by a preponderance of the
evidence that claim 10 would have been obvious over Yamaguchi ’923.
1. Yamaguchi ’923 (Ex. 1024)
Yamaguchi ’923 discloses that various factors, including advances in
electronic circuitry and “global advancement in the regulation of lead (which
is a toxic substance contained in solder materials, i.e., Sn-Pb alloys),” have
created a need for new solder alloys. Ex. 1024, 3–4. Yamaguchi ’923
describes the effect of a number of different metals, including Ag, Bi, and
Cu, on the properties of lead-free solder alloys. Id. at 5. For example,
Yamaguchi ’923 discloses the following about the effect of silver:
The addition of Ag makes it possible to obtain a solder alloy that
has a fine metallographic structure and can therefore provide
superior thermal resistance, such as resistance to thermal
fatigue. If the content of Ag is less than 2.0 wt%, a sufficient
effect cannot be obtained in terms of the improvement of the
thermal resistance. But, if the content of Ag exceeds 3.5 wt%,
the melting point of the alloy rapidly increases. Accordingly, the
maximum content of Ag is 3.5 wt% in order to ensure that the
melting point of the alloy stays in the temperature range that is
preferable for an alloy used in solder creams, i.e., 220°C or less.
Thus, the appropriate content of Ag is 2.0 to 3.5 wt%.
Id. (emphasis added). Yamaguchi ’923 provides similar descriptions of
bismuth and copper. Id. (explaining that “Bi makes it possible to lower the
melting point of the solder alloy and thereby improve wettability” and that
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“Cu makes it possible to restrict the growth of intermetallic compounds at
the solder/copper-land joint interface and thereby improve the strength at the
joint interface”). Yamaguchi ’923 explains that including too much or too
little of each metal may result in a composition with undesirable properties.
Id.
Yamaguchi ’923 identifies the following composition as a desirable
solder alloy: (1) “Ag in the amount of 2.0 to 3.5 wt%,” (2) “Bi in the
amount of 5 to 18 wt%,” (3) “at least one type of element selected from the
group consisting of In in the amount of 0.1 to 1.5 wt%, Cu in the amount of
0.1 to 0.7 wt% and Zn in the amount of 0.1 to 10 wt%,” and (4) Sn
constituting the remaining portion. Id. at 4.
2. Analysis
Petitioner provides the following table showing the overlap of the
relied-upon composition of Yamaguchi ’923 with claim 10 when Cu is
selected as the additional element of Yamaguchi ’923 (Petitioner refers to
Yamaguchi ’923 as “EP ’265/WO ’923”).

Pet. 56.13 The table above shows the overlap of the relied-upon composition
of Yamaguchi ’923 with claim 10 when Cu is selected as the additional

13 Petitioner’s identification of “5 – 8” as the range of Bi disclosed by
Yamaguchi ’923 includes a typographical error and should read “5 – 18.”
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element of Yamaguchi ’923. Petitioner argues that the weight percentages
of Sn, Cu, Ag, and Bi were known result-effective variables, and that routine
optimization would have led to the composition of claim 10. Id. at 56–57;
see also id. at 47–53. Petitioner also argues that the ranges of claim 10 are
not critical and do not produce unexpected results. Id. at 56–57. Petitioner
argues that, because the weight percentage range of each element of
Yamaguchi ’923’s composition overlaps the claimed ranges, the
composition of claim 10 would have been obvious to a person of ordinary
skill in the art. Id. at 56 (citing Ormco Corp. v. Align Tech., Inc., 463 F.3d
1299, 1311 (Fed. Cir. 2006) (“Where a claimed range overlaps with a range
disclosed in the prior art, there is a presumption of obviousness.”)).
