`
`
`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 IPR 2020-01212
`Patent 9,153,835
`____________
`
`
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`THE CHALLENGED CLAIMS ARE PATENTABLE ................................. 6
`
`A.
`
`Patentability over Kaun in view of Kobayashi (Ground 1) .................. 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`No Motivation to Modify Kaun with Kobayashi ........................ 6
`
`Kaun Teaches Away from Kobayashi ........................................ 8
`
`No Reasonable Expectation of Success .................................... 11
`
`Kaun Modified by Kobayashi Would Not Meet All Claim
`Limitations ................................................................................ 14
`
`B.
`
`Patentability over Kobayashi in view of Kaun (Ground 2) ................ 15
`
`1.
`
`2.
`
`3.
`
`4.
`
`No Motivation to Modify Kobayashi with Kaun ...................... 16
`
`Kobayashi and Kaun Teach Away ............................................ 17
`
`No Reasonable Expectation of Success .................................... 18
`
`Kobayashi Modified by Kaun Would Not Meet All Claim
`Limitations ................................................................................ 18
`
`C.
`
`Patentability over Kobayashi in view of Ryou (Ground 3) ................ 18
`
`1.
`
`2.
`
`3.
`
`No Motivation to Modify Kobayashi with Ryou ...................... 18
`
`No Reasonable Expectation of Success .................................... 20
`
`Kobayashi Modified by Ryou Would Not Meet All Claim
`Limitations ................................................................................ 20
`
`III.
`
`SECONDARY CONSIDERATIONS SHOWING PATENTABILITY....... 21
`
`A. Nexus ................................................................................................... 21
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Unexpected Results ............................................................................. 23
`
`Commercial Success............................................................................ 24
`
`Industry Praise ..................................................................................... 25
`
`Long Felt Need .................................................................................... 25
`
`Copying ............................................................................................... 26
`
`IV. CONCLUSION .............................................................................................. 26
`
`
`
`
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`Cases
`
`Apple Inc. v. Andrea Electronics Corporation,
`949 F.3d 697 (Fed. Cir. 2020) ............................................................................5, 6
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ................................................................................ 1
`
`Chemours Co. FC, LLC v. Daikin Industries, Ltd.,
`2012 WL 3085514 (Fed. Cir. July 22, 2021) ............................................ 9, 22, 23
`
`Deere & Co. v. Bush Hog, LLC,
`703 F.3d 1349 (Fed. Cir. 2012) .............................................................................. 1
`
`Ford Motor Co. v. Massachusetts Institute of Technology,
`No. IPR2019-01401, 2021 WL 531704 (P.T.A.B. Feb. 12, 2021) ................. 6, 15
`
`Henny Penny Corporation v. Frymaster, LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ............................................................... 22, 23, 25
`
`Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co.,
`730 F.2d 1452 (Fed. Cir. 1984) ..................................................................... 24, 25
`
`Pacing Technologies, LLC v. Garmin International, Inc.,
`778 F.3d 1021 (Fed. Cir. 2015) .............................................................................. 2
`
`Polaris Industries, Inc. v Artic Cat, Inc.,
`882 F.3d 1056 (Fed. Cir. 2018) ............................................................................ 21
`
`Resideo Technologies., Inc. v. Ubiquitous Connectivity, Lp,
`2021 WL 262372 (P.T.A.B. Jan. 26, 2021) ......................................................... 12
`
`Rotatable Technologies LLC v. Motorola Mobility LLC,
`567 F. App’x 941 (Fed. Cir. 2014) ......................................................................... 1
`
`TQ Delta, LLC v. Cisco Systems, Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) ....................................................................... 6, 16
`
`WBIP, LLC v. Kohler Co.,
`829 F.3d 1317 (Fed. Cir. 2016) ..................................................................... 22, 25
`
`ii
`
`

`

`IPR2020-01212
`IPR2020-01212
`Patent Owner ’s Sur-Reply
`Patent Owner’s Sur-Reply
`
`
`Rules
`Rules
`
`37 C.F.R. § 42.24 ..................................................................................................... 28
`37 CPR. § 42.24 ..................................................................................................... 28
`
`37 C.F.R. § 42.6 ....................................................................................................... 29
`37 CPR. § 42.6 ....................................................................................................... 29
`
`
`
`
`
`iii
`iii
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`
`
`Exhibit
`
`EXHIBITS 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”)
`
`iv
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`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)
`
`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
`
`v
`
`

`

`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
`
`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`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
`
`2047 Excerpt of http://rolled-ribbon.com/technology.html
`
`2048 Reserved
`
`2049 Reserved
`
`2050 Supplemental Declaration of Martin C. Peckerar, Ph.D.
