- A123 Systems, LLC v. Long Hua Technology Co., Ltd.Institution deniedPTAB · Apr 15, 2022 · IPR2022-00026 · APJ Kristina M Kalan · IPR · Institution
The Board denied institution because the Patent Owner recorded a compliant statutory disclaimer of all challenged claims 1–19.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“[§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e) (2019). A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the U.S. Patent and Trademark Office (“Office”). 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must:” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we decline to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 8,034,480 - PTAB · Mar 15, 2022 · IPR2021-01517 · APJ Russell E Cass · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Patent Owner has not persuaded us that we should exercise our discretion to deny institution of trial. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”). We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB March 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“(1) “An actuating means for moving said mechanical linkage between said first position and said second position” (claim 2): Petitioner contends that this is a means-plus-function limitation, and that the claimed “actuating means” should be construed as “an actuator, latches, springs, or magnets, and their equivalents” that correspond to the function of “moving said mechanical linkage between said first position and said second position.” Pet. 6 (citing Ex. 1003 ¶¶ 69–71). (2) “A means for moving said actuator arm between a first position . . . and a second position . . .” (claim 7): Petitioner contends that this limitation is a means-plus-function limitation, and that the claimed “means” should be construed as “an actuator, latches, springs, or magnets, and their equivalents” that correspond to the function of “moving said actuator arm between a first position . . . and a second position . . .” connecting the respective contactors as claimed. Pet. 7 (citing Ex. 1003 ¶¶ 72–74) (alterations in original). (3) “Means for passing power from said power supply to said substation when said actuator arm is in said first position” (claim 10): Petitioner contends that this limitation is a means-plus-function limitation, and that the claimed “means” should be construed as “the line between the power supply and the actuator arm, the actuator arm, and the line between the substation and the first contactor of the first vacuum bottle” that correspond to the function of “passing power from said power supply to said substation when said actuator arm is in said first position.” Pet. 7–8 (citing Ex. 1003 ¶¶ 75–77).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had at least a BS in Electrical Engineering (or similar engineering discipline) and at least two years work experience in the field of power electronics, power generation and transmission, or a related field.” Pet. 6 (citing Ex. 1003 ¶ 18). Patent Owner does not propose a level of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art because we find it to be supported by the ’489 patent and the asserted prior art.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,724,489 - Beckman Coulter, Inc. v. Sysmex Corporation And Sysmex America, Inc.All claims unpatentablePTAB · Feb 18, 2022 · IPR2020-01503 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 7–15 are unpatentable as obvious over Nagai and Jagtiani; the priority applications lack written-description support for the claimed electrical detection and cell-counting combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we determined that Petitioner’s definition was consistent with the disclosure of the ’351 patent and the scope and content of the asserted prior art to the extent that Petitioner’s definition requires familiarity with the design and operation of automated hematology analyzers available in the market. Dec. 8 (citing Ex. 1001, 1:45–61, 15:52– 58). We also determined that Petitioner’s proposal was more reasonable than Patent Owner’s with respect to the duration of a POSA’s practical experience, whether such practical experience is in addition to or possibly as experience could be merely using hardware and/or software for an analyzer, as opposed to developing such hardware and/or software. Id. at 8–9. Neither party contends that the differences in proposals affect the outcome of this proceeding, and we find that they do not. Nonetheless, on the full record now before us, we find that our identification of the level of ordinary skill in the art in the Institution Decision, modified to state that a higher level of experience can compensate for less technical education, is supported by the ’351 patent, the prior art of record, and the opinions of Mr. Roche and Dr. Robinson (which, as discussed above, recognize that additional work experience can compensate for technical education). Thus, we find that a POSA would have had at least a Bachelor’s or Master’s degree in biologic science, biomedical engineering, and/or electrical engineering or a related field and at least five years of experience in developing hardware and/or software for hematology analyzers, and would have been familiar with the design and operation of hematology analyzers available in the market. We also find that less technical education may be compensated by a higher level of experience, or vice versa.