Paper 48
`Trials@uspto.gov
`Date: January 5, 2022
`571-272-7822
`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.
`____________
`
`IPR2020-01211
`Patent 9,496,581 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`ORDER
`Dismissing in Part and Denying in Part Patent Owner’s Motion to Exclude
`Evidence
`37 C.F.R. §42.64(c)
`
`VARTA Ex. 2001 Page 1 of 65
`EVE Energy v. VARTA
`IPR2022-01484
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`Patent 9,496,581 B2
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`
`I.
`INTRODUCTION
`PEAG LLC (d/b/a JLab Audio), Audio Partnership LLC and Audio
`Partnership PLC (d/b/a Cambridge Audio) (collectively, “Petitioner”) filed a
`Petition (Paper 1, “Pet.”) requesting the Board institute an inter partes
`review of claims 1–12 of U.S. Patent No. 9,496,581 B2 (Ex. 1001, “the ’581
`patent”). Varta Microbattery GmbH (“Patent Owner” or “VARTA”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”).1
`Upon consideration of the Petition, Preliminary Response, and the
`parties’ evidence, we determined that Petitioner had demonstrated a
`reasonable likelihood that it would prevail with respect to at least one claim
`of the ’581 patent. Paper 8 (“Decision on Institution” or “DI”). Thus,
`pursuant to the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138
`S. Ct. 1348, 1355 (2018), and USPTO Guidance,2 we instituted review of all
`challenged claims on all asserted grounds. Id.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”), Petitioner filed a Reply (Paper 24, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 29, “Sur-reply”).
`In support of their respective positions, Petitioner relies on the testimony of
`Mr. William H. Gardner (Ex. 1003, “Gardner Declaration”; Ex. 1041,
`
`
`1 Petitioner identifies PEAG LLC (d/b/a JLab Audio), Audio Partnership
`LLC, Audio Partnership PLC (d/b/a Cambridge Audio), and Guangdong
`Mic-Power New Energy Co. Ltd., as the real parties-in-interest. Pet. 1.
`Patent Owner identifies VARTA Microbattery GmbH, as the real party-in-
`interest. Paper 5, 2.
`2 In accordance with USPTO Guidance, “[i]f the PTAB institutes a trial, the
`PTAB will institute on all challenges raised in the petition.” See USPTO,
`Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018)
`(available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial) (“USPTO Guidance”).
`
`2
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`“Gardner Supplemental Declaration”; Ex. 1032, “Gardner Deposition I”;
`Ex. 1033, “Gardner Deposition II”), and Patent Owner relies on the
`testimony of Dr. Martin C. Peckerar (Ex. 2043, “Peckerar Declaration”;
`Ex. 2050, “Peckerar Supplemental Declaration”; Ex. 2060, “Peckerar
`Second Supplemental Declaration”; Ex. 1034, “Peckerar Deposition I”;
`Ex. 1035, “Peckerar Deposition II”; Ex. 1042, “Peckerar Deposition III”).
`The parties also rely on the declaration testimony of Mr. Philipp Miehlich
`(Ex. 2045) and Dr. Hans Jurgen Lindner (Ex. 2046), and their respective
`deposition testimony (Exs. 1036, 1037).
`An oral hearing was held on November 2, 2021, and a transcript of the
`hearing is included in the record (Paper 47, “Tr.”).
`After institution, Patent Owner filed a Contingent Motion to Amend
`and Petitioner filed an Opposition. Paper 15; Paper 23. We provided
`Preliminary Guidance on that motion. Paper 26. Thereafter, Patent Owner
`filed a revised contingent Motion to Amend, proposing substitute claims 14–
`25 for original claims 1–12, contingent on those original claims being found
`unpatentable. Paper 28 (“Motion to Amend” or “MTA”). Subsequently,
`Petitioner filed an Opposition to Patent Owner’s Motion (Paper 35, “MTA
`Opp.”), Patent Owner filed a Reply in Support of its Motion (Paper 37,
`“MTA Reply”), and Petitioner filed a Sur-reply (Paper 42, “MTA Sur-
`reply”).
