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.
`____________
`
`IPR2020-01213
`Patent 9,799,858 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 in Part and Denying in Part 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. 2003 Page 1 of 70
`EVE Energy v. VARTA
`IPR2022-01484
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`IPR2020-01213
`Patent 9,799,858 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 1–8 of U.S. Patent No. 9,799,858 B2 (Ex. 1001, “the ’858
`patent”). Varta Microbattery GmbH (“Patent Owner” or “VARTA”) filed a
`Preliminary Response (Paper 8, “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 ’858 patent. Paper 9 (“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 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, “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. Paper 16; Paper 23. We provided
`Preliminary Guidance on that motion. Paper 26. Thereafter, Patent Owner
`filed a revised contingent Motion to Amend, proposing substitute claims 10–
`17 for original claims 1–8, 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”).
`
`3
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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 1–8 of the ’858 patent are
`unpatentable. We grant Patent Owner’s revised contingent Motion to
`Amend as to proposed substitute claims 10–14, 16, and 17.
`
`A. Related Proceedings
`The parties indicate that the ’858 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, IPR2020-01212,
`and IPR2020-01214. Pet. 2; Paper 5, 3.
`
`B. The ’858 Patent (Ex. 1001)
`The ’858 patent is titled “Button Cell Having Winding Electrode and
`Method for the Production Thereof” and issued October 24, 2017, with
`claims 1–9. Ex. 1001, codes (54), (45), 8:34–9:27. The ’858 patent
`describes a button cell that includes two metal housing halves and a spiral
`winding electrode separator assembly connected to the housing halves by
`
`4
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`metal conductors, where at least one of the conductors is connected to the
`housing by welding. Id. at code (57). The ’858 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 3:15–19.
`Figure 1A of the ’858 patent, reproduced below, illustrates a button
`cell according to an embodiment of the claimed invention.
`
`Figure 1A of the ’858 patent, above, shows button cell 100 comprising two
`metal housing halves, metal cup part 101 and metal top part 102, that form
`plane bottom region 104 and plane top region 105; electrode assembly 108
`wound on winding core 109; metal foil output conductors 110 and 111; and
`insulating elements 112 and 113. Id. at 6:52–7:18, Fig. 1A.
`The ’858 patent discloses that metal foils 110 and 111 are welded to
`the respective housing halves by laser 114, which creates a weld bead that
`passes fully through the housing and connects the conductors to the housing.
`Id. at 7:19–30, Fig. 1B. The ’858 patent further discloses that insulating
`
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`elements 112 and 113, which may be insulating tape such as KAPTON or
`polypropylene, are arranged to prevent direct electrical contact between the
`conductors and the end sides of the electrode winding. Id. at 7:45–52.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–8 of the ’858 patent.3 Pet. 7. 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:
`two metal housing halves separated from one another by
`an electrically insulating seal forming a housing having
`a plane bottom region and a plane top region parallel
`thereto;
`an electrode separator assembly comprising at least one
`positive electrode and at least one negative electrode
`inside the housing, the assembly provided in the form
`of a winding, lateral end sides of which face in a
`direction of the plane bottom region and the plane top
`region such that layers of the winding are oriented
`essentially orthogonally to the plane bottom region and
`plane top region; and
`metal conductors electrically connected to the at least one
`positive electrode and the at least one negative
`electrode, and respectively, to one of the housing
`halves,
`wherein the button cell has a height-to-diameter ratio less
`than one, at least one of the conductors is a metal foil
`and connects to the respective housing half with weld
`beads and/or weld spots passing through the housing,
`the weld beads and/or weld spots originate from an
`
`
`3 Claim 9 is the only claim of the ’858 patent Petitioner has not challenged in
`this Petition.
`
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`
`outer side, the metal foil connecting to the respective
`housing half bears flat on one of lateral end sides of the
`electrode separator assembly winding, and the metal
`foils are shielded from lateral end sides of the winding
`by insulating elements.
`Ex. 1001, 8:34–59.
