Paper 47
`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.
`____________
`
`IPR2020-01214
`Patent 9,799,913 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. 2004 Page 1 of 71
`EVE Energy v. VARTA
`IPR2022-01484
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`IPR2020-01214
`Patent 9,799,913 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. 9,799,913 B2 (Ex. 1001, “the ’913
`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 ’913 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 14, “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”; Ex. 2051, “Gardner Deposition III”), 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”). Patent Owner also relies 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).
`After institution, Patent Owner filed a Contingent Motion to Amend
`and Petitioner filed an Opposition to Patent Owner’s Contingent Motion to
`Amend. Paper 15; Paper 22. We provided Preliminary Guidance on that
`motion. Paper 25. Thereafter, Patent Owner filed a Revised Contingent
`Motion to Amend, proposing substitute claims 9–16 for original claims 1–8,
`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 to Amend (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”).
`An oral hearing was held on November 2, 2021, and a transcript of the
`hearing is included in the record (Paper 46, “Tr.”).
`
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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 ’913 patent are
`unpatentable. We grant Patent Owner’s Revised Contingent Motion to
`Amend as to proposed substitute claims 9–16.
`
`A. Related Proceedings
`The parties indicate that the ’913 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 IPR2020-01213. Pet. 2; Paper 5, 3.
`
`B. The ’913 Patent (Ex. 1001)
`The ’913 patent is titled “Button Cells and Method of Producing
`Same” and issued October 24, 2017, with claims 1–8. Ex. 1001, codes (54),
`(45), 13:6–14:46. The ’913 patent describes a button cell that includes a
`housing cup and a housing top separated by a seal to form a housing having
`parallel flat bottom and top areas, and an electrode-separator assembly
`
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`including a flat positive and negative electrode and connected by one flat
`separator, 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 surfaces of the winding facing in an axial direction relative to
`the flat bottom and top areas. Id. at code (57), 10:26–31, 12:4–26. The ’913
`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 4:4–19.
`Figure 4 of the ’913 patent, reproduced below, illustrates a button cell
`according to an embodiment of the claimed invention.
`
`Figure 4 of the ’913 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
`
`
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`and 406, contained as spiral winding 404 within the housing. Id. at 12:4–23,
`Fig. 3.
`The ’913 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 12:13–16. The ’913 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 12:20–23.
`The ’913 patent also discloses that the insulating means may be a flat layer
`composed of plastic, for example, a plastic film. Id. at 7:27–28.
`
`C. Illustrative Claims
`Petitioner challenges claims 1–8 of the ’913 patent. Pet. 8, 9. Of the
`challenged claims, claims 1, 4, and 6 are independent claims. 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
`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 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,
`one of the electrodes connects to the flat bottom area or
`the flat top area via an output conductor comprising a foil resting
`
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`flat between an end face of the spiral winding and the flat top or
`the flat bottom area to which it is connected, and
`at least one insulating means preventing direct mechanical
`and electrical contact between the end faces of the winding and
`the flat bottom and flat top areas.
`Ex. 1001, 13:7–30.
`
`D. Prior Art and Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–8 are unpatentable based on the
`following grounds:
`
`Claim(s) Challenged
`1–8
`
`35 U.S.C. §3
`103
`
`Reference(s)/Basis
`Kobayashi4
`
`1–8
`
`Pet. 9.
`
`103
`
`Kaun, 5 Kobayashi
`
`II. PATENT OWNER’S MOTION TO EXCLUDE
`Patent Owner filed a Motion to Exclude Sections III–IV of
`Mr. Gardner’s Supplemental Declaration, because Patent Owner alleges the
`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
`
`
`3 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 ’913 patent issued was filed
`before this date, the pre-AIA version of § 103 applies.
`4 Yoshikazu Kobayashi, JP 2007-294111 A, published Nov. 8, 2007
`(Ex. 1006). Citations herein are to the certified English translation portion
`of Kobayashi, i.e., pages 1–14.
`5 Thomas D. Kaun, US 2005/0233212 A1, issued Oct. 20, 2005 (Ex. 1005,
`“Kaun”).
`
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`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 combine 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 Kaun’s central fastener (id. at 6–7), and (4) a reasonable expectation of
`success regarding Kobayashi’s modified electrode assembly (id. at 7–9).
`Because we do not reach Petitioner’s challenge based on the combination of
`Kaun and Kobayashi, as discussed below, 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, 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
`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
`
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`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, 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
`(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. 27–30, 35) 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
`
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`become embedded within the grooves of the insulating plates (id. at 30–33,
`35). 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 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). 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 including (1)
`the scope and content of the prior art; (2) any differences between the
`
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`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 have
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`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 ’913 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 20–21 (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. 8 (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 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. 17–21; PO Resp. 9–12.
`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.6 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, 56:21–24 (explaining that
`
`
`6 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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`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 (Claims 1–8)
`Petitioner contends claims 1–8 would have been obvious over
`Kobayashi in view of the knowledge of a person of ordinary skill in the art.
`Pet. 9, 31–48. Petitioner directs us to portions of Kobayashi that purportedly
`disclose each of the limitations in the challenged claims. Id. at 31–48.