`Patent Owner also filed a Motion to Exclude certain testimony
`contained in Mr. Gardner’s Supplemental Declaration (Ex. 1041). Paper 38
`(“MTE”). Thereafter, Petitioner filed an Opposition to Patent Owner’s
`Motion to Exclude (Paper 41, “MTE Opp.”) and Patent Owner filed a Reply
`in Support of its Motion to Exclude (Paper 43, “MTE Reply”).
`
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`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–12 of the ’581 patent are
`unpatentable. We grant Patent Owner’s Revised Contingent Motion to
`Amend as to proposed substitute claims 14–25.
`
`A. Related Proceedings
`The parties indicate that the ’581 patent is the subject of the following
`pending consolidated district court actions: VARTA Microbattery GmbH v.
`Costco Wholesale Corporation, No. 2:20-cv-0051-JRG (E.D. Tex.); VARTA
`Microbattery GmbH v. Amazon.com, Inc., No. 2:20-cv-0052-JRG (E.D.
`Tex.); VARTA Microbattery GmbH v. Best Buy Co., Inc., No. 2:20-cv-0054-
`JRG (E.D. Tex.); VARTA Microbattery GmbH v. PEAG, LLC, No. 2:20-cv-
`0071-JRG (E.D. Tex.); VARTA Microbattery GmbH v. Audio Partnership
`LLC, et al., No. 2:20-cv-00138-JRG (E.D. Tex.); and VARTA Microbattery
`GmbH v. Samsung Electronics America, Inc., No. 2:20-cv-00029-JRG (E.D.
`Tex.) (collectively, “the District Court Action”). Pet. 1; Paper 5, 2–3;
`Ex. 2002. Petitioner also filed petitions challenging claims of other patents
`asserted in the District Court Action in IPR2020-01212, IPR2020-01213,
`and IPR2020-01214. Pet. 2; Paper 5, 3.
`
`B. The ’581 Patent (Ex. 1001)
`The ’581 patent is titled “Button Cells and Method for Producing
`Same” and issued November 15, 2016, with claims 1–13. Ex. 1001, codes
`(54), (45), 12:15–13:12. The ’581 patent describes a button cell that
`includes a housing cup and a top separated by a seal that forms a housing
`with parallel flat bottom and top areas, and an electrode-separator assembly
`
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`including a flat positive and negative electrode, wherein the electrodes are
`aligned essentially at right angles to the flat bottom and top areas, and the
`assembly is a spiral winding having end faces defining side surfaces of the
`winding facing in an axial direction relative to the flat bottom and top areas.
`Id. at code (57), 9:34–39, 11:11–24. The ’581 patent further describes that
`the positive and negative electrodes are each in the form of flat electrode
`layers and connected to one another via a flat separator, and the electrodes
`are preferably laminated or adhesively bonded onto this separator. Id. at
`3:22–30.
`According to the ’581 patent, it was known in the art to have button
`cells with electrode-separator assemblies contained within the housing, but
`the prior art button cells always contained these assemblies inserted flat such
`that the electrode layers are aligned essentially parallel to the flat bottom and
`top areas of the housing. Ex. 1001, 1:44–45, 3:36–39. The ’581 patent
`states that various problems occur in button cells that contain such
`electrode-separator assemblies, including increased scrap rates due to faults
`that can occur when the assemblies make contact with one another, as well
`as the potential that the assemblies will leak. Id. at 1:58–60, 1:66–2:4.
`The ’581 patent states it was also known in the art to close button cells
`in a liquid-tight manner by beading the edge of the cell cup over the cell top
`and that button cells without beading cannot be loaded as heavily in the axial
`direction as compared to button cells with a beaded-over cup edge,
`especially with respect to axial mechanical loads caused in the interior of the
`button cell. Id. at 2:5–7, 2:18–23. The ’581 patent explains that the axial
`forces, which may occur, for example, as a result of volume changes during
`charging and discharging processes, can lead to leaks more readily in button
`
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`cells without beading than in button cells with beading. Id. at 2:23–29.