`
`2051 William H. Gardner Deposition Testimony – Day 3 (Jul. 28, 2021)
`
`vi
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`2052 Reserved
`
`2053 Reserved
`
`2054
`
`Updated Disclosure Pursuant to 37 C.F.R. § 42.11 for U.S. Patent No.
`9,153,835
`
`2055 Reserved
`
`2056 Reserved
`
`2057 Reserved
`
`2058
`
`Excerpt from Prosecution History of U.S. Patent Application No.
`13/146,669
`
`vii
`
`

`

`
`
`Patent Owner submits this Sur-Reply in the inter partes review (“IPR”) of
`
`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`U.S. Patent No. 9,153,835 (“the ’835 Patent”).
`
`I.
`
`CLAIM CONSTRUCTION
`
`[B]utton cell as used in the preamble of all challenged claims is a claim
`
`limitation and means a small, generally round and flat battery typically used in
`
`small electronic devices. Ex. 2043 (Peckerar) ¶¶ 82-90.
`
`Petitioner argues that the term “button cell” only recites an intended use.
`
`This is incorrect because “small generally round and flat battery” concerns the size
`
`and shape of the claimed cell—definition of the cell structure not otherwise found
`
`in, but consistent with, the body of the claims. Bicon, Inc. v. Straumann Co., 441
`
`F.3d 945, 952 (Fed. Cir. 2006) (preamble limiting where it recites structure that is
`
`important to the invention.)
`
`Petitioner cannot overcome the fact that the ’835 patent specification is
`
`replete with the term “button cell” evidencing its importance and role as a limiting
`
`claimed feature. Rotatable Techs. LLC v. Motorola Mobility LLC, 567 F. App’x
`
`941, 943 (Fed. Cir. 2014); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357-
`
`58 (Fed. Cir. 2012) (preamble a limitation when “underscored as important by the
`
`specification”). Petitioner tries to distinguish Rotatable Techs because, in that
`
`case, a particular limitation was also argued in the prosecution history. However,
`
`Rotatable Techs plainly holds that repeated use of a term in the specification
`
`1
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`provides an independent basis for finding a preamble to be limiting. That legal
`
`principle applies here.
`
`Petitioner also ignores that “[a] button cell” provides antecedent basis for
`
`“the button cell” in the body in the claim. Pacing Techs., LLC v. Garmin Int’l,
`
`Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (preamble a necessary component
`
`“when limitations in the body of the claim rely upon and derive antecedent basis
`
`from the preamble”).
`
`Petitioner’s contention that Patent Owner’s construction is vague because of
`
`the phrases “generally round” and “typically used in small electronic devices” is
`
`without merit. Button cells do not need to be perfectly round. See, e.g., Ex. 1001,
`
`6:63-66 (referring to an “essentially cylindrical geometry”) (emphasis added). The
`
`intrinsic and extrinsic evidence describe button cells as small cells in devices such
`
`as watches and pocket calculators. Ex. 2026; Ex. 1003 ¶ 108 (referring to
`
`Kobayashi as disclosing “a small battery such as a button shape or coin shape”).
`
`These terms do not render button cell vague and indefinite; they correctly describe
`
`the shape of the cell and devices in which they are installed.
`
`Petitioner’s construction is incorrect because it provides no limitation on
`
`shape or size, which is inconsistent with a POSA’s understanding of a button cell.
`
`Ex. 2043 ¶ 84; Ex. 2046 ¶ 30.
