UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GUANGDONG MIC-POWER NEW ENERGY CO. LTD., PEAG LLC
`d/b/a JLAB AUDIO, AUDIO PARTNERSHIP LLC, AUDIO
`PARTNERSHIP PLC d/b/a CAMBRIDGE AUDIO, GN AUDIO A/S, and
`GN AUDIO USA INC. d/b/a JABRA,
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`VARTA Ex. 2005 Page 1 of 20
`EVE Energy v. VARTA
`IPR2022-01484
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GUANGDONG MIC-POWER NEW ENERGY CO. LTD., PEAG LLC
`d/b/a JLAB AUDIO, AUDIO PARTNERSHIP LLC, AUDIO
`PARTNERSHIP PLC d/b/a CAMBRIDGE AUDIO, GN AUDIO A/S, and
`GN AUDIO USA INC. d/b/a JABRA,
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`VARTA Ex. 2005 Page 1 of 20
`EVE Energy v. VARTA
`IPR2022-01484
`
`
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Guangdong Mic-Power New Energy Co. Ltd., PEAG LLC d/b/a JLab
`
`Audio, Audio Partnership LLC, Audio Partnership PLC d/b/a Cambridge
`
`Audio, GN Audio A/S, and GN Audio USA Inc. d/b/a Jabra (collectively
`
`“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 1–30 (all claims) of U.S. Patent No. 10,971,776 B2
`
`(Ex. 1001, “the ’776 patent”). VARTA Microbattery GMBH filed a
`
`Preliminary Response to the Petition. Paper 9 (“Prelim. Resp.”).
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for institution is
`
`set forth in 35 U.S.C. § 314(a), which provides that an inter partes review
`
`may not be instituted “unless the Director determines . . . there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.”
`
`After considering the parties’ arguments and evidence, and for the
`
`reasons set forth below, we determine that Petitioner has not demonstrated a
`
`reasonable likelihood of prevailing with respect to any challenged claim of
`
`the ’776 patent. Accordingly, we do not institute an inter partes review.
`
`B. Real Parties-in-Interest
`
`Petitioner identifies itself as the real parties-in-interest. Pet. 1. Patent
`
`Owner identifies itself as the real party-in-interest. Paper 7, 2.
`
`C. Related Matters
`
`The parties inform us that the ’776 patent is the subject of four district
`
`court cases: VARTA Microbattery GmbH v. GN Audio A/S and GN Audio
`
`USA Inc. d/b/a Jabra, United States District Court for the District of
`
`Delaware, No. 1-21-cv-00134-RGA (stayed); VARTA Microbattery GmbH v.
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`Patent 10,971,776 B2
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`Guangdong Mic-Power New Energy Co., Ltd., United States District Court
`
`for the Eastern District of Texas, No. 2-21-cv-00036-JRG (pending); VARTA
`
`Microbattery GmbH v. Audio Partnership LLC d/b/a Cambridge Audio USA
`
`et al., United States District Court for the Eastern District of Texas, No. 2-
`
`21-cv-00037-JRG (pending); VARTA Microbattery GmbH v. PEAG LLC
`
`d/b/a JLab Audio, United States District Court for the Eastern District of
`
`Texas, No. 2-21-cv-00038-JRG (pending). Pet. 1; Paper 7, 2–3.
`
`The parties further inform us that a petition directed to similar subject
`
`matter was filed in IPR2021-01207 and that petitions were filed against
`
`related patents in IPR2020-01211, -01212, -01213, and -01214. Pet. 1–2;
`
`Paper 7, 4 (Patent Owner also identifying IPR2021-00474 as a related
`
`matter).
`
`D. The ’776 Patent
`
`The ’776 patent is directed to “button cells having a housing
`
`consisting of two metal housing halves, which contains a wound electrode
`
`separator assembly, and to a method for its production.” Ex. 1001, 1:21–24.