`Thus, the ’581 patent indicates there was a need in the art for a button cell
`that is resistant to mechanical loads in the axial direction and is
`manufactured without a beaded-over cup edge. Id. at 2:32–36.
`Figure 4 of the ’581 patent, reproduced below, illustrates a button cell
`according to an embodiment of the claimed invention.
`
`
`Figure 4 of the ’581 patent, above, shows button cell 400 including a
`housing comprising cup part 401 and top part 402, with seal 403 arranged
`therebetween, and an assembly of electrodes 407 and 408 and separators 405
`and 406, contained as spiral winding 404 within the housing. Id. at 11:11–
`21, Fig. 3. Top part 402 is inserted into cup part 401 such that the casing
`areas of top part 402 and cup part 401 overlap and the edge of cup part 401
`is not beaded over the edge of top part 402.
`The ’581 patent discloses that electrode 407 is connected via output
`conductor 410 to top part 402, and electrode 408 is connected via output
`conductor 409 to cup part 401. Id. at 11:21–24. The ’581 patent further
`
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`discloses that insulating means 411 and 412 are arranged between the end
`faces of the winding and cup part 401 and top part 402. Id. at 11:28–31.
`
`Figure 5 of the ’581 patent, reproduced below, illustrates another
`embodiment of a button cell according to the claimed invention.
`
`
`Figure 5 of the ’581 patent, above, shows button cell 500 comprising cup
`part (cell cup) 501 and top part (cell top) 502 connected to one another,
`sealed by seal 510, which together form a housing with flat bottom area 503
`and flat top area 504 parallel to it. Id. at 11:35–41. The ’581 patent
`discloses that cell top 502 is inserted into cell cup 501 such that the casing
`areas of the cell top and the cell cup overlap and the edge of cell cup 501 is
`not beaded over edge 511 of cell top 502. Id. at 3:1–3, 11:44–51.
`
`The ’581 patent further discloses that button cell 500 contains an
`assembly within the housing comprising electrodes 508 and 509 and
`separators 507 in the form of a winding, whose end faces in the direction of
`flat bottom area 503 and flat top area 504 which is parallel to it. Id.
`at 11:52–59. The ’581 patent also discloses that the assembly is wound up
`on winding core 512 in the center of the button cell, and winding core 512
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`and the electrodes and separators wound around it are aligned at right angles
`to flat bottom and flat top areas 503 and 504. Id. at 11:59–63.
`The ’581 patent explains that if the volume of the electrodes increases
`or decreases during a charging or discharging process, the mechanical forces
`that result act predominantly radially, and can be absorbed by the casing area
`of the button cell. Id. at 11:63–67. According to the ’581 patent, because of
`the right-angled alignment of the electrodes, radial forces can be absorbed
`much better than axial forces by the housing of the button cell, which results
`in the button cell having improved sealing characteristics. Id. at 3:52–56.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–12 of the ’581 patent.3 Pet. 7, 8. Of
`the challenged claims, claim 1 is the only independent claim. Claim 1,
`reproduced below, is illustrative of the subject matter of the challenged
`claims:
`1. A button cell comprising:
`a housing cup and a housing top separated from one
`another by an electrically insulating seal and which
`form a housing with a flat bottom area and a flat top area
`parallel to it, and
`an electrode-separator assembly within the housing
`comprising at least one positive and at least one
`negative electrode in the form of flat layers and
`connected to one another by at least one flat separator,
`wherein
`the electrode layers are aligned essentially at right angles
`to the flat bottom area and the flat top area and the
`electrode-separator assembly is a spiral winding having
`
`
`3 Claim 13 is the only claim of the ’581 patent Petitioner has not challenged
`in this Petition.
`
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`
`end faces defining side surfaces of the spiral winding
`facing in an axial direction relative to the flat bottom
`area and the flat top area, and
`one of the electrodes connects to the flat bottom area or
`the flat top area via an output conductor comprising a
`foil resting flat between an end face of the spiral
`winding and the flat top or the flat bottom area to which
`it is connected.