Consistent with Petitioner’s arguments and evidence, Yamaguchi ’923
teaches or suggests alloys including only Sn, Cu, Ag, and Bi, and it teaches
or suggests weight percentages of Sn, Cu, Ag, and Bi that overlap with the
claimed ranges. E.g., Ex. 1024, 2 (abstract), 4. Yamaguchi ’923 also
discloses that the weight percentages of the alloy ingredients affect various
properties of the alloy, and it discloses suggested minimum and maximum
weight percentages of Ag, Bi, and Cu to achieve desired alloy
characteristics. Id. at 5. “A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.” In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Because Yamaguchi ’923 teaches or suggests a solder alloy that
includes only the four elements required by claim 10 in weight percentage

See Ex. 1024, 4 (“Bi in the amount of 5 to 18 wt%”); see also Ex. 1004
(Morris Decl.) ¶¶ 191–196 (repeatedly identifying “18” as the upper end of
the Bi range disclosed by Yamaguchi ’923).
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ranges that overlap those of claim 10, Petitioner’s showing weighs in favor
of determining that claim 10 would have been obvious over
Yamaguchi ’923. That is so even though the overlap of Bi is only at an end
point, i.e., 5 wt%, of the ranges. See Genentech, Inc. v. Hospira, Inc., 946
F.3d 1333, 1341 (Fed. Cir. 2020) (“[W]e and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.” (internal quotation marks omitted)).
Patent Owner argues that “Yamaguchi ’923 teaches away from the
claimed bismuth range” because Yamaguchi ’923 teaches that “[w]hen the
content of Bi is below 5 wt%, it is impossible to . . . sufficiently” lower the
melting point of the alloy. PO Resp. 54–55 (citing Ex. 1024, 5). Patent
Owner also argues that “the claimed 5 wt% bismuth limit is critical when
compared with Yamaguchi ’923” because going even “slightly” above 5
wt% allegedly “results in a significantly decreased fatigue life.” Id. at 55.
Those arguments are not persuasive because they do not account for
the fact that Yamaguchi ’923 teaches a Bi weight percentage range that
includes 5% and therefore overlaps the range of claim 10. “A reference
teaches away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken in the
claim.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017)
(internal quotation marks omitted); see also DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not criticize, discredit, or otherwise
discourage investigation into the invention claimed.” (internal quotation
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marks omitted)). Given that Yamaguchi ’923 teaches a Bi weight
percentage range that overlaps the range of claim 10, we are not persuaded
that Yamaguchi ’923 teaches away from the Bi range of claim 10.
Patent Owner also argues that “Yamaguchi ’923 does not recognize
the wt% of silver as a result-effective variable for fatigue resistance, and
therefore it would not have been obvious or routine to optimize the silver
content when attempting to provide a high-reliability quaternary solder
alloy.” PO Resp. 52.
That argument is not persuasive for at least three reasons. First, no
particular optimization of Yamaguchi ’923’s silver is necessary given that
the silver range disclosed as desirable by Yamaguchi ’923 (2.0–3.5 wt%)
substantially overlaps with the claimed range (2.5–3.5 wt%). See Ormco,
463 F.3d at 1311.
Second, to the extent that optimization of Yamaguchi ’923’s Ag range
is required to achieve the claimed range, optimization of Yamaguchi ’923’s
composition need not be performed for the same reason as by the inventors
of the ’947 patent, particularly in view of the fact that Yamaguchi ’923’s Ag
range substantially overlaps the claimed range. See, e.g., KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
reach of the claim.”). Optimization of Yamaguchi ’923’s Ag range
reasonably would have led to values falling within the scope of claim 10
because the vast majority of values within Yamaguchi ’923’s disclosed
range fall within the scope of claim 10.
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Third, although Patent Owner asserts that “Yamaguchi ’923 does not
recognize the wt% of silver as a result-effective variable for fatigue
resistance,” PO Resp. 52, Yamaguchi ’923 expressly teaches that “[t]he
addition of Ag . . . can therefore provide superior thermal resistance, such as
resistance to thermal fatigue,” Ex. 1024, 5 (emphasis added).
