Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 57
`Entered: September 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SK INNOVATION CO., LTD.,
`Petitioner,
`
`
`
`v.
`
`CELGARD, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00680
`Patent 6,432,586 B1
`_______________
`
`
`
`Before FRANCISCO C. PRATS, DONNA M. PRAISS, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`1
`
`SAMSUNG 1050
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`Tel: 571-272-7822
`
`Paper 57
`Entered: September 25, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SK INNOVATION CO., LTD.,
`Petitioner,
`
`
`
`v.
`
`CELGARD, LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00680
`Patent 6,432,586 B1
`_______________
`
`
`
`Before FRANCISCO C. PRATS, DONNA M. PRAISS, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`1
`
`SAMSUNG 1050
`Samsung Electronics v. SmartFlash
`CBM2014-00192
`
`
`
`IPR2014-00680
`Patent 6,432,586 B1
`
`
`I. INTRODUCTION
`
`A. Statement of the Case
`
`SK Innovation Co., Ltd. (“Petitioner”) filed a Petition (Paper 2,
`
`“Pet.”) requesting inter partes review of claims 1–12, all of the claims, of
`
`U.S. Patent No. 6,432,586 B1 (Ex. 1001, “the ’586 patent”). Celgard, LLC,
`
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`We instituted trial only as to claims 7–11, for obviousness under 35
`
`§ 103(a) over Tsukamoto,1 Lundquist,2 and Tojo.3 Paper 11, 23–24
`
`(“Decision to Institute,” or “Dec.”).4
`
`After trial was instituted, Patent Owner filed a Response (Paper 32;
`
`“PO Resp.”), and Petitioner filed a Reply (Paper 39, “Reply”).
`
`Both parties filed Motions to Exclude Evidence. Paper 43 (“Pet. Mot.
`
`to Exclude”) and Paper 46 (“PO Mot. to Exclude”).
`
`Both parties filed Oppositions to the Motions to Exclude Evidence.
`
`Paper 48 (“Pet. Opp.”); Paper 49 (“PO Opp.”). Both parties filed Replies to
`
`the Oppositions to the Motions to Exclude Evidence. Paper 52 (“Pet. Reply
`
`Opp.”); Paper 54 (“PO Reply Opp.”).
`
`
`1 JP H11-283674 (published October 15, 1999) (Ex. 1031) (as translated, Ex.
`1032).
`2 U.S. Patent No. 4,650,730 (issued Mar. 17, 1987) (Ex. 1008).
`3 JP H11-80395 (published Mar. 26, 1999) (Ex. 1006) (as translated, Ex.
`1007).
`4 The application which issued as the ’586 patent was filed on April 10,
`2000. Ex. 1001, cover page. Accordingly, the version of § 103 in effect
`before the Leahy-Smith America Invents Act (“AIA”) applies to the claims
`of the ’586 patent. See AIA, Public Law 112-29, § 3, 125 Stat. 288.
`
` 2
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`IPR2014-00680
`Patent 6,432,586 B1
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`
`Petitioner supported its Petition with a Declaration by Craig B.
`
`Arnold, Ph.D. Ex. 1004 (“Arnold Decl.”).
`
`In support of its Response, Patent Owner relied on Declarations by
`
`Ralph E. White, Ph.D., P.E., (Ex. 2002 (“White Decl.”)) and William J.
`
`Paulus (Ex. 2915 (“Paulus Decl.”)).
`
`Oral Hearing was held on June 29, 2015, and the Hearing Transcript
`
`has been entered in the record. Paper 56 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`“In an inter partes review instituted under this chapter, the petitioner
`
`shall have the burden of proving a proposition of unpatentability by a
`
`preponderance of the evidence.” 35 U.S.C. § 316(e).
`
`We conclude that Petitioner has proved by a preponderance of the
`
`evidence that claims 7–11 of the ʼ586 patent are unpatentable, based on the
`
`obviousness ground on which trial was instituted.
`
`Petitioner’s Motion to Exclude Evidence is granted-in-part, denied-in-
`
`part, and dismissed-in-part as moot. Patent Owner’s Motion to Exclude
`
`Evidence is denied.
