Invalidity dossier

US 8777699

Superabrasive tools having substantially leveled particle tips and associated methods

Current assignee: Kinik Company

Added 9/29/2026, 3:42:16 PM

At a glanceNo PTAB challenges3 lawsuits on fileasserted by Kinik CompanySemiconductor (T)

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

✓ Generated

I'll verify the patent against USPTO records and check for any 2026 CAFC docket activity.

Let me check for PTAB/appeal history and any 2026 CAFC activity specifically tied to this patent.

Let me check whether the 2015 IPR decision was appealed, and look for any 2026 Federal Circuit activity.

US Patent 8,777,699 — Verification Summary

Note on scope: I searched Google Patents, Justia Patents, PTAB/PTAB-tracker records, and general web indices for "8777699." I found no 2026 CAFC docket activity, and no Federal Circuit appeal at all, tied to U.S. 8,777,699. I also found no USPTO record of a second IPR or reexamination against this specific patent after 2015. Treat the absence of a 2026 appeal as "not found in the sources I could reach," not as affirmative proof that none exists — I did not have direct docket-level access to the CAFC 2026 argument/rule-36 calendars.

Bibliographic data (consistent across sources)

Field Value
Patent number US 8,777,699 B2
Title "Superabrasive tools having substantially leveled particle tips and associated methods"
Application no. 13/239,198
Pre-grant publication US 2012/0244790 A1 (Sep 27, 2012)
Filing date Sep 21, 2011
Earliest priority Sep 21, 2010 (Prov. 61/384,976); also Mar 29, 2011 (Prov. 61/468,917)
Issue date Jul 15, 2014
Inventor Chien-Min Sung (Tansui, TW)
Original assignee RiteDia Corporation (Hsin Chu Industrial Park, TW)
Primary examiner George Nguyen
Claims as issued 19 (independent claims 1 and 11)
Adjusted expiration (per Google Patents) Apr 10, 2032
Classifications B24B 53/017; B24D 18/0072 (B24B 53/12 per Justia)

Assignee chain (per Google Patents assignment records, interpreted literally): RiteDia Corp → Chien-Min Sung (Jul 21, 2014) → Kinik Company (Aug 7, 2014) → Kinik assignment to Sung (Aug 19, 2021) → Sung license to Kinik (Sep 13, 2021) → Kinik assignment to Chien-Min Sung (Aug 21, 2023). Current assignee is listed as Sung Chien Min Dr. A 2021 Kinik-to-Sung assignment instrument surfaced in a Samsung IPR exhibit lists 8,777,699 on Schedule A alongside 9,868,100, 9,724,802, 9,138,862 and 8,974,270.

Abstract (verbatim)

"Superabrasive tools and methods for making and using the same are provided. In one aspect, for example, a CMP pad dresser includes a first monolayer of superabrasive particles disposed on and coupled to one side of a metal support layer and a second monolayer of superabrasive particles disposed on and coupled to the metal support layer on an opposite side from the first monolayer. The superabrasive particles of the second monolayer are positioned to have substantially the same distribution as the superabrasive particles of the first monolayer."

Plain-language overview of the independent claims

Claim 1 (apparatus — CMP pad dresser): A chemical-mechanical-polishing pad conditioner built from

  1. a first monolayer (single layer, not a thick layer) of superabrasive particles attached to one face of a metal support layer, and
  2. a second monolayer on the opposite face of that same metal support, where the particles on side two are laid out in substantially the same distribution as those on side one (i.e., mirroring the spatial pattern), and
  3. a rigid support attached to the second monolayer, on the far side from the first monolayer.

The point of the mirrored two-sided arrangement is to balance thermal contraction/expansion forces during high-temperature bonding (brazing, hot pressing) so the metal backing does not warp — which is what preserves tip-height leveling of the working-side particles.

Claim 11 (method — making a CMP pad dresser):
(a) place a first monolayer of superabrasive particles on a metal support layer; (b) place a second monolayer on the opposite side, positioned to have substantially the same distribution as the first; (c) bond both monolayers to the metal support such that the symmetrical forces arising from the matched distributions prevent substantial warping of the metal support; and (d) couple the second monolayer to a rigid support.

The remaining claims are dependent:

  • 2–4 / 5–7: particle material options (diamond, nitride, ceramic, cBN) for the first and second monolayers.
  • 8–9: bonding with a braze alloy — at least one monolayer (8) or both (9).
  • 10: the tighter "same distribution" (not merely substantially the same).
  • 12: bonding by brazing with a braze alloy.
  • 13, 16: bonding under heat and pressure; optionally pressing the particles directly into the metal support.
  • 14–15: sintering-compound bonding, optionally with a braze infiltrated into the sinter.
  • 17: second-monolayer particles aligned with first-monolayer particles.
  • 18–19: rigid-support coupling by hot pressing, brazing, sintering, soldering, electroplating, polymeric bonding, or combinations — with polymeric bonding called out specifically in 19.

⚠️ Critical caveat on the claims (must-read)

This patent was the subject of Kinik Company v. Chien-Min Sung, IPR2014-01523, filed Sep 19, 2014, instituted Feb 20, 2015 on claims 1–12 and 17–19, and terminated with a Final Written Decision on Nov 4, 2015 holding all instituted claims unpatentable. Reporting on the proceeding states the Board cancelled the instituted claims; claims 13–16 were not instituted but depend from claim 11, so with claim 11 cancelled there is effectively no surviving independent claim. Petitioners/patent owner: Kinik Company (petitioner) v. Chien-Min Sung; petitioner counsel Brian McCormack, patent-owner counsel Timothy Devlin. The corresponding Delaware District Court cases (1:14-cv-01026 and 1:14-cv-01027) ended in voluntary dismissal.

I found no record of a Federal Circuit appeal of that Final Written Decision, so I cannot tell you it was reversed — and I found nothing on a 2026 CAFC docket for this patent. Google Patents' "Active, expires 2032-04-10" status label reflects the maintenance-fee/term status of the document, not claim validity; it should not be read as confirming enforceable claims.

Two discrepancies to be aware of

  1. Claim numbering differs between the pre-grant publication and the granted patent. Justia's rendering of the published application (US 2012/0244790) shows claim 1 without the rigid-support limitation and puts rigid support in claim 8. The granted-patent text (Google Patents and the authoritative text supplied to me) recites claim 1 with the rigid support and puts braze alloy in claim 8. I am reporting the granted claim set; if you are relying on the published-application numbering for anything claim-specific, that assumption would be wrong.
  2. A note on related, not-same patents: the 2024 Samsung Austin Semiconductor IPRs (IPR2024-00533, IPR2024-00535) target Sung-family CMP dresser patents such as the '270/'862 family and cite 8,777,699 in file-history/assignment exhibits. Those are not proceedings against 8,777,699 itself.

Sources

Uncertainty statement: I have high confidence in the bibliographic data, abstract, claim text, and the IPR2014-01523 outcome. I do not have authoritative, ground-truth confirmation of (a) whether any appeal of the 2015 Final Written Decision was filed or decided, (b) current litigation involving only this patent, or (c) any 2026 CAFC matter touching 8,777,699 — my searches returned nothing on those points.

Generated 9/29/2026, 3:52:42 PM

Cases on file (3)

Group view →

Specific litigation cases in our database that name US patent 8777699. The free-form analysis below may also discuss cases beyond this list.

  • IPR2014-01523Patent Trial and Appeal Boardterminated Nov 4, 2015final written decision; claims unpatentable

    Defendants: Chien-Min Sung

  • 1:14-cv-01027-RGAU.S. District Court for the District of Delawarestayed/administratively closed; reported voluntarily dismissed

    Defendants: Kinik Company

  • 1:14-cv-01026U.S. District Court for the District of Delawareunknown/unconfirmed

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll research litigation involving US patent 8777699 using multiple searches.

Let me dig deeper into the specific district court cases and any related litigation.

Let me get more specifics on the two 2014 Delaware cases and confirm which patents were asserted.

Based on my research through Unified Patents-related sources, PTAB records, Docket Alarm, and district court documents, here is what is known about litigation involving US 8,777,699 B2 ("Superabrasive tools having substantially leveled particle tips and associated methods," application 13/239,198, inventor Chien-Min Sung, original assignee RiteDia Corp.).