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“a controller programmed to,” “optical detector,” “electrical detector,” and “mono-nucleated cells and poly-nucleated cells” as recited in claim 7, and “total count of nucleated cells” as recited in claims 8 and 13. Pet. 22–29. Patent Owner responds that “[t]he District Court issued an opinion regarding claim construction on April 6, 2021,” and, “[f]or purposes of this proceeding, Patent Owner applies the District Court’s constructions.” PO Resp. 13. Patent Owner also specifically addresses the terms “controller programmed to” and “electrical detector.” Id. at 13–14. Petitioner replies that its proposed claim constructions are consistent with the District Court’s constructions. Pet. Reply 4–5. At the oral hearing, the parties confirmed that they do not dispute the District Court’s claim constructions. See Tr. 16 (Petitioner’s counsel stating that “Petitioner would request that this Board adopt these same [District Court] constructions in this IPR”), 34 (Patent Owner’s counsel agreeing that “neither side has objected to the court’s claim construction”). Based on the parties’ apparent agreement, and considering the record before us and the Report and Recommendation from the District Court (Ex. 2065), we agree with and adopt the District Court’s claim constructions. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). Accordingly, we construe the terms “controller programmed to,” “electrical detector,” and “optical detector” as set forth below. slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“that Petitioner has established that the priority applications do not provide adequate written description support for the challenged claims. More specifically, we find that the priority applications do not reasonably convey to a POSA that the inventors were in possession of a sample analyzer that both (1) uses an electrical detector to electrically sense cells in a body fluid measurement sample, and (2) from the analysis of the cells sensed by the electrical detector, counts the number of mono-nucleated cells and poly-nucleated cells in the body fluid measurement sample as required by claim 7.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Based on our review of the record, we determine that Petitioner has established that a POSA would have had reason to combine the teachings of Nagai and Jagtiani to achieve the claimed subject matter. Nagai describes an electrical detector (RBC/PLT detection unit 42) that “is capable of measuring the number of red blood cells and platelets by a sheath flow-DC detection method.” Ex. 1044, 6:58–63, Fig. 5. Nagai also describes WBC detection unit 41 that produces a DIFF scattergram that, in the body fluid measuring mode, is analyzed in order to classify the white blood cells into two subclasses, namely, mono-nucleated cells and poly-nucleated cells. Id. at 5:56–58, 12:27–36. Nagai teaches that WBC detection unit 41 is “configured as an optical detection unit” that performs white blood cell classification in the body fluid measurement mode using a combination of electrical resistance and absorbed light. Id. at 5:56–58, 15:52–16:6. Jagtiani teaches a channel sensor that can detect impedance to differentiate between different types of cells in a biological sample, including differentiating between red blood cells, white blood cells, and platelets. Ex. 1045 ¶¶ 21, 25; see also id. ¶ 187 (“The channel sensor is based on impedance sensing using the Coulter principle.”). Jagtiani teaches the sensor can be configured to differentiate between and count the number of eosinophils, basophils, neutrophils, monocytes, and lymphocytes in the biological sample. Id. ¶ 25; see also id. ¶ 121 (“In some embodiments, the cell count can include a white blood differential, and can include a count of basophils, a count of eosinophils, a count of lymphocytes, a count of neutrophils, and/or a count of monocytes.”). Jagtiani further teaches that “[s]uch biological samples can include, for example, blood, serum, saliva, sweat, tears, urine, or any other biological sample or derivative suspended in a fluid.” Id. ¶ 119. In light of these teachings in Nagai and Jagtiani, we credit Mr. Roche’s testimony that Jagtiani demonstrates a known technique of detecting poly-nucleated and mono-nucleated white blood cells using an electrical detector. A POSA at the time of the invention would have been led to modify Nagai with the teaching of Jagtiani in the manner claimed to allow the body fluid measurement of Nagai to differentiate poly-nucleated and mono-nucleated blood cells (instead of measuring red blood cells alone). Such a motivation is found, for example, in Petitioner’s DxH system, which discloses use of an electrical detector in both a blood measuring mode and a fluid measuring mode. Ex. 1042 ¶¶ 30, 31. In the DxH system, use of an electrical detector in both the blood measuring mode and body fluid measuring mode allows identification of total number of cells in measured body fluid.” slip op. at 29
Patent outcomesUS 10,401,351 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSRPatents in suitUS 10,401,351 - Sealed Air Corporation v. Ranpak Corp.All claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01249 · APJ Wesley B Derrick · IPR · Final written decision