`Ex. 1001, 12:16–36.
`
`D. Prior Art and Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–12 are unpatentable based on the
`following grounds:
`Claims Challenged
`1–12
`
`Reference(s)/Basis
`Kobayashi5
`
`35 U.S.C. §4
`103
`
`1, 2, 4, 5, 8–12
`1–12
`
`Pet. 8, 20–23.
`
`103
`
`103
`
`Kaun6
`
`Kaun and Kobayashi
`
`II. MOTION TO EXCLUDE
`Patent Owner filed a Motion to Exclude Sections III–IV of
`Mr. Gardner’s Supplemental Declaration, because Patent Owner alleges the
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application to which the ’581 patent claims priority was
`filed before this date, the pre-AIA version of § 103 applies.
`5 Japanese Unexamined Patent Application Publication No. JP 2007-294111
`to Kobayashi, published November 8, 2007 (Ex. 1006). Exhibit 1006
`contains both the original Japanese-language version (id. at 16–28) and a
`certified English translation (id. at 2–14).
`6 U.S. Patent Application No. 2005/0233212 A1 to Kaun, published October
`20, 2005 (Ex. 1005).
`
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`identified sections do not advance proper “reply” arguments and, instead,
`amount to new opinions “to fill gaps in Petitioner’s obviousness grounds set
`forth in the Petition.” MTE 1. Specifically, Patent Owner states that
`Mr. Gardner “provides new opinions and theories that a [person of ordinary
`skill in the art] would have been motivated to combine Kaun (Ex. 1005) and
`Kobayashi (Ex. 1006) and would have expected success in making the
`combination.” Id.
`Patent Owner first alleges that Mr. Gardner offers new opinions
`regarding (1) the motivation to modify Kaun with Kobayashi based on
`dendrite formation (id. at 2–4), (2) additional motivations to modify Kaun
`with Kobayashi (id. at 4–6), (3) a reasonable expectation of success relating
`to replacing Kaun’s electrode assembly with that of Kobayashi in light of
`Kaun’s central fastener and Kobayashi’s electrode assembly (id. at 6–9), and
`(4) a reasonable expectation of success regarding modifications to
`Kobayashi’s electrode assembly, to replace its conductor plates with metal
`foils (id. at 9–10). Because we do not reach Petitioner’s challenge, as
`discussed below, based on the combination of Kaun and Kobayashi, we
`similarly need not reach Patent Owner’s Motion to Exclude Mr. Gardner’s
`opinions as they relate to the Kaun/Kobayashi combination. Accordingly,
`we dismiss Patent Owner’s Motion to Exclude these purportedly new
`opinions as moot. We address Patent Owner’s remaining concern, relating
`to Mr. Gardner’s allegedly new testimony regarding Kobayashi’s modified
`electrode assembly, below.
`Patent Owner argues that “[t]he Petition failed to explain why a
`[person of ordinary skill in the art] would have been motivated to replace
`Kobayashi’s conductor plates 4a, 5a with metal foils” and “lacked
`
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`explanation for how a [person of ordinary skill in the art] would have
`combined metal foil conductors with other components of Kobayashi to
`yield an operable assembly.” Id. at 9. Patent Owner alleges that
`“Mr. Gardner’s Supplemental Declaration attempts to fill these gaps with
`new opinions addressing the following defects in the proposed combination:
`(1) metal foils lack rigidity to permit the electrodes to be wound around the
`winding axis (¶¶ 71, 81); and (2) metal foils would be entirely embedded in
`the insulating plate grooves 8a, 9a (¶¶ 53, 70, 86–87).” Id. According to
`Patent Owner, these new opinions are untimely and should be excluded. Id.
