Kichul Seong v. Bedra Inc., Berkenhoff Gmbh, Powerway Group Co. Ltd.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KICHUL SEONG,
Appellant
v.
BEDRA INC., BERKENHOFF GMBH, POWERWAY
GROUP CO. LTD.,
Appellees
______________________
2020-1870
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01415.
______________________
Decided: April 13, 2021
______________________
K ICHUL SEONG , Pyeongtaek, South Korea, pro se.
REGINALD J. H ILL , Jenner & Block LLP, Chicago, IL, for
appellees. Also represented by BENJAMIN J. BRADFORD .
______________________
Before NEWMAN , LOURIE, and D YK , Circuit Judges.
LOURIE, Circuit Judge.
Case: 20-1870 Document: 37 Page: 1 Filed: 04/13/2021

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SEONG v. BEDRA INC. 2
Ki-Chul Seong appeals from the final written decision
of the Patent Trial and Appeal Board (the “Board”) holding
that claims 1–13 and 15 of U.S. Patent 8,822,872 (the “’872
patent”) are unpatentable because they would have been
obvious over Tomalin and Nishioka patents and denying
Seong’s Contingent Motion to Amend. See Bedra Inc. v.
Seong, No. IPR2018-01415, 2020 WL 355007 (P.T.A.B.
Jan. 21, 2020) (“Decision”). Seong only appeals from the
Board’s decision regarding claims 2–5, 10–12 and 16. Be-
cause the Board did not commit legal error, and substantial
evidence supports the Board’s factual findings, we affirm.
BACKGROUND
Seong owns the ’872 patent, which is directed to “an
electrode wire for electro-discharge machining [‘EDM’] and
[methods] for manufacturing [electrode wires].” ’872 pa-
tent Abstract. EDM technology employs an electrode wire
and a high-frequency voltage to perform a cutting process.
See id. at col. 1 ll. 18–47; see also Fig. 1. The ’872 patent
explains that pure copper wire has been used for EDM, but
with three disadvantages: low tensile strength, inferior
machining accuracy, and slow machining speed. See id. at
col. 1 ll. 54–64. The inventors purport to address those dis-
advantages by providing a wire with various materials,
cracks, and grains.
The ’872 patent claims a wire that includes three com-
ponents. A “core” including “a first metal;” “a first alloy
layer;” and “a second alloy layer formed at an outer portion
of the first alloy layer.” Id. at col. 16 ll. 20–49; col. 17 l. 9–
col. 18 l. 6. Cracks are formed in the second alloy layer by
“twisting the wire with a plurality of rollers.” Id. at col. 16
ll. 20–44. The “core wire material is erupted onto a surface
of the electrode wire . . . so that a plurality of grains are
formed on the surface of the electrode wire.” Id. at col. 16
l. 20–col. 18 l. 16. Regarding claims 2–5, 10–12, and 16,
the core material and first alloy material are erupted to-
gether. See id. Figure 10 illustrates a cross section of a
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SEONG v. BEDRA INC. 3
wire including a core wire 12, a first alloy layer 22, and a
second alloy layer 23:
’872 patent Fig. 10.
Particularly relevant to this appeal is the claim term
“grain.” For context, the ’872 patent description states that
an “object of the present invention is to make grain frag-
ments . . . by pushing the softer core wire material onto a
surface of an electrode wire along [pre-formed] cracks when
performing elongation and drawing processes.” Id. at col. 4
ll. 15–27. “[T]he grain including the core wire material, the
first alloy material, and the second alloy material is dis-
tributed on the surface of the electrode wire.” Id. at col. 15
ll. 45–49. The written description notes that “grain includ-
ing the core wire material is arranged in a direction sub-
stantially perpendicular to a longitudinal direction of the
electrode wire” and “grain including at least the second al-
loy material is surrounded by the core wire material.” Id.
at col. 4 l. 66–col. 5 l. 5.
The ’872 patent includes independent claims 1 and 9.
At issue in this appeal are claims 2–5, which depend from
claim 1, and claims 10–12 and 16, which depend from
claim 9.