Yamaguchi ’923 goes on to explain that Ag content of less than 2.0 wt%
does not provide “a sufficient effect . . . in terms of the improvement of the
thermal resistance,” and that Ag content of greater than 3.5 wt% undesirably
increases melting point, thereby leading to an optimal Ag content of “2.0 to
3.5 wt%.” Id. Patent Owner does not address that disclosure in its assertion
that “Yamaguchi ’923 does not recognize the wt% of silver as a result-
effective variable for fatigue resistance.” See PO Resp. 52. On its face, that
disclosure directly contradicts Patent Owner’s assertion. At oral argument,
Patent Owner acknowledged that its assertion was a “mistake.” See Hearing
Tr. 60:1–61:1.
We recognize that Petitioner did not cite the relevant portion of
Yamaguchi ’923 in the Petition. See generally Pet. However, Petitioner did
cite the corresponding portion of EP ’265 (a related European application
that Petitioner alternatively relies on in this proposed ground of
unpatentability, see supra p. 6 n.3), for the proposition that silver was known
to provide heat resistance to alloys. See id. at 49 (citing Ex. 1017, 3). The
page cited by Petitioner describes “heat resistance” as “resistance against
thermal embrittleness.” Ex. 1017, 3:7–8. The ’947 patent associates
“brittleness” and fatigue life. See Ex. 1001, 5:22–28.
In the Institution Decision, we noted that “neither party identifies any
material difference between Yamaguchi ’923 and EP ’265,” and we limited
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our discussion to Yamaguchi ’923. See DI 5 n.2. In our discussion of
Yamaguchi ’923 in the Institution Decision, we observed that “Yamaguchi
’923 explains that Ag content influences thermal resistance.” Id. at 25. The
very same sentence of Yamaguchi ’923 that first mentions thermal resistance
also expressly mentions fatigue. See Ex. 1024, 5 (“The addition of Ag . . .
can therefore provide superior thermal resistance, such as resistance to
thermal fatigue.” (emphasis added)).
Accordingly, although Petitioner did not cite Yamaguchi ’923’s
disclosure concerning thermal resistance and fatigue, the Institution Decision
did, and the significance of Yamaguchi ’923’s disclosures concerning
thermal resistance, brittleness, and fatigue was reasonably discernible from
both the Petition (including its citation of EP ’265) and the Institution
Decision. Patent Owner, thus, had sufficient notice and opportunity to
address that teaching during trial.
Patent Owner’s arguments fail to persuade us that Yamaguchi ’923’s
disclosures concerning the Ag weight % range of its alloys are inadequate to
lead to the claimed range. See Ormco, 463 F.3d at 1311. We find that
Yamaguchi ’923 discloses that the weight % of Ag affects fatigue resistance,
and that Yamaguchi ’923 discloses a weight % range of Ag that substantially
overlaps with, and fully encompasses, the claimed range. See Ex. 1024, 5.
Patent Owner also argues that “unexpected fatigue resistance was
achieved by limiting silver content to 2.5 to 3.5 wt%.” PO Resp. 52. For
support, Patent Owner cites only ¶¶ 123 and 124 of Dr. Hwang’s
Declaration. See id.
“For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
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evidence and the merits of the claimed invention.” In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) (quotation and emphasis omitted). “[T]he
burden of showing unexpected results rests on he who asserts them.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1363 (“Therefore, to show that
the [result] was unexpected, [Patent Owner] needed to demonstrate that the
results were unexpected to a significant degree beyond what was already
known . . . .”).
At the outset, we note that Patent Owner does not appear to address
whether any allegedly unexpected results involve a comparison to the closest
prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” (emphasis added)).
We also determine that Patent Owner does not adequately show that
alleged unexpected results are reasonably commensurate with the scope of
claim 10. See ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir.
2016) (“[T]here is no nexus unless the evidence presented is reasonably
commensurate with the scope of the claims.” (internal quotation marks
omitted)); Allergan Inc. v. Apotex, Inc., 754 F.3d 952, 965 (Fed. Cir. 2014)
(“It is the established rule that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.” (internal quotation marks omitted)); In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for it is the view of [the
CCPA] that objective evidence of non-obviousness must be commensurate
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in scope with the claims which the evidence is offered to support.” (internal
quotation marks omitted)).