`
`A. Related Proceedings
`
`Concurrently with the Petition under consideration herein, Petitioner
`
`filed a petition advancing additional challenges to the claims of the ’586
`
`patent. Pet. 4; SK Innov. Co., Ltd. v. Celgard, LLC, Case IPR2014-00679,
`
`Paper 2 (May 9, 2014). The claims of the ’586 patent were challenged also
`
`by Mitsubishi Plastics, Inc. and LG Chem Ltd. in IPR2014-00524 and
`
`IPR2014-00692, respectively. Pet. 4. IPR2014-00524 was recently
`
`terminated after settlement between the parties.
`
` 3
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`IPR2014-00680
`Patent 6,432,586 B1
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`Previously, the ’586 patent was subject to an inter partes review,
`
`IPR2013-00637, which was terminated after petitioner Sumitomo settled the
`
`related litigation, as noted below. Id. at 3–4. Claims 1–6 and 11 of the ’586
`
`patent have also been challenged in Ube Maxell Co. v. Celgard, LLC, Case
`
`IPR2015-01511, Paper 1 (June 25, 2015).
`
`The ’586 patent has been asserted in the U.S. District Court for the
`
`Western District of North Carolina in Celgard, LLC v. SK Innovation Co.,
`
`Ltd., Case No. 3:13-cv-00254; Celgard, LLC v. LG Chem, Ltd., Case No.
`
`3:13-cv-00043; and Celgard, LLC v. Sumitomo Chemical Co., Ltd., Case
`
`No. 3:13-cv-00122. Pet. 3. The Sumitomo Chemical Co., Ltd. case has
`
`settled. Pet. 3.
`
`B. The ’586 patent
`
`The ’586 patent discloses that commercializing lithium-containing
`
`high-energy rechargeable batteries has been difficult, mainly because of
`
`“dendrite growth that occurs after repetitive charge-discharge cycling.”
`
`Ex. 1001, 1:21–22. Specifically, “[w]hen lithium dendrites grow [from the
`
`lithium-containing anode] and penetrate the separator [between the
`
`electrodes], an internal short circuit of the battery occurs (any direct contact
`
`between anode and cathode is referred to as ‘electronic’ shorting, and
`
`contact made by dendrites is a type of electronic shorting).” Id. at 1:27–31.
`
`“Some shorting . . . may result in thermal runaway of the lithium battery, a
`
`serious safety problem for [a] lithium rechargeable battery.” Id. at 1:31–35.
`
`To address those issues, the ’586 patent describes an improved
`
`electrode separator for a high-energy rechargeable lithium battery. Id. at
`
`1:40–53. The separator includes two specific layers: “[1] at least one
`
` 4
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`
`
`
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`IPR2014-00680
`Patent 6,432,586 B1
`
`
`ceramic composite layer and [2] at least one polymeric microporous layer.”
`
`Id. at 1:46–47.
`
`The ’586 patent explains that the ceramic composite layer “is, at least,
`
`adapted for preventing electronic shorting (e.g. direct or physical contact of
`
`the anode and the cathode) and blocking dendrite growth.” Id. at 2:54–57.
`
`The ’586 patent explains that the ceramic composite layer is
`
`composed of a mixture of two types of components: “[1] a matrix material
`
`having [2] inorganic particles dispersed therethrough.” Id. at 3:9–10
`
`(drawing reference numerals removed). The ’586 patent explains that the
`
`“[c]eramic composite layer is nonporous (it being understood that some
`
`pores are likely to be formed once in contact with an electrolyte, but ion
`
`conductivity of [that] layer is primarily dependent upon choice of the matrix
`
`material and particles).” Id. at 3:10–14 (drawing reference numerals
`
`removed).
`
`The ’586 patent explains that the matrix component of the ceramic
`
`composite layer can be “any gel forming polymer suggested for use in
`
`lithium polymer batteries or in solid electrolyte batteries.” Id. at 3:32–34.
`
`The ’586 patent discloses that a variety of inorganic particles may be used in
`
`the ceramic composite layer, including, “for example, silicon dioxide (SiO2),
`
`aluminum oxide (Al2O3), calcium carbonate (CaCO3), titanium dioxide
`
`(TiO2), SiS2, SiPO4, and the like, or mixtures thereof. The preferred
`
`inorganic particle is SiO2, Al2O3, and CaCO3.” Id. at 3:53–57.
`
`Turning to the polymeric microporous layer of the ’586 patent’s
`
`separator, the patent explains that that layer “is, at least, adapted for blocking
`
`(or shutting down) ionic conductivity (or flow) between the anode and the
`
`cathode during the event of thermal runaway.” Id. at 2:58–60.
