UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. PRESIDIO COMPONENTS, INC. Petitioner v.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PRESIDIO COMPONENTS, INC. Petitioner v. AVX CORPORATION Patent Owner Patent 6,144,547 PRESIDIO COMPONENTS, INC. S PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,144,547 UNDER 37 C.F.R et seq. Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS I. STATEMENT OF THE PRECISE RELIEF REQUESTED... 1 II. GROUNDS FOR STANDING... 1 III. MANDATORY NOTICES... 1 A. Real Party-In-Interest... 2 B. Related Matters... 2 C. Lead And Back-Up Counsel... 2 D. Service Information... 3 IV. PAYMENT OF FEES... 3 V. IDENTIFICATION OF CHALLENGES... 3 A. Claims For Which IPR Is Requested... 3 B. Identification Of Patents And Printed Publications... 3 C. Identification of Statutory Grounds... 4 D. How The Challenged Claims Are To Be Construed... 5 VI. SUMMARY OF THE 547 PATENT AND ITS PROSECUTION HISTORY... 7 A. 547 Patent... 7 B. Prosecution History... 9 VII. UNPATENTABILITY ARGUMENTS A. The Galvagni Reference, Ground 1 (Claims 1, 3-5, 12) The Galvagni Reference Applied To Claim The Galvagni Reference Applied To Claims i

3 3. The Galvagni Reference Applied To Claim The Galvagni Reference Applied To Claim Summary Of The Galvagni Reference Applied To Claims 1, 3-5, and B. Galvagni In View of October 1997 Multilayer Ceramic Capacitors Article, Ground 2 (Claims 1, 3-6, 12) C. Galvagni In View of Prior Art Product Catalogues, Ground 3 (Claims 3-4, 16-17) D. Admitted Prior Art, Figure 4 Of The 547 Patent, Ground 4 (Claims 1-5, 7-11) Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Admitted Prior Art, Figure 4 Applied To Claim Summary Of Admitted Prior Art, Figure 4 Applied To Claims 1-5, E. Admitted Prior Art, Figure 4 In View Of Galvagni, Ground 5 (Claims 1-5, 7-11, 12-14, 18) Claims 1-5, ii

4 2. Claims 12-14, F. Admitted Prior Art, Figure 4 In View Of Galvagni/ Hernandez, Ground 6 (Claims 1-15, 18) G. Admitted Prior Art, Figure 4 In View Of Galvagni/ Prior Art Catalogues, Ground 7 (Claims 3-4, 16-17) H. Admitted Prior Art, Figure 4 In View Of Dat/Kuroda, Ground 8 (Claims 1-5, 6, 7-11, 12-14, 18) Claims 1-5, Claim 6 (Admitted Prior Art, Figure 4 In View Of Dat/Kuroda) Claims 12-14, I. Admitted Prior Art, Figure 4 In View Of Cichanowski/ October 1997 Multilayer Ceramic Capacitors Article Ground 9 (Claims 1-15, 18) Claims 1-5, Claim Claims 12-15, J-L. Galvagni, Cichanowski, and Separately Gowen, In View Of November 1996 Kemet Tech Topics Publication, Grounds (Claims 6, 12, 17) M. Admitted Prior Art, Figure 4 In View of Gowen, Ground 13 (Claims 1-5, 7-15, 18) Claims 1-5, Claims 12-15, VIII. CONCLUSION iii

5 EXHIBIT LIST Exhibit Reference 1001 U.S. Patent No. 6,144,547 to Retseptor ( the 547 patent ) 1002 U.S. Patent No. 5,569,880 to Galvagni ( Galvagni ) 1003 U.S. Patent No. 6,011,683 to Dat ( Dat ), including provisional application No. 60/036, U.S. Patent No. 5,812,363 to Kuroda ( Kuroda ) 1005 U.S. Patent No. 4,618,911 to Cichanowski ( Cichanowski ) 1006 U.S. Patent No. 3,304,475 to Gowen ( Gowen ) 1007 November 1996 Kemet Tech Topics Publication, Vol. 6, No. 2 ( Challenges in Manufacturing 0402 Multilayer Ceramic Capacitors ) 1008 Prior Art Product Manufacturer Catalogues 1009 Declaration of Michael Randall, Ph.D Prosecution History of Application Serial No. 09/198,555, which issued as the 547 patent 1011 Webster s Third New International Dictionary, definition of negligible 1012 October 1997 Multilayer Ceramic Capacitors Article 1013 U.S. Patent No. 5,272,590 to Hernandez ( Hernandez ) iv

6 I. STATEMENT OF THE PRECISE RELIEF REQUESTED Petitioner Presidio Components, Inc. ( Petitioner or Presidio ) respectfully requests that the United States Patent and Trademark Office ( USPTO or Office ) institute inter partes review ( IPR ) under 35 U.S.C and 37 C.F.R et seq., and cancel claims 1-18 of U.S. Patent No. 6,144,547 (Ex. 1001, the 547 patent ), as being invalid under 35 U.S.C. 102 and/or 103 based on the grounds set forth in Section V.C, infra. II. GROUNDS FOR STANDING Pursuant to 37 C.F.R (a), Petitioner hereby certifies that the 547 patent for which review is sought is available for IPR. Specifically: (1) Petitioner is not an owner of the 547 patent, see ; (2) Petitioner has not filed a civil action challenging the validity of a claim of the 547 patent, see (a); (3) this Petition is filed less than one year after November 7, 2014, the date on which Petitioner was served with a complaint alleging infringement of the 547 patent, see (b); and (4) Petitioner is not estopped from challenging the claims on the grounds identified in this Petition, see (c). III. MANDATORY NOTICES Pursuant to 37 C.F.R. 42.8(a)(1), Petitioner provides the following mandatory disclosures. 1

7 A. Real Party-In-Interest Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Presidio Components, Inc. is the real party-in-interest. B. Related Matters Pursuant to 37 C.F.R. 42.8(b)(2), Petitioner states that the only known judicial or administrative matter that may affect, or be affected by, a decision in this proceeding is the litigation captioned American Technical Ceramics Corp. et al v. Presidio Components, Inc., Case 2:14-cv KAM-AKT (E.D.N.Y.) (asserting infringement of U.S. Patent Nos. 6,337,791; 6,992,879; and 6,144,547). 1 C. Lead And Back-Up Counsel Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following designation of counsel: Lead Counsel Back-Up Counsel Brett A. Schatz (Reg. No. 59,764) Gregory F. Ahrens (Reg. No. 32,957) bschatz@whe-law.com gahrens@whe-law.com Address: Wood Herron & Evans, LLP 2700 Carew Tower 441 Vine Street Cincinnati, OH Wood Herron & Evans, LLP 2700 Carew Tower 441 Vine Street Cincinnati, OH Telephone: Facsimile: Petitions for IPR of U.S. Patent Nos. 6,337,791 ( the 791 patent ) and 6,992,879 ( the 879 patent ) are filed concurrently herewith. 2

8 D. Service Information Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be served on either Brett Schatz or Greg Ahrens as noted above. IV. PAYMENT OF FEES The fee required by 37 C.F.R (a) for this Petition for IPR is submitted herewith. The undersigned authorizes that any underpayment be charged, any overpayment credited, or payment for any additional fees due in connection with this Petition to be charged to Deposit Account No V. IDENTIFICATION OF CHALLENGES A. Claims For Which IPR Is Requested Petitioner requests IPR of claims 1-18 of the 547 patent. B. Identification Of Patents And Printed Publications The following patents and printed publications are those references upon which Petitioner s grounds of invalidity are based under 35 U.S.C. 102(b) and 35 U.S.C. 103(a): Admitted Prior Art, Fig. 4 of the 547 patent (Ex. 1001); U.S. Patent No. 5,569,880 to Galvagni (Ex. 1002, Galvagni ) issued October 29, 1996; U.S. Patent No. 6,011,683 to Dat (Ex. 1003; Dat ) issued on January 4, 2000 (including provisional application No. 60/036,326, demonstrating that all disclosures in Dat are entitled to a priority date of at least January 30, 1997); U.S. Patent No. 5,812,363 to Kuroda (Ex. 1004; Kuroda ) issued on September 22, 3

9 1998; U.S. Patent No. 5,569,880 to Cichanowski (Ex. 1005; Cichanowski ) issued on October 21, 1986; U.S. Patent No. 3,304,475 to Gowen (Ex. 1006; Gowen ) issued on April 20, 1961; November 1996 Kemet Tech Topics Publication (Ex. 1007); Prior Art Product Catalogues (Ex. 1008: 1997 TDK Product Selection Guide; AVX/Kyocera 1996 Product Catalogue; Murata September 30, 1997 Product Catalogue; Taiyo Yuden October 1996 September 1997 Product Catalogue); October 1997 Multilayer Ceramic Capacitors Article (Ex. 1012); U.S. Patent No. 5,272,590 to Hernandez (Ex. 1013; Hernandez ). C. Identification Of Statutory Grounds Petitioner asserts that the challenged claims are unpatentable based upon the following grounds: 1. Claims 1, 3-5, 12: anticipated/obvious by Galvagni 2. Claims 1, 3-6, 12: obvious by Galvagni/October 1997 Multilayer Ceramic Capacitors Article 3. Claims 3-4, 16-17: obvious by Galvagni/Prior Art Product Catalogues 4. Claims 1-5, 7-11: anticipated/obvious by Admitted Prior Art, Fig. 4 of the 547 patent 5. Claims 1-5, 7-14, 18: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/galvagni 4