In the context of a separate ground of unpatentability based on
Matsumoto, Patent Owner argues that evidence of unexpected results need
only be commensurate “with the portion of the claim giving rise to such
results.” PO Resp. 51. For support, Patent Owner cites In re Clemens, 622
F.2d 1029, 1036 (CCPA 1980), and argues that, so long as Patent Owner’s
evidence of unexpected results is commensurate with the claimed Ag range
of 2.5 to 3.5 wt%, the evidence meets the “commensurate in scope”
requirement, irrespective of any evidence concerning the weight percentages
of the other three elements required by claim 10. PO Resp. 51; see also id.
at 52 (“[T]he unexpected results are commensurate in scope with the
claimed invention because claim 10 recites the critical 2.5 to 3.5 wt% silver
range.”).
As set forth above, the Federal Circuit (and its predecessor court) has
repeatedly held that evidence of unexpected results must be commensurate
with the scope of “the claims.” See ClassCo, 838 F.3d at 1220; see also
Allergan, 754 F.3d 965; In re Greenfield, 571 F.2d at 1189. Clemens itself,
relied on by Patent Owner, is no different: “In order to establish unexpected
results for a claimed invention, objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.” 622 F.2d at 1035 (emphasis added). In view of that case law,
Patent Owner’s assertion that unexpected results need only be commensurate
“with the portion of the claim giving rise to such results,” with an
unexplained citation to Clemens, see PO Resp. 51, is not persuasive.
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We agree with Petitioner that Clemens does not support Patent
Owner’s position. See Reply 23. In Clemens, the CCPA found that the
scope of the claims at issue was broad, while the “appellants’ evidence, on
the other hand, is quite narrow,” and the CCPA determined that “the
evidence of unexpected results was not commensurate in scope with the
breadth of these claims.” 622 F.2d at 1036 (emphasis added). It is unclear
what portion of Clemens Patent Owner believes supports its position that
evidence need only be commensurate with “the portion of the claim giving
rise to” unexpected results. See PO Resp. 52. We decline to adopt Patent
Owner’s proposed rule, and we apply the well established rule that evidence
of unexpected results must be commensurate with the scope of “the claims.”
See ClassCo, 838 F.3d at 1220.
Applying that rule, Patent Owner has not established that its evidence
is commensurate in scope with claim 10. Petitioner asserts (Reply 23 (citing
PO Resp. 47 (Fig. 7)), 24), and Patent Owner does not dispute (Sur-reply
23), that the relevant evidence of allegedly unexpected results involves only
five alloys, all with 0.5 wt% Cu and 3 wt% Bi, notwithstanding the fact that
claim 10 covers 0.2–2.5 wt% Cu and 0.5–5 wt% Bi. Patent Owner does not
persuasively assert that a person of ordinary skill in the art would have
understood that limited evidence to be representative of the full scope of
claim 10. See PO Resp. 51. One of Patent Owner’s Declarants, Dr. Suhir,
testified that he did not know whether compositions beyond the limited
compositions tested would show an unexpected improvement in fatigue life.
See Ex. 1050, 92:4–96:14 (Q: “So there are many alloys . . . that fall within
the scope of Claim 10 for which you don’t know whether silver has an
unexpected improvement in fatigue life?” A: “Yeah, I don’t know.”).
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That deficiency in Patent Owner’s arguments and evidence, as well as
Patent Owner’s failure to address whether any allegedly unexpected results
involve a comparison to the closest prior art, significantly reduces any
persuasive value Patent Owner’s arguments and evidence may otherwise
have. Cf. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“To the
extent that the patentee demonstrates the required nexus, his objective
evidence of nonobviousness will be accorded more or less weight.”).
