`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PEAG LLC (d/b/a JLab Audio), AUDIO PARTNERSHIP LLC and
`AUDIO PARTNERSHIP PLC (d/b/a Cambridge Audio),
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`____________
`
`Case No. IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`____________
`
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`
`
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`III. 
`
`INTRODUCTION ........................................................................................... 1 
`STATEMENT OF RELIEF REQUESTED .................................................... 3 
`PROCEDURAL REQUIREMENTS OF 37 C.F.R. §42.121 .......................... 4 
`A. 
`The Number of Substitute Claims is Reasonable 37 C.F.R. §
`42.121(a)(3) ........................................................................................... 5 
`The Amendments Are Responsive 37 C.F.R. § 42.121(a)(2)(i) ........... 5 
`B. 
`The Amendments Are Non-Broadening 37 C.F.R. §42.121(a)(2)(ii) ... 7 
`C. 
`The Amendments Are Supported 37 C.F.R. §42.121(a)(2)(ii) ............. 9 
`D. 
`IV.  PATENTABILITY OF THE SUBSTITUTE CLAIMS ................................ 12 
`A. 
`Person of Ordinary Skill in the Art (POSA) ....................................... 13 
`B. 
`Claim Construction ............................................................................. 13 
`C. 
`Substitute Independent Claim 14 ........................................................ 14 
`1. 
`The New Features from Element 14[e] ..................................... 15 
`(a)  Combinations of Kaun and Kobayashi ..................................... 15 
`(b) 
`The combination of Kobayashi and Ryou ................................ 16 
`2. 
`The New Features from Element 14[f’] .................................... 18 
`(a)  Combinations of Kaun and Kobayashi ..................................... 18 
`(b) 
`The Combination of Kobayashi and Ryou ............................... 22 
`Substitute Independent Claims 23 ....................................................... 22 
`D. 
`Substitute Dependent Claims 15–22, 24, and 25 ................................ 23 
`E. 
`Objective Evidence of Nonobviousness .............................................. 23 
`F. 
`V.  DUTY OF CANDOR .................................................................................... 24 
`VI.  CONCLUSION .............................................................................................. 25 
`APPENDIX A ....................................................................................................... A-1 
`
`
`
`
`
`i
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`TABLE OF AUTHORITIES
`
`Cases 
`
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................ 12
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .............................................................................. 7
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) ............................................................................ 23
`In re Freeman,
`30 F.3d 1459 (Fed. Cir. 1994) ................................................................................ 7
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, -01130, Paper 15 (PTAB Feb. 25, 2019) . 4, 5, 6, 7, 9, 12, 13, 24
`Tillotson Ltd. v. Walbro Corp.,
`831 F.2d 1033 (Fed. Cir. 1987) .............................................................................. 7
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ............................................................................ 10
`WBIP, LLC v. Kohler,
`829 F.3d 1317 (Fed. Cir. 2016) ............................................................................ 24
`Statutes 
`35 U.S.C. § 103 ................................................................................................... 5, 23
`35 U.S.C. § 112 ................................................................................................... 6, 10
`35 U.S.C. § 316 ............................................................................................... 4, 5, 25
`35 U.S.C. § 371 .......................................................................................................... 9
` Regulations 
`37 C.F.R. § 42.121 ........................................................................ 4, 5, 6, 7, 9, 24, 25
`MTA Pilot Program Notice,
`84 Fed. Reg. 9497 (Mar. 15, 2019) ........................................................................ 3
`
`ii
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`
`
`Exhibit
`
`EXHIBIT LIST
`
`Description
`
`2001 Email Chain dated April 27, 2020
`2002 First Amended Consolidation Order, 2:20-cv-00051-JRG, Dkt. 021
`(E.D. Tex., May 7, 2020)
`2003 Discovery Order, 2:20-cv-00051-JRG, Dkt 051 (E.D. Tex., June 10,
`2020)
`2004 Docket Control Order, 2:20-cv-00051-JRG, Dkt. 054 (E.D. Tex., June
`11, 2020)
`2005 Defendants’ Opposed Motion to Stay, 2:20-cv-00051-JRG, Dkt. 064
`(E.D. Tex., Aug. 20, 2020)
`2006 Plaintiff’s Opposition to Defendants’ Motion to Stay, 2:20-cv-00051-
`JRG, Dkt. 65 (E.D. Tex., Sept. 3, 2020)
`2007 Order Denying Stay, 2:20-cv-00051-JRG, Dkt. 68 (E.D. Tex., Oct. 7,
`2020)
`2008 Complaint for Patent Infringement, 2:20-cv-00138-JRG Dkt. 001 (E.D.