Claims 13–15 are unpatentable as obvious over Kirkpatrick; the Board did not reach the alternative grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner fails to cite any authority to support its argument that we should, in effect, disregard Mr. Klass’ testimony as to the level of ordinary skill in the art because he is not a person of ordinary skill in what Patent Owner contends is the relevant field. See PO Resp.; PO Sur-Reply. Patent Owner’s counsel similarly was unable to identify any such authority at the hearing. Tr. 42:9–15. Further, Mr. Klass’ testimony was not that he is not a person of ordinary skill in the art, but rather that his opinions set forth in his earlier declaration would not be different under the level of ordinary skill as defined by Mr. May. Ex. 1028 ¶¶ 4–5. On this record, we find Mr. Klass’ testimony well-supported as it pertains to relevant issues and see no reason to summarily disregard it. See Exs. 1002, 1028. Complete overlap between a witness’ technical qualifications in the field of the invention is not necessary for the witness’ testimony to be admissible. See SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”)5 at 34 (“There is . . . no requirement of a perfect match between the expert’s experience and the relevant field.”). Nor must they themselves be a person of ordinary skill in the art, but only that they are “qualified in the pertinent art.” CTPG at 34 (citing Sundance, Inc. v. DelMonte Fabricating Ltd., 550 F.3d 1356, 136364 (Fed. Cir. 2008)). Mr. Klass’ education includes a minor in Pulp & Paper Technology (Ex. 1006) and his lengthy experience in the pulp and paper industry includes work—as a process engineer—involving splicing and corrugators (Ex. 1002 ¶ 8). Mr. Klass has the “knowledge, skill, experience, training, [and] education” of a “specialized” nature that is likely to “assist the trier of fact to understand the evidence.” Fed. R. Evid. 702. Accordingly, we find Mr. Klass has sufficient relevant technical expertise to consider and weigh his testimony as we have in this decision. See SEB S.A., 594 F.3d at 1373.” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“On this record, we determine that a person of ordinary skill in the relevant art would have included those with a bachelor’s degree in mechanical or paper engineering with at least a year’s experience relating to producing cushioning materials, dunnage pads, and other protective packaging. As admitted by Patent Owner, production of such materials using kraft paper stock was known. PO Resp. 14. As to the use of double-sided adhesive, we do not agree with Patent Owner that it was unknown to the person of ordinary skill in the art because using double-sided tape to join rolls of sheet stock was known in the wider field of paper processing and we find that field reasonably includes producing paper cushioning products, and that such related knowledge reasonably would also have been within the knowledge of a skilled artisan in the “cushioning conversion machine” field as the same or similar paper cushioning products are produced. Moreover, regardless of whether double-sided tape was used in what Patent Owner contends is the “cushioning conversion machine” field, Mr. May’s testimony is limited to it not being used in that field, not that double-sided tape itself was not known to one of ordinary skill in the art in the field. Ex. 2001 ¶¶ 53–57. It reasonably follows that a person having knowledge of double-sided tape would also have knowledge of joining together sheets of paper or other stock using double-sided tape. Further, to the extent that Patent Owner and Mr. May rely on “cushioning conversion machines” differing from paper processing machines that produce paper cushioning products, on this record, there is insufficient evidence of a meaningful difference in their complexity, size, or operation. For example, Patent Owner relies heavily on the paper processing machines including machinery to allow splicing on the fly, but the prior art also teaches that non-continuous roll-to-roll splicing can be used. See Ex. 1010, 1:13–16 (disclosing that a splicing tape system “is applicable both to systems in which the splice is made on the fly and to systems in which the splice is made while the running web is stationary”); Ex.1017, 1:15–19 (disclosing that “[t]he splicing operation can be performed in a static or a dynamic mode.”). As to size, similarly, Patent Owner relies on the machinery for paper making or producing corrugated cardboard being larger than “cushioning conversion machines,” but there is no clear distinction between the two as to size, as discussed below. Also, there is no evidence that paper processing machines forming paper cushioning products from paper itself do not do so in the same general manner as the ’096 patent. Accordingly, finding no meaningful distinction to “cushioning conversion machines,” we discern no meaningful difference in the knowledge of the skilled artisan as it relates to the challenged claims. Moreover, to the extent that there would be a narrower “cushioning conversion machine” field that did not include the use of double-sided tape, as Patent Owner contends, there would be no difference in the outcome of this case. As to obviousness, the scope of analogous prior art is not limited to the field of inventor’s endeavor, but also includes references that are “still reasonably pertinent to the particular problem with which the inventor is involved.” See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As discussed below, we find Kirkpatrick reasonably pertinent to the particular problem with which the inventor is involved.