Summary of Known Proceedings Involving the '699 Patent

# Proceeding Forum Case No. Filed Parties Status/Outcome
1 Patent infringement suit D. Del. 1:14-cv-01027-RGA Aug. 8, 2014 Chien-Min Sung v. Kinik Company Stayed (Jan. 20, 2016), then administratively closed pending Taiwan ownership litigation; reported as voluntarily dismissed
2 Second Delaware suit (listed on the patent's litigation record) D. Del. 1:14-cv-01026 2014 Not confirmed from available sources Details not confirmed
3 Inter partes review PTAB IPR2014-01523 Sep. 19, 2014 Kinik Company v. Chien-Min Sung Final Written Decision Nov. 4, 2015 — claims held unpatentable

Detail on Each Proceeding

1. Sung v. Kinik Company, No. 1:14-cv-01027-RGA (D. Del.)

  • Filed: August 8, 2014 (D.I. 1).
  • Plaintiff: Dr. Chien-Min Sung (individual, Cupertino, CA).
  • Defendant: Kinik Company (Taiwanese corporation).
  • Jurisdiction: U.S. District Court for the District of Delaware; assigned to Judge Richard G. Andrews.
  • Plaintiff's counsel: Timothy Devlin. Defendant's counsel: Andrew Colin Mayo.
  • Patents asserted: Kinik's later Answer in a related 2020 suit describes this as "three U.S. patents that Dr. Sung asserted against Kinik in an action filed in this District in 2014." The WIP Study case analysis specifically ties US 8,777,699 to this Sung-v.-Kinik Delaware action.
  • Status/Outcome: The court granted Kinik's motion to stay on January 20, 2016 (six-month stay, keeping the court apprised of the parallel Taiwan litigation). It was later administratively closed pending resolution of the parties' ownership/rights litigations and appeals in Taiwan. Secondary sources characterize the case as terminated by voluntary dismissal; no merits judgment on infringement or validity was reached in this action.
  • Note: The case grew out of a joint-venture dispute — a series of Joint Venture Agreements between Sung and Kinik (1996–2011) governing ownership/licensing of diamond-tool patents, with parallel litigation in Taiwan. The Delaware court's stay was expressly tied to that Taiwan litigation.

2. Delaware case No. 1:14-cv-01026

  • Google Patents' "Family has litigation" record for this family lists two 2014 Delaware district court cases: 1:14-cv-01027 and 1:14-cv-01026.
  • I could not confirm from the sources retrieved which defendant and which specific patent(s) were at issue in 1:14-cv-01026, or whether the '699 patent itself was asserted there. I flag this rather than guess.

3. Kinik Company v. Chien-Min Sung, IPR2014-01523 (PTAB)

  • Filed: September 19, 2014 (by petitioner Kinik Company).
  • Patent challenged: U.S. Pat. No. 8,777,699.
  • Petitioner's counsel: Brian McCormack. Patent Owner's counsel: Timothy Devlin.
  • Institution Decision: February 20, 2015 — claims 1–12 and 17–19 instituted (claims 13–16 not instituted).
  • Final Written Decision / termination date: November 4, 2015.
  • Outcome: The Board held claims 1–12 and 17–19 unpatentable. This is the most consequential outcome for the '699 patent — the asserted/independent claims (including claim 1, the CMP pad dresser with two monolayers and a rigid support) were invalidated. Claims 13–16 were not instituted, so they were not cancelled in this proceeding.

Important Caveats

  • Do not equate the Delaware cases and the IPR. The district court action was resolved procedurally (stay/administrative closure/dismissal) rather than by judgment, while the PTAB IPR produced a Final Written Decision cancelling the instituted claims.
  • Patent numbers are reported literally. The '699 patent (application 13/239,198) is distinct from its family members (e.g., US 8,531,026; US 8,974,270; US 9,138,862; US 9,724,802) that appear in separate, later Sung–Kinik litigation (e.g., Sung v. Kinik Co., No. 1:20-cv-00247-RGA (D. Del., filed Feb. 20, 2020), addressing the '802 patent, with related IPRs such as IPR2021-00638 and IPR2021-00100). Those later suits involve different patents, not the '699 patent, and should not be conflated with the '699 proceedings above.
  • Sources conflict slightly on the exact disposition wording of the 2014 Delaware case ("voluntary dismissal" vs. "stayed/administratively closed"). A PACER pull of the 1:14-cv-01027 docket would be needed to state the final disposition with certainty.

Sources

If you need the definitive disposition of 1:14-cv-01027 and the identity of the defendant/patents in 1:14-cv-01026, I'd recommend a PACER docket pull for those two case numbers; I could not fully verify 1:14-cv-01026 from the sources retrieved.

Generated 9/29/2026, 3:52:48 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Kinik Company

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll research this patent's PTAB history. Note an immediate tension: the structured block says no AIA proceedings, but the Google Patents page mentions IPR2014-01523. Let me verify.

Key correction: the petitioner was Kinik Company, not Unified Patents (that was just Google's data-source label). Let me get the FWD details, panel, grounds, and any appeal.

Let me pull the FWD itself and check for any Federal Circuit appeal.

⚠️ Threshold correction to the structured data

The "PTAB proceedings on file" block says the ODP API returns no AIA trial proceedings for US 8,777,699. That is wrong for this patent. There is one AIA trial: IPR2014-01523, filed 2014-09-19, with a Final Written Decision issued 2015-11-04. It appears in Google Patents' litigation/PTAB panel for this patent and in multiple independent PTAB databases. The likely explanation for the ODP gap is vintage — ODP's trial feed does not reliably back-fill 2014/2015-era AIA trials. Treat one proceeding as on file.

Second correction: Google Patents' PTAB entry is mis-rendered. It shows "Petitioner: 'Unified Patents PTAB Data' by Unified Patents is licensed under…" — that is a data-license attribution, not the petitioner. The real petitioner is Kinik Company.


Proceedings overview

One AIA trial proceeding on file — IPR2014-01523 (Kinik Company v. Chien-Min Sung) — which went to a Final Written Decision holding all instituted claims (claims 1–12 and 17–19) unpatentable; zero claims were sustained, there was no settlement and no institution denial, which means the '699 patent's entire independent-claim set is dead and a defendant's defensive posture is unusually strong: anybody asserting this patent today is asserting claims that no longer exist.


IPR2014-01523 — Kinik Company v. Chien-Min Sung

  • Type: Inter Partes Review (35 U.S.C. §§ 311–319)
  • Filed: 2014-09-19 (Tech Center 3700; Application 13/239,198, now US 8,777,699)
  • Status: Final Written Decision (per PTAB case records); plain English — trial ran to judgment, no settlement, no adverse termination.
  • Judge panel: Michael W. Kim, Donna M. Praiss, and Barry L. Grossman, Administrative Patent Judges (panel identified in the Board's 2014-11-07 Order on Conduct of the Proceeding). Caveat: that Order's opinion line reads "CRUMBLEY, Administrative Patent Judge," which is not one of the three named panel members — a clerical error in the paper itself, not evidence of a different panel.
  • Counsel: Petitioner — Brian C. McCormack and William D. McSpadden (Baker & McKenzie LLP). Patent Owner — Timothy Devlin (Devlin Law Firm) / earlier Gordon K. Hill and A. John Pate (Pate Baird, PLLC).
  • Petition grounds: § 103 obviousness challenges against claims 1–19 of the '699 patent. The contemporaneous briefing on the docket shows the art centered on "Chou" (a grinding-tool reference; Petitioner's Exhibit 1004 is US 2010/0022174 A1, "Grinding Tool and Method for Fabricating the Same," a Kinik-assigned publication) and "Puthanangady" (a two-sided disk/two-sided-use reference). Patent Owner's declaratory evidence attacked the combination directly, arguing that "simply adding the backplane of Chou to the disk of Puthanangady would eliminate the stated advantage of Puthanangady," and separately argued that Chou does not disclose the claimed "braze alloy" (claims 8, 9, 12), that achieving the claimed symmetrical monolayer alignment in Chou's Fig. 5D would require undue experimentation, and that Chou is a different field (general grinding tools) from a flatness-critical CMP pad dresser. I could not retrieve the Petition itself, so the per-claim ground-to-art mapping is an inference from the docketed briefing rather than a verbatim reading of Paper 1.
  • Institution decision: Instituted 2015-02-20 — but partially: review was instituted on claims 1–12 and 17–19, and claims 13–16 were not instituted. The Board rejected Patent Owner's undue-experimentation theory, determining that arranging particles in "substantially the same distribution" between the two monolayers would not have involved undue experimentation.
  • Final Written Decision: Issued 2015-11-04. Disposition (as recorded in the PTAB docket and reproduced in third-party trial databases): "Claims 1–12 and 17–19 of the '699 patent are held unpatentable." That is a complete sweep of every claim the Board agreed to review — no instituted claim was upheld. Because you asked for claim-level granularity and I want to be precise about my confidence: I retrieved the disposition sentence through secondary reporting of the docket, not the FWD PDF itself, so I am not quoting the panel's merits reasoning verbatim. What I can state structurally: independent apparatus claim 1 and independent method claim 11 were both canceled, along with every instituted dependent claim.
  • Settlement / termination: None. Status is Final Written Decision, not termination-on-settlement. (One procedural wrinkle worth knowing: on 2014-11-07 the Board sua sponte expunged Patent Owner's improperly filed Motion to Withdraw, because Patent Owner's counsel had no engagement letter or retainer and could not reach his client — i.e., Patent Owner was effectively unrepresented at the margin, and counsel were ordered to remain as attorney of record. See the Order at ptabtrialblog PDF. Separately, on 2015-08-05 the Board denied Patent Owner's request to file a motion to exclude Petitioner's expert on qualifications/credibility grounds, holding that credibility goes to weight, not admissibility, and "the proper place" for such arguments "is in substantive pleadings … and not a motion to exclude.")
  • Appeal: No Federal Circuit appeal found. My searches surfaced no CAFC docket, no Rule 36 affirmance, and no opinion referencing an appeal of IPR2014-01523. Given the FWD date (2015-11-04), any appeal would be long since resolved and would appear in CourtListener; I could not confirm one exists. Treat the FWD as final and unappealed, but flag this as an unverified negative rather than a confirmed one — a formal docket check should be run before relying on it.
  • Defensive value: This is about as good as it gets. Claims 1–10 (the apparatus claims) are canceled, and independent method claim 11 is canceled, taking its instituted dependents (12, 17, 18, 19) with it. Any infringement contention mapped to claim 1, claim 9, claim 11, or claim 12 of the '699 patent is asserting a canceled claim — that is Rule 11 / § 285 exposure, not a viable theory.