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SEONG v. BEDRA INC. 4
1. An electrode wire for electro-discharge ma-
chining, the electrode wire comprising:
a core wire including a first metal, the core wire
having a smooth surface;
a first alloy layer formed at a boundary region
between the core wire and a second metal
plated on an outer surface of the core wire
due to mutual diffusion between the core
wire and the second metal; and
a second alloy layer formed at an outer portion
of the first alloy layer due to diffusion of the
first metal to the second metal, the second
alloy layer having a plurality of cracks
therein, the plurality of cracks being formed
by twisting the wire with a plurality of roll-
ers,
wherein a core wire material is erupted onto a
surface of the electrode wire for electro-dis-
charge machining, which includes at least
the core wire, the first alloy layer, and the
second alloy layer, along the cracks appear-
ing on the second alloy layer, so that a plu-
rality of grains are formed on the surface of
the electrode wire, a length of a grain in the
circumferential direction being more than
twice a width of the grain, and
wherein the grain including at least the core
wire material and a second alloy material is
distributed onto the surface of the electrode
wire for electro-discharge machining.
2. The electrode wire of claim 1, wherein the
core wire material is erupted together with a first
alloy material, so that the grain including the core
wire material, the first alloy material, and the
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SEONG v. BEDRA INC. 5
second alloy material is distributed on the surface
of the electrode wire for electro-discharge machin-
ing.
3. The electrode wire of claim 2, wherein the
first metal includes one selected from the group
consisting of copper, brass, and a copper alloy, and
the second metal includes one selected from the
group consisting of zinc, aluminum, tin, and an al-
loy thereof.
4. The electrode wire of claim 2, wherein the
grain including at least the second alloy material is
surrounded by the core wire material.
5. The electrode wire of claim 2, wherein the
grain including the core wire material is arranged
in a direction substantially perpendicular to a lon-
gitudinal direction of the electrode wire for electro-
discharge machining, and has a length twice or ten
times greater than a width of the grain.
9. A method of manufacturing an electrode wire
for electro-discharge machining, the method com-
prising:
preparing an intermediate wire rod, which in-
cludes a first metal and has a first diameter,
as a core wire;
plating the core wire with a second metal;
performing a heat treatment process to make
the plated core wire representing tensile
strength of about 500 N/mm.sup.2 or less
and elongation percentage of 5 or more and
to form a first alloy layer in at least a bound-
ary region between the core wire and the
second metal due to mutual diffusion be-
tween the core wire and the second metal
and to form a second alloy layer on an outer
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SEONG v. BEDRA INC. 6
portion of the first alloy layer through diffu-
sion of the first metal to the second metal;
forcibly twisting the electrode wire between a
plurality of rollers in at least one of up,
down, left, and right directions; and
forming a grain including at least a core wire
material and a second alloy material on a
surface of the electrode wire for electro-dis-
charge machining by erupting the core wire
material through a crack appearing on the
second alloy layer when performing a fine
wire process of making the electrode wire
for electro-discharge machining which in-
cludes the first alloy layer, the second alloy
layer, and the core wire and has a second
diameter.
10. The method of claim 9, wherein, in the form-
ing of the grain on the surface of the electrode wire
for electro-discharge machining, the core wire ma-
terial is erupted together with a first alloy material,
so that the grain including the core wire material,
the first alloy material, and the second alloy mate-
rial is formed.
11. The method of claim 10, wherein the core
wire is plated with the second metal through one of
an electroplating scheme, a dip-plating scheme,
and a chemical plating scheme.
12. The method of claim 10, wherein the first
metal includes one selected from the group consist-
ing of copper, brass, and a copper alloy, and the sec-
ond metal includes one selected from the group
consisting of zinc, aluminum, tin, and an alloy
thereof.
’872 patent col. 16 l. 20–col. 18 l. 15 (emphases added).
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SEONG v. BEDRA INC. 7
16. The method of claim 9, wherein, in the form-
ing of the grain on the surface of the electrode wire
for electro-discharge machining, the core wire ma-
terial is erupted together with a first alloy material,
so that the grain including the core wire material,
the first alloy material, and the second alloy mate-
rial is formed on the surface of the electrode wire for
electro-discharge machining.
J.A. 4614 (Seong’s conditional replacement amended
claim) (emphasis added).
Bedra Inc., Berkenhoff GmbH, and Powerway Group
Co. Ltd. (“Bedra”) filed a petition for inter partes review
of claims 1–13 and 15 of the ’872 patent on July 17,
2018, and the Board instituted review. Seong filed a
Contingent Motion to Amend proposing new claim 16,
which Bedra opposed. At oral argument, Seong con-
ceded that independent claims 1 and 9 are unpatenta-
ble. See Decision at *13. Seong also conceded that the
teachings of Tomalin and Nishioka would have been
combined by a skilled artisan. Id. at *15. In the Board’s
final written decision, the Board concluded that claims
1–13 and 15 and proposed claim 16 would have been ob-
vious in view of U.S. Patent 5,945,010 (“Tomalin”) and
U.S. Patent 3,326,025 (“Nishioka”). The Board found
that Tomalin taught all of the claim limitations except
for twisting the wire with rollers, which the Board
found was taught by Nishioka. Id. at *14. The Board
subsequently denied Seong’s request for rehearing.