`
` 5
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`IPR2014-00680
`Patent 6,432,586 B1
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`
`In contrast to the substantially non-porous ceramic composite layer
`
`discussed above, the ’586 patent explains that the polymeric microporous
`
`layer “consists of any commercially available microporous membranes (e.g.
`
`single ply or multi-ply), for example, those products produced by Celgard
`
`Inc. of Charlotte, North Carolina, Asahi Chemical of Tokyo, Japan, and
`
`Tonen of Tokyo, Japan.” Id. at 3:60–64.
`
`Claim 7, the sole independent claim for which trial was instituted,
`
`reads as follows:
`
`
`
`7. A separator for a high energy rechargeable lithium
`battery comprises:
`
`at least one ceramic composite layer or coating, said
`layer including a mixture of 20–95% by weight of
`inorganic particles selected
`from
`the group
`consisting of SiO2, Al2O3, CaCO3, TiO2, SiS2,
`SiPO4, and mixtures thereof, and 5–80% by weight
`of a matrix material selected from the group
`consisting of polyethylene oxide, polyvinylidene
`fluoride, polytetrafluoroethylene, copolymers of
`the foregoing, and mixtures thereof; and
`at least one polyolefinic microporous layer having a
`porosity in the range of 20–80%, an average pore
`size in the range of 0.02 to 2 microns, and a Gurley
`Number in the range of 15 to 150 sec.
`
`
`
`Ex. 1001, 4:66–5:13.5
`
`
`5 The phrase “and the like” was removed from claim 7 by Certificate of
`Correction, entered April 23, 2013. Ex. 1001, 6.
`
` 6
`
`
`
`
`
`
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`IPR2014-00680
`Patent 6,432,586 B1
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets claims in an unexpired
`
`patent using the “broadest reasonable construction in light of the
`
`specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b);
`
`In re Cuozzo Speed Tech., LLC, 793 F. 3d 1268, 1275 (Fed. Cir. 2015).
`
`Under that standard, the Board applies to claim terms their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech. Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`We conclude that, for the purposes of this decision, based on the
`
`parties’ contentions and the record developed during trial, no claim terms
`
`require express construction. Terms in the challenged claims will be given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure of the ’586
`
`patent. See id.
`
`B. Obviousness over Tsukamoto, Lundquist, and Tojo
`
`1. Prior Art Evidence of Obviousness
`
`We instituted trial based on Petitioner’s challenge to claims 7–11 of
`
`the ’586 patent for obviousness under 35 U.S.C. § 103(a) over Tsukamoto,
`
`Lundquist, and Tojo. Dec. 24.
`
`As the Supreme Court has stated, when evaluating claims for
`
`obviousness, “the scope and content of the prior art are to be determined;
`
`differences between the prior art and the claims at issue are to be
`
`ascertained; and the level of ordinary skill in the pertinent art resolved.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
`
` 7
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`
`
`
`
`
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`IPR2014-00680
`Patent 6,432,586 B1
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`John Deere Co., 383 U.S. 1, 17–18 (1966)). Secondary considerations, if
`
`present, also must be considered. Id.
`
`As to the level of ordinary skill in the pertinent art, the parties’ experts
`
`advance slightly different opinions. See Ex. 1004 ¶¶ 26–27 (Arnold Decl.);
`
`Ex. 2002 ¶¶ 74–75 (White Decl.). Nonetheless, neither party specifically
`
`asserts error in the opinion of the other party’s expert, and neither party
`
`asserts specifically that the conclusion of obviousness turns on adoption of a
`
`particular level of ordinary skill. In that regard, both experts generally agree
`
`that an ordinarily skilled artisan at the critical time would have had a degree
`
`in chemistry, physics, material science, or chemical engineering; at least two
`
`to three years of experience in the battery industry or research and
`
`development of lithium batteries; and knowledge of the components and
`
`problems of lithium batteries, including dendrite growth, electronic shorting,
`
`and separators. See id.