Strategic summary

Canceled vs. sustained vs. untested. Canceled by the FWD: claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 17, 18, 19. Never instituted (and so never adjudicated): claims 13, 14, 15, 16. That last group is the only part of the patent the Board did not reach — but it is a dead end for the patent owner, because all four are method claims that depend from claim 11, and claim 11 was canceled. A dependent claim cannot outlive its canceled base: claims 13–16 carry every limitation of claim 11, which has been held unpatentable. There is no surviving independent claim in US 8,777,699. The practical consequence is that the patent has been functionally invalidated notwithstanding the "Active" status flag Google Patents still displays on the front end (a lagging indicator).

Estoppel landscape. Section 315(e)(2) estops Kinik Company — and its privies and real parties in interest — from asserting in a civil action or ITC proceeding any ground raised in the IPR or that it reasonably could have raised, as to claims 1–12 and 17–19. That estoppel is now largely academic: those claims are canceled, so there is nothing left to invalidate. For a different defendant being asserted against today, the practical posture is inverted — you don't need IPR estoppel, because the assertion itself is defective. Note that a defendant cannot be met with the standard "you should have filed an IPR" argument here: the IPR was filed by the accused infringer's own affiliate (Kinik's own publication, Ex. 1004, was part of the invalidating art), and it worked.

Pattern signals. Kinik did not file serially against this patent — one petition, one trial, one clean win, with no follow-on IPRs against '699. There is no defensive aggregator in the chain; ignore the Google Patents "Unified Patents" text, which is a CC-BY data-license notice on the PTAB/litigation panel, not a petitioner. Patent Owner did not pursue a PTAB appeal aggressively (none found). Around the same time, the '699 patent was in two Delaware district court cases filed in 2014 (D. Del. 1:14-cv-01026 and 1:14-cv-01027); at least one — Chien-Min Sung v. Kinik Company — was terminated by voluntary dismissal, consistent with the IPR outcome removing the asserted claims. Ownership has since churned repeatedly (RiteDia → Kinik → Sung → Kinik → Sung, with assignments recorded in 2014, 2021 and 2023, and the patent's adjusted expiration at 2032-04-10), so verify current ownership before corresponding with anyone.


Recommended next steps

  1. If you have a demand letter or complaint citing claims 1–12 or 17–19 (especially claim 1, 9, 11, or 12): pull the FWD from PTAB E2E (ptacts.uspto.gov/ptacts, search Case IPR2014-01523, Patent 8,777,699) and quote the disposition — "Claims 1–12 and 17–19 of the '699 patent are held unpatentable" — in your response. Claims 1–10 are apparatus claims and claim 11 is the independent method claim; each is canceled.
  2. If the assertion is built on claims 13–16 (the only non-canceled claims): the answer is dependency. Each depends from canceled claim 11, so each is limited by, and falls with, the canceled base claim. Get the FWD and the cancellation certificate to make the argument crisp.
  3. Verify the paper trail before you rely on it. Two gaps in my research you should close: (a) confirm on PTAB E2E whether the FWD was ever reheard or appealed (I found no appeal, but I could not run a full CAFC/CourtListener docket check); (b) confirm the certificate of cancellation issued and its date, and confirm whether the surviving dependent claims 13–16 were ever disclaimed. Also confirm the current record owner via USPTO Assignment — the 2023 assignment chain is not tidy.
  4. Do not treat "Active" status as meaningful. The Google Patents status field reflects the Office's patent-term record (adjusted expiration 2032-04-10), not claim viability. Claims that have been canceled in a final, unappealed FWD cannot support an infringement claim regardless of how the front page reads.
  5. If you are contemplating your own IPR against any sibling in this family: the '699 went down over Chou (US 2010/0022174 A1) in view of Puthanangady. The same art and the same "two monolayers, substantially the same distribution, equalized warping forces" claim architecture appear across the family (e.g., US 8,531,026, US 9,724,802). Those references are the natural starting point — but note the § 315(e)(2) estoppel analysis turns on your own privity status, not Kinik's.

Bottom line for a defendant: the '699 patent has no surviving independent claim. An assertion of claims 1–12 or 17–19 is an assertion of canceled claims, and an assertion of claims 13–16 is an assertion of claims that depend on a canceled claim. This is a "your demand letter is sanction-bait" situation, not a "the patent is hardened" situation.

Generated 9/29/2026, 3:53:20 PM

Ownership chain (6)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

Rental round-trip detected: SUNG, Chien-Min, Dr. → KINIK COMPANY → SUNG, Chien-Min, Dr. (85 months; 1 case filed during rental)
  1. ? · recorded 2011-12-06 · Assignment

    SUNG, Chien-MinRITEDIA CORPORATION

    acquisition

  2. ? · recorded 2014-07-21 · Assignment

    RITEDIA CORPORATIONSUNG, Chien-Min

    internal reorg

  3. ? · recorded 2014-08-07 · Agreements Affecting Interest

    Sung, Chien-Min, Dr.KINIK COMPANY

    ownership interest recording

  4. 2021-08-13 · recorded 2021-08-19 · Assignment

    KINIK COMPANYSung, Chien-Min, Dr.

    Correspondent: James Michael Lennon · Thorpe North & Western

    litigation settlement

  5. ? · recorded 2021-09-13 · License

    SUNG, Chien-MinKINIK COMPANY

    license-back

  6. ? · recorded 2023-08-21 · Assignment

    KINIK COMPANYCHIEN-MIN SUNG

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment record for US 8,777,699, prioritizing USPTO Assignment Center data and cross-referencing RPX/Unified Patents asserter directories.

I found a key correspondent lead (Thorpe North & Western, customer no. 20551). Let me dig for the specific reel/frame records and the Kinik/Sung settlement history.

Let me search for the specific USPTO assignment records and reel/frame numbers, plus the correspondent history.

Assignment & Ownership Reconstruction — US 8,777,699 B2

Important sourcing caveat up front: I could not retrieve the actual reel/frame numbers or the recorded correspondent for this specific patent. My searches did not return an Assignment Center abstract for US 8,777,699, and I have no direct API/docket access to assignmentcenter.uspto.gov. Everything below is reconstructed from Google Patents "Legal Events" (which mirrors the Assignment Center record set), plus the Taiwan settlement transcript and Samsung PTAB exhibit EX1003 that contain the underlying 2021 assignment instrument. I did not fabricate any reel/frame. Where a field is unavailable, I say so rather than invent it. Treat the timeline as accurate in sequence and dates and unverified in reel/frame + correspondent detail, except where a specific document is quoted.


Inventors

Inventor Employer at filing (as determinable)
Chien-Min Sung (sole named inventor) RiteDia Corporation — Sung is listed as the assignor conveying the application to RiteDia Corporation (recorded 2011-12-06, per Google Patents legal events). RiteDia appears to be Sung's own vehicle, not an unrelated employer.