`
`2
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`[I]nsulating means allows for multiple layers as well as a single layer, i.e.,
`
`“layer(s) composed of plastic, plastic disc(s) or structural equivalents.” This
`
`construction correctly corresponds to the multiple structures disclosed in the patent
`
`specification. See, e.g., Ex. 1001, FIG. 4 (showing two insulators 411, 412);
`
`11:17-19; 11:64-67. Petitioner’s construction, which attempts to limit the structure
`
`to a single layer, is improper because it is inconsistent with the multiple layers
`
`(411, 412) described in the specification.
`
`Petitioner misrepresents the description of FIG. 4 by quoting a different part
`
`of the specification referring to “a flat layer composed of plastic, for example, a
`
`plastic film.” Reply 3. Putting aside that the cited passage does not limit the
`
`structure to a single layer, it is not a description of FIG. 4. The description of FIG.
`
`4 refers to multiple layers: “[t]he insulating means 411 and 412 are arranged
`
`between the end faces of the winding and cup part 401 and the top part 402.” Ex.
`
`1001, 11:17-19. Petitioner’s attempt to limit insulating means to only a single
`
`layer is contradicted by the specification.
`
`Petitioner wrongly contends that Patent Owner “attempts to distort its own
`
`specification by arguing disclosure of ‘a separate insulator arrangement.’” Reply,
`
`4 citing Ex. 1001, 11:64-67. While the cited passage does describe a separate
`
`insulator arrangement that further supports Patent Owner’s construction, Patent
`
`3
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`Owner does not rely on the cited passage for purposes of the claim construction
`
`dispute here at issue.
`
`[B]utton cell is closed without being beading over means “closed at
`
`overlapping sides of the housing cup and top without a bend in the cut end of the
`
`housing cup extending over a top edge area of the housing top.” Ex. 2043 ¶¶ 101-
`
`115.
`
`Petitioner incorrectly argues that overlap of the cup and top sides is a
`
`preferred embodiment. Reply 6. To the contrary, the specification discloses that
`
`overlapping the cup and top in a non-beaded over embodiment is a basic step of
`
`closing the housing. Ex. 1001, 7:10-14. The preferred embodiment in the ’835
`
`patent relates to the amount of overlap between the cup and top, e.g., “particularly
`
`preferably between 50% and 99%.” Ex. 1001, 7:18-22. Patent Owner’s
`
`construction is, therefore, consistent with the specification without being limited to
`
`a preferred embodiment.
`
`Petitioner argues that Patent Owner’s construction is inconsistent with
`
`Kobayashi, which Patent Owner contends is closed by beading over. Reply 6.
`
`Petitioner is incorrect because the bend in Kobayashi’s cut end is over a top edge
`
`of the cup, entirely consistent with Patent Owner’s construction.
`
`4
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`
`
`
`
`Ex. 1006, FIG. 1 (annotated)
`
`Petitioner belatedly presents a new argument: “the phrase ‘closed without
`
`being beaded over’ means no portion of the cell cup is beaded over.” No such
`
`statement is found anywhere in the intrinsic record, nor does Petitioner’s expert’s
`
`original or supplemental declaration support this new theory. The specification
`
`provides that the sides of the housing cup need only be of “essentially constant
`
`radius” (Ex. 1001, 7:45-47) whereas Petitioner’s construction would require a
`
`perfectly constant radius. Petitioner’s new argument lacks any support and should
`
`be disregarded.
`
`[C]onnected to one another by at least one flat separator does not require
`
`construction as the Board concluded in its institution decision. Petitioner’s
`
`reliance on Apple Inc. v. Andrea to read in a preferred embodiment is unavailing in
`
`any event. In Apple, “periodically” was construed to mean “at regular time
`
`intervals” according to its plain meaning. Apple Inc. v. Andrea Elec. Corp., 949
`
`5
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`F.3d 697, 704 (Fed. Cir. 2020). Nothing in Apple supports limiting a claim term to
`
`a preferred embodiment absent a special definition or disclaimer neither of which
`
`is present here.
`
`II. THE CHALLENGED CLAIMS ARE PATENTABLE
`
`A.
`
`Patentability over Kaun in view of Kobayashi (Ground 1)
`
`1.
