NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
COLLABO INNOVATIONS, INC.,
Appellant
v.
SONY CORPORATION,
Appellee
ANDREI IANCU, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2018-1311
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00941.
______________________
Decided: August 5, 2019
______________________
DANIEL FLETCHER OLEJKO, Bragalone Conroy PC, Dal-
las, TX, argued for appellant. Also represented by PATRICK
J. CONROY, MONTE BOND, TERRY SAAD.
2 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
MATTHEW A. SMITH, Smith Baluch LLP, Menlo Park,
CA, argued for appellee. Also represented by ANDREW
BALUCH, Washington, DC; ZHUANJIA GU, JACOB ZWEIG,
Turner Boyd LLP, Redwood City, CA.
KATHERINE TWOMEY ALLEN, Appellate Staff, Civil Divi-
sion, United States Department of Justice, Washington,
DC, argued for intervenor. Also represented by MARK R.
FREEMAN, SCOTT R. MCINTOSH, JOSEPH H. HUNT; THOMAS
W. KRAUSE, JOSEPH MATAL, FARHEENA YASMEEN RASHEED,
Office of the Solicitor, United States Patent and Trade-
mark Office, Alexandria, VA.
______________________
Before TARANTO, BRYSON, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
After construing the phrases “secured . . . via an adhe-
sive” and “wider area,” the Patent Trial and Appeal Board
held all challenged claims of Collabo Innovations, Inc.’s
U.S. Patent No. 5,952,714 unpatentable in an inter partes
review. We agree with the Board’s constructions, deter-
mine substantial evidence supports its findings regarding
the prior art, and hold Collabo’s other arguments unper-
suasive. Accordingly, we affirm.
BACKGROUND
I
The ’714 patent “aims to provide a solid-state image
sensing apparatus mountable to a video camera of high
quality picture, which not only can reproduce vivid colors
and fine pictures but also can be manufactured at a low
cost.” ’714 patent col. 2 ll. 19–22. As shown in Figure 2,
below, the disclosed chip package (21) for use in that appa-
ratus has two openings (25 and 26).
Id. at col. 4 ll. 53–59.
Opening 25, through which light reaches the image-
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 3
sensing CCD chip 27, is smaller than the chip, and open-
ing 26 is larger than the chip.
Id.
The patent explains that the larger size of opening 26 al-
lows chip 27 to be inserted into the package 21 through
opening 26, positioned, and then fixed in place. See
id.
at col. 5 ll. 9–22.
The patent claims both an apparatus and a method of
manufacture. On appeal, Collabo focuses its arguments on
claim 1, which reads:
1. A solid-state image sensing apparatus compris-
ing:
a package having a through hole therein, openings
on both end faces thereof, and different opening ar-
eas of said openings,
a lead frame comprising inner leads and outer
leads, said lead frame being sealed in said package,
and
a solid-state image sensing device mounted in said
package by being inserted from an inlet of said
4 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
opening which has a wider area, and thereby seal-
ing said through hole, said solid-state image sens-
ing device being secured to said package via an
adhesive.
Id. at col. 9 ll. 20–30 (emphases added to indicate disputed
claim terms).
II
Sony Corp. petitioned for IPR of the ’714 patent. Each
of its proposed grounds of unpatentability relied on either
Yoshino 1 or Wakabayashi 2 for disclosing the limitations re-
cited in claim 1. Collabo responded to these grounds by
urging the Board to construe “secured . . . via an adhesive”
as limited to gluing, which Collabo contended distin-
guished both references. J.A. 494. Collabo further argued
that neither reference disclosed the claimed “wider area.”
J.A. 500, 527.
Following a hearing, the Board issued a final written
decision. It disagreed with Collabo’s proposed construction
of “secured . . . via an adhesive,” finding that the term was
plainly broader than “gluing.” Sony Corp. v. Collabo Inno-
vations, Inc., No. IPR2016-00941,
2017 WL 4418283, at *4–
7 (P.T.A.B. Oct. 3, 2017). And though no party had ex-
pressly proposed a construction of “wider area,” the Board
recognized that the parties debated the meaning of that
phrase. The Board construed it according to its plain and
ordinary meaning, holding that “the opening ‘area’ is
1 JP Pat. App. Pub. No. S61-131690, T. Yoshino et al.
(June 19, 1986). We cite the English translation provided
at J.A. 281–83.
2 JP Pat. App. Pub. No. H07-45803, T. Wakabayashi
et al. (Feb. 14, 1995). We cite the English translation pro-
vided at J.A. 284–86. Though Collabo refers to this refer-
ence as Takashi, see, e.g., Appellant’s Br. 19 & n.2, we
maintain the Board’s naming convention here.