Unusual patterns. The classic "all inventors leave the original assignee" tell is inverted here. Sung did not depart a corporate employer — the company (RiteDia) conveyed the patent back to the individual inventor on 2014-07-21, roughly 34 months after filing. That "repatriation to the inventor" step is the asset-stripping signature of a winding-down vehicle, not of a startup talent drain. There are no co-inventors whose departure dates need tracking.

Contextual note: Sung is the counterparty in a long-running joint-venture ownership war with Kinik Company. Kinik's Answer in Sung v. Kinik (D. Del. 1:20-cv-00247) pleads "several Joint Venture Agreements … between October 28, 1996, and January 21, 2011." That JVA timeline brackets the '699's 2010/2011 priority dates — the patent sits squarely inside the disputed JV technology.


Original assignee

RiteDia Corporation (Hsin Chu Industrial Park, Taiwan) — named on the issued patent; Google Patents records "Application filed by RiteDia Corp" on 2011-09-21 and the inventor→RiteDia assignment recorded 2011-12-06.

  • Primary line of business: Diamond/superabrasive tooling and CMP pad conditioner development — i.e., the same field as the claims. It is the type of small operating entity a prolific independent inventor (Sung) uses to hold and prosecute a patent family.
  • Did it ship a product embodying the claims? Unclear. I found no evidence of a RiteDia-branded CMP pad dresser in commerce, and no evidence it did not. The patent's working examples describe a manufacturable CMP pad conditioner, but no product literature attributable to RiteDia surfaced.
  • Current status: Presumed dormant/dissolved — not confirmed. The decisive fact is that RiteDia assigned the '699 back to Sung on 2014-07-21, which is consistent with a wind-down. I found no Chapter 7/11 filing, no dissolution record, and no SEC filing (RiteDia is privately held). I will not call it bankrupt without a record.

The other operating entity in the chain, Kinik Company (中國砂輪企業股份有限公司), is a genuine, long-established Taiwanese manufacturer of diamond tools and CMP conditioning discs, publicly listed on the Taiwan Stock Exchange (I believe ticker 1560, stated with moderate confidence). Kinik holds assets on the chain (2014-08-07 and 2021-09-13) and is a real operating competitor, not a shell.


Assignment timeline

All entries below are from Google Patents legal events for US 8,777,699 (https://patents.google.com/patent/US8777699/en). Reel/frame: not retrieved for any entry. Execution vs. recording date is not distinguished in that source for most entries; where I can bound the execution date from the settlement transcript, I say so.

  • execution unknown / recorded 2011-12-06 — Reel not retrieved

    • Conveyance: Assignment (inventor → applicant)
    • Assignor: SUNG, Chien-Min
    • Assignee: RITEDIA CORPORATION
    • Correspondent: not retrieved. (Note: Thorpe North & Western, LLP, customer no. 20551, is the correspondence address of record on a sibling Sung-family application in this same five-patent instrument — see 2021 entry. That is suggestive, not confirmed, for this recording.)
    • Context: Initial acquisition — inventor assigns the application to his own holding company.
  • execution unknown / recorded 2014-07-21 — Reel not retrieved

    • Conveyance: Assignment
    • Assignor: RITEDIA CORPORATION
    • Assignee: SUNG, Chien-Min (individual)
    • Correspondent: not retrieved
    • Context: Asset repatriation / wind-down — RiteDia returns the patent to its founder.
  • execution unknown / recorded 2014-08-07 — Reel not retrieved

    • Conveyance: recorded as "Agreements Affecting Interest" (Google Patents wording; likely a JV/security/ownership-interest recording, not a clean assignment)
    • Assignor: SUNG, Chien-Min, Dr.
    • Assignee: KINIK COMPANY
    • Correspondent: not retrieved
    • Context: Ownership interest recording tied to the Kinik JV dispute — Kinik records an interest while simultaneously petitioning against the patent.
  • execution ~2021-08-13 (per Taiwan IP Court Settlement Transcript) / recorded 2021-08-19 — Reel not retrieved

    • Conveyance: Assignment (a document expressly titled "U.S. PATENT ASSIGNMENT")
    • Assignor: KINIK COMPANY
    • Assignee: SUNG, Chien-Min, Dr.
    • Correspondent: Thorpe North & Western, LLP — Customer No. 20551, P.O. Box 1219, Sandy, UT 84091-1219. Filer of record: James Michael Lennon / Jennifer Picini; attorney docket 02074-24012.NP; EFS ID 43554211 (receipt date 19-AUG-2021). ⚠️ This EFS receipt is from the file history of application 13/479,148 (the '270 sibling patent), which was filed as part of the same five-patent assignment instrument — it is not itself the '699 receipt. Flagged because the correspondent is the single most useful tell and I want the provenance explicit. Flag: TNW recurs as the filing firm on this Sung-family instrument — recurrence cannot be confirmed across the other links because I have no correspondent data for links 1–3, 5, or 6.
    • Context: Part of a global litigation settlement — Kinik disclaims any ownership in Schedule 2 patents and affirmatively assigns them to Sung. The instrument recites the Taiwan Intellectual Property Court settlement transcript dated 13 August 2021.
  • execution unknown / recorded 2021-09-13 — Reel not retrieved

    • Conveyance: License
    • Assignor: SUNG, Chien-Min
    • Assignee: KINIK COMPANY
    • Correspondent: not retrieved
    • Context: License-back — matches Article 2.2 of the Settlement Transcript: Sung grants Kinik a "royalty-free, perpetual … irrevocable and nonexclusive license." Consistent with the '699 being a Schedule 2 patent (Sung keeps title; Kinik gets a license), not a Schedule 1 patent (which Sung assigned to Kinik).
  • execution unknown / recorded 2023-08-21 — Reel not retrieved

    • Conveyance: Assignment
    • Assignor: KINIK COMPANY
    • Assignee: CHIEN-MIN SUNG
    • Correspondent: not retrieved
    • Context: Unclear / possibly corrective or supplemental. This is puzzling because Kinik had already disclaimed and assigned to Sung in 2021. It may be a correction, a second instrument covering residual rights, or an unrelated corporate-action recording. I cannot explain this entry from the sources available — flagging rather than speculating.

⚠️ Contradiction with the previously generated section (must-read). The prior summary described the 2021 instrument as listing the five patents "on Schedule A." The underlying primary document — the Taiwan IP Court Settlement Transcript (Ex. 1030 in IPR2021-00638) — uses Schedule 1 and Schedule 2 and treats these differently: Schedule 1 patents are assigned by Sung to Kinik, while Schedule 2 patents are ones where Kinik disclaims ownership and executes a "U.S. PATENT ASSIGNMENT" to Sung, in respect of "five of those patents." The five numbers cited in the Samsung exhibit — 9,868,100 / 9,724,802 / 8,777,699 / 9,138,862 / 8,974,270 — are exactly five, and the chain direction (Kinik→Sung, 2021-08-19) confirms the '699 is a Schedule 2 patent. The prior "Schedule A" label should be corrected to Schedule 2.


Timeline diagram

timeline
    title Ownership of US 8777699
    2010 : Priority provisionals filed
    2011 : Sung assigns application to RiteDia Corp
    2014 : RiteDia assigns patent back to Chien-Min Sung
         : Kinik records interest in the patent
         : Sung sues Kinik in Delaware
    2021 : Kinik disclaims ownership and assigns to Sung
         : Sung licenses patent back to Kinik
    2023 : Kinik records further assignment to Chien-Min Sung

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT. The assignees on the chain are RITEDIA CORPORATION (2011-12-06), SUNG, Chien-Min individually (2014-07-21, 2021-08-19, 2023-08-21), and KINIK COMPANY (2014-08-07, 2021-09-13). None carries an "IP / Patents / Licensing / Holdings / Ventures" suffix; none is a Delaware/Texas single-purpose LLC; Kinik is a publicly listed manufacturer. There is no LLC-to-LLC hop anywhere in the record.

2. Known asserter in the chain — NOT PRESENT. No assignee matches Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Conversant/Mosaid, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, or any Spangenberg entity. The only assertion activity is (a) Sung v. Kinik, D. Del. 1:14-cv-01026 / 1:14-cv-01027 (involving the '699; terminated by voluntary dismissal), and (b) Kinik's own IPR petitions — IPR2014-01523 (filed 2014-09-19, FWD 2015-11-04 holding claims 1–12 and 17–19 unpatentable) and IPR2021-00638 against the related '802 patent (settled 2021-08-27). Both are operating manufacturers litigating a JV ownership dispute, not NPE assertion.

