`
`
`
`
`
`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)
`Petitioners,
`
`v.
`
`VARTA Microbattery GmbH,
`Patent Owner
`____________
`
`Case No. IPR2020-01211
`U.S. Patent No. 9,496,581
`
`Case No. IPR2020-01212
`U.S. Patent No. 9,153,835
`
`Case No. IPR2020-01213
`U.S. Patent No. 9,799,858
`
`Case No. IPR2020-01214
`U.S. Patent No. 9,799,913
`____________
`
`
`DECLARATION OF MARTIN C. PECKERAR, PH.D.
`
`
`

`

`Exhibit No. 2043
`
`Table of Contents
`DECLARATION OF MARTIN C. PECKERAR, PH.D. ......................................... I 
`I. 
`INTRODUCTION ........................................................................................... 1 
`II. 
`QUALIFICATIONS ........................................................................................ 2 
`III.  MATERIALS CONSIDERED ........................................................................ 5 
`IV.  LEGAL PRINCIPLES ..................................................................................... 6 
`A. 
`Level of Ordinary Skill in the Art .............................................................. 6 
`B. 
`Claim Construction ..................................................................................... 7 
`C. 
`Anticipation ................................................................................................ 8 
`D.  Obviousness ................................................................................................ 9 
`E.  Written Description .................................................................................. 11 
`LEVEL OF SKILL IN THE ART ................................................................. 12 
`V. 
`VI.  TECHNOLOGICAL BACKGROUND OF THE CHALLENGED
`PATENTS ...................................................................................................... 12 
`VII.  THE CHALLENGED PATENTS ................................................................. 17 
`A.  U.S. Patent 9,153,835 (“the ’835 Patent”) ............................................... 18 
`B. 
`U.S. Patents 9,496,581 and 9,799,913 (“the ‘581 and ’913 Patents”) ..... 27 
`C. 
`U.S. Patent No. 9,799,858 (“the ’858 Patent”) ........................................ 27 
`VIII.  CLAIM CONSTRUCTION .......................................................................... 30 
`A. 
`“button cell” (all challenged claims) ........................................................ 30 
`B. 
`“insulating means” (’835 and ’913 patents) ............................................. 33 
`C. 
`“button cell is closed without being beaded over” (’835 patent) ............. 36 
`D. 
`“connected to one another by at least one flat separator” (’835 ,’581, and
`’913 patents) ............................................................................................. 42 
`IX.  OVERVIEW OF THE PRIOR ART ............................................................. 44 
`A. 
`JP 2007-294111 (Kobayashi) ................................................................... 44 
`B. 
`U.S. Publication No. 2005/0233212 (“Kaun”) ......................................... 59 
`C. 
`EP 1 886 364 B1 (“Ryou”) ....................................................................... 71 
`D.  KR Publication No. 10-2003-0087316 (“Kwon”).................................... 74 
`
`ii
`
`

`

`X. 
`
`A. 
`
`Exhibit No. 2043
`
`THE CHALLENGED ’835 PATENT CLAIMS ARE PATENTABLE
`OVER KOBAYASHI, KAUN, AND RYOU ............................................... 77 
`The Combination of Kaun in view of Kobayashi Fails to Render Obvious
`the Claims of the ’835 Patent ................................................................... 77 
`1.  A POSA Would Not Have a Reason to Combine Kaun with Kobayashi 77 
`2.  Kobayashi Would Decrease Energy Capacity in Kaun and Render Kaun
`Less Efficient ....................................................................................... 81 
`3.  Kaun Teaches Away from Using Additional Current Collectors that Are
`Necessary in Kobayashi ...................................................................... 84 
`4.  The Proposed Modification Would Require a Complete Rebuild of Kaun
` ............................................................................................................. 88 
`5.  Kaun and Kobayashi Fail to Disclose or Suggest “Button Cell,”
`“Insulating Means,” and “Closed Without Being Beaded Over” ....... 91 
`The Combination of Kobayashi in view of Kaun Fails to Render Obvious
`the Claims of the ’835 Patent ................................................................... 98 
`1.  There Is No Motivation to Combine Kobayashi with Kaun .................... 98 
`2.  A POSA Would Not Have a Reasonable Expectation of Success in
`Modifying Kobayashi with Kaun ......................................................108 
`3.  Kobayashi Teaches Away from the Direct and Continuous Edge Contact
`of Kaun ..............................................................................................110 
`4.  Kobayashi and Kaun Fail to Disclose or Suggest “Insulation Means” and
`“Closed Without Being “Beaded Over” ............................................112 
`The Combination of Kobayashi in view of Ryou Fails to Render Obvious
`the Claims of the ’835 Patent ................................................................. 116 
`1.  A POSA Would Not Have a Reason to Combine Kobayashi and Ryou
` ...........................................................................................................116 
`2.  The Combination of Kobayashi and Ryou Does Not Provide a Cell that is
`“Closed” without Being Beaded Over ..............................................121 
`XI.  THE CHALLENGED ’581 PATENT AND’913 PATENT CLAIMS ARE
`PATENTABLE OVER KOBAYASHI, KAUN, AND THE KNOWLEDGE
`OF A POSA ................................................................................................. 122 
`The Combination of Kobayashi in View of the Knowledge of a POSA
`Fails to Render Obvious the Challenged Claims of the ’581 and ’913
`Patents ..................................................................................................... 122 
`
`A. 
`
`B. 
`
`C. 
`
`iii
`
`