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 5
‘wider’ where the image sensor is inserted.”
Id. at *12. The
Board then analyzed each of Sony’s grounds of unpatenta-
bility and determined Sony had shown the claims un-
patentable by a preponderance of the evidence. Collabo
appeals. We have jurisdiction.
28 U.S.C. § 1295(a)(4)(A);
see also
35 U.S.C. § 319.
DISCUSSION
On appeal, Collabo challenges the Board’s construc-
tions of “secured . . . via an adhesive” and “wider area.” It
further argues that even under the Board’s constructions,
substantial evidence does not support the finding that
Yoshino and Wakabayashi disclose the claimed “wider
area.” And it disputes the constitutionality of IPR as ap-
plied to patents issued prior to the Leahy-Smith America
Invents Act, Pub. L. 112-29,
125 Stat. 284 (2011). We ad-
dress each argument in turn.
I
We first address Collabo’s argument that the Board
erred in construing the phrases “secured . . . via an adhe-
sive” and “wider area.” We review the Board’s ultimate
claim constructions de novo, In re Man Mach. Interface
Techs. LLC,
822 F.3d 1282, 1285 (Fed. Cir. 2016), and we
review any subsidiary factual findings involving extrinsic
evidence for substantial evidence, Teva Pharm. USA, Inc.
v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Because the
’714 patent has expired, the claim construction standard
set forth in Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir.
2005) (en banc) applies. See In re Rambus Inc.,
694 F.3d
42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims
of an expired patent is similar to that of a district court’s
review.”).
A
The Board rejected Collabo’s argument that the phrase
“secured . . . via an adhesive” is limited to gluing and con-
cluded that the plain meaning of the phrase includes other
6 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
types of adhesive, such as injection molding. We agree.
The plain claim language uses “adhesive,” not the narrower
term “glue” or “gluing.” And though the specification does
describe gluing, it is axiomatic that patent claims are not
construed “as being limited to [an] embodiment.” Phillips,
415 F.3d at 1323. Neither the specification nor the prose-
cution history states that only gluing may be used, that
glue should be preferred over other methods, or even that
other methods would not work as well as glue. Though Col-
labo amended the claims to recite the “adhesive” limita-
tions during prosecution to distinguish art allegedly using
“a reflow solder process,” J.A. 686, Collabo did not clearly
and unequivocally limit its claims to gluing, see Poly-Amer-
ica, L.P. v. API Indus., Inc.,
839 F.3d 1131, 1136 (Fed. Cir.
2016) (explaining that disclaimer “requir[es] clear and un-
equivocal evidence that the claimed invention . . . does not
include a particular feature”).
Extrinsic evidence further supports the Board’s con-
struction. Dictionaries define “adhesive” as “[t]ending to
adhere,” without reference to gluing. J.A. 466. A patent
issued to Collabo’s expert describes epoxy and thermo-
plastic resins as “adhesives.” J.A. 968–69 at col. 4 ll. 46–
48, col. 5 ll. 7–21. And Collabo’s expert admitted during
deposition that the term “adhesive” encompasses more
than merely gluing. See J.A. 808–09 (admitting “thermo-
setting resins were known as structural adhesives” and
that “epoxy resins can be used as an adhesive”).
On appeal, Collabo argues that it disclaimed the prior
art’s “imprecise” techniques of adhesion, but neither the
claims, the specification, nor the prosecution history re-
quire any particular level of precision. Collabo further ar-
gues that the Board erred by first looking to the extrinsic
evidence and particularly dictionary definitions. Oral Arg.
at 6:33–46, http://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=2018-1311.mp3. But this argument is simi-
larly unpersuasive. The Board merely noted the existence
of dictionary definitions suggesting the ordinary meaning
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 7
of “adhesive.” The Board’s approach is not inconsistent
with our precedent. As we have explained, the Board “may
look to extrinsic evidence so long as the extrinsic evidence
does not contradict the meaning otherwise apparent from
the intrinsic record.” Helmsderfer v. Bobrick Washroom
Equip., Inc.,
527 F.3d 1379, 1382 (Fed. Cir. 2008); see also
Comaper Corp. v. Antec, Inc.,
596 F.3d 1343, 1348 (Fed. Cir.
2010) (approving of “consult[ing] a general dictionary defi-
nition of [a] word for guidance” in determining ordinary
meaning); Praxair, Inc. v. ATMI, Inc.,
543 F.3d 1306, 1325
(Fed. Cir. 2008) (“[O]ur decisions, including Phil-
lips, 415 F.3d at 1322, do not preclude the use of general
dictionary definitions as an aid to claim construction.”).