`
`When evaluating the parties’ contentions regarding the scope and
`
`content of the prior art, and the differences between the prior art and the
`
`challenged claims, we take into consideration both parties’ assertions
`
`regarding the level of ordinary skill. We note also that the level of ordinary
`
`skill in the art may be evidenced by the cited references. See Okajima v.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`As to the scope of the prior art, and its differences from the challenged
`
`claims, Petitioner relies on the combination of Tsukamoto and Lundquist as
`
`teaching a separator and battery having the basic components required by
`
`claim 7, except that
`
`[t]o the extent that [Tsukamoto] and [Lundquist] fail to disclose
`a polyolefinic microporous layer having the narrower recited
`
` 8
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`IPR2014-00680
`Patent 6,432,586 B1
`
`
`properties, i.e., “a porosity in the range of 20-80%, an average
`pore size in the range of 0.02 to 2 microns, and a Gurley
`Number in the range of 15 to 150 sec,” a polyolefinic
`microporous layer with these properties is obvious in view of
`[Tojo]. [Tojo] provides the necessary teaching and motivation
`to use its polyolefinic microporous layer in the separator of
`[Tsukamoto], in view of [Lundquist] . . . .
`
`Pet. 49.
`
`
`
`Patent Owner contends that Petitioner failed to show that an ordinary
`
`artisan would have been motivated to combine the cited references to
`
`prepare a separator having the features required by claims 7–11. PO Resp.
`
`16–23. In particular, Patent Owner contends that the supporting testimony
`
`of Petitioner’s expert witness, Dr. Arnold, is conclusory and unfounded. Id.
`
`at 18–21.
`
`Having reviewed Petitioner’s analysis and supporting evidence in
`
`light of Patent Owner’s arguments and evidence, we find that a
`
`preponderance of the evidence supports Petitioner’s position that an ordinary
`
`artisan would have been prompted to use Tojo’s polyolefinic microporous
`
`layer as the separator element in Tsukamoto’s battery, thereby producing a
`
`construct having both layers of the separator required by claim 7.
`
`As to the ceramic composite layer required by claim 7, Tsukamoto
`
`describes a battery in which each of the electrodes is coated with a “gel-like
`
`electrolyte membrane,” with a separator interposed between the coated
`
`electrodes. Ex. 1032 ¶¶ 16, 30; see also id. at Fig. 1. As Petitioner
`
`discusses, Tsukamoto discloses that the gel-like electrolyte membranes
`
`coated onto the electrodes may be composed of a PVDF polymer
`
`encompassed by claim 7, mixed with Al2O3 particles also encompassed by
`
`claim 7. Pet. 54; Ex. 1032 ¶¶ 14, 16. As Petitioner discusses also (Pet. 57),
`
` 9
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`IPR2014-00680
`Patent 6,432,586 B1
`
`
`Tsukamoto exemplifies a gel-like electrolyte membrane that has 70%
`
`inorganic particles (Ex. 1032 ¶ 20), falling within claim 7’s range of 20 to
`
`95% inorganic particles (Ex. 1001, 5:2–3), the exemplified gel-like electrode
`
`membrane being composed also of 30% PVDF-based copolymer resin (Ex.
`
`1032 ¶ 20), which falls within claim 7’s range of 5 to 80% for the matrix
`
`material (Ex. 1001, 5:5–6). Given these teachings, Petitioner persuades us
`
`that Tsukamoto teaches or suggests that its gel-like electrolyte membrane
`
`has all of the components claim 7 requires of its ceramic composite layer.
`
`As to the polyolefinic microporous layer recited in claim 7, Petitioner
`
`relies on the teachings in Tojo. As Petitioner discusses (Pet. 50–51), Tojo
`
`describes using, as one layer of a multi-layered battery separator, a
`
`microporous polyolefinic membrane layer having quick pore closure (Ex.
`
`1007 ¶ 15). The polyolefinic membrane layer has excellent shutdown
`
`function (“SD,” id. ¶ 13), which refers to the membrane’s capacity to “halt[]
`
`battery reactions by closing pores thereby increasing electrical resistance at
`
`an appropriate temperature” (id. ¶ 3).
`
`As Petitioner discusses (Pet. 54–55), Tojo describes its polyolefinic
`
`microporous membrane as having a porosity of “usually 40 to 50%”
`
`(Ex. 1007 ¶ 29), and a preferable average pore size of 0.1 to 1.0 microns (id.
`
`¶ 15). Both values fall within the ranges required by claim 7. See Ex. 1001,
`
`5:10–11 (porosity of 20–80%); id. at 5:11–12 (average pore size 0.02 to 2
`
`microns).