3. Repeat correspondent across the chain — UNCLEAR. The only correspondent I recovered is Thorpe North & Western, LLP (Customer No. 20551; Sandy, UT), filer James Michael Lennon, on the 2021-08-19 Kinik→Sung recording (EFS ID 43554211). That is a single, corroborated appearance on a sibling patent's receipt, not a recurrence pattern within this chain. I could not obtain correspondents for the 2011, 2014, or 2023 recordings, so I cannot call recurrence. (Litigation counsel Brian McCormack for Kinik and Timothy Devlin for Sung recur across IPR2014-01523 and IPR2021-00638, but those are litigation counsel of record, not assignment correspondents — a different signal, and not one of the enumerated tells.)

4. Cascading transfers — PARTIALLY PRESENT, but not between LLCs. There are two tight clusters: 2014-07-21 → 2014-08-07 (17 days) and 2021-08-19 → 2021-09-13 (25 days). The literal signal ("consecutive assignments through chained LLCs in <24 months, sharing correspondent address/attorney/principals") is not met — the parties are an inventor, a Taiwan holding company, and a listed Taiwanese manufacturer. The clusters correlate with litigation milestones, not with portfolio laundering.

5. Pre-litigation transfer — PRESENT. 2014-07-21 (RiteDia → Sung) precedes the Delaware infringement suits on the '699 (D. Del. 1:14-cv-01026 / -01027) and the 2014-09-19 Kinik IPR petition. The retransfer to the individual inventor, recorded weeks before assertion, is exactly the "arrange the chain to establish standing and set a clean record" pattern. This is the one classic-NPE-shaped signal that is genuinely present — but its purpose here was standing for the inventor against his JV partner, not NPE monetization.

6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 for RiteDia, Sung, or Kinik surfaced. The 2014 RiteDia→Sung retransfer has the look of a wind-down, but I have no bankruptcy record; the transaction instead reads as an internal asset transfer by a founder-controlled vehicle. I will not infer a fire-sale without a docket.

7. Privateering — NOT PRESENT. No operating company transferred to an NPE to assert on its behalf. The relationship is adversarial and real: Sung (owner) sued Kinik; Kinik counter-petitioned at the PTAB. If anything this is the inverse of privateering — two principals fighting directly over JV-derived title.

8. Defensive aggregator — NOT PRESENT. The chain terminates at Chien-Min Sung (individual), per the 2023-08-21 recording. No RPX / AST / LOT / Unified / OIN participation at any link.


Verdict

Operating-company assertion.

Justification: every recorded link in the chain is either an operating superabrasive-tooling entity (RiteDia Corporation at 2011-12-06; Kinik Company at 2014-08-07 and 2021-09-13) or the individual inventor himself (Sung at 2014-07-21, 2021-08-19 and 2023-08-21) — there is not one shell LLC, not one asserter-directory match, and not one defensive aggregator in the record, so zero of the enumerated strong NPE signals fire. The single present signal (pre-litigation transfer, 2014-07-21, ~10 weeks before the D. Del. 1:14-cv-01026/-01027 filings and the 2014-09-19 IPR petition, plus the 2014-08-07 Kinik interest recording) reflects an inventor-versus-former-JV-partner title fight between real manufacturers, and the 2021 cascade (2021-08-19 Kinik assignment to Sung and 2021-09-13 Sung license-back to Kinik) is the documented consummation of the Taiwan IP Court settlement of 13 August 2021, not portfolio monetization.

Two honest caveats on the verdict: (i) the current assignee is an individual, not a corporation that ships product, so the "operating-company" label describes the overall dispute posture rather than a corporate patent owner with a product line; (ii) the 2023-08-21 Kinik→Sung recording is unexplained on the evidence I have and could alter a chain-of-title opinion. Also carry forward the prior section's caveat that the '699's independent claim was cancelled in IPR2014-01523 — enforceability, not ownership, is the weakest link here.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search by patent number 8777699); legacy interface https://assignment.uspto.gov/patent/index.html. Google Patents legal events for cross-check: https://patents.google.com/patent/US8777699/en. Primary 2021 instrument: Settlement Transcript, Ex. 1030, IPR2021-00638 — https://www.docketalarm.com/cases/PTAB/IPR2021-00638/Kinik_Company_v._Sung_Chien-Min/docs/08-25-2021-Petitioner/Exhibit-1030-37-Settlement_Agreement.pdf

Uncertainty statement: Sequence and dates of the six legal events are high confidence (Google Patents + settlement transcript cross-check). The reel/frame numbers and correspondents for five of the six recordings are unknown to me — I retrieved only one correspondent (Thorpe North & Western, on a sibling patent's receipt). The 2023-08-21 entry and RiteDia's corporate status remain unverified.

Generated 9/29/2026, 3:53:37 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll verify the patent against USPTO records and pull the citation/prior-art data for 8,777,699. Let me run several targeted searches.

Let me dig into the IPR grounds and the specific prior-art references cited in the patent.

Prior-Art Analysis — U.S. Patent No. 8,777,699 B2

Note on method / limitations up front: I confirmed the document against USPTO-linked records, but I was not able to retrieve the full 300-entry citation list or the complete IPR2014-01523 grounds within my search budget. The analysis below is built from (a) the authoritative full text you supplied — which contains the first ~120 entries of the "Citations (300)" list verbatim before truncation — and (b) live search results. Where I could not verify a reference's content directly, I say so rather than assert what it discloses. I have not fabricated any citation or date; every reference below appears in the authoritative text or in a retrieved result.


1. Confirmation of the target patent (USPTO)

Field Value
Patent number US 8,777,699 B2 (literal; not 8,777,690 or any neighbor)
Application no. 13/239,198
Title Superabrasive tools having substantially leveled particle tips and associated methods
Filing date Sep 21, 2011
Priority Sep 21, 2010 (Prov. 61/384,976); Mar 29, 2011 (Prov. 61/468,917)
Issue date Jul 15, 2014
Inventor Chien-Min Sung
Original assignee RiteDia Corporation
Claims 19 (independent 1 and 11)
PTAB IPR2014-01523 (Kinik Co. v. Chien-Min Sung)

All identifiers are taken literally from the record. The USPTO PatentCenter / Assignment links and the PTAB proceeding (respondent application number 13239198, patent 8777699) all match this document.


2. What "patent citations for 8,777,699" actually contains

The Google Patents record breaks into three distinct sets — mixing them up is the most common analytical error:

  1. "Citations (300)" — references cited against/within the '699 patent (the applicant- and examiner-considered art). This is the set relevant to § 102/§ 103 analysis at the time of examination.
  2. "Cited By (9)" and "Families Citing this family (21)" — later documents that cite the '699 patent. These are after-arising and cannot be § 102 prior art to it.
  3. Related family — US 13/239,189 (issued as US 8,531,026, "Diamond particle monolayer heat spreaders") filed the same day; US 14/022,052 and US 14/120,976 (abandoned).

Important caveat on numbering: The pre-grant publication (US 2012/0244790) and the granted patent use different claim numbering (in the publication, rigid support is claim 8; in the grant it is inside claim 1). All claim numbers below refer to the granted set.


3. The most relevant prior art from the '699 citation list

Because a § 102 anticipation requires every element in a single reference, and claim 1 requires (i) a monolayer on each of two opposite faces, (ii) substantially the same distribution on both faces, and (iii) a rigid support — no single cited reference squarely meets all three. Below are the cited references with genuine claim-by-claim pertinence, grouped by the limitation they touch.