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`Figure 1A of the ’776 patent, as annotated by Patent Owner, is
`
`reproduced below (Prelim. Resp. 5):
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`Figure 1A is a schematic cross-section of a preferred button cell of the
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`’776 patent. Id. at 2:62–63. As shown in Figure 1A, button cell 100
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`comprises metal cup part 101 and metal top part 102, which act as two metal
`
`housing halves. Id. at 6:57–58. Seal 103 lies between the two halves of the
`
`housing, allowing the two housing halves to be connected together in a
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`“leaktight” fashion. Id. at 6:58–60. As connected, button cell 100 has a
`
`plane bottom region 104 and plane top region 105, which act as poles for the
`
`button cell from which current may be drawn by a load. Id. at 6:60–64.
`
`
`
`Assembly 108 is formed of strip-shaped electrodes and strip-shaped
`
`separators that are arranged and then rolled into a spiral-shaped winding. Id.
`
`at 7:4–9. The assembly is wound on winding core 109 (a hollow plastic
`
`cylinder) at the center of button cell 100. Id. at 7:9–15. Metal foils 110 and
`
`111 are connected to the electrodes and act as conductors, with insulating
`
`elements 112 and 113 shielding the conductors from the end sides of the
`
`winding. Id. at 7:15–17.
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`Metal foils 110 and 111 are welded by laser 114, preferably in a
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`location in the sub-region that delimits the axial cavity at the center of the
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`winding. Id. at 7:24–29. This creates a weld bead that passes fully through
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`the housing of button cell 100 from the outside inward and firmly connects
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`metal foils 110 and 111 to the inner side of the housing. Id. at 7:29–34.
`
`E. Illustrative Claim
`
`Petitioner challenges claims 1–30 of the ’776 patent. Pet. 14.
`
`Claim 1, reproduced below, is the only independent claim of the ’776 patent
`
`and is illustrative of the challenged claims:
`
`1. A method for producing a button cell, the method
`comprising:
`
`providing a metal cell cup, the metal cell cup having a cell cup
`plane region connected to a cell cup lateral surface region;
`
`
`providing a metal cell top, the metal cell top having a cell top
`plane region connected to a cell top lateral surface region;
`
`
`providing a cylindrical electrode winding, the electrode winding
`having a first end side, a second end side, and an outer side,
`the electrode winding being formed from a multi- layer
`assembly that is wound in a spiral shape about an axis, the
`multi-layer assembly including:
`
`
`
`a positive electrode formed from a first current collector
`coated with a first electrode material,
`
` a
`
` a
`
` negative electrode formed from a second current collector
`coated with a second electrode material, and
`
` separator disposed between the positive electrode and the
`negative electrode;
`
`
`connecting a first conductor to one of the first current collector
`or the second current collector;
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`placing the electrode winding into the cell top;
`
`inserting the cell top into the cell cup to form a housing in
`which a strip-shaped first portion of the first conductor lies
`flat between (i) the first end side of the electrode winding and
`(ii) a first plane region selected from the cell cup plane region
`and the cell top plane region, the strip-shaped first portion of
`the first conductor having a maximum length that is less than
`a diameter of the first end side of the electrode winding; and
`
`
`welding, after inserting the cell top into the cell cup to form the
`housing, the strip-shaped first portion of the first conductor to
`a surface of the first plane region located in the interior of the
`housing.
`
`
`Ex. 1001, 8:66–9:35.
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1–30 would have been unpatentable on
`
`the following grounds (Pet. 15):
`
`Claims Challenged
`1–30
`1–30
`
`35 U.S.C. §1
`103
`103
`
`Reference(s)/Basis
`Kannou2, Martin3
`Kannou, Martin, Myerberg4
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. The ’776 patent issued from a series of divisional
`applications that claim priority to PCT Application No.
`PCT/EP2010/058637, filed June 18, 2010. Ex. 1001, code (62).
`Accordingly, on this record, we understand that the pre-AIA version of these
`statutes apply. See 35 U.S.C. § 100(i)(2).
`2 JP Patent Publication No. 2003-31266, published January 31, 2003.
`Ex. 1005 (“Kannou”).