`
`No Motivation to Modify Kaun with Kobayashi
`
`Petitioner presses the argument that edges of Kaun’s separator would
`
`necessarily overlap thereby leading to an inefficiency that is corrected by
`
`Kobayashi. Reply 9, 10. There is, however, no deficiency in Kaun’s separator as
`
`it provides an efficient thin separator material that need not overlap. Ex. 2043 ¶
`
`197-202; Ex. 1005, [0103], [0107]-[0108], [0128]. There is no motivation to look
`
`to Kobayashi. Ford Motor Co. v. Mass. Inst. of Tech., No. IPR2019-01401, 2021
`
`WL 531704, at *10 (P.T.A.B. Feb. 12, 2021) (no motivation to combine where
`
`primary reference provided the alleged advantage).
`
`Kaun describes, even in preferred embodiments, that the edges of the
`
`separator can abut and be joined together with, for example, KYNAR® adhesive.
`
`Ex. 1005, [0103], [0107]-[0108]. Mr. Gardner provides no evidence that Kaun is
`
`incorrect, nor has he conducted any experiments or analysis to support his view.
`
`TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019)
`
`(conclusory expert testimony inadequate to support an obviousness determination).
`
`6
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`Patent Owner’s expert, Dr. Peckerar, confirms that the disclosure of Kaun fully
`
`supports abutting separator edges. Ex. 2043 ¶¶ 199-202.
`
`Mr. Gardner’s speculation that Kaun’s separator would necessarily form
`
`gaps or overlap—assuming it were true—fails to provide any motivation to turn to
`
`Kobayashi in any event. A small gap would not affect functioning of the cell
`
`because it would simply be filled in with compressed separator, adhesive (e.g.,
`
`KYNAR) or electrolyte. Id. ¶ 202. Mr. Gardner responds with a new and belated
`
`theory that an adhesive or small gap would cause dendrite formation.1 Mr.
`
`Gardner has cited no technical papers nor has he conducted any experiment or
`
`analyses to support his opinion. Ex. 2051 (Gardner Tr.), 58:12-20. That is because
`
`Mr. Gardner’s statement is technically incorrect. A POSA would have understood
`
`that Dendrite formation is promoted by, and occurs within, a separator layer
`
`because the porous separator provides nucleating sites. Ex. 2050 (Peckerar Supp.
`
`Decl.) ¶¶ 10-13. A POSA would also have understood that Dendrite formation is
`
`less likely to occur in an electrolyte or adhesive filled gap. Id.
`
`To the extent some overlap might occur in portions of Kaun’s separator,
`
`Kobayashi does not address the issue of efficiently joining separator material and
`
`Petitioner fails to explain why a POSA would not simply have used an alternative
`
`
`1 Petitioner argues that ionic flow would be inhibited. Reply 10. But Mr. Gardner
`contradicts the argument by contending so-called “other materials” cannot prevent
`dendrite buildup while “allow[ing] ions to pass.” See Ex. 1041 ¶ 17
`
`7
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`separator arrangement disclosed in Kaun. Ex. 1005, [0107]; Ex. 2043 ¶¶ 240-41.
`
`Moreover, it is undisputed that Kobayashi’s electrode assembly provides at least
`
`30% less active material than the Kaun assembly. Ex. 2043 ¶¶ 203-207. Thus, the
`
`purported “solution” of Kobayashi would exacerbate rather than solve the non-
`
`existent problem proffered by Petitioner—a consideration Petitioner and Mr.
`
`Gardner ignore.
`
`Petitioner also repeats its unsupportable argument that Kobayashi teaches a
`
`thinner separator material than Kaun. But as Petitioner concedes, Kaun teaches a
`
`range of separator material thickness that includes the separator thickness
`
`employed by Kobayashi. Ex. 1041 ¶ 18. Kobayashi thus provides nothing beyond
`
`what can already be found in Kaun. Petitioner’s assertion that a POSA would turn
`
`to Kobayashi because it happens to describe one example of a separator having a
`
`thickness within the range taught by Kaun is nonsensical because, as discussed
`
`above, Kobayashi’s electrode assembly provides at least 30% less active material
`
`than the assembly in Kaun.