10 6. Claims 1-15, 18: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/galvagni/hernandez 7. Claims 3-4, 16-17: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/galvagni/prior Art Product Catalogues 8. Claims 1-5, 6, 7-14, 18: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/dat/kuroda 9. Claims 1-15, 18: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/cichanowski/october 1997 Multilayer Ceramic Capacitors Article 10. Claims 6, 12, 17: obvious by Galvagni/Kemet Tech Topics Publication 11. Claims 12, 17: obvious by Cichanowski/Kemet Tech Topics Publication 12. Claims 12, 17: obvious by Gowen/Kemet Tech Topics Publication 13. Claims 1-5, 7-15, 18: obvious by Admitted Prior Art, Fig. 4 of the 547 patent/gowen D. How The Challenged Claims Are To Be Construed For purposes of IPR, a claim is interpreted by applying its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R (b). Claim terms are given their ordinary meanings as understood by one of ordinary skill in the art, unless that meaning is inconsistent 5

11 with the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Petitioner submits that each claim term should be given its ordinary meaning. 2 The dictionary definitions of claim term negligible include so tiny as to require or deserve little or no attention, of so little substance or extent or worth as to be practically nonexistent and so small, unimportant, etc., as to be not worth considering; insignificant. (See Ex. 1011). Therefore, Petitioner submits that the ordinary meaning of the claim term negligibly, as found in claim 12 of the 547 patent ( with portions of said terminations extending negligibly on a top surface ), is practically nonexistent or nonexistent. Petitioner submits that this is the broadest reasonable construction of the term negliglibly in light of the specification of the 547 patent, which discloses that the top land portion of the terminations are only due to the manufacturing process and can generally be neglected. (Ex. 1001, at 3:9-13). That same term also appears in claim 1 of the 547 patent, but only in the preamble, and preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough 2 With respect to the technology disclosed and claimed in the 547 patent, one of ordinary skill in the art during the relevant time period would have had a Masters in Materials Science or Engineering, or analogous degree, and at least two years of industry experience in multilayer capacitors. Ex. 1009, at

12 Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). VI. SUMMARY OF THE 547 PATENT AND ITS PROSECUTION HISTORY A. 547 Patent The 547 patent is entitled Miniature Surface Mount Capacitor And Method Of Making Same. Figure 3 of the 547 patent is reproduced below. Surface mount capacitors are made having ultra-small dimensions of length, width and height. (Exhibit 1001, at Abstract). The components have L-shaped terminations on respective ends, providing bottom lands for mounting to a circuit board. Id. At most, the component will have top lands of negligible size to provide a large gap width between the terminations across the top surface of the component. Id. (emphasis added). Those top lands are merely due to manufacturing processes, and therefore can generally be neglected. Id. at 3:9-12. The 547 patent gives no lower limit for the size of the top lands other than their 7

13 existence may be negligible, and should be neglected because they are merely due to manufacturing processes. Id. at Abstract; 3:17-20, 5: Figures 3 and 4 show, respectively, an embodiment of the purportedly inventive surface mount capacitor and an embodiment of an admitted prior art capacitor. As described below, the Figures, and their respective disclosures regarding the purported invention and the prior art, are nearly identical. For example, Figure 3 (the purportedly inventive surface mount capacitor) discloses an insulating substrate 36, which may be glazed 38, and Admitted Prior Art Figure 4 discloses a matching insulating glass substrate 58. Id. at 3:20-33; 3: Fig. 3 discloses a first conductive pattern 40, and Fig. 4 discloses a matching first conductive pattern 60. Id. Fig. 3 discloses a dielectric layer 44, and Fig. 4 discloses a matching dielectric layer 64. Id. Fig. 3 discloses a second conductive pattern 42, and Fig. 4 discloses a matching second conductive pattern 62. Id. Fig. 3 discloses a planar cover layer 46, and Fig. 4 discloses a matching planar cover layer 68. Id. 8

14 The 547 patent itself summarized and confirmed that nearly each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8. Table I also summarizes, and confirms, that with the exception of an optional glaze layer and a preferred passivation layer, for each structure disclosed in Fig. 3 (the purportedly inventive surface mount capacitor), there is a matching structure discloses in Fig. 4 (the admitted prior art). Id. B. Prosecution History Inventor Retseptor originally submitted application claims 1-29, but claims were withdrawn from consideration. (Ex. 1010, at 51). Application claims 1-2 (issued claim 1) were rejected pursuant to 35 U.S.C. 102(b) as being anticipated by Cichanowski (Ex. 1005). (Ex. 1010, at 53). According to the Patent Examiner, Cichanowski discloses a thin film capacitor device with substantially L-shaped terminations; the device body includes an insulating substrate (15) having a top surface and a bottom surface (see fig. 2); a first conductive pattern (14) located above the top surface of the substrate and defining a first polarity capacitor plate; a dielectric layer located on top of the first conductive pattern; a second conductive pattern (14) located on the dielectric layer, the second conductive pattern defining a second capacitor plate in registry with the first capacitor plate; and a planar cover (23) layer located above the second conductive pattern. Id. at 53. 9

15 Application Claims 1-7 and were also rejected, under 35 U.S.C. 103(a) as being unpatentable over Kuroda (Ex. 1004) in view of Galvagni (Ex. 1002) and applicant s admitted prior art. Id. at According to the Patent Examiner, Kuroda (Ex. 1004) discloses a thin film capacitor including: an insulating substrate (22) having a top surface and a bottom surface; a first conductive pattern (15) located above the top surface of the substrate and defining a first polarity capacitor plate; a dielectric layer (17) located on top of the first conductive pattern; a second conductive pattern (16) located on the dielectric layer, the second conductive pattern defining a second capacitor plate in registry with the first capacitor plate; and a planar cover layer (21) located above the second conductive pattern. (Ex. 1010, at 54). While the Patent Examiner found that Kuroda (Ex. 1004) does not disclose the terminations are L-shaped, the Patent Examiner determined that Galvagni (Ex. 1002) discloses L-shaped terminations. (Ex. 1010, at 54-55). And, the Patent Examiner determined it would have been obvious to a person of ordinary skill in the art to use the L-shaped terminations of Galvagni in the capacitor of Kuroda; since such a modification would require less material for manufacturing thereby saving manufacturing time and cost. (Ex. 1010, at 54-55). Because Galvagni (Ex. 1002) discloses L-shaped terminations (Ex. 1010, at 54-55), the Patent Examiner determined that the combination of Kuroda and 10

16 Galvagni discloses, and renders obvious, application claims 2-7, (issued claims 1-6, 10-17). (Ex. 1010, at 55-58). The Patent Examiner also determined that application claims 8-10 (issued claims 7-9) were unpatentable over Kuroda (Ex. 1004) and Galvagni (Ex. 1002), and further in view of applicant s admitted prior art. (Ex. 1010, at 58). In an Amendment, Retseptor amended the preemable of application claim 1 (issued claim 1) and amended the L-shaped terminations with portions of said terminations extended over a bottom surface of said device body and at most only negligibly over a top surface of said device body. (Ex. 1010, at 66). A similar modification was made to application claim 13 (issued claim 12). (Ex. 1010, at 67). In a June 2000 Interview Summary, the Patent Examiner documented an agreement reached between the applicant and the Patent Examiner. (Ex. 1010, at 80). Specifically, the Patent Examiner documented an agreement that Applicant define negligibly over a top surface. (Ex. 1010, at 80). The Interview Summary related to application claims 1 and 13 (issued claims 1 and 12). (Ex. 1010, at 80). A few days later, on June 19, 2000, the Patent Examiner mailed a Notice of Allowability of claims application claims 1 and 3-19 (issued claims 1-18). (Ex. 1010, at 82-83). The Patent Examiner noted as follows: The prior art does not teach or fairly suggest (taken in combination with the other claimed features), with a portion of said terminations extending negligibly over the top surface of the 11

17 device body. Although the Glavagni [sic] reference discloses substantially L- shaped terminations, it does not disclose a portion of the terminations negligibly over the top surface. The applicant has indicated the negligibly (as seen in the specification) over the top surface means a small amount of the material is formed on the top surface. (Ex. 1010, at 85). This is the same limitation that the inventor admitted was merely due to manufacturing processes, and therefore can generally be neglected. (Ex. 1001, at 3:9-12). VII. UNPATENTABILITY ARGUMENTS A. The Galvagni Reference, Ground 1 (Claims 1, 3-5, 12) 1. The Galvagni Reference Applied To Claim 1 Galvagni discloses, in Fig. 3, a miniaturized capacitor 16. (Ex. 1002, at 4:47-65; Abstract). The Galvagni capacitor is designed to satisfy what was the trend prior to the 547 patent toward reducing the size of electronic components, as well as efficiently utilizing the PC mother board to achieve a maximum concentration of electronic components on a given area. (Ex. 1002, at 1:13-20). 12