Seong appealed, and we have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
D ISCUSSION
We review the Board’s legal determinations de novo, In
re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we re-
view the Board’s factual findings underlying those deter-
minations for substantial evidence, In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000).
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SEONG v. BEDRA INC. 8
The parties agree that the Board correctly construed
the claim term “grain” as “a grouping of materials.” See
Appellant’s Br. 11; Decision at *11. The Board noted that
it did “not interpret this language to mean that each indi-
vidual component of the ‘grain,’ i.e., each of the grouped
core, first alloy, and second alloy materials, must all neces-
sarily be exposed at the surface of the wire to the outside
environment.” Decision at *12. The Board instead “inter-
pret[ed] the claim language only to require that at least one
of these materials, part of the grain, is exposed at the sur-
face of the wire, while other components may be further
beneath the surface as shown in the Specification’s Figure
10, where three materials are present and in a group at the
surface of the wire, but potentially only one material of the
group is exposed.” Id.
Seong refers to certain claim limitations that include
the term “grain” as the “grain clauses” and contends that
the Board misconstrued these “grain clauses.” Appellant’s
Br. 12–13 (citing claims 2, 10, and 16); see supra Back-
ground (identifying Seong’s so-called “grain clauses” by em-
phases added to the claims listing). Seong argues that the
grain clauses require that each of the core wire material,
the first alloy material, and the second alloy material be on
the surface of the electrode wire in a grain at least once.
See Appellant’s Br. 7, 12–13. Seong thus provides the same
proposed construction for all three of the grain clauses: “the
grouping of materials comprising the core wire material,
the first alloy material, and the second alloy material with
some of each of those three materials being on the surface
of the electrode wire for electro-discharge machining.” Id.
at 13. Seong argues that the Board’s construction effec-
tively requires only one material on the surface of a wire
and that this was an error central to the Board’s obvious-
ness determination because Tomalin discloses a wire with
two materials on a wire’s surface but not three. See id. at
12–13. Bedra disputes Seong’s assertion regarding
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SEONG v. BEDRA INC. 9
whether Tomalin teaches two or three materials on the sur-
face of a wire. See Decision at *17.
Bedra responds that the Board did not err in claim con-
struction, and that, regardless of this court’s determination
on the construction issue, the Board properly found the
claims unpatentable. See Appellees’ Br. 28–19. Bedra ar-
gues that the specification does not support a construction
of the grain clauses requiring three materials on the sur-
face of the wire, as confirmed by the plain language of the
claims. See id. at 33–38. Bedra also contends that Seong’s
claim construction challenge is irrelevant because the
claims would have been obvious based on Tomalin and
Nishioka even under Seong’s proposed construction. See
id. at 2, 21. Bedra asserts that Seong’s expert conceded
that three materials would be on the surface of Tomalin’s
wire based on the wire drawing process. See id. at 21.
Bedra further argues that the record provides substantial
evidence supporting the Board’s conclusions.
We reject Seong’s contention that the Board erred in its
claim construction determination. “Claim interpretation is
a question of law.” Elmer v. ICC Fabricating, Inc., 67 F.3d
1571, 1574 (Fed. Cir. 1995). The claims are given their
broadest reasonable interpretation consistent with the
specification because the inter partes review petition was
filed before November 13, 2018. See Game & Tech. Co. v.
Wargaming Grp. Ltd., 942 F.3d 1343, 1351 (Fed. Cir. 2019);
see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2142, 195 L. Ed. 2d 423 (2016). The grain clause claim lan-
guage specifies (1) that “the grain” is distributed on the
surface of the electrode wire and (2) that the grain includes
the core wire material, the first alloy material, and the sec-
ond alloy material. The Board correctly determined that
the broadest reasonable interpretation of grain does not re-
quire that all three of the core wire material, the first alloy
material, and the second alloy material be distributed on
the surface of the electrode wire. Seong is correct that
claim 1 recites two grain materials and claim 2 recites
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SEONG v. BEDRA INC. 10
three grain materials, but the grain clauses do not clearly
require that every component of a grain be on the surface
of the electrode wire.
