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.
`____________
`
`IPR2020-01212
`Patent 9,153,835 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, 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. 2002 Page 1 of 70
`EVE Energy v. VARTA
`IPR2022-01484
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`Patent 9,153,835 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. 9,153,835 B2 (Ex. 1001, “the ’835
`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 ’835 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 15, “PO Resp.”), Petitioner filed a Reply (Paper 23, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 28, “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, “if 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 to Patent Owner’s Contingent Motion to
`Amend. Paper 14; Paper 22. We provided Preliminary Guidance on that
`motion. Paper 25. 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 27
`(“Motion to Amend” or “MTA”). Subsequently, Petitioner filed an
`Opposition to Patent Owner’s Motion (Paper 34, “MTA Opp.”), Patent
`Owner filed a Reply in Support of its Motion (Paper 36, “MTA Reply”), and
`Petitioner filed a Sur-reply (Paper 41, “MTA Sur-reply”).
`Patent Owner also filed a Motion to Exclude certain testimony
`contained in Mr. Gardner’s Supplemental Declaration (Ex. 1041). Paper 37
`(“MTE”). Thereafter, Petitioner filed an Opposition to Patent Owner’s
`Motion to Exclude (Paper 40, “MTE Opp.”) and Patent Owner filed a Reply
`in Support of its Motion to Exclude (Paper 42, “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 ’835 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 ’835 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 IPR2020-01211, IPR2020-01213,
`and IPR2020-01214. Pet. 2; Paper 5, 3.
`
`B. The ’835 Patent (Ex. 1001)
`The ’835 patent is titled “Button Cells and Method for Producing
`Same” and issued October 6, 2015, with claims 1–13. Ex. 1001, codes (54),
`(45), 12:1–66. The ’835 patent relates to a button cell comprising two
`housing half-parts (housing cup and housing top) separated from one another
`by an electrically insulating seal and which form a housing with a flat
`
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`bottom area and a flat top area parallel to it, and an electrode-separator
`assembly within the housing. Id. at code (57), 1:16–24, 3:7–12.
`According to the ’835 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, 1:43–44, 3:34–37. The ’835 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 can start to leak. Id. at 1:57–59, 1:65–
`2:3.
`
`The ’835 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 2:4–6, 2:18–23. The ’835 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
`cells without beading than in button cells with beading. Id. at 2:24–28.
`Thus, the ’835 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 2:31–36.
`The ’835 patent describes an electrode-separator assembly within the
`housing, including at least one positive and at least one negative electrode in
`
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`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 and top areas of the housing and the button cell is
`manufactured without being beaded over. Ex. 1001, code (57), 2:40–49,
`11:1–22.
`Figure 4 of the ’835 patent, reproduced below, illustrates a button cell
`according to an embodiment of the claimed invention.
`
`
`Figure 4 of the ’835 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 11:1–9,
`Fig. 3. Figure 4 of the ’835 patent also shows button cell 400 as having top
`part 402 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.
`
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`The ’835 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 402. Id. at 11:9–12. The ’835 patent further
`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 11:17–19.
`
`Figure 5 of the ’835 patent, reproduced below, illustrates another
`embodiment of a button cell according to the claimed invention.
`
`
`Figure 5 of the ’835 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 11:23–29. The ’835 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, 11:32–39.
`
`The ’835 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
`
`7
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`11:40–46. The ’835 patent also discloses that the assembly is wound up on
`winding core 512 in the center of the button cell and winding core 512 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 11:46–50.
`The ’835 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 11:50–54. According to the ’835 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 3:51–55
`
`C. Illustrative Claims
`Petitioner challenges claims 1–12 of the ’835 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,
`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, and
`an insulating means,
`
`
`3 Claim 13 is the only claim of the ’835 patent Petitioner has not challenged
`in this Petition.
`
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`
`wherein the electrode layers are aligned essentially at right
`angles to the flat bottom area and the flat top area and the button
`cell is closed without being beaded over, and the electrode-
`separator assembly is in the form of a spiral winding having end
`faces defining side surfaces of the spiral winding face facing in
`an axial direction relative to the flat bottom area and the flat top
`area, and wherein the insulating means is arranged between the
`end faces of the spiral winding and the housing cup and the
`housing top.
`Ex. 1001, 12:2–22.
`
`D. Prior Art and Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–12 are unpatentable based on the
`following grounds:
`Claim(s) Challenged
`1–12
`
`Reference(s)/Basis
`Kaun5, Kobayashi6
`
`35 U.S.C. §4
`103
`
`1–12
`
`1–12
`
`Pet. 8, 23–27.
`
`103
`
`103
`
`Kobayashi, Kaun
`
`Kobayashi, Ryou7
`
`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 from which the ’835 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
`5 Kaun, US 2005/0233212 A1, issued Oct. 20, 2005 (Ex. 1005, “Kaun”).