`
`As to the Gurley Number porosity requirement of claim 7, Petitioner
`
`contends that the ranges described in Tojo at ¶ 15 overlap the claimed
`
`ranges, once Tojo’s values are converted to the units used in the ’586 patent.
`
`Pet. 55 (citing Ex. 1004 ¶¶ 129–142 (Arnold Decl.)). Patent Owner does not
`
`
`
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`10
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`IPR2014-00680
`Patent 6,432,586 B1
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`dispute the accuracy of the calculations presented by Dr. Arnold at the cited
`
`paragraphs, and, given Dr. Arnold’s qualifications and experience (Ex. 1004
`
`¶¶ 4–8), we credit his testimony on this issue. In sum, given the cited
`
`teachings, we find that Tojo teaches or suggests that its polyolefinic
`
`microporous membrane has all of the features claim 7 requires of its
`
`microporous layer.
`
`We also find that an ordinary artisan would have been prompted to
`
`use Tojo’s polyolefinic microporous membrane as the separator element in
`
`Tsukamoto’s battery. Specifically, as Petitioner discusses, and as noted
`
`above, Tojo teaches that its microporous membrane has the desirable
`
`properties of quick pore closure and excellent shutdown function, which halt
`
`battery reactions so as to avoid excessive temperature increase. Pet. 49–50;
`
`Ex. 1007 ¶¶ 3, 13, 15. As Petitioner also discusses, Tsukamoto recognizes
`
`the concerns of battery overheating. Pet. 51–52; Ex. 1032 ¶¶ 3, 29.
`
`Given these teachings, an ordinary artisan would have been prompted
`
`to use Tojo’s microporous polyolefinic membrane as the separator element
`
`in Tsukamoto’s battery, to impart to Tsukamoto’s battery the desirable
`
`properties of Tojo’s membrane. Moreover, because using Tojo’s membrane
`
`as the separator component in Tsukamoto’s battery assembly would
`
`produce, between the battery’s electrodes, a combination of layers having all
`
`of the features required by claim 7 of the ’586 patent, the combination of
`
`Tsukamoto and Tojo suggests a separator having all of the features required
`
`by claim 7.
`
`As to claims 8–11, which all depend from claim 7, Patent Owner does
`
`not dispute Petitioner’s contentions (Pet. 55–57) that all elements of the
`
`separators and battery recited in those claims are taught by the combination
`
`
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`11
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`IPR2014-00680
`Patent 6,432,586 B1
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`of Tsukamoto, Lundquist, and Tojo. We have reviewed Petitioner’s
`
`contentions and supporting evidence (see id.), and find that the cited
`
`references teach the elements of claims 8–11 as asserted by Petitioner.
`
`Patent Owner’s arguments do not persuade us that Petitioner failed to
`
`establish that an ordinary artisan would have been prompted to use Tojo’s
`
`microporous polyolefinic membrane as the separator element in
`
`Tsukamoto’s battery.
`
`Patent Owner contends that we should disregard Dr. Arnold’s
`
`testimony that Tojo’s membrane would have provided a redundant safety
`
`feature to Tsukamoto’s battery. PO Resp. 18 (citing Ex. 2009, 266:6–272:11
`
`(Arnold Depo.)). Specifically, Patent Owner contends, Tsukamoto already
`
`solved the thermal runaway problem, and an ordinary artisan would have
`
`placed a premium on a thin separator to reduce voltage loss, and would not
`
`have added a redundant functionality to Tsukamoto’s battery. Id. (citing
`
`Ex. 2002 ¶¶ 78–94 (White Decl.)).
`
`
`
`In addition to the thermal reliability-increasing inorganic
`
`particle-containing layers between the two electrodes, however, Tsukamoto
`
`discloses that its lithium battery also includes a “polyethylene separator of
`
`25 μm in thickness.” Ex. 1032 ¶ 21. Accordingly, we are not persuaded that
`
`an ordinary artisan would have considered a separator element a redundant
`
`feature of Tsukamoto’s battery. Rather, an ordinary artisan seeking to
`
`practice Tsukamoto needed to provide a suitable separator.