`Tex., May 4, 2020)
`2009 Complaint for Patent Infringement, 2:20-cv-00071-JRG, Dkt. 001 (E.D.
`Tex., March 4, 2020)
`2010 Answer to Complaint for Patent Infringement, 2:20-cv-00051-JRG, Dkt.
`26 (E.D. Tex., May 13, 2020)
`
`2011
`
`Joint Motion for Entry of Docket Control Order, 2:20-cv-00051-JRG,
`Dkt. 045, (E.D. Tex., June 8, 2020)
`2012 Defendants’ P.R. 3-3 Invalidity Contentions, 2:20-cv-00051-JRG, (E.D.
`Tex., July 10, 2020)
`
`2013 U.S. Publication No. 2003/0013007 to Kaun (“Kaun ’007”)
`
`iii
`
`

`

`Exhibit
`
`Description
`
`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`2014 Reserved
`
`2015 Reserved
`
`2016 Reserved
`
`2017 Reserved
`
`2018 Reserved
`
`2019 Reserved
`
`2020 Reserved
`
`2021 Reserved
`
`2022 Reserved
`
`2023 Reserved
`
`2024 Reserved
`
`2025
`IEC-62133-2 Standard
`2026 Button Cell, WIKIPEDIA (Dec. 3, 2020, 11:24 AM),
`https://en.wikipedia.org/wiki/Button_cell
`
`2027 Button Cell Battery Safety Act, S. 1165, 112th Cong. (2011)
`
`2028 FIG. 11 of U.S. Publication No. 2005/0233212 to Kaun
`
`2029
`
`Rolled-Ribbon Cell Design, Rolled-Ribbon Battery Company,
`http://www.rolled-ribbon.com/downloads/D-
`RRBC_Cell%20Design_20190827_11x17.pdf (last visited Mar. 28,
`2021)
`
`2030 William H. Gardner Deposition Testimony – Days 1-2 (Mar. 3-4, 2021)
`
`iv
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`Exhibit
`
`Description
`
`2031
`
`Iain Martin, The Tiny Batter Powering AirPods Built a $1.9 Billion
`Fortune, FORBES (Apr. 9, 2020),
`https://www.forbes.com/sites/iainmartin/2020/04/09/how-a-tiny-battery-
`thanks-apple-built-a-new-19-billion-fortune/?sh=6aabf9063d72
`2032 Originally Filed Disclosure of U.S. Patent Application No. 13/146,669
`(U.S. Patent No. 9,153,835) Extracted from the Prosecution File History
`
`2033 Reserved
`
`2034 Reserved
`
`2035 Reserved
`
`2036 Reserved
`
`2037 Reserved
`
`2038
`
`Response to Office Action and Verified English Translation of Portion
`of PCT/EP2010/000787 Extracted from the Prosecution File History of
`U.S. Patent Application No. 14/827,387 (U.S. Patent No. 9,496,581)
`
`2039 Disclosure Pursuant to 37 C.F.R. § 42.11 for U.S. Patent No. 9,153,835
`
`2040 Reserved
`
`2041 Reserved
`
`2042 Reserved
`
`2043 Declaration of Martin C. Peckerar, Ph.D.
`
`2044 Curriculum Vitae of Martin C. Peckerar, Ph.D.
`
`2045 Declaration of Philipp Miehlich
`
`2046 Declaration of Dr. Hans Jürgen Lindner
`
`
`
`
`v
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`I.
`
`INTRODUCTION
`The ’835 Patent describes button cell batteries that were revolutionary in a
`
`number of aspects. The ’835 Patent relates to a button cell battery having an
`
`electrode-separator assembly located between a housing cup and a housing top.