18 As can be seen in Fig. 3 above and as disclosed in Galvagni itself, the terminals of the capacitor are L shaped, and J shaped. (Ex. 1002, at Abstract). For example, end 18 of the capacitor is covered by a first layer or layers 21 of solder receptive material. Id. at 4: The generally L-shaped component 21 may be comprised of sequential layers of nickel, silver, solder, etc. Id. The layer 21 covers the entirety of end 18 and includes a lowermost portion 22 which underlies the bottom surface 23 of the capacitor 16. Id. Galvagni also discloses a J-shaped termination at the opposite end of the capacitor. Id. Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). It follows that, if the preamble of claim 1 is treated as not limiting the scope of the claim, then to invalidate claim 1, Galvagni (and other prior art) need not disclose the preamble. If the term negligibly is defined as practically nonexistent or nonexistent, then the top land need not be disclosed by the prior art. That is because a prior art reference that does not disclose a top land satisfies the requirement of a nonexistent top land. If the term negligibly is defined such that it is satisfied by a reference that discloses some amount of termination structure, Galvagni discloses such a 13

19 termination, and for several independent reasons. (Ex. 1009, at 81-91). To explain, miniature surface mount components are typically exposed to a Harperizing or a corner rounding process as a part of production. (Ex. 1009, at 82). The Harperizing process is understood by one of ordinary skill in the art, and was so known prior to November Id. This serves multiple purposes of at least reducing chip-outs, reducing tooling wear, and enabling edge and corner coverage of terminations. Id. at Thus, miniature surface mount capacitors typically do not have perfectly square edges and corners. Id. Further, surface mount components generally are not perfect in geometry. (Ex. 1009, at 84). The nature of a monolithic surface mounted device, having internal electrodes, as well as the associated manufacturing techniques, often result in geometric imperfections in the resulting components, such as surface crowning, bowing, and angled sides. Id. The above factors all would contribute to imperfections in the masking described in Galvagni, which would result in extension of the termination negligibly over the top surface of the body of the device. (See Exhibit 1002, at 5:35-44; 5:55-6:5; Ex. 1009, at 84). Further, solder creep is described in the 547 patent as the mechanism responsible for formation of the negligible top lands 32 and 34. (Ex. 1001, at 3:9-12; Ex. 1009, at 85). The 547 patent indicates that the solder is formed on the termination via barrel plating or other soldering process. Id. at 5:3-11; Ex. 1009, at 14

20 84. Barrel plating and other types of soldering deposition processes involving nickel and Sn-Pb were well known before November It was also well known before November 1997 that these methods of solder deposition or metal deposition are likely to result in imperfect or additional deposits of material due to overplating, plating overthrow, solder smearing, or advancement of the solidified solder past the termination during solder dipping. (Ex. 1009, at 84). Thus, it would be understood by one of skill in the art that deposition of solder or other material via barrel plating, or by other types of solder deposition processes, would likely result in the termination extending negligibly over the top surface of the device as noted in the 547 patent. Id. An example of this is the stack view cross-section micrograph of an 0402 multilayer ceramic capacitor (MLC) shown below. (Ex. 1009, at 86-87). The photomicrograph is prior art to the 547 patent as it was published in November of (Ex. 1007; Ex. 1009, at 86-87). An annotated version of the same photomicrograph (also shown below, to the right) demonstrates that the MLC surface mounted capacitor has significantly rounded corners (i.e., the corner radius is on the order of 0.07 mm or about 0.003). (Ex. 1009, at 87). This is typical of 0402 surface mount capacitors of the prior art period, and was well known by one of ordinary skill in the art. (Ex. 1009, at 87). 15

21 ~0.14 mm ~0.14 mm ~0.14 mm Corner radius ~0.07mm ~0.14 mm Source: KEMET Tech Topic Challenges in Manufacturing 0402 Multilayer Ceramic Capacitors, Vol. 6 No. 2, Published by KEMET Electronics P.O. Box 5928, Greenville SC, 29606, November, In consideration of the significant corner radius characteristic of surface mounted capacitors of the prior art, the method of termination application (i.e., shingled orientation) disclosed in Galvagni would result in extension of the L- shaped termination negligibly over the top surface of the device as claimed in the 547 patent. (Ex. 1009, at 89). Specifically, Fig. 4 of Galvagni (reproduced below) discloses this shingled orientation, wherein the manufacturing process would result in extension of the L-shaped termination negligibly over the top surface of the device. Id. In practice, the shingled orientation of Galvagni would result in extension of the L-shaped termination to cover a negligible portion of the top surface using the method disclosed in Galvagni. (Ex. 1009, at 89). 16

22 Further, Galvagni teaches the value of enabling the ability to in-circuit test the device after mounting said device by contacting a conductive portion of the termination of the device. (Ex. 1002, at 3:5-20, 6:20-30). It would be obvious to one of skill in the art that an extension of the termination, negligibly over the top portion of the device, would better enable in-circuit testing as that would make it easier to access the capacitor for in-circuit test. (Ex. 1009, at 91). In addition, Galvagni discloses a J-shaped termination. The top portion of the J necessarily includes a negligible top land. (Ex. 1009, at 91). Galvagni also discloses an insulating substrate having a top surface and a bottom surface. More specifically, the layer 21 covers the entirety of end 18 and includes a lowermost portion 22 which underlies the bottom surface 23 of the capacitor 16. Immediately above bottom surface 23 is an insulating substrate, in the form of a dielectric layer. (See Ex. 1009, at 92-93). Figure 3 of Galvagni also discloses a first conductive pattern located above said top surface of said substrate 23 and defining a first polarity capacitor plate. In particular, Figure 3 discloses internal electrode 19. (Ex. 1002, at 50-55). Each internal electrode 19 extends to end 20. Id. In this manner, first conductive pattern 19 defines a first polarity capacitor plate. (See Ex. 1009, at 94). Figure 3 of Galvagni also discloses a dielectric layer located on top of the first conductive pattern, specifically the dielectric layer located immediately above 17

23 internal electrode 19. (Ex. 1002, at Fig. 3; see also Ex. 1009, at 95). And, Galvagni discloses a second conductive pattern located on that dielectric layer, specifically internal electrode 17. (Ex. 1002, at Fig. 3; see also Ex. 1009, at 95). The second conductive pattern 17 defines a second capacitor plate in registry with said first capacitor plate 19. (See Ex. 1009, at 95). A planar cover layer is located above the second conductive pattern. Specifically, there is disclosed another dielectric layer located immediately above internal electrode 17. (Ex. 1002, at Fig. 3; see also Ex. 1009, at 95). 2. The Galvagni Reference Applied To Claims 3-4 According to the Patent Examiner handling the prosecution of the application that issued as the 547 patent, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body of 0402 size, since such a modification would have involved a mere change in the size of the component. (Ex. 1010, at 55). Further, Galvagni discloses that with the current trend toward miniaturization of electronic devices as computers and cellular phones, there is a concomitant trend toward reducing the size of the electronic components, such as capacitors. (Ex. 1002, at 1:13-20; Ex. 1009, at 99). The reduction in size of electronic components has been a significant aid in the miniaturization process. Id. Miniature electronic components may be only minor fractions of an inch in their largest dimension. (Ex. 1002, at 1:43-49). 18

24 By way of example, Galvagni discloses a first layer of 500 angstroms of chromium is preferably followed by a second layering of 3500 angstroms of nickel with a final coating of 3500 angstroms of silver. The coating, and particularly the outermost coating, is highly receptive to and readily wettable by solder. (Ex. 1002, at 5:45-51). For these reasons, a person of ordinary skill in the art would have known and had within his knowledge the skill to utilize a device body with a size of 0402 or less. (See Ex. 1009, Dr. Randall Decl., at 98-99). In addition, the 547 patent discloses that many prior art thin film capacitors of 0402 size will have a height of up to about 0.55 mm. (Ex. 1001, at 4:22-24). Therefore, the 547 patent discloses a height of up to (and including less than) 0.55 mm, and a person of ordinary skill in the art would have known and had within his knowledge the skill to utilize a device body with a nominal height of no greater than about 0.40 mm. (See Ex. 1009, Dr. Randall Decl., at ). 3. The Galvagni Reference Applied To Claim 5 Claim 5 of the 547 patent requires a cover layer that comprises a rigid layer of insulative material sealed to said second conductive pattern. Galvagni discloses a rigid dielectric layer located immediately above internal electrode 17. (See Ex. 1009, Dr. Randall Decl., at 104). 19