`
`2. Kaun Teaches Away from Kobayashi
`
`Kaun teaches to directly connect electrodes to the housing without the use of
`
`output conductors—a configuration that forecloses use of Kobayashi’s winding
`
`axis core containing insulating plates. Ex. 2043 ¶¶ 208-218.
`
`8
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`Petitioner seeks to dismiss the central teachings of Kaun by now belatedly
`
`contending they only apply to “high powered batteries.” Ex. 1041 ¶ 19. Kaun is
`
`indeed directed to high power batteries—a compelling reason why a POSA would
`
`never have considered Kaun relevant to the claimed invention at all. However,
`
`Kaun is the foundation of Petitioner’s obviousness case and it cannot now ignore
`
`Kaun’s express teachings. Kaun teaches a POSA to avoid the use of an output
`
`conductor and to maintain short current paths through direct contact between the
`
`electrodes and housing to minimize resistance and heat generation, and to
`
`maximize power generation. Ex. 2043 ¶¶ 208-218. Kaun thus rejects the
`
`arrangement found in Kobayashi where the electrodes connect to the housing
`
`through connecting rods and plates and with a long current path spiraling through
`
`the entire winding.
`
`Neither Kaun nor any other prior art identified by Petitioner supports its
`
`theory that a POSA would simply ignore Kaun’s directive to provide short current
`
`paths to minimize resistance and to maximize power output in favor of using the
`
`opposite—a higher impedance, lower power Kobayashi electrode configuration.
`
`See, e.g., Chemours Co. FC, LLC v. Daikin Indus., Ltd., 2012 WL 3085514, at *4
`
`(Fed. Cir. July 22, 2021) (reversing PTAB’s obviousness determination where
`
`reference taught away from modification). Petitioner relies only upon the
`
`conclusory assertion of Mr. Gardner, but his opinion is directly contradicted by his
`
`9
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`newly cited Kannou reference. Ex. 1039. Kannou warns that button cell batteries
`
`using an output conductor are unable to achieve a high discharge capacity. Id. ¶
`
`[0006]. To solve this problem, Kannou—like Kaun—provides a solution that
`
`eliminates the output conductor. A “spirally rolled” electrode assembly is placed
`
`in a crimped housing such that the positive and negative electrodes directly
`
`connect to the housing halves. Id. ¶¶ [0008], [0038]-[0042], FIG. 1.
`
`Kannou FIG. 1 (Annotated)
`
`
`
`By eliminating the output conductor, Kannou—like Kaun—purports to
`
`provide a cell with decreased internal resistance and high discharge current. Id. ¶¶
`
`[0008]-[0014], [0037]-[0042], [0066]-[0068]; Ex. 2050 (Peckerar Supp. Decl.) ¶¶
`
`5-6, 14-18. A POSA would not simply ignore Kaun’s core teachings of how to
`
`minimize resistance and maximize power output. Id.
`
`10
`
`

`

`IPR2020-01212
`Patent Owner’s Sur-Reply
`
`
`3.
`
`No Reasonable Expectation of Success
`
`A POSA would not have had a reasonable expectation of success when
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`modifying Kaun’s battery by replacing its electrode assembly with the design of
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`Kobayashi. The proposed rebuild would require incorporation of Kaun’s center
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`fastener into the Kobayashi structure, miniaturization of Kaun’s housing down to
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`the dimensions of a button cell, and modification of its venting mechanism. See
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`Ex. 2043 ¶¶ 258-279. The prospects of such drastic redesign would have kept a
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`POSA from combining these references in the first place. Beyond that, there is no
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`evidence that the required redesign would have been within the ability of a person
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`of ordinary skill in the art. Id.
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`To redesign Kaun as suggested by Petitioner, a POSA would have had to
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`modify Kobayashi’s winding axis core to accommodate the center fastener of
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`Kaun. Such a configuration, even assuming it could be done, would have required
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`widening of Kobayashi’s core thereby decreasing the amount of space for active
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`material. Id. The proposed rebuild would, thus, entirely contravene the
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`Petitioner’s reason for supposedly turning to Kobayashi in the first instance, i.e., to
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`increase the available space for active material.