`
`The electrode separator assembly is formed as a spiral winding in the housing so
`
`that the electrodes are perpendicular to the flat bottom and top areas of the housing
`
`cup and housing top. The housing cup and top are closed without being beaded
`
`over. Indeed, the patented ’835 button cells facilitated much of the success of the
`
`“TWS” (True Wireless Stereo) technology presently found in wireless ear buds
`
`that have now become ubiquitous.
`
`Patent Owner sells an eye-popping number of the patented batteries under
`
`the name CoinPower®. These cells have enjoyed tremendous commercial success
`
`as a result of the patented features, have been recognized for their superior quality
`
`throughout the industry, and have been the target of copying by others including
`
`interested party Mic-Power whose button cells are used in wireless earbuds sold by
`
`Petitioners.
`
`This Contingent Motion to Amend proposes contingent substitute claims
`
`that even further patentably distinguish the references advanced by Petitioners,
`
`highlighting the following features: (1) the electrode-separator-assembly is a
`
`“rechargeable lithium-ion” type; (2) the button cell is closed “at overlapping sides
`
`1
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`of the housing cup and top by a radial seal” without being beaded over; and (3) “a
`
`metal foil output conductor” comprises “a bend portion, a weld portion, and a flat
`
`portion extending in a radial direction from the bend portion to the weld portion,
`
`the metal foil output conductor” electrically connecting at least one of the
`
`electrodes to the housing. The button cell recited in the contingent substitute
`
`claims provides highly efficient use of battery real estate with a highly reliable
`
`interconnection of the internal components and housing, which can withstand the
`
`radial forces of expansion and contraction incurred during charging and
`
`discharging cycles. These features provide a durable button cell battery with
`
`excellent energy density and robust charge-discharge cycling stability.
`
`The ’835 claims, and specifically the features defined by these substitute
`
`claims, are not taught or suggested by the prior art asserted by Petitioners in this
`
`proceeding and other proceedings pursued by Petitioners. The substitute claims
`
`are therefore patentable, not only for the reasons articulated in Patent Owner’s
`
`Response, but for the additional reasons discussed below.
`
`The number of substitute claims is reasonable, and the proposed
`
`amendments are not broadening. This Contingent Motion details support for the
`
`new claim features. Although Patent Owner does not bear the burden of proof,
`
`these comments on patentability are provided to aid the Board in evaluating these
`
`2
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`contingent substitute claims. Should an original claim of the ’835 Patent be found
`
`unpatentable, this Contingent Motion should be considered and granted.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED
`Pursuant to the Scheduling Order of January 6, 2021, (Paper 9 at p. 5),
`
`Patent Owner elects to participate in the pilot program for motions to amend. See
`
`84 Fed. Reg. 9497 (Mar. 15, 2019) (“MTA Pilot Program Notice”). Accordingly,
`
`Patent Owner also respectfully requests preliminary guidance from the Board
`
`concerning this Contingent Motion in accordance with the New Pilot Program
`
`Concerning Motion to Amend Practice set forth in the MTA Pilot Program Notice.
`
`To the extent the Board finds any of original claims 1–12 unpatentable in
`
`this proceeding, Patent Owner respectfully requests that the Board consider this
`
`Contingent Motion and grant entry of corresponding substitute claims 14–25. See
`
`Appendix A and Table (below). Substitute claims 14–25 are proposed on a
`
`contingent basis, and should therefore only be entered as to any corresponding
`
`original claim found unpatentable.
`
`Original ’835 Patent
`Claim
`1
`2
`3
`4
`5
`
`Contingent Substitute
`Claim
`14
`15
`16
`17
`18
`
`3
`
`

`

`Original ’835 Patent
`Claim
`6
`7
`8
`9
`10
`11
`12
`
`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Contingent Substitute
`Claim
`19
`20
`21
`22
`23
`24
`25
`
`
`III. PROCEDURAL REQUIREMENTS OF 37 C.F.R. §42.121
`“Before considering the patentability of any substitute claims, … the Board
`
`first must determine whether the motion to amend meets the statutory and
`
`regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.”
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, -01130, Paper 15 at 4 (PTAB
`
`Feb. 25, 2019). In particular, the substitute claims must be: (1) presented in a
`
`claim listing; (2) reasonable in number; (3) responsive to a ground of
`
`unpatentability involved in the trial; (4) non-broadening; and (5) supported by the
`
`written description. Id. at 4–8.