25 4. The Galvagni Reference Applied To Claim 12 Claim 12 of the 547 patent requires generally the same limitations as required by Claims 1, 3, and 4. Therefore, for the same reasons disclosed above and for the same reasons that Galvagni discloses Claims 1, 3, and 4, Galvagni also discloses Claim 12. (See Ex. 1009, Dr. Randall Decl., at 105). 5. Summary Of The Galvagni Reference Applied To Claims 1, 3-5, and 12 In view of the foregoing teachings, Galvagni anticipates or renders obvious claims 1, 3-5, and 12. Each of these disclosures is also analyzed by Dr. Michael Randall, further confirming that Galvagni anticipates or renders obvious claims 1, 3-5, and 12. (Ex. 1009, at ). Claims 1, 3-5, 12 of U.S. Patent No. 6,144, A thin film capacitor device for mounting to a surface, said capacitor device comprising a device body having small dimensions in length, width and height, and having substantially L- shaped terminations located thereon with portions of said terminations extending over a bottom surface of said device body and negligibly over a top surface of said device body, said device body including: an insulating substrate having a top surface and a bottom surface; Illustrative Teachings of Galvagni, U.S. Pat. No. 5,569,880 (Ex. 1002) The terminals of the component are respectively L and J shaped conductive metal portions. The terminals have portions extending over a bottom surface of said device body and negligibly over a top surface of said device body (Exhibit 1002, at Abstract; Ex. 1009, Randall Decl., at 78-91). Fig. 3, which discloses an insulating substrate having a top surface and a bottom surface, immediately above bottom surface 23. (Exhibit 1002, at Fig. 3, Ex. 1009, 20

26 Claims 1, 3-5, 12 of U.S. Patent No. 6,144,547 a first conductive pattern located above said top surface of said substrate and defining a first polarity capacitor plate; a dielectric layer located on top of said first conductive pattern; a second conductive pattern located on said dielectric layer, said second conductive pattern defining a second capacitor plate in registry with said first capacitor plate; and a planar cover layer located above said second conductive pattern. 3. A thin film capacitor device as set forth in claim 1, wherein said device body has a size of 0402 or less. Illustrative Teachings of Galvagni, U.S. Pat. No. 5,569,880 (Ex. 1002) Randall Decl., at 92-93). The capacitor 16, which is in the form of a right parallelepiped includes electrodes 17 of a first polarity exiting at end 18 of the capacitor, electrodes 19 exiting at end 20 of the capacitor. (Exhibit 1002, at 4:47-65; Ex. 1009, Randall Decl., at 94). See Fig. 3, which discloses a dielectric layer located on top of the conductive pattern 19, immediately above conductive pattern 19. (Exhibit 1002, at Fig. 3, Ex. 1009, Randall Decl., at 95). The capacitor 16, which is in the form of a right parallelepiped includes electrodes 17 of a first polarity exiting at end 18 of the capacitor, electrodes 19 exiting at end 20 of the capacitor. (Exhibit 1002, at 4:47-65; Ex. 1009, Randall Decl., at 95). See Fig. 3, which discloses a planar cover layer above the second conductive pattern 17, immediately above second conductive pattern 17. (Exhibit 1002, at Fig. 3, Ex. 1009, Randall Decl., at 95). Galvagni discloses reducing the size of the electronic components. (Exhibit 1002, at 1:13-49; 5:45-51). It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body of 0402, since such a modification would have involved a mere change in the size of the component. (Exhibit 1010, at 55; Ex. 1009, Randall Decl., at 98-99). 21

27 Claims 1, 3-5, 12 of U.S. Patent No. 6,144, A thin film capacitor device as set forth in claim 3, wherein said device body has a nominal height of no greater than about 0.40 mm. 5. A thin film capacitor device as set forth in claim 1, wherein said cover layer comprises a rigid layer of insulative material sealed to said second conductive pattern. Claim 12. See Claims 1, 3, and 4. Illustrative Teachings of Galvagni, U.S. Pat. No. 5,569,880 (Ex. 1002) Galvagni discloses reducing the size of the electronic components. (Exhibit 1002, at 1:13-49; 5:45-51). It would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body with a nominal height of no greater than about 0.40 mm, since such a modification would have involved a mere change in the size of the component. (Exhibit 1010, at 55; Ex. 1009, Randall Decl., at ). Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Finally, a layer 66 of epoxy is applied to maintain a glass cover 68. (Exhibit 1001, at 3:42-54; Ex. 1009, Randall Decl., at 104). Same bases as Claims 1, 3, and 4. (Ex. 1009, Randall Decl., at 105). B. Galvagni In View Of October 1997 Multilayer Ceramic Capacitors Article, Ground 2 (Claims 1, 3-6, 12) There is a reasonable likelihood that claims 1, 3-6, and 12 are rendered obvious by Galvagni (Ex. 1002) in view of the October 1997 Multilayer Ceramic Capacitors Article (Ex. 1012). As noted above in Section VII.A, Galvagni discloses all of the limitations of Claims 1, 3-5, and 12 of the 547 patent. 22

28 To the extent Galvagni is found to not disclose the limitations of Claims 3-4 (and 6) of the 547 patent, those claims add the limitation of a device body having a size of 0402 or less, and a nominal height of no greater than about 0.40mm, and a cover layer having a thickness of about 0.1mm. (Ex. 1009, Randall Decl., at ). At page 2 (page 585 of Volume 2, Issue 5 of the Journal) of the October 1997 Multilayer Ceramic Capacitors Article there is disclosed multilayer ceramic chip capacitors with a case size of 0402, and (See Ex. 1012, Ex. 1009, at 108). Also disclosed are multilayer ceramic chip capacitors with a nominal height of 0.3mm. (See Ex. 1012, Ex. 1009, at 109). Also disclosed are ultrathin dielectric layers of less than 3µm, or 0.003mm. (See Ex. 1012, Ex. 1009, at 110). To the extent Galvagni is found to not disclose the limitations of Claim 12 of the 547 patent, that claim requires a device body of not greater than 0402 and a nominal height of no greater than about 0.40mm. At page 2 (page 585 of Volume 2, Issue 5 of the Journal) of the October 1997 Multilayer Ceramic Capacitors Article there is disclosed multilayer ceramic chip capacitors with a case size of 0402, and (See Ex. 1012; Ex. 1009, at 108). Also disclosed are multilayer capacitors with a nominal height of 0.3mm. (See Ex. 1012; Ex. 1009, at 109). It would have been obvious to one of ordinary skill in the art to combine Galvagni and the October 1997 Multilayer Ceramic Capacitors Article. See Ex. 1009, at Specifically, Galvagni is augmented with the disclosure of 23

29 improved and smaller and higher quality capacitors by the October 1997 Multilayer Ceramic Capacitors Article. (Ex. 1009, at 118). Thus, Galvagni in view of the October 1997 Multilayer Ceramic Capacitors Article renders claims 1, 3-6, and 12 of the 547 patent obvious. See Ex. 1009, at C. Galvagni In View Of Prior Art Product Catalogues, Ground 3 (Claims 3-4, 16-17) There is a reasonable likelihood that claims 3-4 and are rendered obvious by Galvagni in view of the Prior Art Product Catalogues (Ex. 1008: 1997 TDK Product Selection Guide; AVX/Kyocera 1996 Product Catalogue; Murata September 30, 1997 Product Catalogue; Taiyo Yuden October 1996 September 1997 Product Catalogue). As noted above in Section VII.A, Galvagni discloses all of the limitations of Claims 1 and 12 of the 547 patent. Claims 3 and 4 of the 547 patent add the limitations of a device body having a size of 0402 or less, and a nominal height of no greater than about 0.40mm. At pages 4-1 through 4-4 of the 1997 TDK Product Selection Guide, and at pages 3 and 10 of the AVX/Kyocera 1996 Product Catalogue, and at pages 3-4 and of the AVX/Kyocera 1996 Product Catalogue, and at pages 1-3 and of the Murata September 30, 1997 Product Catalogue, and at pages 6-7, 32-34, 40-42, and of the Taiyo Yuden October 1996 September 1997 Product Catalogue, there is disclosed multilayer ceramic chip capacitors with a Length of 24

30 1.0 +/- 0.05mm and a Width of 0.5 +/-0.05mm, each of which are 0402 size capacitors. (See Ex. 1008, Ex. 1009, at 127). Also disclosed are multilayer ceramic chip capacitors with a height of between 0.55mm and 0.45mm. (Ex. 1009, at 127). At page 3 of the AVX/Kyocera 1996 Product Catalogue, disclosed is a chip capacitor resistor with an 0402 case size, and a height of 0.35 mm. Id. Claims 16 and 17 of the 547 patent add the limitations of a nominal gap width between the terminations across a top surface of at least about 0.85mm and a nominal gap width between the terminations across a bottom surface of at least about 0.35mm. At page 4-2 of the 1997 TDK Product Selection Guide, pages 3 and 10 of the AVX/Kyocera 1996 Product Catalogue, and at pages 1 and 22 Murata September 30, 1997 Product Catalogue, and at pages 33, 41, and 47 of the Taiyo Yuden October 1996 September 1997 Product Catalogue, there is disclosed multilayer ceramic chip capacitors with a gap of 0.75 mm 0.85 mm, 0.3 mm 0.75 mm, 0.4 mm 0.75 mm, 0.35 mm 0.65 mm, and 0.25 mm 0.75 mm. (See Ex. 1009, at 128). It would have been obvious to one of ordinary skill in the art to combine Galvagni and the Prior Art Product Catalogues. See Ex. 1009, at Specifically, Galvagni is augmented with the disclosure of improved, and smaller, capacitors by the Prior Art Product Catalogues. (Ex. 1009, at 136). Thus, 25