`
`As Petitioner contends (Reply 3), Patent Owner’s expert, Dr. White,
`
`testified that Tojo’s microporous polyolefinic separator membrane was
`
`“well-known at the time that Tojo was filed in 1997.” Ex. 2002 ¶ 86. As
`
`Petitioner points out also (Pet. 54–55), Tojo describes its membrane as being
`
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`12
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`preferably composed of polyethylene, and preferably having a maximum
`
`thickness of 30 μm. Ex. 1007 ¶¶ 14, 15. As noted above, moreover, Tojo
`
`teaches that its membrane base material has the desirable properties of quick
`
`pore closure and excellent shutdown function, which halt battery reactions
`
`so as to avoid excessive temperature increase. Id. ¶¶ 3, 13, 15.
`
`Thus, an ordinary artisan was advised by the cited prior art that
`
`Tsukamoto’s battery required a separator, which was suitably composed of
`
`polyethylene. The artisan was further advised that Tojo’s well-known
`
`polyethylene-containing separator membrane not only had a thickness
`
`suitable for use in Tsukamoto’s battery, but also provided a thermal
`
`protection functionality, a concern expressed in Tsukamoto as well
`
`(Ex. 1032 ¶¶ 3, 29). Accordingly, although we acknowledge Dr. White’s
`
`testimony that ordinary artisans would not have added redundant
`
`functionality to a battery (Ex. 2002 ¶ 91), given that Tojo’s separator
`
`membrane was well-known and had a composition and thickness suitable for
`
`use in Tsukamoto’s battery, we find that an ordinary artisan selecting a
`
`separator for use in Tsukamoto’s battery would have been prompted to select
`
`Tojo’s well-known separator membrane.
`
`Patent Owner has not established that Dr. Arnold lacks adequate
`
`qualifications to testify regarding the teachings of Tsukamoto, Tojo, and
`
`Lundquist. See PO Resp. 18–21. Specifically, Patent Owner contends that
`
`Dr. Arnold’s lack of industry experience renders him unqualified to opine as
`
`to whether an ordinary artisan would have added the redundant safety
`
`functionality of Tojo’s separator to Tsukamoto’s battery. Id. at 19 (citing
`
`Ex. 2009, 47:20-48:10, 115:22-117:2, 138:8-11 (Arnold Depo.)). For the
`
`reasons discussed above, however, the teachings in the cited references
`
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`13
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`themselves support a finding that an ordinary artisan would have been
`
`prompted to use Tojo’s separator membrane in Tsukamoto’s battery, despite
`
`any supposed concerns about excessive safety redundancy.
`
`Patent Owner contends that Dr. Arnold does not meet his own
`
`definition of a person of ordinary skill in the art, as evidenced by the areas of
`
`focus of his academic research as a physics professor, as well as his
`
`deposition testimony. PO Resp. 19–20 (citing Ex. 2009, 12:16–21:5, 66:17–
`
`68:2, 240:6–14).
`
`As Petitioner contends, however (Reply 9–10), in addition to his
`
`Ph.D. in physics (Ex. 1005), in his deposition Dr. Arnold testified
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`extensively regarding his research with separators and lithium batteries, and
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`articles he had published on those subjects. See Ex. 2009, 29 (Dr. Arnold
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`earned postdoctoral position based on micro battery design proposal he
`
`authored); id. at 43–46 (discussing unpublished research regarding ceramic
`
`coated separators); id. at 138–141 (discussing published papers describing
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`laser engineered lithium ion batteries). Given his education and experience,
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`which we also address below in reference to Patent Owner’s Motion to
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`Exclude Evidence, we find that Dr. Arnold is qualified to opine as to how an
`
`ordinary artisan would view the teachings of the cited references. Moreover,
`
`as discussed above, the actual teachings in the cited references support Dr.
`
`Arnold’s opinion that an ordinary artisan would have been prompted to use
`
`Tojo’s separator membrane in Tsukamoto’s battery.
`
`As to the issue of whether Dr. Arnold authored his declaration, and
`
`the length of time he spent working on this matter (PO Resp. 20–21), Dr.
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`Arnold signed his declaration, and it includes the proper averment regarding
`
`the truth of the statements contained therein. Ex. 1004, 76–77. Patent
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`14
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`IPR2014-00680
`Patent 6,432,586 B1
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`Owner, moreover, does not explain why Dr. Arnold’s deposition testimony,
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`that he did not understand the meaning of invalidity (PO Resp. 20 (citing
`
`Ex. 2009, 8:13–97), demonstrates that he is unqualified to opine as to the
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`technical issues involved in this proceeding.