`

`Exhibit No. 2043
`
`B. 
`
`C. 
`
`1.  Kobayashi Does Not Teach “An Output Conductor Comprising a Foil”
` ...........................................................................................................122 
`2.  A POSA Would Not Be Motivated to Make the Terminal Plates of
`Kobayashi to Be Foils .......................................................................124 
`3.  A POSA Would Not Have Been Motivated to Modify Kobayashi’s with
`General Knowledge ...........................................................................128 
`4.  Kobayashi Will Not Operate With a Foil Conductor .............................133 
`5.  The Proposed Modification Would Render Kobayashi Inoperable for its
`Intended Purpose ...............................................................................135 
`6.  A POSA Would Not Have Reasonably Expected to Successfully Achieve
`the Claimed Invention .......................................................................136 
`The Combination of Kaun in View of the Knowledge of a POSA Fails to
`Render Obvious the Challenged Claims of the ’581 Patent ................... 137 
`1.  Kaun Does Not Disclose or Suggest “a Button Cell” or “an Output
`Conductor Comprising a Foil Resting Flat Between an End Face of
`the Spiral Winding” ...........................................................................137 
`2.  A POSA Would Not Have Reasonably Expected a Foil Conductor to
`Work with Kaun ................................................................................144 
`3.  Kaun Could Not Be Modified With a Foil .............................................145 
`The Combination of Kaun in View of Kobayashi and the Knowledge of a
`POSA Fails to Render Obvious the Challenged Claims of the ’581 and
`’913 Patents ............................................................................................ 147 
`1.  Kaun in View of Kobayashi and the Knowledge of a POSA Does Not
`Disclose or Suggest “Button Cell,” “an Output Conductor Comprising
`a Foil Resting Flat Between and End Face of the Spiral Winding,” or
`“at Least One Insulator” ....................................................................147 
`2.  A POSA Would Not Have a Reason to Combine Kaun with Kobayashi
` ...........................................................................................................156 
`3.  Kobayashi Would Render Kaun Less Efficient .....................................160 
`4.  Kaun Teaches Away from Using Additional Current Collectors that Are
`Necessary in Kobayashi ....................................................................162 
`5.  The Proposed Modification Would Require a Complete Rebuild of Kaun.
` ...........................................................................................................167 
`
`iv
`
`