`Petitioner explains that “the opinions are directly responsive to
`arguments made by Patent Owner in its Response” and, therefore, are not
`new. MTE Opp. 8. In particular, Petitioner explains that in its Patent Owner
`Response, Patent Owner argues that replacing Kobayashi’s metal plates with
`metal foils would not have been successful because “the metal foils lack
`sufficient rigidity to facilitate winding of the electrodes around the winding
`axis and that metal foils ‘would be fully embedded in the recess of the
`insulating plates and thus would not be able to contact the opposite side of
`the battery housing.’” Id. at 9 (quoting PO Resp. 25–26). Petitioner
`explains that Mr. Gardner’s opinions at paragraphs 71, 81, and 88–89
`address the structural stability issues and paragraphs 53, 70, and 84–87
`address the depth of the grooves of Kobayashi’s insulating plates. Id.
`We are not persuaded that the identified portions of Mr. Gardner’s
`Supplemental Declaration are improper. In the Petition, Petitioner alleged
`that a person of ordinary skill in the art would have had reason to substitute
`known metal foils for the metal conductor plates of Kobayashi in order to
`reduce the size of inactive materials and improve performance. Pet. 31
`
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`(citing Ex. 1003 ¶ 323). In its Response, Patent Owner argued, among other
`things, that the metal foil lacks the requisite rigidity to support the remaining
`components of the winding axis core (PO Resp. 22–27, 31), and that because
`metal connecting plates 4a and 5b are positioned within recesses of
`insulating plates 8 and 9, replacing the metal connecting plates with metal
`foils would result in an unreliable connection because the metal foil would
`become embedded within the grooves of the insulating plates (id. at 28, 31).
`Mr. Gardner’s supplemental testimony specifically addresses Dr. Peckerar’s
`and Patent Owner’s concerns that metal foils would be unsuitable in
`Kobayashi due to their flexibility and thickness as compared to the
`insulating plates. Ex. 1041 ¶¶ 53 (“the depth of the grooves can be altered in
`order to better accommodate metal foil output conductors”), 70, 71
`(explaining that it is the winding core that provides structure not the output
`conductor plates), 81, 86 (explaining that the person of ordinary skill in the
`art could either adjust the size of the output conductors or the depth of the
`cavities themselves), 87. Therefore, Mr. Gardner’s testimony that the
`ordinarily skilled artisan would have understood how to account for the
`technical challenges Patent Owner identified properly responds to arguments
`raised by Patent Owner in its Patent Owner Response. Accordingly, we
`deny Patent Owner’s Motion to Exclude Mr. Gardner’s testimony regarding
`Kobayashi’s modified electrode assembly.
`
`III. ANALYSIS
`
`A. Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d) (2019). A claim is unpatentable under
`
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`35 U.S.C. § 103 if the differences between the claimed subject matter and
`the prior art are such that the subject matter, as a whole, would have been
`obvious at the time of the invention to a person having ordinary skill in the
`art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
`of obviousness is resolved on the basis of underlying factual determinations
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) objective evidence of nonobviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`To show obviousness, it is not enough to merely show that the prior
`art includes separate references covering each separate limitation in a
`challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
`(Fed. Cir. 2011). “This is so because inventions in most, if not all, instances
`rely upon building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense, is already
`known.” KSR, 550 U.S. at 418–419.
`On the other hand, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” Id. at 418; accord In re Translogic
`Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner
`cannot satisfy its burden of proving obviousness by employing “mere
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a
`person of ordinary skill in the art would have combined or modified the prior
`art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016);
`
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`see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366
`(Fed. Cir. 2017) (“In determining whether there would have been a
`motivation to combine prior art references to arrive at the claimed invention,
`it is insufficient to simply conclude the combination would have been
`obvious without identifying any reason why a person of skill in the art would
`have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
`only could have made but would have been motivated to make the
`combinations or modifications of prior art to arrive at the claimed
`invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc.,
`751 F.3d 1327, 1352 (Fed. Cir. 2014)).
`
`B. Level of Ordinary Skill in the Art
`In the Decision on Institution, we determined that a person of ordinary
`skill in the art at the time of the invention of the ’581 patent
`would have had at least a bachelor’s degree in mechanical
`engineering, or a similar field, such as materials engineering,
`chemical engineering, or physics with at least five years of
`experience in the field of battery design and manufacturing. A
`person with a master’s degree in one of the above fields could
`have less practical experience of approximately three years. A
`person with a PhD could have less practical experience, of about
`two years. A person with less education but more relevant
`practical experience may also meet this standard.