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“On this record, we determine that the preamble’s recitation of “sheet stock material for use in a cushioning conversion machine” is a statement of intended use and does not constitute a limitation. In doing so, we must construe the meaning of the term “cushioning conversion machine.” In construing “cushioning conversion machine,” we note there is no guidance elsewhere in the remaining claim language as to its meaning, including in other claims, and so turn to the specification of the ’096 patent. See Phillips, 415 F.3d at 1312–13, 1315. The ’096 patent states that “[c]ushioning conversion machines convert [paper] sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). The ’096 patent also identifies its “invention [as] relat[ing] to machines for converting sheet stock material into a dunnage product.” Id. at 1:15–16 (Field of the Invention). Figures 1 and 2 are identified as top plan and side elevational views of a cushioning conversion machine. Id. at 3:57–63. The ’096 patent discloses that the “operation of the [cushioning] conversion machine 10 may be controlled by a controller, also in a well-known manner” (emphasis added). Id. at 6:42–44. The ’096 patent provides no disclosure as to the size of the cushioning conversion machine or the sheet stock material that it converts into cushioning dunnage product. See Ex. 1001.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, Mr. May’s testimony of what “cushioning conversion machine” means in the field of paper dunnage machines fails to bear the weight required to limit the term as Patent Owner proposes. The ’096 patent identifies “cushioning conversion machines” to be machines that “convert sheet stock material . . . into a cushioning dunnage product.” Ex. 1001, 1:23–25 (Background). This is in effect the plain and ordinary meaning of the words themselves identifying a machine that converts feedstock into cushioning. Further, we find it consistent with the ’096 patent as a whole. Mr. May’s contrary testimony, as discussed above, lacks sufficient evidentiary basis to support Patent Owner’s contended construction over the plain and ordinary meaning. In effect, the basis for Mr. May’s testimony is limited to a showing that the meaning of the term encompasses a machine such as shown in the ’096 patent’s Figure 1 and 2. Mr. May’s testimony as to the PadPak machine being a “popular cushioning conversion machine[]” only goes to establishing that “cushioning conversion machine” encompasses similar machines, not that the term would be understood to be limited to the PadPak machine. Ex. 2001 ¶¶ 65–66. As to “cushioning conversion machines” being stop/start machines, the ’096 patent’s states that “the conversion machine 10 may be controlled by a controller” (emphasis 7 Elsewhere Patent Owner cites a number of its patents for using the term “cushioning conversion machine,” but this only supports that Patent Owner uses the term. See PO Resp. 27. added), not that it must be. Ex. 1001, 6:42–43. As to size, as discussed above, the ’096 patent provides no limitation as to the size of the apparatus or the sheet stock material. Petitioner highlights that another of Patent Owner’s patents, U.S. Patent No. 6,200,251 B1 (Ex. 1026, “the ’251 patent”), discloses “that in a ‘preferred cushioning conversion machine, the stock supply assembly is adapted to supply stock material which is between 25 to 35 inches wide’” (emphasis added). Pet. Reply 14 (citing Ex. 1026, 2:56–59). Petitioner also highlights that the ’251 patent was filed before the ’096 patent’s priority date and names the ’096 patent’s inventor among its inventors. Id.; compare Ex. 1026, codes (22), (75), with Ex. 1001, codes (22), (75). Such disclosure of a preferred embodiment in this circumstance is reasonable evidence that a skilled artisan would understand that a “cushioning conversion machine” included those “adapted to supply stock material . . . between 25 and 35 inches wide,” but not that such machines were limited to using such widths. The relevance of this is that the sheet stock material used is not manifestly distinct from the sheet stock material used for corrugators, ranging from 35 to 110 inches in width, where Patent Owner contends corrugators are distinct from “cushioning conversion machines.” See Ex. 2003, 95:22–96:6 (Mr. Klass testifying that the “width of commercial corrugators could be anywhere from 35 to 110 inches.”); PO Resp. 33–34 (relying on Mr. Klass’ testimony). Similarly, there is no persuasive evidence of a clear distinction in weight. Patent Owner and Mr. May rely on Mr. Klass’ testimony as to the weight of paper rolls for corrugators, focusing solely on testimony as to the weight of large rolls and ignoring that the testimony also set forth that “[s]ome corrugators use smaller rolls.” PO Resp. 34; Ex. 2001 ¶¶ 77–79; Pet. Reply 14–15; see also Ex. 1028 ¶¶ 21–22 (Mr. Klass’ testimony that “web feed rolls at the lower end of that range would be especially well suited for use in a cushioning conversion machine, even under [Patent Owner’s] narrow definition of such a machine” and that “my testimony certainly was not that Kirkpatrick’s web feed rolls would weigh tons.”). In sum, on this record, we determine that “cushioning conversion” slip op. at 22
Patent outcomesUS 6,756,096 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,756,096 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01214 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Kobayashi and skilled-artisan knowledge; the contingent motion to amend is granted for substitute claims 9–16.