`

`Exhibit No. 2043
`
`A. 
`
`XII.  THE CHALLENGED ’858 PATENT CLAIMS ARE PATENTABLE
`OVER KOBAYASHI, KWON, KAUN AND THE PURPORTED
`KNOWLEDGE OF A POSA ...................................................................... 170 
`The ’858 Patent Is Not Rendered Obvious Over the Asserted
`Combination of Kobayashi and Kwon ................................................... 170 
`1.  Kobayashi and Kwon do not Disclose “Metal Foil” Output Conductors
` ...........................................................................................................170 
`2.  A POSA Would Have No Reason to Modify Kobayashi with Kwon ...174 
`3.  Kobayashi Will Not Operate with a Foil Conductor ..............................179 
`4.  The Proposed Modification Would Render Kobayashi Inoperable .......182 
`5.  The Proposed Modification Would Require a Complete Rebuild of
`Kobayashi ..........................................................................................182 
`6.  Kobayashi and Kwon Do Not Disclose the Additional Features of
`Dependent Claims 6 and 8 ................................................................183 
`The ’858 Patent Is Not Rendered Obvious Over the Asserted
`Combination of Kaun with Kobayashi and Kwon ................................. 185 
`1.  Kaun in view of Kobayashi and Kwon Does Not Disclose or Suggest a
`“Button Cell,” and “Metal [Conductor] . . . is a Metal Foil,” or
`“Insulating Elements”........................................................................186 
`2.  A POSA Would Not Have Had a Reason to Combine Kaun with
`Kobayashi ..........................................................................................194 
`3.  Kobayashi Would Render Kaun Less Efficient. ....................................198 
`4.  Kaun Teaches Away From Using Additional Current Collectors that are
`Necessary in Kobayashi ....................................................................201 
`5.  The Proposed Modification Would Require a Complete Rebuild of Kaun
` ...........................................................................................................205 
`6.  Kaun also Teaches Away from Kwon ....................................................208 
`7.  The Proposed Modification Would Require a Complete Rebuild of Kaun
` ...........................................................................................................209 
`8.  Kaun in view of Kobayashi and Kwon Does Not Disclose or Suggest the
`Features of Dependent Claims 6 and 8 .............................................212 
`The ’858 Patent Claims Are Not Obvious Over the Combination of
`Kobayashi, Kwon and the Knowledge of a POSA ................................. 213 
`
`B. 
`
`C. 
`
`v
`
`

`

`Exhibit No. 2043
`
`A. 
`
`1.  Kobayashi, Kwon and the Knowledge of a POSA Fail to Disclose or
`Suggest a “Metal Foil” Conductor ....................................................213 
`2.  A POSA Would Not Have Been Motivated to Make the Terminal Plates
`of Kobayashi to Be Foils ...................................................................214 
`3.  A POSA Would Not Have Been Motivated to Modify Kobayashi with
`General Knowledge ...........................................................................217 
`4.  Kobayashi Will Not Operator with a Foil Conductor ............................222 
`5.  The Proposed Modification Would Render Kobayashi Inoperable for its
`Intended Purpose ...............................................................................224 
`6.  A POSA Would Not Have Reasonably Expected to Successfully Achieve
`the Claimed Invention .......................................................................225 
`7.  Kobayashi Does Not Disclose or Suggest the Features of Dependent
`Claims 6 and 8 ...................................................................................226 
`XIII.  SECONDARY CONSIDERATIONS CONFIRM THAT THE
`CHALLENGED PATENTS ARE NOT OBVIOUS ................................... 229 
`The VARTA CoinPower® Button Cells Practice the Inventions of the
`Challenged Patents ................................................................................. 229 
`1.  The VARTA CoinPower® Batteries Practice the ’835 Patent ..............233 
`2.  The VARTA CoinPower® Batteries Practice the ’581 Patent ..............236 
`3.  The VARTA CoinPower® Batteries Practice the ’913 Patent ..............239 
`4.  The VARTA CoinPower® Batteries Practice the ’858 Patent ..............243 
`Unexpected Results ................................................................................ 247 
`Copying by Others .................................................................................. 248 
`1.  The Eve and Mic-Power Batteries Are Covered by the ’835 Patent .....250 
`2.  The Eve and Mic-Power Batteries Are Covered by the ’581 Patent .....252 
`3.  The Eve and Mic-Power Batteries Are Covered by the ’913 Patent .....254 
`4.  The Eve and Mic-Power Batteries Are Covered by the ’858 Patent .....257 
`XIV.  THE SUBSTITUTE CLAIMS OF THE CHALLENGED PATENTS ARE
`PATENTABLE ............................................................................................ 259 
`A.  Kaun, Kobayashi, Ryou, and Kwon Fail to Disclose a Button Cell Closed
`at “Overlapping Sides” of a Housing by “a Radial Seal” or “a Force-Fit
`Connection” ............................................................................................ 259 
`
`B. 
`C. 
`
`vi
`
`