`3 US 8,632,907 B2, issued January 21, 2014. Ex. 1006 (“Martin”).
`4 US Patent Publication No. 2007/0117011 A1, published May 24, 2007.
`Ex. 1010 (“Myerberg”).
`
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`Claims Challenged
`15, 16
`
`35 U.S.C. §1
`103
`
`25
`
`103
`
`Reference(s)/Basis
`Kannou, Martin, Kubota5
`Kannou, Martin, Lampe-
`Onnerud6
`
`
`In support of its grounds for unpatentability, Petitioner relies upon the
`
`declaration of William H. Gardner. Ex. 1003.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In this proceeding, the claims of the ’776 patent are construed “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).” 37 C.F.R. § 42.100(b).
`
`Under that standard, the words of a claim are generally given their “ordinary
`
`and customary meaning,” which is the meaning the term would have had to
`
`a person of ordinary skill at the time of the invention, in the context of the
`
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312–13 (Fed. Cir. 2005) (en banc).
`
`Neither party asserts that any terms of the ’776 require construction
`
`for purposes of this Decision. Pet. 24; Prelim. Resp. 12. And, upon review
`
`of the parties’ arguments and supporting evidence, we agree that no terms of
`
`the ’776 patent require construction. See Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”)).
`
`
`5 US 5,654,114, issued August 5, 1997. Ex. 1009 (“Kubota”).
`6 US 7,811,708 B2, issued October 12, 2010. Ex. 1011 (“Lampe-Onnerud”).
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`B. Claims 1–30 over Kannou and Martin
`
`Petitioner contends the subject matter of claims 1–30 would have been
`
`obvious over the combined disclosures of Kannou and Martin. Pet. 37–74.
`
`1. Kannou
`
`Kannou discloses “a flat-type non-aqueous secondary battery with
`
`improved discharge capacity.” Ex. 1005, code (57). Kannou notes that in
`
`order to maximize the space used in a battery, it was known to make the
`
`height in the direction of the central axis of the roll smaller than the size in
`
`the direction perpendicular to the central axis. Id. ¶ 5. In one particular
`
`embodiment of such a battery, however, a “high discharge capacity cannot
`
`be obtained because the electrical connection is made by contact between” a
`
`tab and the container. Id. ¶ 6. To resolve this problem, Kannou discloses a
`
`battery wherein the end portions of the positive and negative electrode
`
`current collector protrude to directly contact the inner surface of the positive
`
`electrode and negative electrode container, respectively. Id. ¶¶ 8, 14, 15.
`
`According to Kannou, such a configuration allows for a battery with a
`
`significantly enhanced discharge capacity. Id. ¶ 43.
`
`Figure 1 of Kannou, as annotated by Patent Owner, is reproduced
`
`below. Prelim. Resp. 26; see also Pet. 25 (providing a similar annotated
`
`version of Figure 1 of Kannou).
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`As shown in annotated Figure 1, electrode group 4 is stored in a sealed
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`container formed by crimping cylindrical positive electrode container 1 to
`
`cylindrical negative electrode container 2, with an insulating gasket 3
`
`disposed between the two parts around the edge of the sealed container.
`
`Ex. 1005 ¶ 39. Electrode group 4 is composed of a spirally wound
`
`laminated member having a positive electrode and positive electrode current
`
`collector and a negative electrode and negative electrode current collector,
`
`with a separator 5 disposed between these layers. Id. ¶¶ 8, 10, 39. As
`
`shown in Figure 1, negative electrode current collector 6 protrudes from the
`
`roll surface and is bent to the inner circumference to contact the inner
`
`surface of negative electrode container 2. Id. Likewise, positive electrode
`
`current collector 7 protrudes from the second roll surface and is bent to the
`
`inner circumference to contact the inner surface of positive electrode
`
`container 1. Id.