RulingsFinal written decision- ExcludeNew argument disregardedNew argument consideredGranted in part
“regarding (1) the motivation to combine Kaun with Kobayashi based on dendrite formation (id. at 2–4), (2) additional motivations to modify Kaun with Kobayashi (id. at 4–6), (3) a reasonable expectation of success relating to Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of success regarding Kobayashi’s modified electrode assembly (id. at 7–9). Because we do not reach Petitioner’s challenge based on the combination of Kaun and Kobayashi, as discussed below, we similarly need not reach Patent Owner’s Motion to Exclude Mr. Gardner’s opinions as they relate to the Kaun/Kobayashi combination. Accordingly, we dismiss Patent Owner’s Motion to Exclude these purportedly new opinions as moot. We address Patent Owner’s remaining concerns, relating to Mr. Gardner’s allegedly new testimony regarding Kobayashi, below.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’913 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20–21 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party asserts that our decision depends on that determination and because the level of skill is consistent with the record. See PO Resp. 8 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply; MTA Opp. 1–2 (“Regardless of which definition is used, however, Patent Owner’s Substitute Claims are still not patentable.”).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“In their briefing, the parties dispute the meaning of three claim terms or phrases—(1) “insulating means”, (2) “connected to one another by at least one flat separator,” and (3) “button cell.” See Pet. 17–21; PO Resp. 9–12. We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.6 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:21–24 (explaining that 6 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or various materials . . . . [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp 25–26), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “constraints unique to . . . button cell design” (PO Resp. 25) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Finally, Patent Owner argues that “[r]eliance upon the general knowledge of a [person of ordinary skill in the art] to provide a missing element in a combination of references is an exception rather than the rule” and “is particularly true where the proposed modification goes to the essence of the claims.” PO Resp. 26. Patent Owner states that “Petitioners have provided no more than ‘conclusory statements and unspecified expert testimony’ to supply a metal foil that is admittedly missing from Kobayashi, and is not shown in any other button cell art.” Id. at 27. We disagree. As the Federal Circuit has explained ‘common sense and common knowledge have their proper place in the obviousness inquiry,’ (a) invoking ‘common sense . . . to supply a limitation that was admittedly missing from the prior art’ should generally only be done when the [missing] limitation in question [is] unusually simple and the technology particularly straightforward;’ and (b) references to common sense ‘cannot be used as a wholesale substitute for reasoned analysis and evidentiary support’ Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020)(quoting Arendi S.A.R.L v. Apple Inc., 832 F.3d 1355, 1361–1362 (Fed. Cir. 2013)). Here, Petitioner proposes to substitute a metal foil for a metal terminal electrode plate to provide contact with the inner surface of the button cell housing. Ex. 1006 ¶ 34. As detailed above, Petitioner and Mr. Gardner direct our attention to the prior art of record which suggests use of foil within small battery cells to provide electrical contact was well-known and explains why the skilled artisan would have reduced the thickness of the terminal electrode plate to maximize the available space for active electrode components. Accordingly, unlike the expert in Arendi, Petitioner here provides more than “conclusory statements and unspecific expert testimony.” Arendi, 832 F.3d at 1366.” slip op. at 22
Patent outcomesUS 9,799,913 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,799,913 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01212 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Kobayashi and Kaun; the contingent motion to amend is granted for substitute claims 14–25.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“that “Kaun discloses that the cell is sealed ‘by a ‘U’ shaped insulator/gasket 32 . . . to seal the cell without pressure-loading,’” and therefore, venting via a pressure release seal is not required. Pet. 64 (citing Ex. 1005 ¶ 120). In an alternate embodiment, Kaun provides a means to relieve gas pressure “via the peripheral gasket which can reseal after an event.” Ex. 1005 ¶ 91. As Petitioner explains, “Kaun discloses that it is sealed, but upon the application of certain conditions, the internal pressure of gases within the cell can cause gases to vent. During such events, Kaun discloses ‘[t]he specified limit for internal pressure is handled by release via the peripheral gasket which can reseal after an event.’” Pet. Reply 13 (citing Ex. 1041 ¶¶ 37–39; Ex. 1005 ¶¶ 91, 101). Thus, while Kaun discloses venting to prevent pressure build up, Kaun “is otherwise sealed at all times during functioning.” Id. (citing Ex. 1041 ¶¶ 38–39; Ex. 1005 ¶ 101). Neither the ’835 patent nor Patent Owner’s own proposed construction of “closed without being beaded over” requires closure at all times. Furthermore, Mr. Gardner testifies that “[i]f a battery which, upon application of significant internal pressure, would be considered not ‘closed’ at other times, th[e]n almost no battery could be considered closed. [Because] [a]ny battery, when subjected to certain pressures, would leak or burst.” Ex. 1041 ¶ 39. We credit Mr. Gardner’s undisputed testimony in this regard. Mr. Gardner reasons that a person of ordinary skill in the art would understand that Kaun is closed.” Id. Dr. Peckerar similarly testifies that Kaun shows a housing that is closed without being beaded over. Ex. 1034, 131:4–11; 237:19–238:22 (describing Kaun as “closed during normal operation”). Accordingly, the record evidence supports Petitioner’s assertion that the combination of Kobayashi and Kaun suggests a button cell that is closed without being beaded over.