`D. Prior Art and Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–8 are unpatentable based on the
`following grounds:
`Claims Challenged
`1–8
`
`35 U.S.C. §4
`103
`
`References/Basis
`Kobayashi,5 Kwon6
`
`1–8
`1–8
`
`Pet. 7, 18–23.
`
`103
`
`103
`
`Kaun,7 Kobayashi, Kwon
`
`Kobayashi, Kwon
`
`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 ’858 patent issued 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 Korean Laid-Open Patent Application KR 10-2003-0087316A to Kwon et
`al., published November 14, 2003 (Ex. 1008). Exhibit 1008 contains both
`the original Korean-language version (id. at 13–21) and a certified English
`translation (id. at 3–12).
`7 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 the 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 the metal foils ‘would be entirely embedded in the grooves [of
`the insulating plates], preventing the foils from making any connection
`whatsoever’ with the cell housing.” Id. at 9. Petitioner explains that
`Mr. Gardner’s opinions at paragraphs 71, 81, 88, and 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. 69–70
`
`9
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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. 26–27, 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 28–29,
`30). 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 as to Mr. Gardner’s testimony on this
`issue.
`
`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 ’858 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 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. 7 (person of
`ordinary skill “would possess a Bachelor’s degree in electrical, mechanical
`or chemical engineering or equivalent [and] would also have two to three
`
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`years of experience working in a related technology.”); see generally Pet.
`Reply.
`
`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))).
`Prior to institution, the parties agreed that no claim term of the ’858
`patent required construction. Pet. 18; Prelim. Resp. 9. In their post-
`institution briefing, however, the parties dispute the meaning of “button
`cell.” See PO Resp. 7–9; Pet. Reply 1–3.
`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
`
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`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 and Kwon
`Petitioner contends claims 1–8 would have been obvious over the
`combined disclosures of Kobayashi and Kwon. Pet. 8, 31–59, 69–79.8
`Petitioner directs us to portions of Kobayashi and Kwon that purportedly
`disclose each of the limitations in the challenged claims. Id. at 33–59.
`Petitioner also relies on the declaration testimony of Mr. Gardner to support
`its arguments. See id.
`
`
`8 As we noted in the Institution Decision, Petitioner advances two nearly
`identical grounds based on these references: the first based on a combination
`of Kobayashi and Kwon, and the second based on a combination of those
`two references and the knowledge of a person of ordinary skill in the art.
`“Because evaluation of obviousness necessarily incorporates the knowledge
`of a skilled artisan, we consider these two grounds together as one.” DI 28–
`29. The primary difference between the two grounds appears to be that one
`relies on Kwon to supply the metal foil conductor (Pet. 38–39), whereas the
`other relies on the knowledge of a skilled artisan that the electrode plates of
`Kobayashi could be reduced in thickness (id. at 71–72). We address both
`alternative modifications together under one ground.
`
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`
`1. 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
`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
`
`
`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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`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 is
`crimped radially inward towards the edge of top case 11. Id. ¶¶ 9, 33, 34,
`47.
`
`2. Kwon (Ex. 1008)
`Kwon is a Korean Patent Application titled “Coin-Type Electric
`Double Layer Capacitor and Its Manufacturing Method,” and published
`November 14, 2003. Ex. 1008, codes (43), (54). Kwon relates to a coin-type
`double layer capacitor wherein the metal cases and polarized electrodes are
`laser welded together, to “afford[] stable coupling physically as well as
`electrically.” Id. at code (57). For example, Kwon discloses positioning the
`anode polarized electrode on the inner surface of the anode metal case so
`their centers are aligned, and then using a laser beam to heat the outside of
`the anode metal case such that the inner surface of the case and the electrode
`are welded together. Id. at 7, Fig. 5a. Between the inner surface of the case
`and the electrode is a metal current collector, which Kwon describes as
`being “in the form of aluminum foil.” Id. at 5, 7, Fig. 5a. Kwon states that
`laser welding, because it does not generate electric shock and generates a
`narrow thermal effect, has advantages over conventional spot welding and
`allows sturdy coupling of the metal case and polarized electrode without
`damage to the electrode. Id. at 7.