31 Galvagni in view of the Prior Art Product Catalogues renders claims 3-4 and of the 547 patent obvious. See Ex. 1009, at D. Admitted Prior Art, Figure 4 Of The 547 Patent, Ground 4 (Claims 1-5, 7-11) 1. Admitted Prior Art, Figure 4 Applied To Claim 1 Figure 4 of the 547 patent (the admitted prior art) discloses each of the limitations of claim 1, and each disclosure is summarized in the 547 patent itself. Thus, but for the preamble (which may not be not limiting as noted in Section VII.A above), Figure 4 and the prior art discloses claim 1. As summarized above in Section VI.A, Admitted Prior Art Figure 4 discloses an insulating substrate 58, a first conductive pattern 60, a dielectric layer 64, a second conductive pattern 62, and a planar cover layer 68. Id. Id. at 3:20-33; 3: The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8. Table I summarizes, and confirms, that for each structure disclosed in Figure 3 (the purportedly inventive surface mount capacitor), there is a matching structure disclosed in Figure 4 (the admitted prior art). And, if the preamble is not limiting 26

32 (see Section VII.A above), Admitted Prior Art Figure 4 discloses claim 1. (Ex. 1009, Dr. Randall Decl., at ). 2. Admitted Prior Art, Figure 4 Applied To Claim 2 Admitted Prior Art, Figure 4 discloses orientation indicia located on a top surface of said device body. In particular, Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art. (Ex. 1001, at 3:42-54). The 547 patent discloses that, because of the U-shaped termination structure utilized by the prior art capacitor of Fig. 4, height width orientation is required in the tape and reel packaging process. In addition to the height width orientation, the L-shaped terminations of the present invention require top-bottom orientation. As such, the top of the individual capacitors includes an orientation mark, such as may be produced by printing on this side of the wafer. Id. at 4:29-37; Ex. 1009, at Admitted Prior Art, Figure 4 Applied To Claim 3 Admitted Prior Art, Figure 4 discloses a device body with a size of 0402 or less. For example, the 547 patent discloses that the marketplace currently offers surface mount RF/Microwave capacitors of sizes as small as (Ex. 1001, at 1:22-25). And, many prior art thin film capacitors of 0402 size will have a height of up to about 0.55 mm. Id. at 4: Finally, the Patent Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time 27

33 the invention was made to have a device body of 0402, since such a modification would involve a mere change in the size of the component. (Ex. 1010, at 55). This is accurate, because one of ordinary skill in the art at the time of the purported invention would know that a small size, such as an 0402 case size, would be desirable. (Ex. 1009, at 153). Also, one of skill in the art would know how to employ an 0402 case size. (Ex. 1009, at 153). 4. Admitted Prior Art, Figure 4 Applied To Claim 4 Admitted Prior Art, Figure 4 discloses a device body with a nominal height of no greater than about 0.40 mm. In particular, the 547 patent discloses that the marketplace currently offers surface mount RF/Microwave capacitors of sizes as small as (Ex. 1001, at 1:22-25). And, many prior art thin film capacitors of 0402 size will have a height of up to about 0.55 mm. Id. at 4: Finally, the Patent Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body of 0402, since such a modification would have involved a mere change in the size of the component. (Ex. 1010, at 55). Therefore, the 547 patent discloses a height of up to (and including less than) 0.55 mm, and a person of ordinary skill in the art would have had within his knowledge the skill to use a device body with a height of no greater than about 0.40 mm. (See Ex. 1009, Dr. Randall Decl., at 155). 28

34 5. Admitted Prior Art, Figure 4 Applied To Claim 5 Admitted Prior Art, Figure 4 discloses a capacitor device with a cover layer comprising a rigid layer of insulative material sealed to said second conductive pattern. Specifically, Fig. 4 illustrates a structure with a rigid insulative cover layer located above internal electrode 62, which is disclosed as glass cover layer 68 and is sealed to the second conductive pattern using epoxy. (Ex. 1001, at 3:42-54; 4:52-54; Ex. 1009, at 158). 6. Admitted Prior Art, Figure 4 Applied To Claim 7 Admitted Prior Art, Figure 4 discloses a cover layer sealed to said second conductive pattern by an interposing epoxy layer, because the 547 patent admits that Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Finally, a layer 66 of epoxy is applied to maintain a glass cover 68. (Ex. 1001, at 3:42-54; Ex. 1009, at 161). In addition, the 547 patent discloses TABLE I-continued Figure 4 Prior Art..Epoxy Layer 66. Id. at 4: Admitted Prior Art, Figure 4 Applied To Claim 8 Admitted Prior Art, Figure 4 discloses an insulating substrate comprising a planar alumina substrate, because the 547 patent admits that Fig. 4 illustrates a structure utilized in the production of capacitor devices of the prior art Capacitor body 52 includes a glass substrate 58 (Ex. 1001, at 3:42-54; Ex. 1009, at 164). 29

35 8. Admitted Prior Art, Figure 4 Applied To Claim 9 Admitted Prior Art, Figure 4 discloses a planar alumina substrate comprising a substrate of glazed alumina, because the 547 patent admits that Fig. 4 illustrates a structure that has been utilized in the production of capacitor devices of the prior art Capacitor body 52 includes a glass substrate 58 (Ex. 1001, at 3:42-54). 9. Admitted Prior Art, Figure 4 Applied To Claim 10 Admitted Prior Art, Figure 4 discloses a first and second conductive pattern each comprising aluminum, because the 547 patent admits Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Capacitor body 52 includes a glass substrate onto to which a first aluminum electrode 60 is located...a second aluminum electrode 62 is located over an interposing dielectric layer 64. (Ex. 1001, at 3:42-54; Ex. 1009, at 170). In addition, the Patent Examiner determined it would have been obvious to a person of ordinary skill in the art to use an aluminum material for the electrode, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. (Ex. 1010, at 56; Ex. 1009, at 171). 10. Admitted Prior Art, Figure 4 Applied To Claim 11 Admitted Prior Art, Figure 4 discloses a dielectric layer comprising material selected from a group consisting of silicon oxide and silicon oxynitride, because 30

36 the 547 patent admits Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art A second aluminum electrode 62 is located over an interposing dielectric layer 64 of silicon oxide or silicon oxynitride. (Ex. 1001, at 3:42-54; Ex. 1009, at 174). In addition, the Patent Examiner determined it would have been obvious to use a silicon oxide as a dielectric, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. (Ex. 1010, at 55). 11. Summary Of Admitted Prior Art, Figure 4 Applied To Claims 1-5, 7-11 In view of the foregoing teachings, Admitted Prior Art, Figure 4 anticipates or renders obvious claims 1-5 and Each of these disclosures is also analyzed by Dr. Michael Randall, further confirming that Admitted Prior Art, Figure 4 anticipates or renders obvious claims 1-5, and (Ex. 1009, at ). Claims 1-5, 7-11 of U.S. Patent No. 6,144, A thin film capacitor device for mounting to a surface, said capacitor device comprising a device body having small dimensions in length, width and height, and having substantially L- shaped terminations located thereon with portions of said terminations extending over a bottom surface of said device body and negligibly over a top surface of Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) Preamble. 31

37 Claims 1-5, 7-11 of U.S. Patent No. 6,144,547 said device body, said device body including: an insulating substrate having a top surface and a bottom surface; a first conductive pattern located above said top surface of said substrate and defining a first polarity capacitor plate; a dielectric layer located on top of said first conductive pattern; a second conductive pattern located on said dielectric layer, said second conductive pattern defining a second capacitor plate in registry with said first capacitor plate; and Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) Figure 4 (the admitted prior art) discloses an insulating substrate 58. (Exhibit 1001, at 3:20-33; 3:43-54). The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8; Ex. 1009, Randall Decl., at 146. Figure 4 (the admitted prior art) discloses a first conductive pattern 60. Id. at 3:20-33; 3: The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8; Ex. 1009, Randall Decl., at 146. Figure 4 (the admitted prior art) discloses a dielectric layer 64. (Exhibit 1001, at 3:20-33; 3:43-54). The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8; Ex. 1009, Randall Decl., at 146. Figure 4 (the admitted prior art) discloses second conductive pattern 62. (Exhibit 1001, at 3:20-33; 3:43-54). The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8; Ex. 1009, Randall Decl., at