`
`Patent Owner’s claim listing is attached hereto as Appendix A. See 37
`
`C.F.R. § 42.121(b). The claim listing includes all issued claims and the proposed
`
`contingent substitute claims 14–25, as well as an annotated version of the
`
`substitute claims applying Petitioners’ element labelling with additional elements
`
`as appropriate for the amendments made in the substitute claims. For the reasons
`
`4
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`stated below, the statutory and regulatory requirements for a motion to amend are
`
`met.
`
`A. The Number of Substitute Claims is Reasonable
`37 C.F.R. § 42.121(a)(3)
`“There is a rebuttable presumption that a reasonable number of substitute
`
`claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at
`
`4. Patent Owner proposes twelve contingent substitute claims (claims 14–25),
`
`each of which corresponds to a challenged claim (original claims 1–12,
`
`respectively). Because there is a one-to-one relationship between the challenged
`
`original claims and the contingent substitute claims, this is presumptively a
`
`reasonable number. Id. at 4–5; 37 C.F.R. § 42.121(a)(3); see also 35 U.S.C. §
`
`316(d)(1)(B).
`
`B.
`
`The Amendments Are Responsive
`37 C.F.R. § 42.121(a)(2)(i)
`The amendments made in the contingent substitute claims are responsive to
`
`the grounds of unpatentability under Section 103 involved in this proceeding. In
`
`particular, the substitute claims recite a button cell and method that is not disclosed
`
`in or suggested by Kaun, Kobayashi, or Ryou (either alone or in combination),
`
`including the use of a metal foil output conductor as is now recited in substitute
`
`claim 14 (and which features are present in all of the other substitute claims). See
`
`also Section IV (below) for additional details concerning how the substitute claims
`
`5
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`are patentably distinguishable over the references Petitioners rely upon in this
`
`proceeding.
`
`Because substitute claims 14–25 each add novel and nonobvious feature
`
`combinations that further distinguish the references Kaun, Kobayashi, and Ryou,
`
`which formed the basis for instituting this proceeding, (Paper No. 8 at 9, 49), they
`
`are therefore responsive. See Appendix A; Section IV (below); see also
`
`Lectrosonics, Paper 15 at 6–7 (holding that “a proposed substitute claim adding a
`
`novel and nonobvious feature or combination to avoid the prior art in an instituted
`
`ground of unpatentability” will meet the requirements of § 42.121(a)(2)(i) and (ii)).
`
`In addition to including additional feature combinations, substitute claims
`
`such as substitute claims 14, 18, 19, 20, 23, and 25 include amendments that re-
`
`define the invention to even more clearly point out and distinctly claim the subject
`
`matter regarded as the invention under Section 112 issues. Id. at 5–6. This is
`
`permissible because the rule does not require that every word added or removed
`
`from a claim in a motion to amend be solely for the purpose of overcoming an
`
`instituted ground. Lectrosonics, Paper 15 at 5. Rather, “once a proposed claim
`
`includes amendments to address a prior art ground in the trial, a patent owner also
`
`may include additional limitations to address [other] potential … issues,” including
`
`potential Section 112. Id.
`
`6
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`C. The Amendments Are Non-Broadening
`37 C.F.R. §42.121(a)(2)(ii)
`The substitute claims do not seek to enlarge the scope of the original claims
`
`in any respect. Instead, they are narrower, as reflected in Appendix A attached
`
`hereto, which reflects the amendments to the claims (underlined text reflects added
`
`limitations, while brackets and strikethrough text indicate portions being removed).
`
`In particular, each substitute independent claim is non-broadening because novel
`
`and nonobvious feature combinations have been added thereto that distinguish the
`
`cited prior art. See Lectrosonics, Paper 15 at 7. In particular, the substitute claims
`
`satisfy the broadening bar in 37 C.F.R. § 42.121(a)(2)(ii) because the proposed
`
`substitute claims do not encompass any button cell or method for producing a
`
`button cell that would not have been covered by the original claims. In re Cuozzo
`
`Speed Techs., LLC, 793 F.3d 1268, 1283 (Fed. Cir. 2015) (citing Tillotson Ltd. v.