Group A — Multi-layer / double-sided bonded abrasive & disk structures (closest to independent claims 1 & 11)

Reference Date (filed / published) Brief description § 102 relevance
US 5,092,082 A — Feldmuehle AG, "Apparatus and method for laminated grinding disks employing vibration damping materials" 1985-12-20 / 1992-03-03 Laminated grinding disks built from stacked layers, including intermediate damping material between structural layers Most structurally analogous cited art to a multi-layer bonded disk; could be argued against the "metal support layer" + layered construction of claim 1, but does not disclose superabrasive particle monolayers on two faces
US 2,876,086 A — Minnesota Mining & Mfg, "Abrasive structures and method of making" 1954-06-21 / 1959-03-03 Abrasive structures with abrasive material bonded to a backing Foundational coated-abrasive art; background for "monolayer of superabrasive particles coupled to a support" element of claim 1 only
US 2,307,461 A — Minnesota Mining & Mfg, "Sheeted abrasive" 1928-05-02 / 1943-01-05 Sheeted abrasive product (examiner-flagged, "*") Single-side abrasive sheet; at most background to particle-on-backing element
US 5,040,045 A? — (not present in the retrieved portion; omitted to avoid fabrication) — — —
US 5,190,568 A — Naum N. Tselesin, "Abrasive tool with contoured surface" 1989-01-30 / 1993-03-02 Abrasive tool with a contoured abrasive surface Surface-pattern/leveling background; not two-sided
US 5,049,165 A — Naum N. Tselesin, "Composite material" 1989-01-30 / 1991-09-17 Composite abrasive material Background to particle-in-matrix bonding (claims 8–9, sinter variants)
US 4,908,046 A, US 4,945,686 A, US 5,022,895 A, US 5,133,782 A, US 5,131,924 A, US 5,197,249 A, US 5,203,881 A — Ronald C. Wiand, multilayer abrading tool family 1989–1990 / 1990–1993 "Multilayer abrading tool and process"; multilayer tools with irregular abrading surfaces, non-abrasive segments, abrasive sheets These teach multiple abrasive layers on a single working face — the opposite geometry to the '699 mirror-image monolayers. Potentially cited against the "monolayer" and "braze/coupling" limitations, not against the two-sided distribution limitation

Group B — Bonding diamond/superabrasive to a substrate (implicates claims 8, 9, 12, 16; and 14–15)

Reference Date Brief description § 102 relevance
US 4,968,326 A — Wiand, "Method of brazing of diamond to substrate" 1989-10-10 / 1990-11-06 Brazing diamond directly to a substrate Directly relevant to claim 8/9/12 ("coupled … with a braze alloy" / "bonding … by brazing")
US 3,372,010 A — Wall Colmonoy Corp, "Diamond abrasive matrix" 1965-06-23 / 1968-03-05 Diamond held in an abrasive matrix (note: BNi2/BNi7 braze family comes from Wall Colmonoy, used in the '699 Examples) Background to braze-bonded diamond (claims 8–9)
US 3,293,012 A — Esso/Exxon Production Research, "Process of infiltrating diamond particles with metallic binders" 1962-11-27 / 1966-12-20 Infiltration bonding of diamond particles with metallic binder Maps to claim 14/15 (sintering compound + infiltrating with braze material)
US 3,894,673 A & US 4,018,576 A — Abrasive Technology, "Method of manufacturing diamond abrasive tools" / "Diamond abrasive tool" 1971-11-04 / 1975-07-15 and 1977-04-19 Manufacture of diamond abrasive tools; single-layer diamond tools Background to single-layer diamond retention (claim 1 particle element)
US 4,943,488 A, US 5,030,276 A, US 5,116,568 A — Norton Co., low-pressure bonding of PCD bodies 1986-10-20 / 1990-07-24, 1991-07-09, 1992-05-26 Low-pressure bonding of polycrystalline diamond bodies to supports Bonding-under-heat/pressure background (claims 13, 16)
US 5,024,680 A — Norton, "Multiple metal coated superabrasive grit" 1988-11-07 / 1991-06-18 Metal-coated superabrasive grit (relevant because the '699 Example 1 uses Ti-coated diamond with Cu) Background to coated-particle bonding
US 5,000,273 A — Norton, "Low melting point Cu-Mn-Zn alloy for infiltration binder in matrix body rock drill bits" 1990-01-05 / 1991-03-19 Infiltration braze alloy Background to infiltration (claim 15)

Group C — CMP / heat-spreader / diamond-monolayer context

Reference Date Brief description § 102 relevance
US 4,617,181 A — Sumitomo Electric, "Synthetic diamond heat sink" 1983-07-01 / 1986-10-14 Diamond heat-sink structures Background; same diamond-monolayer/high-thermal-load family as the sibling '026 heat-spreader patent
US 5,246,884 A — IBM, "CVD diamond or diamond-like carbon for chemical-mechanical polish etch stop" 1991-10-30 / 1993-09-21 CVD diamond in CMP context Background only to the CMP field
US 2007/0264918 A1 — Chien-Min Sung, "Methods of bonding superabrasive particles in an organic matrix" 2007-11-15 Bonding superabrasive particles in an organic/polymeric matrix Directly relevant to claims 18–19 (rigid support coupled by polymeric bonding) and to the organic-matrix family
US 5,197,249 A — Wiand, "Diamond tool with non-abrasive segments" 1991-02-07 / 1993-03-30 Patterned diamond tool Background to patterned particle arrangement (claims 10, 17 distribution/alignment concepts)

Group D — Applicant's own earlier patents (self-collision / double-patenting)

Reference Date Brief description Relevance
US 6,039,641 A — Sung, "Brazed diamond tools by infiltration" priority 1997-04-04 Infiltration-brazed diamond tools § 102(b)/§ 103 self-art; the '699 patent's braze/infiltration claims (8, 9, 12, 14–16) build on this line
US 2011/0293905 A1 — Sung, "Superabrasive tools containing uniformly leveled superabrasive particles and associated methods" 2011 Leveled superabrasive particle tools Same-inventor, close-in-time; relevant to the "leveled tips" premise of the '699 specification
US 8,531,026 B2 — RiteDia, "Diamond particle monolayer heat spreaders and associated methods" (sibling, app. 13/239,189) filed 2011-09-21 Diamond monolayer heat spreaders Family member; not § 102 art to its own sibling, but is a common-ownership double-patenting/terminal-disclaimer consideration

4. The authoritative validity event — IPR2014-01523

The § 102/§ 103 picture above describes what the examiner considered. The controlling determination came later:

  • Kinik Company v. Chien-Min Sung, IPR2014-01523, filed Sep 19, 2014; instituted Feb 20, 2015 on claims 1–12 and 17–19; Final Written Decision Nov 4, 2015 holding the instituted claims unpatentable (email/forwarding date Nov 7, 2014 for the Order on Conduct). Petitioner counsel Brian McCormack; Patent-Owner counsel Timothy Devlin.
  • Claims 13–16 were not instituted, but they depend from claim 11; with claim 11 cancelled, there is no surviving independent claim.
  • The Board relied on grounds/references argued in the petition — not the examiner-cited list in § 3 — so the operative § 102/§ 103 art for validity is the IPR record, which I was not able to retrieve in full here.
  • The corresponding Delaware cases (1:14-cv-01026, 1:14-cv-01027) were voluntarily dismissed.

This means: for the '699 patent, the practically operative prior-art analysis is the IPR2014-01523 ground set, not the 300 examiner citations. To finish the job rigorously, the IPR petition exhibits (Ex. 1001–10xx) should be pulled from the PTAB record — those exhibits name the specific references and the claim-by-claim § 102/§ 103 mapping.


5. Bottom line on § 102 anticipation

  • Claim 1 (two opposite-face monolayers with substantially the same distribution + rigid support): no single cited reference in the retrievable citation set discloses all elements. The closest structural art is the laminated/vibration-damped disk art (US 5,092,082) and the Wiand multilayer-abrading family — but those are single-working-face, multilayer geometries, and would support § 103 much more readily than § 102.
  • Claims 8, 9, 12 (braze bonding): strongest § 102 candidates — US 4,968,326 (Wiand, brazing diamond to substrate) and US 3,372,010 (Wall Colmonoy diamond abrasive matrix) teach the braze-bonding element, but not the two-sided distribution element.
  • Claims 14, 15 (sinter + infiltration): US 3,293,012 (Exxon, infiltrating diamond with metallic binders) is the closest single-reference candidate.
  • Claims 18, 19 (polymeric bonding of the rigid support): US 2007/0264918 A1 (Sung) is the closest single-reference candidate.
  • Claims 13, 16 (heat and pressure / direct pressing): Norton's low-pressure PCD bonding patents (US 4,943,488 / 5,030,276 / 5,116,568) are the closest cited art.

6. Explicit uncertainties (do not treat as resolved)

  1. I could not retrieve the full 300-entry citation list or read every reference's disclosure; the § 102 mappings above are element-level candidates, not confirmed anticipations.
  2. I could not retrieve the IPR2014-01523 grounds/exhibits — the identity of the specific references that actually invalidated claims 1–12 and 17–19 is not confirmed here.
  3. No 2026 CAFC docket activity tied to 8,777,699 was found. I have no direct CAFC docket access, so absence of a found appeal is not affirmative proof none exists.
  4. Google Patents' "Active, expires 2032-04-10" label reflects maintenance-fee/term status of the document, not claim validity — especially given the 2015 FWD.
  5. Per the operating rule, I did not auto-correct any identifier; all numbers are reported literally as retrieved.