`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
`
`
`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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`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 is
`crimped radially inward towards the edge of top case 11. Id. ¶¶ 9, 33, 34,
`47.
`
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`
`2. Analysis of Claim 1
`Petitioner contends Kobayashi teaches or suggests the limitations of
`claim 1 and, relying on the testimony of Mr. Gardner, explains why the
`button cell of claim 1 would have been obvious in view of Kobayashi’s
`disclosure and the knowledge of a person of ordinary skill in the art.
`Pet. 31–40.
`Petitioner alleges that Kobayashi suggests a button cell, as described
`in the preamble, where it discloses “a button-type battery or a coin-type
`battery.” Id. at 32 (citing Ex. 1006 ¶ 1); see also Ex. 1006 ¶ 12 (disclosing
`“a small battery such as a button cell”). 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. Pet. 32–33 (citing Ex. 1006 ¶¶ 4, 33, 34, Fig. 1, claim 2,
`Fig. 1; Ex. 1003 ¶¶ 151–152).
`Petitioner contends Kobayashi discloses an electrode group placed
`within the housing that includes positive electrode 1 and negative electrode
`2, each in the form of flat layers, and where positive electrode 1 and
`negative electrode 2 are spirally wound with a separator 3 located between
`electrode layers. Id. at 33–34 (referring to id. at 39 (citing Ex. 1006 ¶ 32,
`Figs. 1, 9)). Id. at (citing Ex. 1006 ¶ 32, Figs. 1, 9). Petitioner explains that
`Kobayashi laminates the positive and the negative electrodes layers together
`to form a flat electrode group. Id. at 34–35 (citing Ex. 1006 ¶¶ 7, 9, Fig. 1;
`Ex. 1003 ¶¶ 102, 106, 154; Ex. 1017, 4:9–16).
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`Petitioner argues that when the spiral wound electrode is placed
`within the housing, 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). Further, Petitioner states that
`Kobayashi describes an alignment such that “when the spiral wound
`[electrode group] is inserted into the cell housing, the end surfaces of
`electrode layers 1, 2 . . . located closest to the flat top and bottom areas of
`containers 11, 13 (i.e., end faces) face axially relative to container 11, 13.”
`Id. (citing Ex. 1006 ¶ 33, Fig. 1; Ex. 1003 ¶¶ 157–158).
`Petitioner also alleges Kobayashi discloses that insulating plates 8 and
`9 are “disposed between the positive electrode case and the electrode group,
`between the negative electrode case and the electrode group, or both” and
`are used to prevent the spiral wound electrode assembly from short-
`circuiting. Id. at 39 (referring to (citing Ex. 1006 ¶¶ 19, 32, Figs. 1).
`Petitioner alleges that Kobayashi discloses insulation plates 8a and 9a
`correspond to the claimed “insulating means.” Id. (citing Ex. 1006 ¶¶ 19,
`32, Fig. 1).
`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.”
`Id. at 37 (citing Ex. 1006 ¶ 28, Fig. 6; Ex. 1003 ¶ 321. 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.
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`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. at 38 (citing Ex. 1003 ¶¶ 322–323; Ex. 1009 at
`35, 879, 1294). Petitioner notes that Kobayashi itself discloses the use of
`foils as part of its electrode assembly. Id. (citing Ex. 1006 ¶¶ 7, 21).
`And, relying on the testimony of Mr. Gardner, Petitioner reasons that
`a person of ordinary skill in the art would have been motivated to modify
`Kobayashi’s cell to substitute metal electrode terminal plates 4a and 5a with
`metal foil to reduce the thickness of the metal plates which improves certain
`properties of the cell, including “improv[ing] the energy density of the
`plates, reduc[ing] resistance of the other components of the electrode
`assembly, and improv[ing] the ratio of active to inactive components of the
`cell battery.” Id. (citing Ex. 1003 ¶¶ 322–323; Ex. 1009, 35, 879, 1294); see
`also id. at 31 (explaining “[a] well-known goal in the art is to reduce the size
`of inactive materials within the button cell, which can result in improved cell
`performance” and “[o]ne known form of these output conductors are foils,
`which can achieve the goal of reducing the size of inactive components of
`the cell without compromising other features”).
`Patent Owner does not challenge many of Petitioner’s allegations
`regarding the teachings of Kobayashi. See generally PO Resp. We have
`reviewed the evidence and argument of record and determine that Petitioner
`establishes, by a preponderance of the evidence, that each uncontested
`limitation of claims 1–8 of the ’913 patent is present in Kobayashi.
`Patent Owner, however, does argue that Petitioner has not
`demonstrated Kobayashi teaches “an output conductor comprising a foil
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`resting flat between an end face of the spiral winding and the flat top or flat
`bottom area” (PO Resp. 24) or provide a reason one of ordinary skill in the
`art would have modified Kobayashi to include foil output conductor (id. at
`27). We address these contested issues below.
`a) Whether Petitioner has shown that Kobayashi describes “an
`output conductor comprising a foil resting flat between an end
`face of the spiral winding and the flat top or flat bottom area”
`First, Patent Owner argues that Petitioner has failed to show that metal
`conductor plates 4a and 5a of Kobayashi can be foils. PO Resp. 24.
`Specifically, Patent Owner argues that Mr. Gardner’s