38 Claims 1-5, 7-11 of U.S. Patent No. 6,144,547 a planar cover layer located above said second conductive pattern. Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) Figure 4 (the admitted prior art) discloses planar cover layer 68. (Exhibit 1001, at 3:20-33; 3:43-54). The 547 patent itself summarized and confirmed that each of these structures are found in the prior art, as disclosed in Table I. Id. at 3:59-4:8; Ex. 1009, Randall Decl., at A thin film capacitor device as set forth in claim 1, further comprising orientation indicia located on a top surface of said device body. 3. A thin film capacitor device as set forth in claim 1, wherein said device body has a size of 0402 or less. the L-shaped terminations of the present invention require top-bottom orientation. As such, the top of the individual capacitors includes an orientation mark, such as may be produced by printing on this side of the wafer. (Ex. 1001, at 4:29-37; Ex. 1009, Randall Decl., at ). the 547 patent discloses that the marketplace currently offers surface mount RF/Microwave capacitors of sizes as small as (Exhibit 1001, at 1:29-30). And, many prior art thin film capacitors of 0402 size will have a height of up to about 0.55 mm. Id. at 4: The Patent Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body of 0402, since such a modification would have involved a mere change in the size of the component. (Exhibit 1010, at 55; Ex. 1009, Randall Decl., at ). 4. A thin film capacitor device as set forth in claim 3, wherein said Many prior art thin film capacitors of 0402 size will have a height of up to about

39 Claims 1-5, 7-11 of U.S. Patent No. 6,144,547 device body has a nominal height of no greater than about 0.40 mm. 5. A thin film capacitor device as set forth in claim 1, wherein said cover layer comprises a rigid layer of insulative material sealed to said second conductive pattern. 7. A thin film capacitor device as set forth in claim 5, wherein said cover layer is sealed to said second conductive pattern by an interposing epoxy layer. Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) mm. Id. at 4: Therefore, the 547 patent discloses a height of up to (and including less than) 0.55 mm, and a person of ordinary skill in the art would have known and had within his knowledge the skill to utilize a device body with a nominal height of no greater than about 0.40 mm. (Ex. 1009, Randall Decl., at ). Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Finally, a layer 66 of epoxy is applied to maintain a glass cover 68. (Exhibit 1001, at 3:42-54; Ex. 1009, Randall Decl., at ). Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Finally, a layer 66 of epoxy is applied to maintain a glass cover 68. (Exhibit 1001, at 3:42-54). TABLE I-continued Figure 4 Prior Art Epoxy Layer 66. (Exhibit 1001, at 4:1-8; Ex. 1009, Randall Decl., at 161). 8. A thin film capacitor device as set forth in claim 7, wherein said insulating substrate comprises a planar alumina substrate. 9. A thin film capacitor device as set forth in claim 8, wherein said planar alumina substrate comprises a substrate of glazed alumina. Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Capacitor body 52 includes a glass substrate 58 (Exhibit 1001, at 3:42-54; Ex. 1009, Randall Decl., at 164). Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art Capacitor body 52 includes a glass 34

40 Claims 1-5, 7-11 of U.S. Patent No. 6,144, A thin film capacitor device as set forth in claim 1, wherein said first conductive pattern and said second conductive pattern each comprise aluminum. Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) substrate 58 (Exhibit 1001, at 3:42-54; Ex. 1009, Randall Decl., at ). Capacitor body 52 includes a glass substrate onto to which a first aluminum electrode 60 is located. (Exhibit 1001, at 3:42-54). A second aluminum electrode 62 is located over an interposing dielectric layer 64 of silicon oxide or silicon oxynitride. (Exhibit 1001, at 3:42-54). It would have been obvious to a person of ordinary skill in the art at the time the invention was made to use an aluminum material for the electrode, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. (Exhibit 1010, at 56; Ex. 1009, Randall Decl., at ). 11. A thin film capacitor device as set forth in claim 10, wherein said dielectric layer comprises material selected from a group consisting of silicon oxide and silicon oxynitride. Fig. 4 illustrates a structure that has been utilized in the production of miniature capacitor devices of the prior art A second aluminum electrode 62 is located over an interposing dielectric layer 64 of silicon oxide or silicon oxynitride. (Exhibit 1001, at 3:42-54). It would have been obvious to a person of ordinary skill in the art to use a silicon oxide as a dielectric, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use 35

41 Claims 1-5, 7-11 of U.S. Patent No. 6,144,547 Illustrative Teachings of Admitted Prior Art, Figure 4 (Ex. 1001) as a matter of obvious design choice. (Ex. 1010, at 55; Ex. 1009, Randall Decl., at ). E. Admitted Prior Art, Figure 4 In View Of Galvagni, Ground 5 (Claims 1-5, 7-11, 12-14, 18) 1. Claims 1-5, 7-11 As noted above in Section VII.D, Admitted Prior Art, Figure 4 anticipates or renders obvious claims 1-5, The Admitted Prior Art, Figure 4 includes disclosure of each limitation of each of claims 1-5, 7-11 (but for the preamble of claim 1, which may not be limiting). (See Section VII.A above). Also as noted above, in connection with the discussion of Galvagni in Section VII.A, Galvagni discloses the preamble of claim 1. As can be seen in Fig. 3 of Galvagni, the terminals of the capacitor are L and J shaped conductive metal portions. (Ex. 1002, at Abstract). The generally L-shaped component 21 may be comprised of sequential layers of nickel, silver, solder, etc. Id. at 4: The layer 21 covers the entirety of end 18 and includes a lowermost portion 22 which underlies the bottom surface 23 of the capacitor 16. Id. Further, as noted above in Section VII.A, if the term negligibly is defined as requiring some amount of structure, Galvagni discloses that as well. (Ex. 1009, at 78-91). That is because miniature surface mount components are typically exposed to a Harperizing or corner rounding process as a part of production, resulting in a termination 36

42 extending negligibly over a top surface. Id. In addition, Galvagni discloses a termination at the opposite end of the capacitor. That termination is disclosed as a J-shaped termination, which includes a top land portion. Id. As a result of these disclosures, as noted in Section VII.A, Galvagni discloses the preamble of claim 1 of the 547 patent, the only feature not disclosed in Admitted Prior Art, Figure 4. See Ex. 1009, at 78-91, It would have been obvious to one of ordinary skill in the art to combine Admitted Prior Art, Figure 4 and Galvagni. See Ex. 1009, at Specifically, the Admitted Prior Art, Figure 4 is augmented with Galvagni s disclosure of a miniaturized surface mountable tombstoning resistant electronic component, which is effected by terminals that are L shaped, and J shaped, conductive metal portions. (Ex. 1002, at Abstract; Ex. 1009, at 189). Further, the Admitted Prior Art, Figure 4 is augmented with Galvagni s disclosure of a capacitor with a larger and hence higher value component that may be located in a space which could accommodate only smaller lower value known components. Id. at 2:43-47; Ex. 1009, at 189. Further, Admitted Prior Art, Figure 4 is augmented by a capacitor as disclosed in Galvagni having an improved termination scheme which renders same resistant to tombstoning and which enables more efficient use of the geography of a PC board surface. Id. at 3:39-45; Ex. 1009, at

43 As explained in the Declaration of Michael Randall, Ph.D., the combination of Admitted Prior Art, Figure 4 and Galvagni leverages the capacitor of Admitted Prior Art, Figure 4 by providing additional benefits, including a miniaturized surface mountable tombstoning resistant electronic component, through terminals that are respectively L and J shaped conductive metal portions, a larger and hence higher value component that may be located in a space which could accommodate only smaller lower value known components, and an improved termination scheme which renders same resistant to tombstoning and which enables more efficient use of the geography of a PC board surface. See Ex. 1009, at 189. In sum, Admitted Prior Art, Figure 4 anticipates claims 1-5, 7-11 (but for the preamble of claim 1, which may not be imiting as noted in Section VII.A above). However, to the extent it is determined that the preamble of claim 1 is limiting, that reference in combination with the Galvagni reference renders claims 1-5, 7-11 of the 547 patent obvious. See Ex. 1009, at ; Claims 12-14, 18 For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Galvagni renders claims 1 and 3-4 obvious, claim 12 is rendered obvious. See Ex. 1009, at 200. For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Galvagni renders claim 2 obvious, claim 13 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that 38

44 Admitted Prior Art, Figure 4 in view of Galvagni renders claims 3 and 4 obvious, claim 14 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Galvagni renders claims 10 and 11 obvious, claim 18 is obvious. See Ex. 1009, at F. Admitted Prior Art, Figure 4 In View Of Galvagni/Hernandez, Ground 6 (Claims 1-15, 18) As noted in Section VII.E, Admitted Prior Art, Figure 4 in combination with Galvagni renders claims 1-5, 7-14, and 18 of the 547 patent obvious. To the extent the Admitted Prior Art, Figure 4 and Galvagni are found to not disclose the limitations of Claims 4, 6, and 12 of the 547 patent, those claims add the limitation of a device body having a nominal height of no greater than about 0.40mm, and a cover layer thickness of about 0.1mm. Hernandez discloses a capacitor with an overall height of between 0.2mm and less than 0.4mm. (See Ex. 1013, at 5:49-52: An important feature of decoupling capacitor 36 is that the thickness of dielectric layer 56 (see Fig. 7) is very small and preferably between ; 6:49-53: It will be appreciated that because decoupling capacitor 36 is quite thin overall ( ) ). In addition, Hernandez discloses a cover layer of about inch (see 2:53-54) and between inches (see 5:49-52). Thus, Hernandez discloses a cover layer that is as thin or thinner than required by claim 6. (See Ex. 1009, ). 39