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions.8 In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in 8 The parties disagree as to what the newly added phrase “the cup casing include[ing] a first part proximal to the flat bottom area and a second part disposed in the overlapping area, the first part of the casing being disposed radially inward with respect to the second part” means. See generally MTA Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express construction for this phrase. Id. We address the interpretation of this phrase below and only to the extent necessary to resolve the dispute raised by the parties’ substantive arguments. claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Thus, Patent Owner identifies three claimed features—i.e., the jelly- roll configuration, the insulating layer, and a housing closed without being beaded over—as responsible for the improved performance of the VARTA CoinPower® button cell batteries. Id. However, Patent Owner’s declarants testify further and explain that it is the combination of the three identified features, in addition to a flat foil conductor resting flat between the electrode top and housing and welding the foil conductor from outside the housing, that are responsible for improved performance. In particular, Mr. Miehlich, employed in VARTA’s marketing and sales department, testifies that the new cell design, which “provided unprecedented increases in performance, including in energy density, charge capacity, and cycling stability,” consisted of a “jelly roll electrode coil packed tightly into an uncrimped, button-like housing. The electrode coil was protected against short-circuiting by [an] insulating means, and was connected to the cell terminals by a flexible flat foil conductors resting flat between the electrode top and housing, and welded to the housing components from the outside. These features are all found in the claims of the VARTA patents here under review. Ex. 2045 ¶¶ 15–16. And, Dr. Lindner, one of the named inventors of the ’835 patent, testifies that the complex issues we faced were how to safely pack the required amount of electrode material into the very small “button”-sized housing and protect it against short circuits; how to connect the “jelly roll” electrode to the terminals in such a confined space without itself consuming much volume, and how to seal the top and bottom of the cell housing, all while accommodating the expansion and contraction of the electrode winding and the resulting mechanical forces. Ex. 2046 ¶ 33. According to Dr. Linder, the jelly-roll configuration with an insulator, flexible foil output conductors, sealing the cell without crimping, and welding the foil conductors from outside the housing each contributed to the improved battery performance. Id. ¶¶ 34–43. Thus, it is the combination of five elements—not the three claimed in the ’835 patent—that are purportedly responsible for the “vastly increased performance characteristics” of the CoinPower® products. Id. ¶ 43; see also id. ¶ 45 (noting that “various aspects of our invention are covered by 10 issued patents, including the four United States patents here under review” (emphasis added)); Tr. 84:24–85:10 (explaining that welding, for example, is “also part of the success”). Like the patent owner in Fox Factory, “[i]n light of the patentee’s own assertions about the significance of the unclaimed features, no reasonable fact finder could conclude that these features are insignificant.” Fox Factory, 944 F.3d 1375. As a result, the patent claims are not coextensive with the CoinPower® products because those products include “‘critical’ unclaimed feature[s] that [are] claimed by a different patent and materially impacts the product’s functionality.” Id.” slip op. at 40
Patent outcomesUS 9,153,835 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,153,835 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01213 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Kobayashi and Kwon; substitute claims 10–14, 16, and 17 are allowed, while the motion to amend is denied as to claim 15.