`

`Exhibit No. 2043
`
`B. 
`
`Kaun, Kobayashi, Ryou, and Kwon Fail to Disclose “a Metal Foil” with
`“a Bend Portion” and “a Flat Portion” ................................................... 264 
`XV.  CONCLUSION ............................................................................................ 271 
`
`
`vii
`
`

`

`Exhibit No. 2043
`
`
`I, Martin C. Peckerar, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Patent Owner VARTA Microbattery GmbH
`
`(“VARTA” or “Patent Owner”) as an expert in the relevant art.
`
`2.
`
`I understand that Petitioners PEAG LLC (d/b/a JLab Audio), Audio
`
`Partnership LLC and Audio Partnership PLC (d/b/a Cambridge Audio)
`
`(“Petitioners”) seek cancellation of claims 1-12 of U.S. Patent No. 9,153,835 (“the
`
`’835 patent”), claims 1-12 of U.S. Patent No. 9,496,581 (“the ’581 patent”), claims
`
`1-8 of U.S. Patent No. 9,799,913 (“the ’913 patent”), and claims 1-8 of U.S. Patent
`
`9,799,858 (“the ’858 patent) (collectively “the Challenged Claims”). In particular,
`
`I have been asked to provide my opinion on whether the Challenged Claims are
`
`unpatentable for alleged obviousness based on combinations of Kobayashi (Ex.
`
`1006), Kaun (Ex. 1005), Ryou (Ex. 1007), Kwon (Ex. 1008) and the knowledge of
`
`a person of ordinary skill in the art (“POSA”). In my opinion, the various
`
`combinations proposed by Petitioners do not render any of the Challenged Claims
`
`obvious.
`
`3.
`
`I am being compensated at my standard consulting rate of $525 per
`
`hour for my work, plus reimbursement for my expenses. My compensation has not
`
`influenced any of my opinions in this matter and does not depend on the outcome
`
`of the proceeding or any issue in it.
`
`1
`
`

`

`Exhibit No. 2043
`
`4. My opinions are based on (i) the material described in Section III of
`
`this declaration including Petitioners’ Petitions for inter partes review and the
`
`Decisions on Institution; and (ii) my own education, training, teaching and
`
`experience in the relevant art.
`
`5.
`
`The full extent of my opinions and the underlying reasoning for these
`
`opinions are set forth below.
`
`II. QUALIFICATIONS
`6. My qualifications for forming the opinions given in this expert
`
`declaration are summarized here and are addressed more fully in my curriculum
`
`vitae, which is attached as Exhibit 2044. Exhibit 2044 also includes a list of cases
`
`in which I have testified at trial or in a deposition for the past four years.
`
`7.
`
`I received a Bachelor’s of Science in Physics from Stony Brook
`
`University in 1968. I then received a Master’s of Science in Physics from the
`
`University of Maryland in 1971 and a Ph.D. in Electrical Engineering from the
`
`University of Maryland in 1975.
`
`8.
`
`In 1981, I became head of the Nanoelectronics Processing Facility at
`
`the Naval Research Laboratory (NRL) and, subsequently, head of the Surface and
`
`Interface Sciences Branch. There, I developed devices for deep-UV imaging and
`
`was a co-inventor of the laser-plasma source for x-ray lithography. This source
`
`became the primary radiation source used by the Intel-led EUV lithography
`
`2
`
`

`

`Exhibit No. 2043
`
`consortium developing advanced patterning tools enabling modern day
`
`microelectronics. I was also in charge of process development for integrated
`
`circuit test structures for radiation hardening studies. These test structures
`
`mirrored state of the art VLSI process and design.
`
`9.
`
`I was the Principal Navy Technical Officer on the DARPA Advanced
`
`Lithography Program from 1989 to 2003. I was also assigned the role of U.S.
`
`Navy consultant to the State Department on issues relating to strategic arms control
`
`for electronic weapons systems.
`
`10. From 1981 to 2002, I was a part-time professor in The Department of
`
`Electrical & Computer Engineering at the University of Maryland. In 2002, I
`
`became a tenured professor full time at the University of Maryland, where I am
`
`currently a Professor Emeritus of Microelectronic Engineering.
`
`11. My university research has centered on analog and mixed signal
`
`design. In the course of my work, I have incorporated new materials systems and
`
`processes into the system-on-a-chip toolset. I have also developed algorithms for
`
`e-beam proximity control, which are essential for e-beam mask manufacture. I
`
`have also been active in various imaging technologies. I have also developed
`
`instruments for improvement of e-beam pattern placement using local-fiducial
`
`networks. I am also an expert in the area of imaging system technologies,
`
`including the development of a maximum-entropy image reconstruction chip and
`
`3
`
`