45 It would have been obvious to one of ordinary skill in the art to combine the Admitted Prior Art, Figure 4 and Galvagni and Hernandez. See Ex. 1009, at Specifically, the Admitted Prior Art, Figure 4 and Galvagni are augmented with the disclosure of improved, and thinner capacitors by Hernandez. (Ex. 1009, at 212). Thus, Hernandez discloses any limitations of claims 4, 6, and 12 found to not be disclosed by the Admitted Prior Art, Figure 4 and Galvagni. Further, the Admitted Prior Art, Figure 4 and Galvagni in view of Hernandez renders claims 4, 6, and 12 of the 547 patent obvious. See Ex. 1009, at 216. G. Admitted Prior Art, Figure 4 In View Of Galvagni/Prior Art Catalogues, Ground 7 (Claims 3-4, 16-17) As noted above in Section VII.D, Admitted Prior Art, Figure 4 anticipates or renders obvious claims 1-5, The discussion of Admitted Prior Art, Figure 4 in Section VII.D includes disclosure of each limitation of each of claims 1-5, 7-11 (but for the preamble of claim 1, which may not be not limiting as noted in Section VII.A above). Also as noted above, in connection with the discussion of Galvagni in Section VII.A, Galvagni discloses the preamble of claim 1, and the limitations of claim 12. As can be seen in Fig. 3 of Galvagni, the terminals of the capacitor are L shaped, and J shaped, conductive metal portions. (Ex. 1002, at Abstract). Also as noted above, in connection with the discussion of the Prior Art Catalogues in Section VII.C, the Prior Art Catalogues disclose the limitations of 40

46 Claims 3-4 and of the 547 patent. In particular, as noted in Section VII.C, Prior Art Catalogues disclose 0402 size capacitors, and capacitors with a nominal height range of 0.55mm and 0.45mm, as required by Claims 3-4. (Ex. 1009, at 219). Also as noted above, in connection with the discussion of Prior Art Catalogues in Section VII.C, Prior Art Catalogues disclose a gap (in mm) of , , , , and , as required by Claims (See Ex. 1009, at 219). Further, at page 3 of the AVX/Kyocera 1996 Product Catalogue, there is disclosed a chip capacitor resistor with an 0402 case size, and a height of 0.35 mm. Id. H. Admitted Prior Art, Figure 4 In View Of Dat/Kuroda, Ground 8 (Claims 1-5, 6, 7-11, 12-14, 18) 1. Claims 1-5, 7-11 As noted above in Section VII.D, Admitted Prior Art, Figure 4 anticipates or renders obvious claims 1-5, The Admitted Prior Art, Figure 4 in Section VII.D includes disclosure of each limitation of each of claims 1-5, 7-11 (but for the preamble of claim 1, which may not be limiting as noted in Section VII.A above). Dat also relates to and discloses capacitors, including an improved structure for a thin multilayer capacitor where the electrodes are formed only on a portion of the ends of the capacitor to reduce the footprint on the circuit board. (Ex. 1003, at Abstract; Ex. 1009, at 225). The improved structure results from a 41

47 manufacturing process that has advantages of reduced fabrication costs and fewer manufacturing steps. Id. Dat discloses an MLC capacitor fabricated having alternating electrodes 10 separated by a dielectric 14. (Ex. 1003, at 3:25-30). The edge terminations or termination electrodes are formed on the capacitors prior to singulation. Id. at 3:31-35; Ex. 1009, at 226. As described in the figures below, the electrode stack is cut to expose trenches 20 to the embedded electrodes, exposing electrodes for adjoining pairs of capacitors with a region 22 in between the trenches. Id. at 4:5-36; Ex. 1009, at 226. The trenches are then filled with the termination electrode material 24. Id. That process utilizes a mask. Id.; see also Section VII.A, describing imperfections in the masking process, resulting in a negligible top land termination. As can be seen in the figures immediately above, Dat discloses substantially L-shaped terminations, through structures 24, 26, and 28; Ex. 1009, at Moreover, each of the foregoing disclosures is disclosed in provisional application No. 60/036,326. (Ex. 1003). Therefore, each of the foregoing disclosures is 42

48 entitled to a priority date of at least January 30, 1997, the filing date of the provisional application. (Ex. 1003). Further, as noted above in Section VII.A, if the term negligibly is defined as requiring some amount of structure, Dat discloses that as well. (Ex. 1009, at ). That is because miniature surface mount components are typically exposed to a Harperizing or corner rounding process as a part of production, resulting in a termination extending negligibly over a top surface. (See Section VII.A; Ex. 1009, at 230). Thus, Dat discloses the preamble of claim 1 of the 547 patent, the only feature not disclosed in Admitted Prior Art, Figure 4. See Ex. 1009, at It would have been obvious to one of ordinary skill in the art to combine Admitted Prior Art, Figure 4 and Dat. See Ex. 1009, at Specifically, the Admitted Prior Art, Figure 4 is augmented with Dat s disclosure of an improved structure for a thin multilayer capacitor where the electrodes are formed only on a portion of the ends of the package to reduce the footprint on the circuit board and the amount of noble metal used for each unit. (Ex. 1003, at Abstract; Ex. 1009, at 238). The improved structure results from a manufacturing process that has additional advantages of reduced fabrication costs and fewer manufacturing steps. Id. Further, the Admitted Prior Art, Figure 4 is augmented with Dat s disclosure of an improved method and the resulting structure for MLC 43

49 capacitors which require a single firing step and where the end terminations are fabricated prior to singulation. Id. at 2:40-46; Ex. 1009, at 238. Another advantage of Dat is that the capacitors have a reduced footprint on a printed circuit board as a consequence of the smaller contact pad compared to prior art device structures. Id. at 54-57; Ex. 1009, at 238. As explained in the Declaration of Michael Randall, Ph.D., the combination of Admitted Prior Art, Figure 4 and Dat leverages the capacitor of Admitted Prior Art, Figure 4 by providing additional benefits disclosed in Dat. Ex. 1009, at 238. In sum, Admitted Prior Art, Figure 4 anticipates claims 1-5, 7-11 (but for the preamble of claim 1, which is not limiting as noted in Section VII.A above). However, to the extent it is determined that the preamble of claim 1 is limiting, that reference in combination with the Dat reference renders claims 1-5, 7-11 of the 547 patent obvious. See Ex. 1009, at Claim 6 (Admitted Prior Art, Figure 4 In View Of Dat/Kuroda) Claim 6 of the 547 patent adds the limitation of a cover layer having a thickness of about 0.1 mm. Kuroda discloses cover layers 21 and 22, described as dielectric breakdown prevention layers. (Ex. 1004, at 4:1-24; 4:51-64; 5:1-5; 5:26-43; 6:63-7:44). Kuroda discloses that layers 21 and 22 are between 20 µm and 140 µm thick. Id. at 7:1-43; Table 1. Thus, Kuroda discloses a cover layer having a thickness of between 0.02 and 0.14 mm, as well as samples with cover layer 44

50 thickness of 100 µm, or exactly 0.1 mm, which is a disclosure of a cover layer having a thickness of about 0.1 mm. Id.; see also Ex. 1009, at Claims 12-14, 18 For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Dat renders claims 1 and 3-4 obvious, claim 12 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Dat renders claim 2 obvious, claim 13 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Dat renders claims 3 and 4 obvious, claim 14 is rendered obvious. Moreover, the Patent Examiner found it would have been obvious to use a device body of See Ex. 1010, at 57; Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Dat renders claims 10 and 11 obvious, claim 18 is rendered obvious. See Ex. 1009, at 258. I. Admitted Prior Art, Figure 4 In View Of Cichanowski/ October 1997 Multilayer Ceramic Capacitors Article Ground 9 (Claims 1-15, 18) 1. Claims 1-5, 7-11 As noted above in Section VII.D, Admitted Prior Art, Figure 4 anticipates claims 1-5, The discussion of Admitted Prior Art, Figure 4 in Section VII.D 45

51 includes disclosure of each limitation of each of claims 1-5, 7-11 (but for the preamble of claim 1, which may not be limiting as noted in Section VII.A above). As noted above in Section VII.B, at page 2 (page 585 of Volume 2, Issue 5 of the Journal) of the October 1997 Multilayer Ceramic Capacitors Article there is disclosed multilayer ceramic chip capacitors with a case size of 0402, and (See Ex. 1012; Ex. 1009, at 287). Also disclosed are multilayer ceramic chip capacitors with a nominal height of 0.3mm. (See Ex. 1012; Ex. 1009, at 287). Cichanowski also relates to and/or discloses capacitors, including monolithic chip capacitors in which the electrode layers are bonded together at an edge. (Ex. 1005, at Abstract). Cichanowski discloses that it has become possible to make miniature monolithic capacitors having alternate layers of electrode material and dielectric material adding up to thousands of layers but with each layer being very thin. Id. at 1: One object of the capacitor disclosed in Cichanowski is to provide a termination that economically utilizes the characteristics of a miniature monolithic capacitor formed by depositing alternate layers of electrode material and coatings of dielectric. Id. at 1: As disclosed in Figure 2 below, Cichanowski discloses a thin film capacitor device for mounting to a surface, the capacitor device comprising a device body having substantially L-shaped terminations: 46