`6 Kobayashi, JP 2007-294111 A, published Nov. 8, 2007 (Ex. 1006,
`“Kobayashi”). Citations herein are to the certified English translation
`portion of Kobayashi, i.e., pages 1–14.
`7 Ryou et al., EP 1886364 B1, published Nov. 30, 2006 (Ex. 1007, “Ryou”).
`
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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 5–6), (3) a reasonable expectation of success relating
`to replacing Kaun’s electrode assembly with that of Kobayashi in light of
`Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of
`success regarding modifications to Kobayashi’s electrode assembly (id. at 7–
`9). Because we do not reach Petitioner’s challenge, as discussed below,
`based on the combination of Kaun modified by 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 concerns, relating to Mr. Gardner’s
`allegedly new testimony regarding Kobayashi’s modified electrode
`assembly, below.
`Patent Owner argues that “Mr. Gardner’s Supplemental Declaration
`includes a hypothetical sketch purporting to show how he would combine
`Kaun in view of Kobayashi” but the original declaration did not include this
`proposed modification. MTE 7–8. Patent Owner alleges that Mr. Gardner
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`“testified that he had no opinion as to how the Kobayashi structure would be
`modified in order to include the center fastener of Kaun” but “now opines
`that superimposing Kaun’s housing onto Kobayashi’s electrode assembly
`would involve ‘quite minor’ modifications and that ‘a [person of ordinary
`skill in the art] would easily be able to incorporate them with minimal
`experimentation and testing.’” Id. at 8. Patent Owner argues that Mr.
`Gardner’s opinions regarding any proposed modifications to Kobayashi
`should be excluded as it was not originally presented within the Petition. Id.
`at 9; MTE Reply 4–5.
`Petitioner explains that Mr. Gardner’s opinion that a person of
`ordinary skill in the art would have been able to incorporate Kaun’s central
`fastener within the winding axis of Kobayashi are not new. MTE Opp. 7
`(citing Ex. 1003 ¶141). Petitioner states that “Mr. Gardner expounds on this
`opinion, and responds to Patent Owner’s position, by providing a sketch . . .
`which depicts the central fastener of Kaun ‘placed within the thru-hole . . .
`created in Kobayashi’ and further describing how a [person of ordinary skill
`in the art] would combine the two references.” Id. (citing Ex. 1041 ¶¶ 26–
`29).
`
`We are not persuaded that the identified portions of Mr. Gardner’s
`Supplemental Declaration are improper. In the Petition, Petitioner alleges
`that a person of ordinary skill in the art would have had reason “to use the
`unbeaded sealing mechanism of Kaun to seal the housing of Kobayashi” to
`avoid damage to the housing and increase the volume within the cell
`housing. Pet. 60–61 (citing Ex. 1007 ¶ 10; Ex. 1003 ¶¶ 138–142).
`Petitioner explains that “[i]nstead of beading, Kaun uses an insert molded
`gasket placed between the housing top 28p and cup 28n to provide a gas-
`
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`tight seal” and that “[t]o help maintain the seal . . . Kaun further discloses
`using a fastener 60 located at or near the center of cups 28n, 28p to help hold
`the cups together.” Id. at 60 (citing Ex. 1005 ¶¶ 84, 86). Petitioner
`continues to explain that the cell can be sealed without the center fastener
`where the cell is not under “pressure-loading.” Id. at 64 (citing Ex. 1005
`¶ 120). Petitioner contends that such a modification would have been within
`the skill level of the ordinarily skilled artisan. Id. In support of the Petition,
`Mr. Gardner testifies that the proposed modification to Kobayashi would
`allow for an increase in internal volume for additional electrode layers and
`because “Kobayashi already includes a central winding axis, the inclusion of
`the fastener of Kaun would not take away existing room within the cell.”
`Ex. 1003 ¶ 141. Mr. Gardner proposes two alternate modifications to
`Kobayashi.
`
`For example, attaching the housing parts to winding axis of
`Kobayashi using clips or other fittings would allow the winding
`axis to function as a fastener as disclosed in Kaun. As another
`example, a [person of ordinary skill in the art] could adopt a
`through hole in winding axis of Kobayashi, through which a
`fastener means can secure the top and bottom halves of the
`housing according to Kaun.
`Id. In its Response, Patent Owner argues, among other things, that “it
`would not have been feasible to include a ‘through hole’ in the winding axis
`core of Kobayashi in view of its small size” and further that “[e]ven if such a
`modification could somehow be accomplished, using a central fastener
`would require widening of Kobayashi’s center core and redesigning the
`housing terminal . . . [which] would in turn decrease the amount of usable
`space.” PO Resp. 44. In response, Mr. Gardner explains that “Kaun
`discloses that ‘[t]he electrode assembly 22 encircles the fastener 60 when the
`
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`cell is assembled.’” Ex. 1041 ¶ 26. He continues to explain that “it would
`be easy to integrate the fastener of Kaun with the winding core of Kobayashi
`. . . [as] the two would serve similar functions: ensuring the cell housing
`remains in place while also providing support for the electrode assembly.”