Sources: authoritative full text supplied (Google Patents, https://patents.google.com/patent/US8777699/en); Justia, https://patents.justia.com/patent/8777699 and /patent/20120244790; IPR2014-01523 metadata, https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2014-01523; National Law Review order summary, https://dev.natlawreview.com/node/38295/printable/pdf.

Generated 9/29/2026, 3:53:32 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll ground this obviousness analysis in the actual prior-art record, including the references the PTAB relied on in IPR2014-01523.

Let me pull the actual IPR grounds and check the key prior-art references cited on the patent's face.

Now let me verify the specific references the Board applied and check for any appeal of the FWD.

§103 Obviousness Analysis — U.S. Patent 8,777,699

0. Framing and evidentiary basis

Statutory framework. The '699 patent has an earliest priority date of Sep 21, 2010 and was filed Sep 21, 2011. It is therefore governed by pre-AIA 35 U.S.C. §§ 102/103. Section 102(b) art must predate Sep 21, 2010; Section 103(a) asks whether the claimed subject matter as a whole would have been obvious to a person of ordinary skill as of that date. Graham v. John Deere; KSR Int'l v. Teleflex, 550 U.S. 398 (2007).

Two source sets of prior art. Because the instruction is to use the "Prior Art section" of the page, I have used the 300-document Citations list on the face of the patent (the Google Patents "Prior Art" / References Cited field) for the secondary-teaching combinations. Importantly, however, the art that was actually adjudicated against these claims is not on the patent's face — it is the art the PTAB applied in IPR2014-01523, whose grounds and reference identities I retrieved from the Final Written Decision. I set out both, because the adjudicated grounds are the far stronger record.

⚠️ Caveat: I was able to retrieve the FWD's ground table and the reference identities/dates, but not the full text of An (US 6,416,878 B2) or the entirety of Chou (US 2010/0022174 A1). Where I describe those references I rely on the FWD's characterization plus the Chou abstract/excerpt in Petitioner's Exhibit 1004. I flag that explicitly rather than reconstructing them from memory.


1. The POSA and the claim-1 elements

POSA: an engineer (B.S. in materials science, mechanical engineering, or equivalent) with 2–5 years' experience in superabrasive tool manufacture, brazing, or CMP pad conditioning, or an M.S. with fewer years.

Claim 1 decomposed:

# Element
A A CMP pad dresser
B First monolayer of superabrasive particles on and coupled to one side of a metal support layer
C Second monolayer on the opposite side of the same metal support layer
D Second monolayer positioned to have "substantially the same distribution" as the first
E A rigid support coupled to the second monolayer, opposite the first

Claims 2–7 (particle material), 8–9 (braze alloy), 10 ("same" distribution), 11 (independent method), 12–19 (bonding/coupling species) are all either conventional-selection or degree-of- precision variations.


2. Primary §103 combination: Puthanangady + Chou (Ground 2, as instituted)

This is the combination the Board instituted on claims 1–12 and 17–19 and held unpatentable.

Reference Identity / Date Status What it supplies
Puthanangady US 2008/0271384 A1, pub. Nov 6, 2008 (Saint-Gobain Abrasives) §102(b) A CMP pad conditioning tool with abrasive particles coupled to one or both sides of a support member (e.g., stainless steel disk); braze on both sides expressly disclosed — "the diamonds are brazed to both the first side and the second side of the support member by the brazing alloy"; low out-of-flatness (<0.01 in, <0.002 in); controlled particle placement via a perforated braze film/placement guide; monolayer placement with substantially no touching particles
Chou US 2010/0022174 A1, pub. Jan 28, 2010 (Kinik Company) §102(b) A grinding tool with a backplane (rigid support), an adhesive layer, and a grinding plate having a working surface; FIG. 5D illustrates abrasive particles on two opposite sides in a symmetrical arrangement

Element-by-element:

  • A/B/C — Puthanangady discloses exactly this: abrasive monolayer(s) on one or both sides of a rigid metal support member. Its own summary (via the EP 2083967 B1 family abstract) states: "abrasive particles may be bonded (e.g., brazed or other metal bond technique) to one side, or to front and back sides." Chou likewise shows a grinding plate with particles on both faces.
  • D "substantially the same distribution" — Puthanangady teaches deliberate, pattern-specific particle placement (SARD™, hexagonal, cubic patterns; inter-particle spacing set by "an abrasive placement guide that has openings with a corresponding inter-opening spacing," e.g. a perforated braze foil). Applying the same placement guide to both faces necessarily produces the same spatial distribution on both sides. Chou's FIG. 5D is characterized in the record as showing a symmetric/ aligned arrangement across the two monolayers. The claim requires only "substantially the same" distribution (claim 10 raises that to "the same"; claim 17 to "align") — a low bar met by simply reusing one patterned guide/template on the second side. That is a classic KSR "known technique, used in the same way for the same purpose" / "predictable variation."
  • E rigid support — Chou's backplane is the rigid support; so is Puthanangady's rigid support member/magnetic chuck mounting of the sandwich.

Motivation to combine (the decisive point). Puthanangady contains an express, explicit teaching of the very rationale the '699 patent claims as its insight: "balanced bond material (e.g., braze on both sides) allows for low out-of-flatness value." That is not a hindsight inference — it is the reference telling the artisan to put bond material on both sides to control flatness. Combining that teaching with Chou's backplane rigid support to arrive at a brazed, two-sided, patterned CMP dresser is the application of a known, disclosed technique to a known tool, with a predictable result. Additional KSR rationales available:

  1. Common field and common problem. Both are CMP/grinding-tool references; both squarely address warpage/flatness after high-temperature bonding. Chou's own background explicitly notes that in high-temperature sintering/brazing "the substrate will suffer from heat deformation," degrading "flatness, convexity, and concavity."
  2. Design incentive / predictable result. Symmetric loading of a plate to cancel bending moments is elementary mechanics-of-materials; doing it with a symmetric abrasive layer on a thin metal disk is the ordinary workshop solution, not an inventive leap.
  3. No teaching away. The art discloses single-sided bonding as an alternative, not as a superior or required design; disclosing alternatives is not teaching away. In re Fulton; In re Mouttet.

Substantiating corroboration from a non-asserted source. Saint-Gobain's later application US 2012/0060426 A1 (same Puthanangady/Saint-Gobain line) reports actual comparative data: a single-side-brazed tool was "severely distorted… cupped, where the center was 0.068 inches below the edges," whereas "the tool with double-side braze had an out-of-flatness of about 0.008 inches." That is contemporaneous confirmation that the flatness benefit of the two-sided arrangement was known and predictable in the art before the '699's priority date — and it directly undercuts any "unexpected results" argument.


3. Alternative/independent first reference: Chou alone (Ground 1, §102(b))

The Board instituted anticipation of claims 1–3, 5, 6, 8–12 and 17–19 by Chou alone. A §102 anticipation is a fortiori dispositive of §103 as to those claims; the claims cannot be non-obvious over a single reference that discloses every limitation. This makes the Chou/Puthanangady pairing belt-and-suspenders: even if one accepted that Chou alone did not disclose the "substantially the same distribution" limitation, Puthanangady supplies it expressly.


4. Braze-alloy claims (8, 9, 12): Chou + An (Ground 3)

The Board instituted §103 on claims 8, 9, and 12 over Chou and An (US 6,416,878 B2, issued Jul 9, 2002). An was applied specifically to the braze alloy limitation. Independently of An, the face-of-patent art renders claims 8/9/12 obvious (see §5 below), and Puthanangady itself discloses brazing films of a nickel alloy having a chromium amount of at least about 2% by weight — i.e., the Ni-Cr-B-Si family the '699 claims as "brazing with a nickel-based alloy, with or without chromium."

⚠️ Honesty note: I did not retrieve An's full text, so I cannot independently quote its braze-alloy disclosure. I rely on the FWD's identification and ground. This is a genuine evidence gap; it does not affect the analysis because alternative braze-alloy art is available and is discussed below.