B
Collabo also disputes the Board’s construction of “wider
area,” as recited by claim 1. As a threshold issue, Collabo
argues that the Board erred by construing this phrase be-
cause neither party asked it to do so. Collabo argues that
the Board’s choice to construe the term in the final written
decision deprived it of fair notice and opportunity to pre-
sent arguments. We disagree. Collabo itself placed the
meaning of “wider area” at issue. It argued that the as-
serted prior art references did not disclose the “wider area”
limitation because they failed to show or describe the rela-
tive areas—both length and width—of their openings. See,
e.g., J.A. 502–08, 527–30. In response, Sony argued the op-
posite, asserting that the plain meaning of “wider” invokes
only the “width” dimension while noting that Collabo had
made an “implicit construction” argument. J.A. 742–43,
754–55. That Collabo did not expressly describe its argu-
ment as claim construction does not preclude the Board
from construing “wider area” to resolve the parties’ dispute,
particularly because both Sony and the Board recognized
that Collabo was implicitly construing the phrase and be-
cause the Board discussed Collabo’s claim construction po-
sition at the hearing. See, e.g., J.A. 742, 1038–40. In these
circumstances, we conclude that Collabo had an adequate
8 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
opportunity to present its position, and due process is sat-
isfied. See AC Techs. S.A. v. Amazon.com, Inc.,
912 F.3d
1358, 1365 (Fed. Cir. 2019) (finding no due process viola-
tion where party had “adequate notice of the issues the
Board w[ould] decide as well as an opportunity to be heard
on those issues”).
We further agree with the Board that the plain and or-
dinary meaning of “wider area” requires only “that the
opening ‘area’ is ‘wider’ where the image sensor is in-
serted.” Sony,
2017 WL 4418283, at *12. The plain claim
language supports the Board’s construction—“wider” in-
herently suggests the width dimension. Although the spec-
ification elsewhere discusses “smaller” and “larger” areas
when comparing the entire opening area, see, e.g., ’714 pa-
tent col. 2 ll. 36–38 (“the opening area is smaller than the
entire area of CCD chip”), col. 7 ll. 46–52 (“a third open-
ing 53 having the larger opening area than that of the
opening 52”), claim 1 uses “wider” rather than one of these
broader terms, further suggesting that the claim is com-
paring only the width dimension of the openings. The pros-
ecution history contains no contrary statements.
Collabo nonetheless urges us to hold that “wider”
means “larger,” arguing that the specification uses “wider”
to “mean[] greater or larger.” Appellant’s Br. 53. The in-
trinsic record undermines Collabo’s position. The specifi-
cation uses both “wider” and “larger,” as discussed. And
Collabo used “larger” rather than “wider” in other claims.
See, e.g., ’714 patent col. 10 ll. 6–22 (reciting “larger of two
openings”). 3
II
We next address Collabo’s assertion that even under
the Board’s constructions, the Board erred by finding that
3 Collabo does not separately argue these claims on
appeal.
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 9
the prior art discloses a “wider area.” We review this find-
ing, a question of fact, for substantial evidence. See Med-
tronic, Inc. v. Barry,
891 F.3d 1368, 1375 (Fed. Cir. 2018);
Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
688 F.3d
1342, 1361 (Fed. Cir. 2012). Substantial evidence is “such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” Biestek v. Berryhill,
139 S. Ct. 1148, 1154 (2019) (quoting Consol. Edison Co. v.
NLRB,
305 U.S. 197, 229 (1938)).
Substantial evidence supports the Board’s finding that
Yoshino discloses the recited “wider area.” Yoshino’s Fig-
ure 1, reproduced below with Sony’s annotations, shows
the tapered upper opening 23 and the alleged “wider” lower
opening, marked by the red dotted line:
J.A. 199. The Board was called to decide whether the lower
opening highlighted in red is wider than the narrowest
point of the tapered opening 23. See Oral Arg. at 11:19–52
(“[W]e’re looking at that narrowest part . . . .”), 16:35–45
(“[T]he relevant opening is at the bottom . . . of the anvil.”).
Yoshino itself discloses that the chip 25 “is placed” after
“glass plate (22) is hermetically secured . . . so as to cover
the tapered opening (23).” J.A. 282. It follows that the
lower opening is at least as wide as the chip, to permit in-
sertion. Yoshino explains that the chip sits against a lip
10 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
formed by bonding pads (26) at the interior edge (202) of the
packaging.
Id. As the Board found, Sony’s contention that
the upper opening is narrower than the lower opening—at
least by the width of the bonding pads—is thus “consistent
with the geometry necessary to seal the image sensor into
the package.” Sony,
2017 WL 4418283, at *12; see also
J.A. 197–98 (providing expert testimony that one of ordi-
nary skill would understand the lower opening to be wider
based on Yoshino’s assembly process).