`

`Exhibit No. 2043
`
`development of fast-Fourier chips based on neural net principles and a
`
`tomographic imager chip (also based on maximum entropy principles).
`
`12. For the last decade or so my research has been primarily in the area of
`
`low power electronics, particularly in the development of power sources (batteries
`
`and super-capacitors) for low power systems. I have developed “super-capacitor”
`
`power sources for distributed ad hoc sensor arrays. In addition, I have developed
`
`flexible batteries whose form, fit and function are tailored to the specific
`
`requirements of the empowered system. These systems include drones, ad hoc
`
`sensor networks and a host of internet-of-things (IOT) devices. In 2008, I received
`
`the University of Maryland’s outstanding inventor of the year award for a flexible
`
`thin-film battery cell.
`
`13. My work in battery development has led to the formation of two
`
`companies: FlexEl, LLC and VersaVolt, LLC. FlexEl was involved in
`
`empowering a variety of special-purpose devices such as e-cigarettes and blink-
`
`controlled ocular prosthetics using a patented flexible battery technology. My
`
`work in connection with FlexE1 led to the 2013 University of Maryland System
`
`Entrepreneur of the Year Award. VersaVolt was a consulting company, primarily
`
`in the area of underwater batteries for flight data recorder applications as well as a
`
`host of IOT projects.
`
`4
`
`

`

`Exhibit No. 2043
`
`14. Over the course of my career, I designed and made button cell
`
`batteries for testing and validating battery chemistry and for other purposes. I also
`
`designed and made cells containing “jelly-roll” or spiral wound assemblies,
`
`although these assemblies were not incorporated into the button cell type batteries
`
`of which I am aware.
`
`15.
`
`I am a co-author of several textbooks, including Electronic Materials:
`
`Science And Technology, which is a standard textbook used worldwide in
`
`semiconductor process technology. I am also an editor of several widely cited
`
`books, including Synthetic Microstructures in Biological Research, and an author
`
`of over 100 journal articles and other publications.
`
`16.
`
`I have received several awards during my career, including my
`
`election as a Fellow of the IEEE in 1993 for contributions to and leadership in x-
`
`ray and microlithography, and my receipt of the 2008 award for Outstanding
`
`Invention of the Year in physical sciences, presented by the Maryland Office of
`
`Technology Commercialization for a ruthenium based super-capacitor.
`
`17.
`
`I am a named inventor on approximately twenty-nine United States
`
`patents which have issued between 1980 and 2011.
`
`III. MATERIALS CONSIDERED
`18.
`In forming the opinions set forth in this declaration, I have reviewed
`
`and/or considered the materials listed in the Appendix to this Declaration (as well
`
`5
`
`

`

`Exhibit No. 2043
`
`as any other material or information referenced herein) in addition to my years of
`
`experience and education.
`
`IV. LEGAL PRINCIPLES
`19.
`In forming my opinions and considering the patentability of the
`
`Challenged Claims, I am relying upon certain legal principles that counsel has
`
`explained to me.
`
`20.
`
`I understand that for an invention claimed in a patent to be patentable,
`
`it must be, among other things, new and not obvious in light of what came before
`
`it. Patents and publications which predated the invention are generally known as
`
`“prior art.”
`
`A. Level of Ordinary Skill in the Art
`21.
`I understand that the claims and specification of a patent are to be read
`
`and construed from the perspective of a person of ordinary skill in the art
`
`(“POSA”) at the time the invention was made. In determining the level of ordinary
`
`skill in the art at the relevant time frame, I understand that the following factors
`
`may be considered: (i) the types of problems encountered in the art; (ii) the
`
`existing and proposed solutions to those problems; (iii) the sophistication of the
`
`technology, and the rapidity with which innovations occur in the field; and (iv) the
`
`education level of active workers in the field.
`
`6
`
`