`
`Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); In re Freeman, 30 F.3d
`
`1459, 1464 (Fed. Cir. 1994)).
`
`Because the independent claims are narrower than the original independent
`
`claims, the dependent claims are necessarily narrower than the corresponding
`
`original dependent claims. The minor typographical modifications and changes in
`
`dependency implemented in these claims do not broaden the scope of the claims of
`
`the challenged patent. Moreover, several of the dependent claims have been
`
`further narrowed.
`
`7
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Proposed Substitute Claim 14 (independent). Substitute independent claim
`
`14 is directed to a button cell and includes all of the features of original claim 1,
`
`but also adds additional features and features not expressly found therein. Namely,
`
`substitute claim 14 now specifies that the electrode-separator assembly is a
`
`“rechargeable lithium-ion” type; that “the button cell is closed at overlapping sides
`
`of the housing cup and the housing top by a radial seal without being beaded over”;
`
`and that “a metal foil output conductor” is used to connect one of the electrodes to
`
`the housing. The remaining amendments to substitute claim 14 are directed to
`
`more clearly reciting the limitations present in original claim 1 and do not act to
`
`broaden the substitute claim in any respect.
`
`Proposed Substitute Claim 23 (independent). Substitute independent claim
`
`23 is directed to a method for producing a button cell and includes all of the
`
`features of original claim 10. Original claim 10 is directed to “a method for
`
`producing a button cell according to claim 1.” In substitute claim 23, the phrase
`
`“according to claim 1” has been replaced with a recitation of all of the features of
`
`substitute claim 14, which, as explained above, includes all of the features of
`
`original claim 1 and additional, narrowing features. The deletion of certain
`
`language in the steps of claim 23 are to avoid confusion because those features
`
`have already been recited in claim 23 such that the deletion of those features are
`
`non-broadening.
`
`8
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Proposed Substitute Claims 15–22, 24, and 25 (dependent). Substitute
`
`dependent claims retain all of the limitations of the corresponding original
`
`dependent claims 2–9, 11, and 12. See Appendix A. The deletions found in
`
`substitute dependent claims 21 and 24 are made to remove features that are now
`
`present in substitute claims 14 and 23, respectively, from which they depend. The
`
`substitute dependent claims 15–22, 24, and 25 are also non-broadening because
`
`they add novel and nonobvious feature combinations (at least by virtue of being
`
`dependent from one of substitute independent claims 14 and 23) that distinguish
`
`the cited prior art. See Appendix A; Section IV (below); see also Lectrosonics,
`
`Paper 15 at 7.
`
`D. The Amendments Are Supported
`37 C.F.R. §42.121(a)(2)(ii)
`“[T]he Board requires that a motion to amend set forth written description
`
`support in the originally filed disclosure of the subject patent for each proposed
`
`substitute claim.” Lectrosonics, Paper 15 at 7 (citing 37 C.F.R. §§ 42.121(b)(1),
`
`42.121(b)(2)). The ’835 patent issued from U.S. Patent Application No.
`
`13/146,669 (“the ’669 Application”), which is a Section 371 filing of International
`
`Application No. PCT/EP2010/000787, which is in German. See Ex. 1001 at 1; Ex.
`
`1002 at 141–175. As shown in the table below, each limitation of the substitute
`
`claims is disclosed in the specification and/or figures of the ’669 Application, as
`
`filed on July 28, 2011, and for which a Section 371(c) filing date was given on
`
`9
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`September 7, 2011. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed.
`
`Cir. 1991) (“[D]rawings alone may be sufficient to provide the ‘written description
`
`of the invention’ required by § 112, first paragraph.”).
`
`Element1 Support in ’669 Application2
`
`14 [pre]
`
`S1–4, ¶¶ [0002]–[0009].
`
`14[a]
`
`14[b]
`
`14[c]
`
`14[d]
`
`14[e]
`
`14[f]
`
`S4, ¶ [0009].
`
`S2, ¶ [0004]; S3, ¶ [0007]; S4, ¶ [0009]; S5, ¶ [0016]; S6, ¶
`[0020], S11, ¶ [0046].
`
`S10–11, ¶ [0042]; S11, ¶ [0045]; S20, ¶ [0083].