52 Cichanowski discloses capacitor 10 having a capacitor body 11 and opposite termination surfaces 12 and 13, defining a chip capacitor configuration. Id. at 2: The capacitor body 11 includes interleaved electrode layers 14 of conductive material such as aluminum spaced and held by coatings 15 of dielectric material such as a resin to form a multi-layer capacitor body. Id. Successive coatings 15 of dielectric material and layers 14 of electrode material are deposited on an electrically conductive substrate 16 so as to form both the capacitor body 11 and also tapered shoulder portions 17. The alternate electrode layers 14 are bonded to the substrate 16 at terminal portions 18. Id. The opposite terminal surfaces 12, 13 are defined by electrically conductive material 21 in intimate electrically conducting contact with the substrate 16. Id. at 2: Material 21 constitutes extending portions 22 of the substrate 16 itself bent at right angles. Id. The resulting capacitor 10 is thus a substantially rectangular encapsulated body with opposite metal termination material 21 defining the surfaces 12, 13. Id. 47

53 Another alternative is shown in FIG. 3 in which electrically conductive material 21a constituting a metal end cap 30 that defines the termination surface 12a. Id. at 2:65-3:7. The cap 30 is bent so as to have a surface 31 in electrically conducting contact with the substrate 16a. Id. According to the Patent Examiner, Cichanowski discloses, in Fig. 2, a thin film capacitor device for mounting to a surface, the capacitor device comprising a device body having substantially L-shaped terminations. (Ex. 1010, at 53). The bottom lands of the L-shaped terminations extend over a bottom surface of the device body. Id. Thus, Cichanowski discloses the preamble of claim 1 of the 547 patent, the only feature not disclosed in Admitted Prior Art, Figure 4. See Ex. 1009, at Further, preamble language that merely states the purpose or intended use is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). It would have been obvious to one of ordinary skill in the art to combine Admitted Prior Art, Figure 4 and Cichanowski. See Ex. 1009, at Specifically, the Admitted Prior Art, Figure 4 is augmented with Cichanowski s disclosure of an improved end termination for a chip capacitor that has sufficient strength and area to permit reliable electrical installation. (Ex. 1005, at 1:57-61; Ex. 1009, at 277). The Admitted Prior Art, Figure 4 is augmented with 48

54 Cichanowski s disclosure of a termination that economically utilizes the characteristics of a miniature monolithic capacitor formed by depositing alternate layers of electrode material and coatings of dielectric. (Ex. 1005, at 1:62-66; Ex. 1009, at 277). As explained in the Declaration of Michael Randall, Ph.D., the combination of Admitted Prior Art, Figure 4 and Cichanowski leverages the capacitor of Admitted Prior Art, Figure 4 by providing additional benefits disclosed in Cichanowski. See Ex. 1009, at In sum, Admitted Prior Art, Figure 4 anticipates claims 1-5, 7-11 (but for the preamble of claim 1, which may not be limiting as noted in Section VII.A above). However, to the extent it is determined that the preamble of claim 1 is limiting, that reference in combination with the Cichanowski reference renders claims 1-5, 7-11 of the 547 patent obvious. See Ex. 1009, at ; Claim 6 Cichanowski discloses various layers of the capacitor as angstroms thick, from 0.1 to one micron thick, and 1.5 to 2 mils thick. (Ex. 1005, at 1:35-40; 2:36-43). Thus, it would be obvious to one of skill in the art to use a planar cover layer with a thickness of about 0.10 mm. (Ex. 1009, at 288). At page 2 (page 585 of Volume 2, Issue 5 of the Journal) of the October 1997 Multilayer Ceramic Capacitors Article there is disclosed multilayer ceramic chip capacitors with a case size of 0402, and (See Ex. 1012, Ex. 1009, at 288). Also disclosed are 49

55 multilayer ceramic chip capacitors with a nominal height of 0.3mm. (See Ex. 1012, Ex. 1009, at 288). Also disclosed are ultrathin dielectric layers of less than 3µm, or 0.003mm. (See Ex. 1012, Ex. 1009, at 288). 3. Claims 12-15, 18 As noted above, Cichanowski discloses the preamble of claim 1 of the 547 patent. See Ex. 1009, 290. For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Cichanowski renders claims 1 and 3-4 obvious, claim 12 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Cichanowski renders claim 2 obvious, claim 13 is rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Cichanowski renders claims 3, 4, and 6 obvious, claims 14 and 15 are rendered obvious. See Ex. 1009, at For the same reasons discussed above that Admitted Prior Art, Figure 4 in view of Cichanowski renders claims 10 and 11 obvious, claim 18 is rendered obvious. See Ex. 1009, at 306. J-L. Galvagni, Cichanowski, and Separately Gowen, In View Of November 1996 Kemet Tech Topics Publication, Grounds (Claims 6, 12, 17) There is a reasonable likelihood that claims 6, 12, 17 are rendered obvious by Galvagni in view of the November 1996 Kemet Tech Topics Publication, and claims 12, 17 are rendered obvious by Cichanowski in view of the November

56 Kemet Tech Topics Publication, and claims 12, 17 are rendered obvious by Gowen in view of November 1996 the Kemet Tech Topics Publication. As noted above in Section VII.A, Galvagni discloses all of the limitations of Claims 1, 3-5, and 12 of the 547 patent, including a planar cover layer. (Ex. 1009, at 307). As noted above in Section VII.I, Cichanowski discloses the preamble of Claim 1. Further, according to the Patent Examiner handling the prosecution of the application that issued as the 547 patent, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have a device body of 0402, since such a modification would have involved a mere change in the size of the component. (Ex. 1010, at 55). Therefore, Cichanowski discloses all of the limitations of Claim 12 of the 547 patent. (Ex. 1009, at 308). Gowen discloses a miniature capacitor comprising a body member of dielectric material with at least two plates of conductive material bonded thereto (Ex. 1006, at Title; 1:70-2:3). Gowen discloses that the miniature capacitor has a height based on the thickness of the dielectric material, the thickness of the first of the two conductive plates, and the thickness of the second of the two conductive plates, or mm. (Ex. 1009, at 309). As best disclosed in Fig. 1 (reproduced below), Gowen also discloses substantially L-shaped terminations with portions of 51

57 the terminations extending over a bottom surface of said device body, and with small portions on the top surface: Claim 6 of the 547 patent adds the limitation of a cover layer having a thickness of about 0.1mm. The November 1996 Kemet Tech Topics Publication discloses a 0402 capacitor with this limitation. (Ex. 1009, at 311, ). One of ordinary skill in the art would understand and rely upon the fact that the 0402 capacitors disclosed in the November 1996 Kemet Tech Topics Publication utilize a cover layer of less than 4 mils, which is less than about 0.1 mm as required by Claim 6. (Ex. 1009, at 314). This can be determined from Figure 3 of that reference, as annotated below (Ex. 1009, at 314): 52

58 Claim 15 of the 547 patent adds the limitation of a nominal height of no greater than about 0.16 mm. As noted above, Gowen discloses that the miniature capacitor has a height based on the thickness of the dielectric material, the thickness of the first of the two conductive plates, and the thickness of the second of the two conductive plates, or mm, which is no greater than about 0.16mm. (Ex. 1009, at 312). Claim 17 of the 547 patent adds the limitation of a nominal gap width between the terminations across a bottom surface of at least about 0.35mm. The 53

59 November 1996 Kemet Tech Topics Publication discloses a 0402 capacitor at Fig. 4 with this limitation. (Ex. 1009, at 313, ): It would have been obvious to one of ordinary skill in the art to combine, separately Galvagni, Cichanowski, and Gowen, and the November 1996 Kemet Tech Topics Publication. See Ex. 1009, at Specifically, Galvagni, Cichanowski, and Gowen are augmented with the disclosure of smaller and higher quality capacitors by the November 1996 Kemet Tech Topics Publication. (Ex. 1007, at 1; Ex. 1009, at ). Further, Galvagni, Cichanowski, and Gowen are augmented with the disclosure of capacitors with increased bandwidth accuracy by the November 1996 Kemet Tech Topics Publication, obtained through the disclosed nominal gap distances between terminations. (Ex.1007). In sum, Galvagni in view of the November 1996 Kemet Tech Topics Publication renders claims 6, 12, 17 of the 547 patent obvious, Cichanowski in view of the November 1996 Kemet Tech Topics Publication renders claims 12, 17 of the 547 patent obvious, and Gowen in view of the November 1996 Kemet Tech 54