Turning to the substance of Patent Owner’s argument concerning
unexpected results, we observe that the argument is premised on the
assertion that “neither Yamaguchi ’923 nor the other references cited by
Petitioner disclose the relationship between the wt% of silver and the fatigue
resistance of the solder composition.” PO Resp. 52; see also Ex. 2013
¶¶ 123, 124. Patent Owner’s argument is unpersuasive because it fails to
address Yamaguchi ’923’s disclosures that “[t]he addition of Ag . . . can
therefore provide superior thermal resistance, such as resistance to thermal
fatigue,” and that a desirable silver range is 2.0–3.5 wt%. See Ex. 1024, 5.
As noted above, at oral argument, Patent Owner acknowledged that its
assertion that Yamaguchi ’923 does not disclose a relationship between
weight % of Ag and fatigue resistance was a “mistake.” See Hearing
Tr. 60:1–61:1
Additionally, we observe that Patent Owner’s own evidence casts
doubt on whether a silver range of 2.5–3.5 wt% is critical to achieving
unexpected fatigue resistance across the scope of claim 10. See Reply 24–
25. Figure 8 of Patent Owner’s Response (not relied on by Patent Owner to
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show unexpected results14) shows that a composition of 93% Sn, 2% Cu,
2% Ag, and 3% Bi, has a fatigue life of 4141. See PO Resp. 50. That
composition falls within the scope of claim 10 except that its Ag content of
2% is lower than the 2.5% minimum of claim 10 that is alleged by Patent
Owner to be critical. That composition’s fatigue life of 4141 is comparable
to the fatigue lives of the samples comprising 2.5–3.5% Ag relied on by
Patent Owner to show the alleged criticality of the claimed Ag range of 2.5–
3.5%, compare PO Resp. 50, with PO Resp. 47, and it is significantly higher
than the fatigue lives of certain alloys that Patent Owner admits fall within
the scope of claim 10, see id. at 55–56.
Petitioner relies on that data in the Reply. See Pet. 24 (“Asahi’s own
data shows a fatigue life for a composition with 2% Ag . . . with 4141
cycles, well above the 3054 cycles of [certain compositions that Patent
Owner admits fall within the scope of claim 10].”). Patent Owner did not
respond to Petitioner’s argument in the Sur-reply. See Sur-reply 21–23. At
oral argument, Patent Owner responded by dismissing the alloy having 2%
Ag and a fatigue life of 4141 as “one data point.” Hearing Tr. 80:14–16.
Given the limited number of examples relied on by Patent Owner in this case
to show criticality, see PO Resp. 45–48, however, a single counterexample
appears to be significant, and Patent Owner has not shown otherwise.
Based on that evidence and Patent Owner’s arguments, we are not
persuaded that Patent Owner has shown that an Ag range of 2.5–3.5 wt% is
critical to achieving good fatigue resistance when Patent Owner’s data

14 Figure 8 appears in a section of Patent Owner’s Response titled “Copper is
Not the Dominant Influence on the Fatigue Life for Sn-Ag-Cu-Bi Solder
Alloys.” PO Resp. 48–50.
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indicates that Ag content of 2% yields similar fatigue results in some alloys.
On this record, Patent Owner has not established that a person of ordinary
skill in the art would have regarded the claimed Ag range as critical or the
improved fatigue resistance due to inclusion of 2.5–3.5 wt% as unexpected.
We attribute only minimal weight to Patent Owner’s evidence of unexpected
results.
Patent Owner raises no other arguments as to this proposed ground of
unpatentability. When considering all of the evidence of obviousness and
nonobviousness together (see In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir.
2012)), we conclude that Petitioner has shown by a preponderance of the
evidence that the subject matter of claim 10 would have been obvious over
Yamaguchi ’923.
F. OBVIOUSNESS OF CLAIM 10 IN VIEW OF LEE OR MATSUMOTO
In the interest of efficiency and because, in our analysis above, we
hold claim 10, the only challenged claim, unpatentable on three independent
grounds covering both § 102 and § 103, we decline to reach decisions as to
the obviousness ground based on Lee and the obviousness ground based on
Matsumoto. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018)
(holding that a petitioner “is entitled to a final written decision addressing all
of the claims it has challenged”); see also Boston Sci. Scimed, Inc. v. Cook
Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020 WL 2071962, at *4 (Fed.