`
`S4, ¶ [0009]; S20, ¶ [0020]; FIGS. 3A, 3B, 5.
`
`S3–S4, ¶¶ [0006]–[0009]; S4, ¶ [0015]; S12–S17, ¶¶ [0048]–
`[0065]; S21, ¶ [0086]; FIG. 5.
`
`S4, ¶ [0013]; S6–7, ¶ [0022]–[0023], [0026]; S20, ¶ [0082]; S21,
`¶ [0087]; FIGS. 3a, 3b, and 5
`
`14[f’]
`(new)
`
`S7, ¶ [0024]; S10, ¶¶ [0039]–[0041]; S11, ¶¶ [0043]–[0044];
`S21–22, ¶ [0088]; FIG. 5.
`
`
`1 See the annotated listing of substitute claims in Appendix A for the
`correspondence between elements and claim language of the substitute claims.
`2 Citations are to Exhibit 2032, which contains the “Clean Version” of the
`substitute specification in the preliminary amendment filed with the original
`application on July 28, 2011, and the original figures filed on July 28, 2011.
`“S[number]” refers to the page of the substitute specification in Exhibit 2032 at
`57–78.
`
`10
`
`

`

`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`Element1 Support in ’669 Application2
`
`See also Ex. 2032 at 111, lines 16–26 (German language version
`of S21–22, ¶ [0088]); Ex. 2038 at 5–6 (verified English
`translation of same).
`
`S10–11, ¶ [0042]; S11, ¶ [0045]; S20, ¶ [0083].
`
`See support for Claim 14 (Elements 14[pre]–14[g]) above.
`
`S6–7, ¶¶ [0021]–[0022]; S18–19, ¶ [0077]; S21, ¶ [0087], FIGS.
`1 and 5
`
`S6–7, ¶ [0022]; S7–8, ¶¶ [0024]–[0030]; S21, ¶ [0087]; FIG. 5.
`
`S8–9, ¶¶ [0031]–[0034]; C5.
`
`S7, ¶ [0024]; S10, ¶¶ [0039]–[0041]; S11, ¶¶ [0043]–[0044];
`S21–22, ¶ [0088]; FIG. 5.
`
`S7, ¶ [0024]; S10, ¶¶ [0039]–[0041]; S11, ¶¶ [0043]–[0044];
`S21–22, ¶ [0088]; FIG. 5.
`
`14[g]
`
`15–19
`[pre]
`
`15[a]
`
`16[a]
`
`17[a]
`
`18[a’]
`
`18[a]
`
`19[a]
`
`S10–11, ¶ [0042]; S11, ¶ [0045]; S20, ¶ [0083].
`
`20 and 21
`[pre]
`
`20[a]
`
`21[a]
`
`See support for Claim 19 (Elements 19[pre] and 19[a]) above.
`
`S10–11, ¶ [0042]; S11, ¶ [0045]; S20, ¶ [0083].
`
`S7–8, ¶¶ [0023]–[0028]; S21–22, ¶ [0088]; FIG. 5
`
`22 [pre]
`
`See support for Claim 14 (Elements 14[pre]–14[g]) above.
`
`22[a]
`
`S11, ¶ [0047].
`
`11
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`Element1 Support in ’669 Application2
`
`23 [pre]
`
`S1, ¶ [0002]; S4, ¶ [0010].
`
`See also support for Claim 14 (Elements 14[pre]–14[g]) above.
`
`S4, ¶ [0010].
`
`S1–2, ¶¶ [0002]–[0003]; S4, ¶ [0010].
`
`S12–13, ¶ [0050]; S14–15, ¶¶ [0054]–[0055]; S15, ¶ [0060].
`
`S12–13, ¶ [0050].
`
`See support for Claim 23 (Elements 23[pre]–23[d]) above.
`
`S10, ¶ [0039]; S11, ¶¶ [0043]–[0044]
`
`S10, ¶ [0039]; S11, ¶ [0043]
`
`S17, ¶¶ [0068]–[0069].
`
`S12–13, ¶ [0050].
`
`S12–16, ¶¶ [0050]-[0061].