`
`As to the combination of references advanced by Petitioner, Patent
`
`Owner contends that Tsukamoto is directed to a different battery issue than
`
`that addressed by Tojo and Lundquist. PO Resp. 21–22. Specifically,
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`Patent Owner contends, Tsukamoto coats its electrodes with a polymer
`
`electrolyte to prevent, proactively, undesired battery temperature increases
`
`caused by interaction between the electrolyte solvent and electrode. Id. at
`
`21. In contrast, Patent Owner contends, Lundquist and Tojo do not attempt
`
`to prevent temperature elevation by preventing contact between the solvent
`
`with the electrode, but instead provide “a reactive solution to prevent
`
`thermal runaway once the cell heats up to the point of melting the
`
`separator.” Id. at 22.
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`Moreover, Patent Owner contends, Tojo is concerned with
`
`maintaining the integrity of a separator during assembly and storage,
`
`whereas Tsukamoto addresses thermal runaway during battery use. Id.
`
`Accordingly, Patent Owner contends, because of the different problems
`
`addressed, and because Tojo does not address any deficiency identified by
`
`Tsukamoto, an ordinary artisan would not have combined the references,
`
`and the combination posited by Petitioner involves improper hindsight bias.
`
`Id. at 22–23 (citing Ex. 2002 ¶¶ 78–95 (White Decl.)).
`
`We are not persuaded. As discussed above, the teachings of the cited
`
`references support Petitioner’s contention that an ordinary artisan would
`
`have been prompted to use Tojo’s separator membrane in Tsukamoto’s
`
`
`
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`15
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`IPR2014-00680
`Patent 6,432,586 B1
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`battery. Because the teachings in the prior art support Petitioner’s posited
`
`combination of references, Petitioner’s contentions of obviousness are not
`
`based on improper hindsight.
`
`Moreover, even if the cited references do not address precisely the
`
`same problems, as Petitioner contends (Reply 5–6), each of Tsukamoto,
`
`Tojo, and Lundquist are in the field of lithium battery improvement, and
`
`address the issue of avoiding the undesirable effects of increased battery
`
`temperature. See Ex. 1032 ¶¶ 2–3 (Tsukamoto discussing lithium batteries
`
`and potential battery fires due to temperature increase); Ex. 1007 ¶ 3 (Tojo
`
`discussing separator shutdown function to prevent excessive temperature
`
`increase in high energy lithium batteries); Ex. 1008, 2:47–53 (Lundquist
`
`discussing use of battery separator in lithium batteries to stop thermal
`
`runaway and explosive reaction); see also In re Klein, 647 F.3d 1343, 1348
`
`(Fed. Cir. 2011) (A reference is analogous prior art when it is “from the
`
`same field of endeavor, regardless of the problem addressed . . . .”)
`
`(emphasis added).
`
`In sum, for the reasons discussed, having considered the prior art
`
`advanced by Petitioner in light of Patent Owner’s arguments and evidence
`
`regarding the cited references’ teachings, we find, based on the teachings in
`
`those references, that an ordinary artisan would have been prompted to use
`
`Tojo’s microporous membrane as the separator element in Tsukamoto’s
`
`battery. Accordingly, an ordinary artisan would have been prompted to
`
`prepare a separator having all of the features required by claim 7, as well as
`
`its dependent claims 8–11.
`
`
`
`
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`16
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`IPR2014-00680
`Patent 6,432,586 B1
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`2. Secondary Considerations/Objective Indicia
`
`Before concluding whether the challenged claims would have been
`
`obvious, in addition to the teachings in the prior art, the objective indicia of
`
`nonobviousness must be considered “as part of all the evidence, not just
`
`when the decision maker remains in doubt after reviewing the art.”
`
`Eurand, Inc. v. Mylan Pharm. Inc. (In re Cyclobenzaprine Hydrochloride
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`Extended–Release Capsule Patent Litig.), 676 F.3d 1063, 1076–77 (Fed.
`
`Cir. 2012) (citation omitted).
`
`Although Petitioner bears the ultimate burden of persuasion under
`
`35 U.S.C. § 316(e), as Petitioner contends (Reply 10–11), Patent Owner
`
`must establish a nexus between the objective evidence of nonobviousness
`
`and the claimed subject matter. See In re GPAC Inc., 57 F.3d 1573, 1580
`
`(Fed. Cir. 1995) (“For objective evidence to be accorded substantial weight,
`
`its proponent must establish a nexus between the evidence and the merits of
`
`the claimed invention.”).