`DI 20 (adopting Petitioner’s proposed definition). For purposes of this Final
`Written Decision, we maintain our determination from the Decision on
`Institution because neither party disputes that determination and because the
`level of skill is consistent with the record. See PO Resp. 6 (stating that
`“[t]he claims are patentable regardless of which definition is used.”); see
`generally Pet. Reply.
`
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`C. Claim Construction
`In an inter partes review filed on or after November 13, 2018, we
`construe claims “using the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. 282(b), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`Furthermore, we expressly construe the claims only to the extent necessary
`to resolve the parties’ dispute. See Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`In their briefing, the parties dispute the meaning of three claim terms
`or phrases—(1) “insulating means,” (2) “connected to one another by at least
`one flat separator,” and (3) “button cell.” See Pet. 17–18; PO Resp. 6–10;
`Pet. Reply 1–5.
`We discern no material difference between the parties’ respective
`constructions. Additionally, Patent Owner, during the hearing, expressed a
`general view that claim construction was unlikely to affect the parties’
`positions. In particular, Patent Owner states that “[o]ur position is that really
`nothing turns on claim construction. You don’t have to engage in claim
`construction in this case.” Tr. 56:18–20, 56:20–22 (explaining that
`limitations were submitted for construction “to gain some benefit in the co-
`pending litigations.”). Because our decision does not depend on either
`parties’ claim construction position, we determine that none of the identified
`
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`claim terms require construction to resolve the issues in dispute in this
`proceeding.
`D. Alleged Obviousness over Kobayashi
`Petitioner contends claims 1–12 would have been obvious over the
`disclosure of Kobayashi in view of the knowledge of a person of ordinary
`skill in the art. Pet. 8, 31–52. Petitioner directs us to portions of Kobayashi
`that purportedly disclose each of the limitations in the challenged claims. Id.
`at 31–52. Petitioner also relies on the declaration testimony of Mr. Gardner
`to support its arguments. See id.
`1. Kobayashi (Ex. 1006)
`Kobayashi is a Japanese Patent Application titled “Small Battery,”
`and published November 8, 2007. Ex. 1006, codes (43), (54).7 Kobayashi
`relates to a “small battery capable of improving heavy load characteristics
`without impairing productivity.” Id. at code (57). The small battery of
`Kobayashi may be a button cell or a coin cell comprising a container and a
`spirally wound flat electrode group stored in the container, including a
`positive electrode and a negative electrode connected via a separator and in
`the form of a spiral winding. Id. at code (57), ¶¶ 1, 9, 12, 14, 17, 32.
`Figure 1 of Kobayashi, reproduced below, illustrates an embodiment
`of a battery according to Kobayashi’s disclosure.
`
`
`7 Petitioner provides a certified English translation of Kobayashi in the
`record. Ex. 1006, 1. All citations to Kobayashi are to the certified translation
`rather than the Japanese language original.
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`Figure 1 of Kobayashi, above, shows a battery including the container
`(housing) formed by top case 11 and bottom case 13, sealed by gasket 12
`therebetween, and an electrode group comprising positive electrode 1 and
`negative electrode 2, connected via separator 3, in the form of a spiral
`winding, and housed within the container. Id. ¶¶ 9, 12, 32, 47. Kobayashi
`discloses that electrode layers 1 and 2 of the wound electrode group are
`arranged within the container at right angles to top case 11 and bottom case
`13, and insulating members 8 and 9 are disposed on the top and bottom
`surfaces of the wound electrode group. Id. ¶¶ 10, 19, 32, Fig. 1.
`Figure 1 of Kobayashi also depicts the container formed by top
`case 11 and bottom case 13 having a flat bottom area and a flat top area, and
`top case 11 is inserted into bottom case 13 such that the edge of bottom case
`13 is crimped radially inward towards the edge of top case 11. Id. ¶¶ 9, 33,
`34, 47.