`
`23[a]
`
`23[b]
`
`23[c]
`
`23[d]
`
`24 and 25
`[pre]
`
`24[a]
`
`24[b]
`
`25[a]
`
`25[a’]
`
`25[b]
`
`
`IV. PATENTABILITY OF THE SUBSTITUTE CLAIMS
`Patent Owner does not bear the burden of proving the patentability of
`
`substitute claims 14–25. See Lectrosonics, Paper 15 at 3–4; Aqua Prods. v. Matal,
`
`872 F.3d 1290, 1295–96, 1327 (Fed. Cir. 2017) (en banc). Instead, Petitioners
`
`must prove unpatentability by a preponderance of the evidence. See Lectrosonics,
`
`12
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`Paper 15 at 4. Nonetheless, Patent Owner offers the following comments on
`
`patentability to aid the Board in evaluating the proposed substitute claims.
`
`A.
`Person of Ordinary Skill in the Art (POSA)
`Patent Owner submits that a POSA would have had a good working
`
`understanding of the design and manufacture of batteries and cells, and would
`
`possess a Bachelor’s degree in electrical, mechanical or chemical engineering or
`
`equivalent. Ex. 2044 (Peckerar Decl.) ¶ 40. A POSA would also have two to three
`
`years of experience working in a related technology. Id. Alternatively, a POSA
`
`could have Ph.D. or a Master’s degree or its equivalent and less experience, but
`
`would have at least some experience in battery design and manufacture. Id.
`
`Petitioners proposed a slightly different definition of a POSA. Paper 1 at 18.
`
`The contingent substitute claims are patentable regardless of which definition is
`
`used.
`
`B. Claim Construction
`As outlined in its Response, Patent Owner disagrees with Petitioners’
`
`proposed claim constructions as they depart from the plain and ordinary meaning
`
`of the terms in the challenged claims as would be understood by a POSA on
`
`consideration of the intrinsic record. Patent Owner submits that the claim
`
`constructions advanced in its Response should be applied herein.
`
`13
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`As stated in the Institution Decision, “Only those terms need be construed
`
`that are in controversy, and only to the extent necessary to resolve the
`
`controversy.” Paper 8 at 25–26 (citations omitted). Patent Owner asserts that no
`
`express constructions of the added language in the substitute claims are required to
`
`find substitute claims 14–25 patentable. All such terms should therefore be given
`
`their plain and ordinary meanings consistent with the context of the entire
`
`disclosure of the ’835 Patent as understood by a POSA. Id. at 24. Patent Owner
`
`reserves the right to advance its own constructions for any claim term
`
`constructions Petitioners provide in response to this Contingent Motion.
`
`C.
`Substitute Independent Claim 14
`Substitute claim 14 recites a button cell with “a rechargeable lithium-ion
`
`electrode separator assembly” (14[b]), “in the form of a spiral winding” (14[f]), the
`
`button cell being “closed at overlapping sides of the housing cup and the housing
`
`top by a radial seal without being beaded over” (14[e]), and “a metal foil output
`
`conductor[, connecting at least a first electrode to the housing,] including: (i) a
`
`bend portion extending from the spiral winding, (ii) a weld portion connected to [a
`
`part of the housing], and (iii) a flat portion extending, in a radial direction …,
`
`between the bend portion and the weld portion” (14[f’]). The references asserted
`
`by Petitioners, in this IPR and other proceedings, do not, either alone or in
`
`combination, disclose or suggest the foregoing features. Furthermore, the evidence
`
`14
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`

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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`establishes that a POSA would not have found it obvious to modify those
`
`references to arrive at the combination of features in substitute claim 14.
`
`1.
`The New Features from Element 14[e]
`Substitute claim 14 recites that “the button cell is closed at overlapping sides
`
`of the housing cup and the housing top by a radial seal without being beaded over.”
`
`None of Kaun, Kobayashi, and Ryou, alone or in combination, discloses or teaches
`
`the new features of element 14[e].
`
`(a) Combinations of Kaun and Kobayashi
`Kaun is directed to improving performance of high amperage cells and the
`
`use of such cells in a high voltage, high-capacity, multi-cell battery for applications
`
`such as automobiles. Ex. 1005 at [0079], [0091], [0094].