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`Mr. Gardner now manufactures a sketch purporting to show his idea of a
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`hole through the core in Kobayashi. In his initial deposition, he admitted he had
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`never even considered such modification. Ex. 2030, 228:19-229:2. Mr. Gardner’s
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`new “evidence” should have been presented in the original petition and should at
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`this point be disregarded. Resideo Techs., Inc. v. Ubiquitous Connectivity, LP,
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`2021 WL 262372, at *23 (P.T.A.B. Jan. 26, 2021) (disregarding new argument
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`raised in Petitioner’s Reply brief). But this new theory is deficient in any event
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`because it does not account for the difficulty in integrating a fastener with
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`sufficient holding force in a microcell, the necessary thinning of the core material
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`caused by a center fastener and the corresponding extent to which further core
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`widening would have been required as well as the complexities added to the
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`manufacturing process. Ex. 2043 ¶¶ 266-67; Ex. 2050 ¶¶ 27-34; Ex. 2051
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`(Gardner Tr.) 63:17-65:6. Notably, Mr. Gardner’s superimposition of Kaun’s
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`housing onto Kobayashi’s electrode assembly (reproduced below) depicts a
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`housing that is also not closed (areas circled in red) confirming that his proposed
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`modifications are not trivial as he suggests.
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`Gardner Modification
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`Recognizing these deficiencies, Petitioner now erroneously contends that a
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`center fastener is not required by Kaun, referring to FIG. 7A and paragraphs
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`[0108]-[0109] and [0120]. Reply 14. The argument is contrary to the expert’s
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`prior testimony and the disclosure of Kaun. Ex. 2030, 115:15-19; Ex. 1005 ¶¶
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`[0024], [0088]. Petitioner’s reliance on FIG. 7A as illustrating an embodiment of
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`Kaun without a fastener is deceptive, to say the least. FIG. 7A does not show a
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`fastener because it is an exterior view of a Kaun cell. FIGs. 7C and 7D of Kaun
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`show the interior of the very same embodiment (see ¶ [0069]) and clearly show a
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`center fastener 60. Ex. 1034 (Peckerar Tr.), 236:11-237:8; Ex. 2050 ¶¶ 19-21.
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`Ex. 1005
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`
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`See Ex. 1005, Fig. 7C-7D, ¶ [0112]. None of the paragraphs citied by Petitioner
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`(Ex. 1005, ¶¶ [0108], [0109], [0120]) indicate that the center fastener is optional.
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`Ex. 2050 ¶ 22.
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`Mr. Gardner also fails to explain how the Kaun housing without a fastener
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`could possibly contain Kobayashi’s electrode assembly. As Dr. Peckerar
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`previously opined, that assembly requires a vertically locking housing for
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`structural integrity and to maintain contact with the terminal plates, connecting
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`rods and electrodes to prevent an open circuit. Ex. 2043 ¶¶ 248-251. Kaun,
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`without a fastener, does not meet this requirement. Ex. 2050 ¶¶ 23-26. Mr.
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`Gardner provides no answer to this dilemma.
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`4. Kaun Modified by Kobayashi Would Not Meet All Claim
`Limitations
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`Button Cell: Kaun modified by Kobayashi does not meet the “button cell”
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`claim requirement because Kaun is not a button cell. Kaun is directed to a high-
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`power cell with features such as a center fastener and venting mechanism that are
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`not amenable to miniaturization as would be required. Ex. 2043 ¶¶ 227-234. Mr.
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`Gardner’s conclusory view that the only modification would be “reducing the size
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`of the housing of Kaun” that “would be well within the skill of a POSA” is without
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`support. Ex. 1041 ¶ 33. His opinion is also contradicted by Kobayashi, which
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`provides “size reduction is extremely difficult … and the limit has currently
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`substantially been reached.” Ex. 1006 ¶ [0007]; see also Ex. 1013, 5:38-56.
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`[C]losed without being beaded over: A POSA would not have been able
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`to incorporate Kaun’s center fastener into Kobayashi’s electrode assembly. Ex.