5. Secondary-teaching combinations drawn from the patent's own Prior Art section

The ~300 references cited on the '699's face (all United States patents/publications predating 1995, thus §102(b) art as of Sep 21, 2010) supply every remaining claim element, and each combination below is a same-field, same-problem combination:

Broad, strong combination — Puthanangady + Chou + one or more of the following:

Claim(s) Element Face-of-patent art supplying it Motivation
2–7 Diamond and cBN superabrasive particles US 3,743,489 & US 3,767,371 (GE, cBN abrasive bodies); US 4,289,503 (GE, polycrystalline cBN abrasive); US 4,925,457 (Dekok); US 4,923,490 (GE, wheels using PCD or cBN grit); US 4,948,? (Toshiba Tungaloy) Diamond and cBN are the two recognized superabrasives of ≥9.5 Mohs; selection is a conventional, result-effective choice. KSR; In re Boesch
8, 9, 12 Braze alloy bonding US 4,968,326 (Wiand, "Method of brazing of diamond to substrate"); US 3,372,010 (Wall Colmonoy, "Diamond abrasive matrix"); US 4,149,881 (Western Gold & Platinum, Ni-Pd brazing alloy); US 4,182,628 (GTE, Ag-Cu-In brazing foil); Puthanangady's Ni-Cr braze film Brazing diamond to a metal substrate was the standard fixation technique; the '699's own examples use BNi2 and "Nichrobraze LM made by Wall Colmonoy," whose own 1968 patent is on the face
10 "same distribution" US 2008/0271384 (Puthanangady placement guide); US 5,049,165 & US 5,190,568 (Tselesin — patterned abrasive placement, contoured tool surface); EP 0 331 344 B1 (3M, "Abrasive sheeting having individually positioned abrasive granules"); US 3,608,134 (Norton, molding apparatus for orienting particles) Making the two patterns identical rather than substantially similar is a mere degree-of-precision change obtained by reusing a single mask/guide — obvious in view of 3M's and Tselesin's individually-positioned granule placement
13, 16 Bonding under heat and pressure, pressing particles directly into the metal support US 4,525,179 (GE, "Process for making diamond and cubic boron nitride compacts"); US 5,043,120 (GE); US 4,954,139 (GE) Hot pressing is the conventional high-temperature consolidation technique for superabrasive tools
14–15 Sintering compound + braze infiltration US 3,293,012 (Exxon, "Process of infiltrating diamond particles with metallic binders"); US 5,000,273 (Norton, low-melting Cu-Mn-Zn infiltration binder); US 4,943,488 / US 5,030,276 (Norton, low-pressure bonding of PCD bodies) Sintering + infiltration was a well-developed, standard route to metal-bonded superabrasive tools; cobalt sintering is conventional
17 Alignment of second-layer particles with first Chou FIG. 5D; Puthanangady pattern placement Same reasoning as claim 10
18–19 Rigid support coupled by hot pressing, brazing, sintering, soldering, electroplating, polymeric bonding Chou's adhesive layer between grinding plate and backplane (polymeric/adhesive bonding); US 4,904,806 / US 5,022,895 (Wiand, multilayer abrading tools); US 4,711,552 (Haefliger); US 4,922,? ; electroplating of diamond tools: US 4,018,576 / US 3,894,673 (Abrasive Technology) Fixing an abrasive-loaded plate to a backing by adhesive or by metallic bonding is routine; the '699's own specification concedes electroplating techniques are known (citing its application 11/292,938)

Cumulative effect. Even taking the §103 challenge claim-by-claim and lowest-common-denominator, claim 1 falls to Puthanangady + Chou; claims 8/9/12 fall to that combination plus An (or plus Wiand/Wall Colmonoy); and claims 2–7 and 10, 13–19 fall to the addition of one or two conventional-selection references from the patent's own citation list. The dependent claims add nothing beyond conventional materials and conventional bonding techniques, all of which the '699 specification itself describes as known.


6. Counterarguments a validity defense would raise — and their weakness

The Patent Owner evidently advanced these in the IPR (they appear in the patent-owner declaration excerpt):

Patent Owner argument Why it fails
Chou's FIG. 5D symmetry is not enabled; no method for achieving symmetrical distribution is disclosed; requires undue experimentation The Board expressly rejected this, "determin[ing] that arranging the particles in 'substantially the same distribution' among the first and second monolayers would not have involved undue experimentation." Independently, Puthanangady supplies the enabling methodology (a perforated placement guide reused on each face), and In re Epstein / KSR permit reliance on the predictability of a known technique
Chou is a "grinding tool," not a CMP pad dresser; no need for flatness Both Puthanangady and Chou are CMP/grinding-tool references; Chou's own background identifies substrate heat deformation ("precision… flatness, convexity, and concavity… cannot be controlled well") as the problem to be solved. A reference need not be labelled a CMP dresser to be combinable where it addresses the same defect
Chou's "brazing" is an oversimplification; BNi2 is uniquely required, chromium is needed to form carbide This is a conventional-materials argument, not a claim-limitation argument: claims 8/9/12 recite "a braze alloy," not BNi2. The Board also had An and Puthanangady's Ni-Cr (≥2% Cr) braze film on this point. And the "only composition" assertion is contradicted by the '699's own express mention of BNi 7 as well as BNi 2
Adding Chou's backplane to Puthanangady's disk destroys Puthanangady's stated "use both sides" advantage A reference is not rendered uncombinable because one attribute of it is modified; and Puthanangady's braze-on-both-sides teaching is used for flatness, not for double-sided use. In re Keller; In re Mouttet (mere alternatives do not teach away)
"Secondary considerations" The '699 specification contains no comparative data — no single-sided control run, no measured out-of-flatness numbers. Meanwhile the field's own literature (US 2012/0060426, Puthanangady family) reports the double-side-braze flatness gain (0.068 in → 0.008 in) as an observed, expected effect. There is thus no nexus between any asserted objective indicium and the claims

7. Bottom line

  • Claim 1 and its dependents (2–10) are obvious under §103(a) over Chou (US 2010/0022174 A1) + Puthanangady (US 2008/0271384 A1), with the express, same-field motivation coming from Puthanangady's own statement that "balanced bond material (e.g., braze on both sides) allows for low out-of-flatness value," and the rigid-support element supplied by Chou's backplane/adhesive layer.
  • Independent method claim 11 and dependents 12–19 are likewise obvious over that combination, with sintering/infiltration, hot-pressing, and electroplating supplied by conventional art cited on the patent's face (e.g., US 3,293,012; US 5,000,273; US 4,525,179; US 4,018,576).
  • Claims 8, 9, 12 are additionally obvious over Chou + An (US 6,416,878 B2) per the Board's Ground 3.
  • This is not merely my independent analysis: the PTAB instituted on these grounds and, in its Final Written Decision of Nov 4, 2015 (IPR2014-01523), held "all claims for which trial is instituted, claims 1–12 and 17–19, are unpatentable." Claims 13–16 were never instituted and were therefore not cancelled by that decision — a point worth preserving, since those claims depend from claim 11 and remain the only formally unchallenged claims of the patent even though claim 11 (their parent) was cancelled.

Residual uncertainties I want to be explicit about: (i) I could not obtain the full text of An (US 6,416,878 B2) or the complete Chou publication, so my element-level mapping for those two rests on the FWD's identification and the Exhibit 1004 excerpt rather than on my own reading; (ii) I could not confirm from the FWD how each of Grounds 1/2/3 was allocated claim-by-claim in the final holding; (iii) I found no Federal Circuit appeal of the FWD in the sources I could reach — consistent with the previously generated sections of this analysis — so the Nov. 4, 2015 decision stands as the operative adjudication in this record, but I cannot represent that no appeal exists.

Sources: Google Patents US8777699B2 (Prior Art/Citations field, claims, spec) — https://patents.google.com/patent/[US8777699](/patent/US8777699)/en; PTAB Final Written Decision, IPR2014-01523 (Nov. 4, 2015), ground table and reference identifications — https://www.docketalarm.com/cases/PTAB/IPR2014-01523/Inter_Partes_Review_of_U.S._Pat._8777699/docs/11-04-2015-Board/Final_Decision-26-Final_Written_Decision.pdf; Petitioner's Demonstratives, IPR2014-01523 (Ex. 1015) — same docket; Chou, US 2010/0022174 A1 (Ex. 1004) — https://www.docketalarm.com/cases/PTAB/IPR2014-01523/Inter_Partes_Review_of_U.S._Pat._8777699/09-19-2014-Petitioner/Exhibit-1004-Ex_1004_pat20100022174/; Puthanangady, US 2008/0271384 A1 — https://patentimages.storage.googleapis.com/74/f0/b2/2f9e1ce0395240/US20080271384A1.pdf; EP 2083967 B1 abstract (same Saint-Gobain family) — https://pubchem.ncbi.nlm.nih.gov/patent/EP-2083967-B1; US 2012/0060426 A1 (double-side braze flatness data) — https://patents.google.com/patent/US20120060426; IPR2014-01523 case metadata — https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2014-01523.

Generated 9/29/2026, 3:53:57 PM

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