Yoshino and other record evidence further suggest a
technical benefit from using an upper opening that is nar-
rower than the chip, and thus also narrower than the lower
opening. Yoshino states that the upper opening should be
set to “at least cover the effective photosensitive section” of
the chip. J.A. 282. It explains that using the tapered shape
to control the light shining onto the chip through the upper
opening “prevent[s] unnecessary light from being reflected
and intruding inside to adversely affect the photoelectric
properties” of the CCD chip. J.A. 281; see also J.A. 405–06
(showing chip geometry with “effective pixel region” in cen-
ter of chip and describing methods of “preventing the [chip]
from receiving any unwanted or stray light” outside of this
area), 906 (describing problem of extra light interfering
with chip function); Oral Arg. at 30:03–43 (“[W]e’re talking
about light here, getting only on the photosensitive ele-
ments of the chip and not others.”).
Similar structural characteristics provide substantial
support for the Board’s finding that Wakabayashi discloses
a lower opening that is wider than the upper opening.
Wakabayashi’s Figure 1, again as annotated by Sony, illus-
trates the upper and lower openings:
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 11
J.A. 263. Like Yoshino, Wakabayashi describes that the
chip (6) sits against a lip formed by bumps (7) within the
package (4). J.A. 285. And like Yoshino, Wakabayashi ex-
plains the desirability of shaping the upper opening “to
form desirable shapes” for “the optical characteristics” of
the chip. Id.; see also Oral Arg. at 30:03–43.
Collabo argues that the Board erred by relying on the
figures reproduced above, citing cases for the general prop-
osition that patent figures are not assumed to be drawn to
scale. See Appellant’s Br. 55–61. For example, Collabo
cites Hockerson-Halberstadt, Inc. v. Avia Group Interna-
tional, Inc.,
222 F.3d 951 (Fed. Cir. 2000), for the proposi-
tion that “patent drawings do not define the precise
proportions of the elements and may not be relied on to
show particular sizes if the specification is completely si-
lent on the issue.”
Id. at 956. But the cases cited by Col-
labo are inapplicable—the references are not “completely
silent” on the relative dimensions of the openings. Con-
trary to Collabo’s assertion, the Board’s findings have sup-
port beyond the figures alone, and substantial evidence
supports the Board’s conclusions.
III
Finally, we address Collabo’s challenge to IPR as ap-
plied to patents issued prior to passage of the America In-
vents Act, which created these proceedings. Collabo avers,
12 COLLABO INNOVATIONS, INC. v. SONY CORPORATION
correctly, that the Supreme Court did not address the con-
stitutionality of such IPR proceedings in Oil States Energy
Services, LLC v. Greene’s Energy Group, LLC,
138 S. Ct.
1365 (2018). It asks us to hold that IPR is either unlawful
or is a taking that entitles it to compensation under the
Fifth Amendment.
This court, however, recently considered these issues
in Celgene Corp. v. Peter, No. 18-1167, slip op. at 26–36
(Fed. Cir. July 30, 2019). Our decision there forecloses Col-
labo’s argument. When the Celgene patent issued, it was
already subject to both judicial and administrative validity
challenges.
Id. at 35–36. We acknowledged that IPR dif-
fers from both district court proceedings and prior admin-
istrative validity proceedings, but we held that the
variations from the administrative validity review mecha-
nisms in place upon patent issuance are not so significant
as to render IPR unconstitutional or effectuate a taking.
Id.; see also
id. at 27 & n.13 (affirming that our prior deci-
sions ruling that retroactive application of reexamination
does not violate the Fifth Amendment, the Seventh
Amendment, or Article III “control the outcome” of similar
challenges to IPR).
Like the patent at issue in Celgene, when the ’714 pa-
tent issued, patent owners already expected that their pa-
tents could be challenged in district court and “[f]or forty
years” had expected that “the [Patent Office] could recon-
sider the validity of issued patents on particular grounds,
applying a preponderance of the evidence standard.”
Id.
at 35–36. Accordingly, application of IPR to Collabo’s pa-
tent, on grounds that were available for Patent Office re-
consideration when the patent was issued and under the
same burden of proof, does not create a constitutional is-
sue, and we reject Collabo’s constitutional challenge.
COLLABO INNOVATIONS, INC. v. SONY CORPORATION 13
CONCLUSION
We have reviewed the parties’ remaining arguments
and find them unpersuasive. Accordingly, we affirm the
Board.
AFFIRMED
COSTS
Costs to appellee.
