- Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdRehearing deniedPTAB · Jan 11, 2016 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 unpatentable as obvious over Stevenson and Hazzard.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“III. ANALYSIS In a request for rehearing, the dissatisfied party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“extensive knowledge of electrical design concepts. Paper 19 (“PO Resp.”), 2–3. In the Final Decision, we rejected this identification of one of ordinary skill in the art as too narrow. Final Dec. 8. We noted that evidence of record supported Petitioner’s argument that a multidisciplinary team of professionals, including manufacturing, materials, and electrical design experts, would be involved in the development of EMI filters. Id. Thus, we concluded that a person of ordinary skill in the art “would have a degree in electrical engineering, chemistry, or physics, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.” Id.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for petitioner
“of ordinary skill in the art. Relying upon testimony from Mr. Galvagni and disclosures of the ’627 patent, we noted that expertise in the fields of structural and electrical design are both implicated in the design and construction of EMI filters. We did not conclude, however, that knowledge of structural design could substitute for electrical design expertise. Final Dec. 8. Indeed, as noted in the Final Decision, to the extent that Mr. Galvagni’s testimony is directed to electrical design concepts and not the structural or mechanical design of EMI filters, we took his relative lack of experience in electrical design into account when weighing his testimony. Final Dec. 25.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“B. KSR In the Final Decision we stated: Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 5,905,627 - Avx Corporation v. Greatbatch LtdAll claims unpatentablePTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable
“Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable
“1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16
Patent outcomesUS 6,687,117 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 6,687,117 - Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdAll claims unpatentablePTAB · Oct 21, 2015 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 are unpatentable as obvious over Stevenson and Hazzard, with claims 6, 7, 18, and 19 also obvious over Colburn.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Mr. Galvagni’s testimony is consistent with Patent Owner’s argument that an electrical design expert would be involved in the design of the electrical connections of the feedthrough capacitor assembly, and with the prior art of record, which discloses various methods of connecting, arranging, and electrically coupling the components of the disclosed feedthrough filter capacitor assemblies. See, e.g., Ex. 1001, 1:6–8, 4:66–5:4, 10:14–28; Ex. 1012, 1:27–33, 4:36–43, Fig. 16. Thus, we conclude that a person of ordinary skill in the art would have a degree in electrical engineering, chemistry, or physics, or a related field, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.4 4 Patent Owner asserts a level of ordinary skill in the art that is higher than that asserted by Mr. Galvagni, including “advance knowledge” of electrical filtering concepts. PO Resp. 3. We note that, in general, a lower level of skill in the art favors a determination of nonobviousness, while a higher level of skill favors a finding of obviousness. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. ANALYSIS A. Claim Construction In the Decision to Institute, we determined that resolution of the issues presented in the Petition did not require explicit construction of any claim terms. Dec. on Inst. 8. We did, however, provide guidance as to the scope of the term “feedthrough filter capacitor.” Id. at 8–9. During trial, neither party asserted that the Board’s prior discussion of “feedthrough filter capacitor” was in need of revision or that any claim terms required construction. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms that are in controversy need be construed, “and only to the extent necessary to resolve the controversy”).” slip op. at 6
- Expert testimonyPetitioner expert creditedDenied
“As discussed above, we are not persuaded that a person of ordinary skill in the art must be an electrical designer of EMI filter capacitors, as asserted by Patent Owner. Moreover, a declarant’s expertise and experience need not match perfectly the experience and education of a person of ordinary skill in the art to provide testimony. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The declarant must, instead, have sufficient “knowledge, skill, experience, training, [and] education” of such specialized nature to assist the trier of fact to understand the evidence. Id. (quoting Fed. R. Evid. 702). Mr. Galvagni testifies that he has over 50 years of experience in the field of capacitors, including EMI filter capacitors, and has published numerous technical articles and papers in this field, including on the topics of “low inductance capacitors, actuators, and passive components.” Ex. 1002 ¶ 3. He also testifies that he is named as an inventor on at least 55 U.S. Patents related to capacitors, filters, or similar electronic structures, and has work experience in the design of filter capacitors similar to the ’627 patent, including capacitors with internally connected common ground planes, multiple capacitor access through vertical feeds, and non-circumferential terminations. Ex. 1002 ¶ 5; Ex. 1018 ¶ 8; Ex. 1024 ¶¶ 3, 6, 10. Petitioner contends this work experience in feedthrough filter capacitor construction and design would be helpful in understanding the construction and design of the EMI filter capacitor assemblies claimed in the ’627 patent. Resp. to Mot. to Excl. 3. The claims of the ’627 patent are directed to a feedthrough filter capacitor assembly constructed of various individual components. Ex. 1001, 10:64–11:8. Upon review of Mr. Galvagni’s work experience, including his experience relating to the construction and manufacture of EMI filters, we conclude that an adequate relationship exists between Mr. Galvagni’s education and work experience and the claimed invention. See SEB S.A., 594 F.3d at 1373 (finding no error in admitting testimony where the proffering party established an adequate relationship between the expert’s work experience and the claimed invention). Accordingly, we deny Patent Owner’s Motion to Exclude the testimony of Mr. Galvagni.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The evidence of record, however, demonstrates that internally grounding a feedthrough capacitor was known in the art, as was the decreased attenuation from such a design. Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 16
Patent outcomesUS 5,905,627 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,905,627
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.