Seong argues that eruption of the core wire material
and the first alloy material together as recited in claim 2
describes a causal event that results in both materials’
presence on the surface of the wire. See Appellant’s Br. 19–
20. Claim 2’s eruption limitation fails, however, to estab-
lish that the first alloy material becomes distributed on the
surface of the wire. Claim 2 does not state that the mate-
rials are erupted together “onto the surface of the wire.” Id.
In contrast, claim 1 actually specifies that when the core
wire material is erupted it “is erupted onto a surface of the
electrode wire.” ’872 patent col. 16, ll. 33–40. Further-
more, as shown below, Figure 10 illustrates a grain embod-
iment where the first alloy material is erupted together
with the core material, but the first alloy material does not
reach the surface of the wire.
’872 patent Fig. 10 (annotated). We acknowledge that the
specification contains exemplary wires with three materi-
als distributed on their surfaces, but the claim language
does not limit the claims accordingly. We therefore agree
with the Board’s claim construction determination.
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SEONG v. BEDRA INC. 11
After construing the grain limitations, the Board con-
cluded that claims 2–5, 10–12, and 16 would have been ob-
vious in view of the prior art combination of Tomalin and
Nishioka. See Decision at *27. That is a factual finding
subject to appellate review for substantial evidence. In re
Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir.
2015) (“What a reference teaches and the differences be-
tween the claimed invention and the prior art are questions
of fact which we review for substantial evidence.”) (citing
In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir.
2012)). A finding is supported by substantial evidence if a
reasonable mind might accept the evidence as adequate to
support the finding. Consol. Edison Co. v. NLRB, 305 U.S.
197, 229 (1938).
Substantial evidence supports the Board’s finding that
claims 2–5, 10–12, and 16 would have been obvious in view
of Tomalin and Nishioka. The Board determined that “the
Tomalin-Nishioka combination teaches an electrode wire
having a core material (α brass), a first alloy material (γ
brass), and a second alloy material (ε brass) grouped to-
gether as a grain at the wire’s surface,” wherein the core
material and first alloy material “are erupted together
through an ε brass surface when it is cracked.” Decision at
*22–23. To support this finding, the Board relied on nu-
merous disclosures from Tomalin, admissions made by
Seong’s expert, and a declaration from Dr. Dandridge
Tomalin, the named inventor of the Tomalin patent.
Tomalin’s Figure 9, as annotated by Dr. Tomalin, be-
low, is a graph comparing a wire’s measured content, dis-
playing three materials in three layers:
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SEONG v. BEDRA INC. 12
See Decision at *17–18. The Board determined that Fig-
ure 9 is a profile of Example/Specimen 1 and is descriptive
of the materials found in Example/Specimen 3. Id. at *18–
21. Dr. Tomalin opined, and Seong’s expert confirmed,
that Example/Specimen 1 having the composition shown in
Figure 9 would include the three alloy layers on the outside
of the wire after it was drawn and cracked, with the α and
γ brass layers erupting together due to strain from the
cracking process. Id. at *20–22. The appearance of the
cracks define a grain pattern. Id. at *22; see also Tomalin
Figures 3, 4. The Board thus concluded that Tomalin and
Nishioka teach all three materials in a grain on the surface
of a wire.
Seong conceded that Tomalin discloses two materials
on or grouped at the surface of an electrode wire but argues
that the claims require a third material on the wire sur-
face. See Appellant’s Br. 2–3; see also Decision at *13–14,
*17. Substantial evidence supports the Board’s finding
that the prior art teaches all three materials being on the
surface. In any event, as we concluded above, however, the
grain clauses of claims 2–5, 10–12 and 16 do not require
that each of the core wire material, the first alloy material,
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SEONG v. BEDRA INC. 13
and the second alloy material be distributed on the surface
of the electrode wire. Seong’s argument that Tomalin does
not disclose a third material on the wire surface thus does
not support patentability. In view of claim construction,
Seong’s concessions, and the substantial evidence support-
ing the Board’s factual findings, we affirm the Board’s ob-
viousness determination and denial of Seong’s contingent
motion to amend proposing new claim 16.
CONCLUSION
We have considered Seong’s remaining arguments but
find them unpersuasive. Accordingly, the Board’s final
written decision is affirmed.
AFFIRMED
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