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“On this issue, we agree with Petitioner. Mr. Gardner explains that the skilled artisan “would further recognize that the output conductor can be comprised of various materials . . . . which could be metal or any various materials [and] the shape of the output conductor is not particularly limited.” Ex. 1003 ¶ 322. Mr. Gardner further testifies that a person of ordinary skill in the art “would recognize, not only that metal foil conductors could be inserted into these grooves without difficulty, but also that the depth of the grooves can be altered in order to better accommodate metal foil output conductors.” Ex. 1041 ¶¶ 53, 70. We recognize Patent Owner’s argument that numerous factors must be considered and that conventional battery design does not necessarily translate to button cell designs (PO Resp. 20– 21), but as Mr. Gardner testifies, “this may be true in some cases, [but] the lessons and advantages of using techniques from conventional battery design and applying it to button cell would be obvious to a [person of ordinary skill in the art].” Ex. 1041 ¶ 103. He continues to explain that “[n]aturally, such transposition of techniques would require some modification and adjustments. . . . [and that] each of these adjustments, . . . would be well within the skill of a [person of ordinary skill in the art].” Id. ¶ 104 (describing, for example, “reducing the thickness of the conductor plates of Kobayashi”). We credit Mr. Gardner’s testimony. Moreover, Patent Owner does not allege that any proposed modification would be beyond the skill of a person of ordinary skill in the art or explain how any of the “difficulties in manufacturing a button cell” (PO Resp. 52) are relevant to the proposed substitution of a metal foil for a metal terminal electrode plate. See generally id.; Sur-reply. Thus, based on the evidence and argument of record, we determine that the combination of Kobayashi and Kwon, and the general knowledge of those skilled in the art, would suggest the use of foil in place of Kobayashi’s terminal electrode plates, and that the foil would bear flat on one of the lateral ends of the electrode separator assembly.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’858 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 7 (person of ordinary skill “would possess a Bachelor’s degree in electrical, mechanical or chemical engineering or equivalent [and] would also have two to three” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We discern no material difference between the parties’ respective constructions. Additionally, Patent Owner, during the hearing, expressed a general view that claim construction was unlikely to affect the parties’ positions. In particular, Patent Owner states that “[o]ur position is that really nothing turns on claim construction. You don’t have to engage in claim construction in this case.” Tr. 56:18–20, 56:20–22 (explaining that limitations were submitted for construction “to gain some benefit in the co-pending litigations.”). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review). Because the outcome of our decision does not depend on either parties’ claim construction position, we determine that none of the identified claim terms require construction to resolve the issues in dispute in this proceeding.” slip op. at 13
- ExcludeMotion to exclude, deniedMixed
“We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 69–70 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 26–27, 31) and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28–29, 30). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner response. Accordingly, we deny Patent Owner’s Motion to Exclude as to Mr. Gardner’s testimony on this issue.” slip op. at 9
Patent outcomesUS 9,799,858 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,799,858 - Peag LLC (D/B/A Jlab Audio) / Audio Partnership LLC et al. v. Varta Microbattery GmbHAll claims unpatentablePTAB · Jan 5, 2022 · IPR2020-01211 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over Kobayashi; substitute claims 14–25 are allowed because the cited combinations do not teach the claimed cup casing structure.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we determined that a person of ordinary skill in the art at the time of the invention of the ’581 patent would have had at least a bachelor’s degree in mechanical engineering, or a similar field, such as materials engineering, chemical engineering, or physics with at least five years of experience in the field of battery design and manufacturing. A person with a master’s degree in one of the above fields could have less practical experience of approximately three years. A person with a PhD could have less practical experience, of about two years. A person with less education but more relevant practical experience may also meet this standard. DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final Written Decision, we maintain our determination from the Decision on Institution because neither party disputes that determination and because the level of skill is consistent with the record. See PO Resp. 6 (stating that “[t]he claims are patentable regardless of which definition is used.”); see generally Pet. Reply.” slip op. at 14
- ExcludeMotion to exclude, deniedMixed
“We are not persuaded that the identified portions of Mr. Gardner’s Supplemental Declaration are improper. In the Petition, Petitioner alleged that a person of ordinary skill in the art would have had reason to substitute known metal foils for the metal conductor plates of Kobayashi in order to reduce the size of inactive materials and improve performance. Pet. 31 (citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other things, that the metal foil lacks the requisite rigidity to support the remaining components of the winding axis core (PO Resp. 22–27, 31), and that because metal connecting plates 4a and 5b are positioned within recesses of insulating plates 8 and 9, replacing the metal connecting plates with metal foils would result in an unreliable connection because the metal foil would become embedded within the grooves of the insulating plates (id. at 28, 31). Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s and Patent Owner’s concerns that metal foils would be unsuitable in Kobayashi due to their flexibility and thickness as compared to the insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in order to better accommodate metal foil output conductors”), 70, 71 (explaining that it is the winding core that provides structure not the output conductor plates), 81, 86 (explaining that the person of ordinary skill in the art could either adjust the size of the output conductors or the depth of the cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the ordinarily skilled artisan would have understood how to account for the technical challenges Patent Owner identified properly responds to arguments raised by Patent Owner in its Patent Owner Response. Accordingly, we deny Patent Owner’s Motion to Exclude Mr. Gardner’s testimony regarding Kobayashi’s modified electrode assembly.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review of Petitioner’s arguments and supporting evidence, we find that Petitioner adequately shows that a person of ordinary skill in the art would have modified Kobayashi to include metal foils in place of its terminal electrode plates. Petitioner explains that one of ordinary skill in the art would have known that metal foil may be used in batteries because the use of metal foil as a conductor is common in the art. Pet. 31, 39 (citing Ex. 1003 ¶¶ 256, 323). Petitioner directs our attention to Kobayashi which details use of metal foil for conducting elements. Id. at 39; see also Ex. 1006 ¶¶ 7, 21, 26, 27 (describing metal foil electrodes). Furthermore, Mr. Gardner testifies that “reducing the thickness of the output conductors has the effect of reducing the ratio of inactive to active components within the cell, which improves energy density . . . . [and is] a well-known goal in the art.” Ex. 1003 ¶ 323. Mr. Gardner further opines that a person of ordinary skill in the art “would be motivated to reduce the thickness of the output conductors of Kobayashi in order to increase energy density within the cell” and “to use metal foils as the output conductors, as this furthers the well-known goal in the art of reducing the size of internal battery components.” Id. We acknowledge Patent Owner’s argument that Mr. Gardner relies on teachings related to conventional battery design—not button cell batteries—and that he discusses considerations “relating to thickness of the electrodes, not of output conductors.” PO Resp. 19–20. But, Mr. Gardner’s testimony similarly relies on passages directed to “basic concepts” of battery operations and, as a whole, focuses on the concept that reducing the thickness of the terminal electrode plates would “maximize the space available inside the cell for active components,” thereby increasing electrode density and improving battery performance. Ex. 1003 ¶ 323 (citing Ex. 1009, 35). According to Mr. Gardner, “these adjustments would be well within the skill of a [person of ordinary skill in the art].” Ex. 1041 ¶¶ 104. We credit Mr. Gardner’s testimony. “Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” KSR, 550 U.S. at 401.” slip op. at 21
Patent outcomesUS 9,496,581 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,496,581 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC D/B/A Jlab Audio et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01207 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“one of ordinary skill in the art would have sought to modify the battery of Comparative Example 1 to arrive at the subject matter of claim 1. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)).” slip op. at 15
§ 103 obviousnessPatents in suitUS 10,804,506 - Guangdong Mic-Power New Energy Co. Ltd. / Peag LLC et al. v. Varta Microbattery GmbHInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01206 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the parties’ arguments and evidence, and for the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any challenged claim of the ’776 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“agree with Patent Owner that Petitioner fails to adequately explain why one of ordinary skill in the art would have sought to use the welding technique of Martin when assembling the battery of Comparative Example 1. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting that the Board must “be careful not to allow hindsight reconstruction of the references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.”) (quoting Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012)). Nor has Petitioner demonstrated sufficiently that one of ordinary skill in the art would have had a reasonable expectation of success in combining Kannou and Martin to arrive at the subject matter of claim 1. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016) (explaining that a petitioner must demonstrate that one of ordinary skill in the art would have had a reasonable expectation of success in combining the identified references to meet the limitations of the claimed invention).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party asserts that any terms of the ’776 require construction for purposes of this Decision. Pet. 24; Prelim. Resp. 12. And, upon review of the parties’ arguments and supporting evidence, we agree that no terms of the ’776 patent require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
Claim construction§ 103 obviousnessPatents in suitUS 10,971,776
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.