`

`Exhibit No. 2043
`
`B. Claim Construction
`22.
`I understand that, in order to assess whether the prior art satisfies a
`
`certain claim element in an invalidity analysis, the claim element must first be
`
`construed, and then the prior art must be evaluated to determine whether it satisfies
`
`the properly-construed element of the claim. I understand that claim construction
`
`is the process of interpreting the meaning of the words and/or terms in the patent
`
`claims. I understand that the terms of a claim are to be construed in accordance
`
`with their ordinary and customary meaning as understood by a POSA at the time of
`
`the invention.
`
`23.
`
`I understand that claim construction should begin with the language of
`
`the claims as the claims may provide substantial guidance to the meaning of a
`
`term. I further understand the claim terms are usually used consistently throughout
`
`a patent and throughout related patents.
`
`24.
`
`I understand the specification should also be referred to, as it is the
`
`best guide to understand the meaning of a term. However, I understand that claim
`
`terms are usually not limited to the specific examples in the specification.
`
`25.
`
`I understand that the prosecution history may also be consulted in
`
`construing the meaning of a term, although the prosecution history may lack the
`
`clarity of the specification.
`
`7
`
`

`

`Exhibit No. 2043
`
`26.
`
`I understand that the preamble of a claim may limit the scope of a
`
`claim if it recites essential structure or if it is necessary to give life, meaning,
`
`vitality to the claim.
`
`27.
`
`I understand that certain claim terms may be expressed as a means or
`
`step for performing a specified function without the recital in the body of the claim
`
`of a corresponding structure, material or act for accomplishing the function. I
`
`understand that use of the term “means for” in a claim raises a presumption that
`
`that the term should be interpreted under 35 U.S.C. § 112(b) and that such claim
`
`elements are called “means-plus-function” terms.
`
`28.
`
`I understand that the construction of a ‘means-plus-function” element
`
`is a two-step process. First, the function of the element is identified. The
`
`specification is then reviewed to determine the corresponding structure for
`
`performing the function that is claimed.
`
`C. Anticipation
`29.
`I understand that a patent claim is invalid as being anticipated if each
`
`limitation of the claim is disclosed explicitly or inherently in a single prior art
`
`reference. I further understand that a limitation is disclosed inherently if it is
`
`necessarily present in the prior art reference or is the natural result flowing from
`
`the disclosure of the prior art reference.
`
`8
`
`

`

`Exhibit No. 2043
`
`D. Obviousness
`30.
`I understand that a patent claim may be “obvious” and therefore
`
`unpatentable if the claimed subject matter as a whole would have been obvious to a
`
`POSA at the time of the invention in light of the teachings and the disclosure of the
`
`prior art.
`
`31.
`
`I understand that the determination of whether a claim is obvious is
`
`based on several factors including (i) the scope and content of the prior art; (ii) the
`
`differences between the prior art and the claimed invention; and (iii) the level of
`
`ordinary skill in the art. I further understand that objective evidence of non-
`
`obviousness, sometimes referred to as “secondary considerations,” are to be
`
`considered if present.
`
`32.
`
`I understand the Petitioner has the burden of proving the obviousness
`
`of a claim by the “preponderance of the evidence,” which means “more likely than
`
`not” and requires that a fact finder be reasonably convinced that the existence of a
`
`specific material fact is more probable than the non-existence of that fact.
`
`33.
`
`I understand that the relevant time frame for considering whether a
`
`claim would have been obvious is the time at which the invention was made, which
`
`would have been the 2009 time-frame.
`
`34.
`
`I understand that the first inquiry in a nonobviousness analysis is
`
`whether the prior art, including the knowledge of one skilled in the art at that time,
`
`9
`
`