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`3. Analysis of Claim 1
`Petitioner contends that the combined disclosures of Kobayashi and
`Kwon suggests the limitations of claim 1 and that a person of ordinary skill
`in the art would have been motivated to combine the teachings of the
`references in a manner that would result in the claimed battery. Pet. 31–41.
`Petitioner here relies on Kobayashi as disclosing nearly all of the limitations
`except “at least one of the conductors is a metal foil and connects to the
`respective housing half with weld beads and/or weld spots passing through
`the housing, the weld beads and/or weld spots originate from an outer side,”
`which Petitioner contends was either well-known in the prior art and
`commonly used in batteries at the time of the invention, or disclosed
`expressly in Kwon. Id. at 38–40 (citing Ex. 1003 ¶ 385–387, 395; Ex. 1006
`¶¶ 18, 28; Ex. 1008, 4–5, 7, Fig. 5B); 71–73 (citing Ex. 1003 ¶¶ 432–433;
`Ex. 1006 ¶¶ 7, 18, 21, 28; Ex. 1008, 3, 7, Fig. 5B).
`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 33 (citing Ex. 1006 ¶ 1); see also Ex. 1006 ¶ 12. Further,
`according to Petitioner, Kobayashi teaches metal container 11 and aluminum
`container 13 (i.e., the claimed “two metal housing halves”) 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 33–34 (citing Ex. 1006 ¶¶ 4, 33, 34, claim 2, Fig. 1;
`Ex. 1003 ¶¶ 151–152).
`Petitioner further contends that 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
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`between electrode layers 1 and 2. Id. at 34–36 (citing Ex. 1006 ¶ 32, Figs. 1,
`9). Petitioner contends that Kobayashi further discloses that the positive and
`the negative electrodes are oriented orthogonally to the plane bottom and top
`regions of containers 11, 13, and the lateral ends of the layers face the plane
`top area of container 11. Id. at 35 (citing Ex. 1006 ¶¶ 33, Fig. 9; Ex. 1003
`¶¶ 153–154). According to Petitioner, Kobayashi also discloses “disc-
`shaped positive electrode terminal plate 4a” and “disc-shaped negative
`electrode terminal plate 5a,” which provide electrical connection of the
`electrode group to the container. Id. at 36–37 (citing Ex. 1006 ¶ 28, FIG. 6;
`Ex. 1003 ¶ 381).
`Regarding the claim 1 requirement that the button cell has a height-to-
`diameter ratio of less than one, Petitioner contends that Kobayashi discloses
`that its electrode structure has a “height in the winding axis direction of the
`electrode group [that] is smaller than the size in the direction perpendicular
`to the winding axis,” which would be understood to mean that the height to
`diameter ratio of its button cell was less than 1. Pet. 37–38 (citing Ex. 1006
`¶ 10, Fig. 1; Ex. 1003 ¶ 384). Petitioner also contends that Kobayashi
`discloses that its terminal plates 4a and 5a bear flat on the housing halves of
`containers 11, 13, and that insulator plates 8 and 9 are placed between the
`spiral wound electrode assembly and the terminal plates, shielding them
`from the lateral ends of the winding. Id. at 40–41 (citing Ex. 1006 ¶¶ 7, 19,
`32, Fig. 1; Ex. 1003 ¶ 388).
`With respect to the claimed “at least one of the conductors is a metal
`foil,” Petitioner acknowledges that “Kobayashi discloses the use of metal
`terminal plates 4a, 5a (i.e., conductors) to connect the positive and/or
`negative electrodes to the housing.” Id. at 71 (citing Ex. 1006 ¶ 18, 28;
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`Ex. 1003 ¶¶ 432–433. Though Kobayashi does not describe its output
`conductor as a foil, Petitioner explains that foils were known in the prior art
`and commonly used by persons of ordinary skill in the art to reduce the
`thickness of various conductor components. Id. (citing Ex. 1003 ¶ 432; Ex.
`1009, 879, 1294; Ex. 1008, 4). Petitioner notes that Kobayashi itself
`discloses the use of foils as part of its electrode assembly. Id. (citing
`Ex. 1006 ¶¶ 7, 21). Alternatively, Petitioner o