`
`Kannou notes that when the length of the electrode group in the
`
`direction perpendicular to the roll axis is made longer than the length in the
`
`roll axis direction, “the electrode group is easily deformed into a telescoping
`
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`roll shape by handling or the like during manufacturing, resulting in roll
`
`shifting and disintegration.” Id. ¶ 41. In Kannou’s inventive battery,
`
`however, “the electrodes and separator near the center of the roll surface can
`
`be restrained from protruding outward by the bent part, thereby reducing roll
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`shifting and disintegration of the electrode group during manufacturing.” Id.
`
`In addition to its inventive battery design, Kannou also discloses a
`
`different design that it uses as a comparative example. Id. ¶¶ 55–59, 65
`
`(Table 1). Figures 6 and 7 of Kannou depict portions of this comparative
`
`example (Comparative Example 1) and are reproduced below, as annotated
`
`by Patent Owner. Prelim. Resp. 28; see also Pet. 42, 44 (Petitioner
`
`providing similar annotated versions of Figures 6 and 7 of Kannou).
`
`
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`Figure 6 of Kannou (left) is a plan view illustrating the positional
`
`relationship between the positive and negative electrodes and the separator
`
`of the electrode group in the battery of Comparative Example 1. Ex. 1005
`
`¶ 68. Figure 7 (right) is a schematic diagram of the electrode group of
`
`Comparative Example 1. Id.
`
`As show in Figure 6, in the battery of Comparative Example 1 the
`
`“positive electrode active material-containing layer was removed at the end
`
`part 13 in the short side direction of the positive electrode, and an aluminum
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`tab 14 was welded to the positive electrode.” Id. ¶ 56. Likewise, the
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`“negative electrode active-material containing layer at the end part 15 in the
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`short side direction of the negative electrode was removed, and then a nickel
`
`tab 16 was welded to the negative electrode.” Id. ¶ 57. A porous
`
`polyethylene film acts as separator 17 and is placed between the positive and
`
`negative electrodes, as well as on the positive side of the laminate member.
`
`Id. ¶ 58. As shown in Figure 7, the resulting laminate member is then rolled
`
`into a spiral shape and “the roll end part of the resulting rolled body” is
`
`secured with adhesive tape 18 “to obtain an electrode group 19 having
`
`separators [that] protrude from both roll surfaces.” Id. This rolled body is
`
`then placed within a housing similar to that shown above in Figure 1. Id.
`
`¶ 59.
`
`The batteries of inventive Example 1 and Comparative Example 1 of
`
`Kannou (as well as inventive Example 2 and Comparative Example 27) were
`
`then tested for discharge capacity, internal resistance, and roll shifting. Id.
`
`¶¶ 62–65. The results from these tests are provided in Table 1, below:
`
`
`
`
`7 The battery of inventive Example 2 differs from that of inventive
`Example 1 in that only the ends of the positive electrode protrude from the
`separator assembly. Ex. 1005 ¶¶ 51–52. The battery of Comparative
`Example 2 differs from that of Comparative Example 1 in that notches were
`formed in the positive and negative current collectors that protrude from the
`separator assembly. Id. ¶ 60.
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`Table 1 shows the results for the first, fiftieth, and one-hundredth discharge
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`cycle for each battery tested, as well as the number of roll shifting events per
`
`100 parts experienced by each battery type. Id. ¶ 65.
`
`
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`As set forth in Table 1, Kannou reports that the battery of Example 1
`
`has a higher discharge capacity and lower internal resistance than the battery
`
`of Comparative Example 1. Id. Moreover, the battery of Example 1 had
`
`zero roll shifting events per 100 parts as compared to eight roll shifting
`
`events per 100 parts for the battery of Comparative Example 1. Id.
`
`2. Martin
`
`Martin discloses “[a]n electrochemical cell [that] includes components
`
`that are welded from an external source after the components are assembled
`
`in a cell canister.” Ex. 1006, code (57). Figure 3A of Martin is reproduced
`
`below:
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`
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`Figure 3A is “a cross-sectional view of a battery cell design utilizing an
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`external laser welding of electrode tabs.” Id. at 3:14–15, 3:52–53. In the
`
`battery of Figure 3A, end cap insert 120 and jellyroll core insert 140 are
`
`disposed within an exemplary high power lithium ion battery cell 100 and
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`end cap insert 120 is securely affixed to battery cell 100 via rivet 121. Id. at
`
`3:50–54, 4:11–14. Electrode tabs 130, which extend from the jelly roll core,
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`are overlapped and positioned between the lower portion of end cap
`
`insert 120 and the upper portion of jelly roll core insert 140. Id. at 3:50–60.