`

`Exhibit No. 2043
`
`discloses each and every element of the recited claim. When combining two or
`
`more references, one should consider whether there was a teaching or suggestion,
`
`or whether there was a motivation to combine the references, so as to avoid
`
`impermissible hindsight.
`
`35.
`
`I have also been informed that the claimed invention must be
`
`considered as a whole in analyzing obviousness or non-obviousness. In
`
`determining the differences between the prior art and the claims, the question
`
`under the obviousness inquiry is not whether the differences themselves would
`
`have been obvious, but whether the claimed invention as a whole would have been
`
`obvious.
`
`36.
`
`I understand that an indicator of the non-obviousness of a claim is
`
`when the prior art is found to “teach away” from making the proposed combination
`
`of references. For example, a prior art reference teaches away from the particular
`
`combination if it leads in a different direction or discourages that combination,
`
`recommends steps or structures that would not lead to the patent claims, or
`
`otherwise indicated that an inoperative device would be produced. Further, the
`
`proposed modification cannot render the prior art unsatisfactory for its intended
`
`purpose or change the principles of operation of a reference.
`
`37.
`
`I have been informed that the objective indicia of non-obviousness,
`
`the so called secondary factors, include whether there exists: (i) a long-felt need in
`
`10
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`Exhibit No. 2043
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`the industry; (ii) any unexpected results; (iii) skepticism of the invention; (iv)
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`commercial success; (vi) praise by others for the invention; (vii) failure of others
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`and (viii) copying by others.
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`38.
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`I understand that when assessing the obviousness or non-obviousness
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`of a claim, it is impermissible to rely on hindsight derived from the patent being
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`considered. More specifically, one should take care not to use the claimed
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`invention as a roadmap or template to find its components in the prior art, and pick
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`and choose some disclosures in the prior art but not others to fit the parameters of
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`the invention.
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`E. Written Description
`39.
`I understand that a patent claim has adequate written description when
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`the original disclosure reasonably conveys to a POSA that the inventor had
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`possession of the claimed subject matter as of the filing date of the application for
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`patent. Stated another way, a patent specification satisfies the written description
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`requirement if a POSA would recognize that the specification describes what is
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`claimed. In order to satisfy the written description requirement, the patent
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`specification must describe every claim limitation, although the exact words used
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`in the claim need not be used in the specification.
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`Exhibit No. 2043
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`V. LEVEL OF SKILL IN THE ART
`40.
`It is my opinion that a POSA relevant to the challenged patents would
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`have had a good working understanding of the design and manufacture of batteries
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`and cells, and would possess a Bachelor’s degree in electrical, mechanical or
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`chemical engineering or an equivalent degree. A POSA would also have two to
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`three years of experience working in a related technology. Alternatively, a POSA
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`could have a Ph.D. or a Master’s degree or its equivalent and less experience, but
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`would have at least some experience in battery design and manufacture.
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`41.
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`I understand that Petitioners’ expert, Mr. Gardner provides a different
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`definition of the skill level of a POSA. My opinions set forth herein would be the
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`same under the standard provided by Mr. Gardner.
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`VI. TECHNOLOGICAL BACKGROUND OF THE CHALLENGED
`PATENTS
`42. The patents here at issue are directed generally to small button cell
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`batteries. In general, different battery technologies are used in a wide range of
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`applications. A cell is the basic unit in which an electrochemical reaction occurs.
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`One or more cells electrically together make up a battery. Ex. 1009 p. 20.
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`Batteries and cells are classified as either primary (non-rechargeable), which can
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`be discharged once and is discarded thereafter, or secondary (rechargeable) which
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`can be discharged and recharged over many cycles. Id. p. 21.
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`Exhibit No. 2043
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`43. The basic components of a cell include positive and negative
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`electrodes, a separator that prevents contact between the electrodes, electrolyte
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`which may be combined with the separator, terminals that can be connected to an
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`external circuit, and a container or housing. Id. p. 20. The components of the cell
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`are arranged to carry out an electrochemical reaction that converts chemical energy
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`into electrical power. The basic construction and operation of a secondary cell
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`during discharging and charging are shown schematically below.
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`Discharging
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`Charging
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`
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`
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`44. The electrodes are the components which cause the electrochemical
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`reaction to take place. Id. p. 1378. A negative electrode, or anode, typically
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`generates current including electrons that may be delivered to an external circuit.
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`Current flows from the anode to a positive electrode, or cathode, to complete the
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`circuit. Id. pp. 1374, 1375. The electrodes may be fabricated of metal on to which
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`Exhibit No. 2043
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`an active materi