`
`In particular, the objective indicia “must be tied to the novel elements
`
`of the claim at issue” and must “‘be reasonably commensurate with the
`
`scope of the claims.’” Institut Pasteur & Universite Pierre Et Marie Curie
`
`v. Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) (quoting Rambus Inc. v.
`
`Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)).
`
`Patent Owner contends that objective evidence of nonobviousness
`
`shows that the claimed separator was copied by LG Chem, the alleged
`
`infringer in one of the copending district proceedings (PO Resp. 24–27);
`
`achieved wide industry acceptance (id. at 27–30); and experienced
`
`significant commercial success (id. at 30–34).
`
`
`
`17
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`IPR2014-00680
`Patent 6,432,586 B1
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`Petitioner replies that Patent Owner established neither copying nor an
`
`adequate nexus between the objective indicia advanced by Patent Owner and
`
`the subject matter recited in the claims. Reply 10–17. Petitioner also
`
`contends that Patent Owner has incorporated excessive argument into its
`
`Response from its supporting documents. Id. at 11.
`
`As to incorporation by reference, 37 C.F.R. § 42.6(a)(3) states that
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`“[a]rguments must not be incorporated by reference from one document into
`
`another document.”
`
`To show a nexus between the claims and the objective evidence of
`
`nonobviousness, Patent Owner relies on testimony by Dr. White from one of
`
`the copending district court proceedings noted above, to show that LG
`
`Chem’s allegedly infringing product contains all of the features of the
`
`claims. See PO Resp. 26–27, 30–31. Specifically, in addition to the
`
`declaration by Dr. White prepared for this proceeding (Ex. 2002), Patent
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`Owner cites to a declaration by Dr. White submitted in support of Patent
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`Owner’s motion for preliminary injunction in the copending district court
`
`litigation (Ex. 2903 (“White PI Declaration”)). PO Resp. 26–27, 30–31.
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`Patent Owner cites to numerous paragraphs of the White Declaration
`
`prepared for this proceeding, but does not, in its Response, discuss with any
`
`specificity the information and arguments presented in that Declaration. See
`
`PO Resp. 26 (citing Ex. 2002 ¶¶ 110–53); id. at 30 (same). The White
`
`Declaration itself, in turn, cites extensively to additional evidence, including
`
`a Declaration by Premanand Ramadass (Ex. 2907), which was also prepared
`
`to support Patent Owner’s motion for preliminary injunction in the
`
`copending infringement proceeding. Ex. 2002 ¶¶ 132, 134–39, 141, 145.
`
`
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`18
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`IPR2014-00680
`Patent 6,432,586 B1
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`Patent Owner also cites to Exhibits 13, 17, and 21 of the White PI
`
`Declaration. PO Resp. 26, 30. Exhibits 13, 17, and 21 of the White PI
`
`Declaration contain extensive claims charts and analysis. See Ex. 2903 at
`
`Exhibit 13, 1–8; id. at Exhibit 17, 1–11; id. at Exhibit 21, 1–20. As to
`
`claims 7–11 at issue here, only claim 7 is discussed, which occurs at pages
`
`3–7 of Exhibit 17 of the White PI Declaration, and at pages 6 through 13 of
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`Exhibit 21 of the White PI Declaration.
`
`In its Patent Owner Response, however, Patent Owner does not
`
`discuss with any specificity the information or arguments presented in the
`
`two declarations by Dr. White, the accompanying claim charts, or the
`
`accompanying declaration by Mr. Ramadass. Accordingly, Petitioner
`
`persuades us that Patent Owner’s Response improperly incorporates by
`
`reference the arguments and claims analysis from both of Dr. White’s
`
`declarations, as well as the declaration by Mr. Ramadass.
`
`Even disregarding the procedural infirmities in Patent Owner’s
`
`Response, however, Petitioner persuades us that the evidence of secondary
`
`considerations is not entitled to substantial weight, because Patent Owner
`
`has not established a sufficient nexus between the merits of the claimed
`
`subject matter and that evidence. Petitioner persuades us also that the
`
`evidence of secondary considerations is not reasonably commensurate in
`
`scope w
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