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`“Externally generated laser energy 110” is then “directed at the surface of
`
`the cap insert 120, which subsequently penetrates and welds end cap
`
`insert 120 to the underlying tabs 130 and supporting core insert 140 by
`
`forming laser joining posts or weld nuggets 150.” Id. at 3:61–65.
`
`
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`Martin explains that core insert 140 prevents laser energy from
`
`damaging the jelly roll during welding and that the cup like design of cap
`
`insert 120 “restricts a keyhole welding path and keeps spatter to the cell
`
`exterior,” thereby “eliminating the possibility of generating small, free
`
`floating metallic particles and molten materials inside of the electrochemical
`
`cell.” Id. at 1:65–2:5, 2:53–58, 3:65–4:4, 4:19–24.
`
`3. Claim 1
`
`Petitioner contends that the battery of Kannou’s Comparative
`
`Example 1 discloses the majority of the limitations of claim 1, including:
`
`(1) providing a metal cell cup and top that have a cell top plane region and a
`
`top plane region connected to a lateral surface region (Pet. 39–40);
`
`(2) providing a cylindrical electrode winding formed from a multi-layer
`
`assembly that is wound in a spiral shape about an axis and comprises a
`
`positive electrode and negative electrode coated with first and second
`
`electrode materials, as well as a separator disposed between the positive and
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`negative electrodes (id. at 40–42); (3) connecting conductors to first and
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`second current collectors (id. at 42); and (4) placing the electrode winding
`
`into a cell top and lying the conductor between the first side of the electrode
`
`winding and first plane region of the cell cup. (id. at 42–48). Petitioner
`
`concedes, however, that Kannou does not disclose welding the strip portion
`
`of the first conductor to a surface of the interior of the housing using a weld
`
`that is formed after inserting the cell top into the cell cup to form the
`
`housing. Id. at 37–38, 47–48.
`
`Petitioner contends Martin discloses assembling a battery cell and
`
`housing before welding and that one of ordinary skill in the art would have
`
`sought to use Martin’s welding process in Kannou because it was understood
`
`that the welding process of Martin “ensures the tabs maintain contact with
`
`the housing halves, thereby improving the electrical connectivity and
`
`stability of the cell.” Id. at 38 (citing Ex. 1003 ¶ 256). According to
`
`Petitioner, one of ordinary skill in the art would have understood that the
`
`combination of Kannou and Martin would produce predictable results
`
`because “applying welding at the appropriate places to improve battery
`
`reliability” was well known in the art and requires no more than routine
`
`optimization to accommodate any differences between the designs. Id. at
`
`38–39 (citing Ex. 1003 ¶ 257).
`
`Patent Owner contends Petitioner’s arguments are insufficient to
`
`support institution because Kannou actually teaches away from using tab
`
`connectors in this type of battery, encouraging instead the use of direct
`
`connections between the current collectors and the housing in order to
`
`improve battery performance. Prelim. Resp. 36–41. Patent Owner further
`
`contends that Petitioner and Mr. Gardner do not account for the “vast
`
`differences” in design between Kannou’s button cell and Martin’s
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`conventional battery, including Martin’s use of core insert 140 and end cap
`
`insert 120 to prevent the weld nugget 150 from penetrating into the internal
`
`structures of the battery. Id. at 43–45.
`
`Upon review of the parties’ arguments and supporting evidence, we
`
`agree with Patent Owner that Petitioner fails to adequately explain why one
`
`of ordinary skill in the art would have sought to use the welding technique of
`
`Martin when assembling the battery of Comparative Example 1.
