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