Cir. Apr. 30, 2020) (nonprecedential) (recognizing that the “Board need not
address issues that are not necessary to the resolution of the proceeding”
and, thus, agreeing that the Board has “discretion to decline to decide
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additional instituted grounds once the petitioner has prevailed on all its
challenged claims”).
G. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner moves to exclude certain exhibits (the “Challenged
Exhibits”) associated with “Grounds 4 and 5” (i.e., the obviousness ground
based on Matsumoto and the obviousness ground based on Yamaguchi ’923)
under Federal Rules of Evidence (“FRE”) 402 and 403. Paper 33. “The
moving party has the burden of proof to establish that it is entitled to the
requested relief.” 37 C.F.R. § 42.20(c).
Patent Owner argues that Petitioner’s proposed obviousness grounds
are single-reference obviousness grounds, and that Petitioner’s discussion of
background art describing what was known about Sn, Ag, Cu, and Bi in the
context of solder alloys, see Pet. 7–23, cannot be cited or relied on by
Petitioner in Petitioner’s substantive obviousness analysis because any
attempt to do so is an improper attempt to shoehorn those references in as
“secondary references . . . as one or more new grounds to challenge the
validity of Claim 10.” Paper 33, 7–9. Specifically, Patent Owner argues
that none of the exhibits cited in the background discussion of the Petition
should be allowed to support Petitioner’s contention that the concentrations
of Sn, Ag, Cu, and Bi were known result-effective variables. Id. Patent
Owner also argues that we should exclude “exhibits attached to [the] Morris
Declaration but never relied on.” Id. at 13.
For reasons consistent with those argued by Petitioner in its
opposition, see Paper 34, we deny Patent Owner’s Motion to Exclude.
It is clear from the Motion that Patent Owner’s arguments concern the
substantive merit of Petitioner’s proposed grounds. Patent Owner argues
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that the Petitioner’s proposed obviousness grounds “were not identified
‘with particularity’” because the references used to supply information
concerning the state of the art at the time of the invention are not listed in
Petitioner’s statement of the proposed grounds of unpatentability. Paper 33,
1–2, 8. Patent Owner argues that these background references are
improperly being used as “secondary references” “to allegedly demonstrate
that the amounts of tin, copper, silver and bismuth . . . are result-effective
variables.” Id. at 9. Patent Owner argues that Petitioner’s “approach . . .
bypasses the ‘with particularity’ notice requirements of 35 U.S.C. § 312 by
leveling the Challenged Exhibits as secondary references without expressly
identifying them as such. . . . In essence, [Petitioner] is sneaking additional,
unasserted grounds into its Petition . . . .” Id. at 9–10.
In its argument, nowhere does Patent Owner mention FRE 402 or 403.
Nor does Patent Owner attempt to explain how the Challenged Exhibits are
irrelevant or unfairly prejudicial. Patent Owner itself describes the
Challenged Exhibits as concerning whether Sn, Ag, Cu, and Bi were known
result-effective variables. Id. at 7–9. That issue is plainly relevant to this
proceeding, and, particularly in the absence of any meaningful argument
from Patent Owner on point, we do not discern how any of the Challenged
Exhibits is unfairly prejudicial or confusing.
Additionally, we observe that Patent Owner’s request that we exclude
certain exhibits appears to be made on a ground-by-ground basis. See
generally Paper 33. In other words, Patent Owner does not appear to be
asking us to exclude the Challenged Exhibits as to the entire proceeding, but
only as to certain grounds. See generally id. Patent Owner cites no support
for the apparent proposition that evidence may be excluded in that way.
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Patent Owner’s position supports our determination that Patent Owner’s
arguments concern the merits of the individual proposed grounds and the
weight that should be given to the evidence, not the admissibility of the
evidence.