`2. Analysis of Claim 1
`Petitioner contends that Kobayashi suggests the limitations of claim 1,
`and that a person of ordinary skill in the art would have been motivated to
`modify the disclosure of Kobayashi in a manner that would result in the
`claimed battery. Pet. 31–52. Petitioner here relies on Kobayashi as
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`disclosing nearly all of the limitations except “an output conductor
`comprising a foil,” which Petitioner contends was well-known in the prior
`art and commonly used in batteries at the time of the invention. Id. at 39
`(citing Ex. 1003 ¶ 256; Ex. 1009, 35, 879, 1294; Ex. 1006 ¶¶ 7, 21).
`Petitioner alleges that Kobayashi suggests a button cell where it
`discloses “a button-type battery or a coin-type battery,” as claimed in the
`preamble. Id. at 32 (citing Ex. 1006 ¶ 1); see also Ex. 1006 ¶ 12. Further,
`according to Petitioner, Kobayashi teaches metal container 11 (i.e., the
`claimed “housing top”), aluminum container 13 (i.e., the claimed “housing
`cup”) and insulating gasket 12 (i.e., the claimed “electrically insulating
`seal”), where metal container 11 and aluminum container 13 have a flat top
`and flat bottom area, respectively. Id. at 32–33 (citing Ex. 1006 ¶¶ 4, 33, 34,
`claim 2, Fig. 1; Ex. 1003 ¶¶ 151–152).
`Petitioner further contends Kobayashi discloses an electrode group
`within a housing including positive electrode 1 and negative electrode 2, in
`the form of flat layers spirally wound with a separator 3 located between
`electrode layers 1 and 2. Pet. 33–34 (citing Ex. 1006 ¶ 32, Figs. 1, 9).
`Petitioner contends Kobayashi further discloses that the positive and the
`negative electrodes are “laminated to form an electrode group” and “a flat
`electrode group in which a laminate containing a positive electrode and a
`negative electrode is spirally wound.” Id. at 34–35 (citing Ex. 1006 ¶¶ 7, 9,
`Fig. 1; Ex. 1003 ¶¶ 102, 106, 154; Ex. 1017, 4:9–16). Petitioner explains
`that the electrode layers of Kobayashi are aligned at right angles to the flat
`bottom and flat top areas of the housing. Id. at 36 (citing Ex. 1006, Fig. 1;
`Ex. 1003 ¶¶ 157–158). According to Petitioner, Kobayashi “discloses
`alignment of ‘the electrode group into the negative electrode case 11 so that
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`its negative electrode terminal plate 5 was in contact with the inside surface
`of the negative electrode case 11’ . . . . [and that] [t]he electrode layers of the
`electrode group contact the flat top area of container 11 at essentially a right
`angle.” Id. at 74 (citing Ex. 1006 ¶ 33, Fig. 1; Ex. 1003 ¶¶ 157–158).
`Petitioner explains that Kobayashi’s spiral winding includes end faces
`defining a side surface and when inserted into the electrode housing, the side
`surfaces of the winding face an axial direction relative to the flat bottom and
`flat top areas of the housing. Id. at 37 (citing Ex. 1006 ¶ 32, Fig. 1; Ex. 1003
`¶¶ 164).
`With respect to the claimed “output conductor comprising a foil,”
`Petitioner asserts that “Kobayashi discloses ‘a disc-shaped positive electrode
`terminal plate 4a’ and ‘a disc-shaped negative electrode terminal plate 5a’”
`where “[t]he positive electrode plate 4a connects the positive electrodes 1 of
`the electrode group to container 13, while negative electrode terminal
`plate 5a connects negative electrodes 2 of the electrode group to container
`11.” Pet. 38 (citing Ex. 1006 ¶ 28, Fig. 6; Ex. 1003 ¶ 254). Petitioner
`therefore asserts that “electrode terminal plates 4a, 5a rest flat between the
`end face of the spiral winding and their respective housing area,” as claimed.
`Id.
`
`Though Kobayashi does not describe its output conductor as a foil,
`Petitioner explains that foils were kno