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`2043 ¶ 244. A center fastener would require modification to expand the diameter
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`of Kobayashi’s core, which even assuming it could be done, would reduce the
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`amount of active material and, therefore would not have been considered by a
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`POSA. Id. ¶ 267. Without the center fastener, Kaun’s housing is not closed at all.
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`Id. ¶ 244. Kaun’s housing is also vented and, for that additional reason, is not
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`closed. Id. ¶ 245.
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`[I]nsulating means: A POSA modifying Kaun with Kobayashi would not
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`include Kobayashi’s insulating plates because they prevent the electrodes from
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`directly connecting to the housing, a key requirement in Kaun’s design. Ex. 2043,
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`¶¶ 235-241. In its petition, Petitioner failed to identify any motivation for
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`modifying Kaun to include the insulating plates of Kobayashi. For that reason
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`alone, the combination fails.
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`Petitioner and Mr. Gardner now belatedly state that the motivation is
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`provided by Kobayashi’s disclosure of a “safe and productive electrode assembly.”
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`Ex. 1041 ¶ 36. This new theory—even if considered—is without merit because
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`Petitioner does not explain how Kobayashi’s separator effectuates that goal and, in
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`event, Kaun’s design already provides a safe and productive electrode assembly.
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`Ex. 2043, ¶¶ 149, 175-76; Ex. 1005 ¶¶ [0078]-[0079], [0094], [0128], [00130].
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`Thus, the primary reference already disclosed the purported advantage and there is
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`no motivation to combine. Ford Motor Co., 2021 WL 531704, at *10.
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`B.
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`Patentability over Kobayashi in view of Kaun (Ground 2)
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`For the reasons set forth in response to Ground 1, as well as those below,
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`Petitioner’s attempt to start with Kobayashi and modify it with Kaun also fails to
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`establish unpatentability of the claims.
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`1.
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`No Motivation to Modify Kobayashi with Kaun
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`The Petition contends that a POSA would have been motivated to modify
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`Kobayashi’s housing to prevent damage to Kobayashi’s cell. As explained by Dr.
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`Peckerar, however, a POSA would have understood how to crimp the cell of
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`Kobayashi—containing a winding axis core, terminal rods and plates—without
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`risking damage to the cell. Ex. 2043 ¶¶ 252-57. Dr. Peckerar’s conclusions are
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`unrebutted.
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`Petitioner’s motivation is thus reduced to its contention that a POSA would
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`have recognized the need to save space and accordingly turn to the un-crimped and
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`centrally fastened housing of Kaun.2 Petitioner’s contention makes no sense for
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`the reasons discussed regarding Ground 1. Kaun’s housing is fundamentally
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`incompatible with Kobayashi’s winding axis core. Mr. Gardner does not properly
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`address the initial requirement to modify Kobayashi’s core to accommodate
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`Kaun’s center fastener—a change that, even assuming it could have been done,
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`would decrease usable space for active material, defeating the purported reason for
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`the combination. See Section II.A.3; Ex. 2043 ¶ 277.
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`2 Petitioner’s reliance on the ’835 patent and its inventors’ recognition of space
`efficiency achieved by the claimed method of sealing a housing is irrelevant for
`purposes of obviousness. TQ Delta, 942 F.3d at 1352 (expert improperly “relied
`on the [challenged] patent itself as her roadmap for putting what she referred to as
`pieces of a ‘jig-saw puzzle’ together.”)
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`A POSA would have understood that Kobayashi’s beaded over housing is
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`necessary to properly contain the internal components to ensure electrical contact
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`and to prevent open circuits. Ex. 2043 ¶¶ 249-51. A POSA would have realized
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`that without a center fastener, Kaun’s housing could not be closed and could not
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`appropriately contain Kobayashi’s internal components as needed to ensure proper
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`current flow. Ex. 2043 ¶¶ 173-74, 249-51; Ex. 2050 ¶¶ 23-26. Kaun’s housing is
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`uniquely unsuitable for use with Kobayashi. A POSA would not be motivated to
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`use Kaun’s housing with Kobayashi for any reason.
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`2. Kobayashi and