`
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (noting
`
`that the Board must “be careful not to allow hindsight reconstruction of the
`
`references . . . without any explanation as to how or why the references
`
`would be combined to produce the claimed invention.”) (quoting Kinetic
`
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir.
`
`2012)). Nor has Petitioner demonstrated sufficiently that one of ordinary
`
`skill in the art would have had a reasonable expectation of success in
`
`combining Kannou and Martin to arrive at the subject matter of claim 1. See
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`
`1367 (Fed. Cir. 2016) (explaining that a petitioner must demonstrate that one
`
`of ordinary skill in the art would have had a reasonable expectation of
`
`success in combining the identified references to meet the limitations of the
`
`claimed invention).
`
`First, as noted by Patent Owner, Petitioner selects the battery of
`
`Comparative Example 1 for further improvement, which has a lower
`
`discharge capacity and higher internal resistance than the inventive examples
`
`disclosed in Kannou. This battery is also subject to roll shifting at a rate of
`
`8 parts per hundred, which results in disintegration of the electrode during
`
`manufacturing. Ex. 1005 ¶¶ 41, 65 (Table 1), 66. Petitioner provides no
`
`persuasive explanation as to why one of ordinary skill in the art would have
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`selected the battery of Comparative Example 1 of Kannou from amongst the
`
`prior art battery designs disclosed in the record, and then sought to improve
`
`it by applying the welding process of Martin. For example, Petitioner and
`
`Mr. Gardner do not address the fact that they select the battery of
`
`Comparative Example 1 for further development, as opposed to the
`
`inventive battery design that is repeatedly praised in the reference as
`
`overcoming the limitations of prior art batteries, including those using
`
`multiple tabs to form an electrical connection within the container or
`
`housing.
`
`We recognize that a petitioner is not necessarily precluded in an
`
`obviousness ground from relying on a comparative example, or an
`
`embodiment with lower performance than another embodiment in the same
`
`or a different reference. But when the reference itself criticizes the
`
`particular design selected by the petitioner and also notes that nearly 10% of
`
`such batteries are subject to disintegration during manufacturing due to their
`
`design, it is incumbent upon a petitioner to provide some explanation as to
`
`why one of ordinary skill in the art would have selected such a battery for
`
`further development or improvement. Ex. 1005 ¶ 6 (noting that batteries in
`
`which tabs are used to form the electrical connection between the negative
`
`and positive electrodes could not solve the problem of providing a battery
`
`with high discharge capacity), ¶¶ 41, 65 (indicating that the design of
`
`Comparative Example 1 is subject to disintegration during manufacturing).
`
`Petitioner fails to adequately provide such an explanation in the Petition;
`
`indeed, Petitioner does not even address the structural, electrical, and
`
`manufacturing differences between the inventive battery of Example 1 and
`
`the battery of Comparative Example 1 of Kannou.
`
`16
`
`VARTA Ex. 2005 Page 16 of 20
`
`
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`Second, the welding method of Martin utilizes end cap insert 120,
`
`jellyroll core insert 140, and rivet 121. Rivet 121 serves to securely affix
`
`end cap insert 120 to battery cell 100, and jellyroll core insert 140 and end
`
`cap insert 120 are used to securely bond electrode tabs 130 while at the same
`
`time eliminating the risk of spatter of metallic particles inside the cell. Id. at
`
`3:65–4:24. Petitioner does not explain how these components could be
`
`successfully implemented in the coin-type battery of Kannou or, in the
`
`alternative, how these structural elements could be successfully omitted and
`
`still achieve an acceptable button cell design and weld.
`
`Petitioner does assert that applying the welding method of Martin in
`
`the battery of Kannou would require “no more than routine optimization to
`
`accommodate any difference between the designs.” Pet. 38–39 (citing
`
`Ex. 1003 ¶ 257). Petitioner does not explain why this is true, however, and
`
`the cited portion of Mr. Gardner’s declaration does not even discuss the end
`
`cap insert or rivet of Martin, focusing instead on Martin’s general use of
`
`welding. Ex. 1003 ¶ 257 (Mr. Gardner asserting that the combination of
`
`Kannou and Martin “would involve only the application of a known
`
`technique (welding) to the cell housing of Kannou in order to generate a
`
`welded connection between the output conductors and the housing”).