`
`Kaun teaches that “[a] Li/organic-based electrolyte battery for high power
`
`applications, such as for hybrid electric vehicles … needs … non-catastrophic, cost
`
`effective means to relieve the gas pressure.” Id. at [0023]. Kaun’s cell therefore
`
`allows internal gas pressure to be relieved at its periphery via relaxation of a
`
`peripheral gasket. Id. at [0130]. Accordingly, the housing of Kaun is not closed at
`
`overlapping sides of a cup and a top by a radial seal.
`
`Kobayashi discloses a housing closed with a beaded over arrangement. The
`
`housing of Kobayashi includes metal containers 11, 13 with partly overlapping
`
`sides. The housing of Kobayashi is closed by an edge of metal part 13 being bent
`
`15
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`inward over a top edge of metal part 11, i.e. by beading over. Ex. 1006 at FIG. 1.
`
`Accordingly, like that of Kaun, the housing of Kobayashi is also not closed at
`
`overlapping sides of a cup and a top by a radial seal without being beaded over.
`
`Petitioners assert that it would have been obvious to replace Kaun’s internal
`
`components with those of Kobayashi and that it would also have been obvious to
`
`replace Kobayashi’s housing with that of Kaun. For the reasons set forth in Patent
`
`Owner’s Response, a POSA would not have replaced Kaun’s internal components
`
`with those of Kobayashi nor replaced Kobayashi’s housing with that of Kaun.
`
`Furthermore, neither modification would result in element 14[e]. Regardless of
`
`whether Kaun were modified to include the internal components of Kobayashi, or
`
`whether Kobayashi were modified to include the housing of Kaun, the resulting
`
`cell would include the housing of Kaun—which is not closed by a radial seal but
`
`instead allows internal gas pressure to be relieved at the periphery of the cell.
`
`(b) The combination of Kobayashi and Ryou
`As discussed above, the housing of Kobayashi is not closed at overlapping
`
`sides of a cup and a top by a radial seal without being beaded over. Ryou
`
`describes a battery formed by first and second electrodes 42, 44 accommodated
`
`within U-shaped cans 52, 54 that are fusion bonded with insulation resin 56. Ex.
`
`1007 at FIG. 6 and [0067]-[0072].
`
`16
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`

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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`
`
`
`As shown in FIG. 6 of Ryou (annotated), the U-shaped cans 52, 54 do not have
`
`overlapping sides. Accordingly, the housing of Ryou is also not closed at
`
`overlapping sides of a cup and a top by a radial seal without being beaded over.
`
`Petitioners assert that it would have been obvious to replace the housing of
`
`Kobayashi with that of Ryou. However, as discussed in Patent Owner’s Response,
`
`Ryou’s housing is not designed for, and would not be suitable for use with, an
`
`electrolytic button cell such as described in Kobayashi. Therefore, a POSA would
`
`not have replaced the housing of Kobayashi with that of Ryou. Nevertheless, even
`
`if Kobayashi’s housing were to be replaced with that of Ryou, the result would be
`
`a housing in which a bottom part and a top part are vertically separated by resin
`
`without any radial overlap. Accordingly, modifying Kobayashi based on Ryou as
`
`proposed by Petitioners would not result in a button cell closed at overlapping
`
`sides of the housing cup and the housing top by a radial seal without being beaded
`
`over—as is required by substitute independent claim 14.
`
`17
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`IPR2020-01212
`U.S. Patent No. 9,153,835 B2
`2.
`The New Features from Element 14[f’]
`Substitute claim 14 also explicitly recites “a metal foil output conductor[,
`
`connecting at least a first electrode to the housing,] including: (i) a bend portion
`
`extending from the spiral winding, (ii) a weld portion connected to [a part of the
`
`housing], and (iii) a flat portion extending, in a radial direction . . . , between the
`
`bend portion and the weld portion.” None of Kaun, Kobayashi, and Ryou, alone or
`
`in combination, discloses or teaches the new features of element 14[f’].
`
`(a) Combinations of Kaun and Kobayashi
`Kaun teaches the absence of any output conductor separate from the
`
`electrodes and accordingly does not disclose the new features of element 14[f’].
`
`Instead, Kaun teaches the use a “rolled-ribbon” electrode assembly in which an
`
`edge of each of the positive and the negative electrode is in direct contac