Patent Owner’s Motion is also procedurally defective. As Patent
Owner acknowledges, a motion to exclude must “[a]ddress objections to
exhibits in numerical order.” Paper 33, 1 (quoting 37 C.F.R. 42.64(c) and
Trial Practice Guide). Although Patent Owner provides a lengthy list of
Challenged Exhibits, see id. at 2–5, in the argument section of Patent
Owner’s Motion, Patent Owner does not meaningfully discuss any of the
listed exhibits, does not discuss exhibits in numerical order, and, as noted
above, does not explain why any exhibit is irrelevant or prejudicial under the
Federal Rules of Evidence, see id. at 8–12. We view arguments that
Petitioner’s proposed grounds are “inherently ambiguous,” id. at 10, and that
the Challenged Exhibits were not identified with sufficient “particularity,”
e.g., id. at 7, to be directed to the merits of the Petition and the weight that
should be given to the evidence, not to the admissibility of the evidence.
Additionally, as to Patent Owner’s arguments concerning the use of
certain exhibits with respect to the ground based on Matsumoto (what Patent
Owner refers to as Ground 4), as set forth above, we decline to reach a
decision as to that proposed ground. Accordingly, we have not relied on any
of the exhibits at issue in the Motion to Exclude in any way that is relevant
to Patent Owner’s arguments. See id. at 8–11.
As to Patent Owner’s arguments concerning the use of certain exhibits
with respect to the ground based on Yamaguchi ’923 (what Patent Owner
refers to as Ground 5), we rely on Yamaguchi ’923 itself as adequately
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establishing that alloy components are result-effective variables. As with
Patent Owner’s argument concerning exhibits associated with the ground
based on Matsumoto, we have not relied on any of the exhibits at issue in
any way that is relevant to Patent Owner’s arguments.
Finally, as to Patent Owner’s arguments concerning exhibits cited by
Dr. Morris but “never relied on by [Petitioner] in this proceeding,” Patent
Owner cites no legal support for its position that a reference is inadmissible
under the Federal Rules of Evidence if it is cited only by a declarant. See
Paper 33, 13. We again determine that Patent Owner’s arguments go to the
weight of the evidence, not its admissibility. We also observe that, as to
three of the four exhibits identified by Patent Owner (Exs. 1031, 1032, 1033,
see Paper 33, 13), we have not relied on them in reaching our decision. As
to the only other exhibit identified by Patent Owner, Exhibit 1028, Petitioner
expressly cites and relies on that exhibit in the Reply, which refutes Patent
Owner’s assertion that it was “never relied on by [Petitioner] in this
proceeding.” See Paper 33, 13; see also Reply 6 (citing Ex. 1028).
For those reasons, Patent Owner has not shown that any of the
Challenged Exhibits is inadmissible under the Federal Rules of Evidence.
We deny Patent Owner’s Motion to Exclude.
III. CONCLUSION
After reviewing the record and weighing the evidence offered by both
parties, we determine that Petitioner has demonstrated by a preponderance of
the evidence that (1) Yamaguchi ’874 anticipates claim 10, (2) Lee
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anticipates claim 10, and (3) claim 10 would have been obvious over
Yamaguchi ’923.15 We deny Patent Owner’s Motion to Exclude.
In summary:
Claims 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
10 102(b) Yamaguchi ’874 10
10 102(b) Lee 10
10 103(a) Lee
10 103(a) Matsumoto
10 103(a) Yamaguchi ’923 10
Overall
Outcome 10

15 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
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IV. ORDER
It is hereby:
ORDERED that Petitioner has proven by a preponderance of the
evidence that claim 10 is unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
(Paper 33) is denied;
FURTHER ORDERED that, pursuant to 35 U.S.C. § 318(b), upon
expiration of the time for appeal of this decision, or the termination of any
such appeal, a certificate shall issue canceling claim 10;
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:
Hector Ribera
MARTON RIBERA SCHUMANN & CHANG LLP
hector@martonribera.com

For PATENT OWNER:

Scott McCollister
Jude Fry
FAY SHARPE LLP
smccollister@faysharpe.com
jfry@faysharpe.com