`
`In view of the foregoing, Petitioner has not explained sufficiently for
`
`purposes of institution how or why one of ordinary skill in the art would
`
`have combined the disclosures of Kannou and Martin to arrive at the subject
`
`matter of claim 1 of the ’776 patent with a reasonable expectation of
`
`success. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood that claim 1 would have been obvious over these references.
`
`17
`
`VARTA Ex. 2005 Page 17 of 20
`
`
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`4. Dependent Claims 2–30
`
`Claims 2–30 depend, directly or indirectly, from independent claim 1.
`
`Ex. 1001, 9:36–12:39. Petitioner’s arguments with respect to these claims
`
`do not remedy the deficiencies noted above with respect to claim 1. Thus,
`
`Petitioner has not demonstrated a reasonable likelihood that claims 2–30
`
`would have been obvious over Kannou and Martin.
`
`C. Claims 1–30 over Kannou, Martin, and Myerberg
`
`Petitioner contends the subject matter of claims 1–30 would have been
`
`obvious over the combined disclosures of Kannou, Martin, and Myerberg.
`
`Pet. 75–80. In this ground, Petitioner relies upon Myerberg for its disclosure
`
`of using flat current collection tabs and an insulator. Id. at 75–76.
`
`Petitioner’s arguments for this ground, however, do not remedy the
`
`deficiencies noted above with respect to claim 1 and the proposed
`
`combination of Kannou and Martin. Accordingly, Petitioner fails to
`
`demonstrate a reasonable likelihood that claims 1–30 would have been
`
`obvious over Kannou, Martin, and Myerberg.
`
`D. Claims 15 and 16 over Kannou, Martin and Kubota and Claim 25
`over Kannou, Martin and Lampe-Onnerud
`
`Petitioner contends the subject matter of claims 15 and 16 would have
`
`been obvious over the disclosures of Kannou, Martin, and Kubota and the
`
`subject matter of claim 25 would have been obvious over the combined
`
`disclosures of Kannou, Martin, and Lampe-Onnerud. Pet. 81–86.
`
`Petitioner’s arguments with respect to these proposed combinations do not
`
`remedy the deficiencies notes above with respect to claim 1 and the
`
`combination of Kannou and Martin. Accordingly, Petitioner fails to
`
`demonstrate a reasonable likelihood that claims 15, 16, and 25 would have
`
`been obvious over any of these proposed combinations.
`
`18
`
`VARTA Ex. 2005 Page 18 of 20
`
`
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`III. CONCLUSION
`
`For the reasons discussed above, Petitioner does not demonstrate a
`
`reasonable likelihood that it would prevail in showing that any of the
`
`challenged claims (claims 1–30) are unpatentable. As such, the Petition is
`
`denied.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied.
`
`19
`
`VARTA Ex. 2005 Page 19 of 20
`
`
`
`IPR2021-01206
`Patent 10,971,776 B2
`
`FOR PETITIONER:
`
`Paul Ragusa
`Jennifer Tempesta
`BAKER BOTTS LLP
`paul.ragusa@bakerbotts.com
`jennifer.tempesta@bakerbotts.com
`
`Scott McKeown
`ROPES & GRAY LLP
`Scott.mckeown@ropesgray.com
`
`
`FOR PATENT OWNER:
`
`H. Michael Hartmann
`Wesley Mueller
`Robert Wittmann
`Paul Filbin
`Brent Chatham
`LEYDIG, VOIT & MAYER, LTD
`mhartmann@leydig.com
`wmueller@leydig.com
`bwittmann@leydig.com
`pfilbin@leydig.com
`bchatham@leydig.com
`
`20
`
`VARTA Ex. 2005 Page 20 of 20
`
`
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