`Id. ¶ 27. Mr. Gardner concludes that “[t]he inclusion of fastening
`components within the core would have been a minor addition, well within
`the skill of a person of ordinary skill in the art.” Id. Mr. Gardner further
`identifies the location of the through hole within the Kobayashi assembly
`(id. ¶ 28) and illustrates through the new figure that “[t]hese changes are
`quite minor” (id. ¶ 29). Thus, Mr. Gardner’s supplemental testimony
`specifically addresses Patent Owner’s contentions regarding “feasibility”
`and whether significant redesign is required and thus, properly responds to
`arguments raised by Patent Owner in its Patent Owner Response.
`Accordingly, we deny Patent Owner’s Motion to Exclude as it relates to Mr.
`Gardner’s allegedly new supplemental 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
`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
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`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);
`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
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`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 ’835 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, about
`two years. A person with less education but more relevant
`practical experience may also meet this standard.
`DI 23 (adopting Petitioner’s proposed definition). For purposes of this Final
`Written Decision, we maintain our determination from the Decision on
`Institution because neither party asserts that our decision depends on that
`determination and because the level of skill is consistent with the record.
`See PO Resp. 7 (stating that “[t]he claims are patentable regardless of which
`definition is used.”); see generally Pet. Reply; MTA Opp. 1–2 (“Regardless
`of which definition is used, however, Patent Owner’s Substitute Claims are
`still not patentable.”).
`
`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
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`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 four claim terms
`or phrases—(1) “insulating means”, (2) “closed without being beaded over”,
`(3) “connected to one another by at least one flat separator,” and (4) “button
`cell.” See Pet. 19–23; PO Resp. 8–14; Pet. Reply 1–8.
`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.8 In particular, Patent Owner states that “[o]ur position is that
`really nothing turns on claim construction. You don’t have to engage in
`
`
`8 The parties disagree as to what the newly added phrase “the cup casing
`include[ing] a first part proximal to the flat bottom area and a second part
`disposed in the overlapping area, the first part of the casing being disposed
`radially inward with respect to the second part” means. See generally MTA
`Opp.; MTA Reply; MTA Sur-reply. Neither party proposes an express
`construction for this phrase. Id. We address the interpretation of this phrase
`below and only to the extent necessary to resolve the dispute raised by the
`parties’ substantive arguments.
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`claim construction in this case.” Tr. 56:18–20, 56:20–24 (explaining that
`limitations were submitted for construction “to gain some benefit in the co-
`pending litigations.”). Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) in the context of an inter partes review).
`Because the outcome of our decision does not depend on either parties’
`claim construction position, we determine that none of the identified claim
`terms require construction to resolve the issues in dispute in this proceeding.
`D. Alleged Obviousness over Kobayashi in view of Kaun
`Petitioner contends claims 1–12 would have been obvious over the
`combination of Kobayashi and Kaun. Pet. 59. Petitioner directs us to
`portions of Kobayashi and Kaun that purportedly disclose each of the
`limitations in the challenged claims. Id. at 59–70. Petitioner also relies on
`the declaration testimony of Mr. Gardner to support its arguments. See id.
`1. Prior Art
`a) Kobayashi (Ex. 1006)
`Kobayashi is a Japanese Patent Application titled “Small Battery,”
`and published November 8, 2007. Ex. 1006, codes (43), (54).9 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
`
`
`9 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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`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.
`
`
`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 inserted into bottom case 13 such that the edge of bottom case 13
`
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`is crimped radially inward towards the edge of top case 11. Id. ¶¶ 9, 33, 34,
`47.
`
`b) Kaun (Ex. 1005)
`Kaun is a U.S. Patent Application titled “Housing for Electrochemical
`Devices,” and published October 20, 2005. Ex. 1005, codes (54), (43).
`Kaun relates to improved housings for electrochemical devices, including
`battery cells, and describes a rolled-ribbon electrochemical device (button-
`type cell) that includes a housing comprising a first (upper housing) cup, a
`second (lower housing) cup, a gasket, and a spiral wound electrode assembly
`contained within the housing. Id. at code (57), ¶¶ 1, 24, 55–59, 69, 78, 80,
`84, 109, Figs. 2, 7A, 11.
`Figures 7A–7D of Kaun, reproduced below, illustrate an exemplary
`embodiment of a button-type cell housing according to Kaun’s disclosure.
`
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`Figure 7A “depicts the housing for the electrochemical device”; Figure 7B
`depicts a cross-sectional view of the peripheral seal area of the housing;
`Figure 7C depicts the outer pan of the housing; and Figure 7D depicts a
`cross-sectional view of the housing, including a