Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: January 5, 2022
`
`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.
`
`IPR2021-01207
`Patent 10,804,506 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. 2006 Page 1 of 18
`EVE Energy v. VARTA
`IPR2022-01484
`
`

`

`IPR2021-01207
`Patent 10,804,506 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 1–20 (all claims) of U.S. Patent No. 10,804,506 B2
`
`(Ex. 1001, “the ’506 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 ’506 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 ’506 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.
`
`2
`
`VARTA Ex. 2006 Page 2 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`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 IPR2021-01206 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 ’506 Patent
`
`The ’506 patent is directed to “button cells having a housing
`
`consisting of two metal housing halves that contains a wound electrode
`
`separator assembly, and to a method for its production.” Ex. 1001, 1:18–21.
`
`Figure 1A of the ’506 patent, as annotated by Patent Owner (Prelim.
`
`Resp. 5), is reproduced below:
`
`3
`
`VARTA Ex. 2006 Page 3 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`
`
`Figure 1A is a schematic cross-section of a preferred button cell of the
`
`’506 patent. Ex. 1001, 3:22–23. As shown in Figure 1A, button cell 100
`
`comprises metal cup part 101 and metal top part 102, which act as two metal
`
`housing halves. Id. at 7:18–19. Seal 103 lies between the two halves of the
`
`housing, allowing the two housing halves to be connected together in a
`
`“leaktight fashion.” Id. at 7:19–21. As connected, button cell 100 has a
`
`plane bottom region 104 and plane top region 105, which act as poles of the
`
`button cell from which current may be drawn by a load. Id. at 7:21–25.
`
`
`
`Assembly 108 is formed of strip-shaped electrodes and strip-shaped
`
`separators, which are rolled into a spiral-shaped winding. Id. at 7:32–36.
`
`The assembly is wound on winding core 109 (a hollow plastic cylinder) at
`
`the center of button cell 100. Id. at 7:37–40. 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 7:43–47.
`
`4
`
`VARTA Ex. 2006 Page 4 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`
`
`Metal foils 110 and 111 are welded by laser 114, preferably in a
`
`location in the sub-region that delimits the axial cavity at the center of the
`
`winding. Id. at 7:52–57. This creates a weld bead that passes fully through
`
`the housing of button cell 100 from the outside inward and firmly connects
`
`metal foils 110 and 111 to the inner side of the housing. Id. at 7:57–62.
`
`E. Illustrative Claim
`
`Petitioner challenges claims 1–20 of the ’506 patent. Pet. 11–12.
`
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1. A rechargeable button cell comprising:
`
` a
`
` housing including metal housing halves separated from one
`another by an electrically insulating injection-molded seal or
`film seal, one of the housing halves including a planar bottom
`region and another housing half including a planar top region
`substantially parallel to the planar bottom region, the housing
`having a height-to-diameter ratio of less than one;
`
`
`an electrode separator assembly comprising a positive electrode
`and a negative electrode disposed inside the housing, wherein
`the electrode separator assembly is in the form of a winding,
`end sides of the winding respectively facing in directions of
`the planar bottom region and the planar top region such that
`layers of the electrode separator assembly are oriented
`essentially orthogonally to the planar bottom region and the
`planar top region of the housing, the winding having a
`substantially centrally located axis and an open cavity
`extending along the axis interiorly of the winding, the open
`cavity having axially spaced opposite ends, the planar top and
`bottom regions of the housing each having a subregion, each
`subregion disposed both radially and axially adjacent one of
`the ends of the open cavity, the positive electrode and the
`negative electrode each including a current collector in the
`form of a metal foil or a metal mesh coated on both sides with
`active electrode material, and each of the current collectors
`comprises an uncoated section;
`
`
`
`5
`
`VARTA Ex. 2006 Page 5 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`two metal foils functioning as conductors and electrically
`connecting the positive and the negative electrode to the
`housing halves, wherein both metal foils bear flat on an inner
`surface of the planar bottom region or the planar top region,
`one of the metal foils is attached by a weld to one of the
`uncoated sections and one of the planar bottom and top
`regions, another one of the metal foils is attached by a weld to
`another one of the uncoated sections and to another one of the
`planar bottom and top regions; and
`
`
`at least one insulator disposed to prevent direct electrical
`contact between one of the metal foil conductors and an
`adjacent one of the end sides of the electrode separator
`assembly,
`
`
`wherein the button cell is configured as a secondary lithium ion
`cell, and the open cavity includes no winding core.
`
`
`Ex. 1001, 9:2–46.
`
`F. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1–20 would have been unpatentable on
`
`the following grounds (Pet. 11–12):
`
`Claims Challenged
`1–9, 11–19
`
`35 U.S.C. §1
`103
`
`Reference(s)/Basis
`Kannou2, Kawamura3
`
`
`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 ’506 patent issued from a divisional application that
`claims 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 Patent Publication No. US2007/0218356 A1, published September 20,
`2007. Ex. 1007 (“Kawamura”).
`
`6
`
`VARTA Ex. 2006 Page 6 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`Claims Challenged
`10, 20
`1–9, 11–19
`1–9, 11–19
`
`35 U.S.C. §1
`103
`103
`103
`
`10, 20
`
`103
`
`Reference(s)/Basis
`Kannou, Kawamura, Kaun4
`Kannou, Kawamura, Kubota5
`Kannou, Kawamura, Myerberg6
`Kannou, Kawamura, Kaun,
`Myerberg
`
`
`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 ’506 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 ’506 patent require
`
`construction for purposes of this Decision. Pet. 21; Prelim. Resp. 13–14.
`
`And, upon review of the parties’ arguments and supporting evidence, we
`
`agree that no terms of the ’506 patent require construction. See Nidec Motor
`
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`
`4 US Patent Publication No. US2005/0233212 A1, published October 20,
`2005. Ex. 1008 (“Kaun”).
`5 US 5,654,114, issued August 5, 1997. Ex. 1009 (“Kubota”).
`6 US Patent Publication No. 2007/0117011 A1, published May 24, 2007.
`Ex. 1010 (“Myerberg”).
`
`7
`
`VARTA Ex. 2006 Page 7 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`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.”)).
`
`B. Claims 1–9 and 11–19 over Kannou and Kawamura
`
`Petitioner contends the subject matter of claims 1–9 and 11–19 would
`
`have been obvious over the combined disclosures of Kannou and
`
`Kawamura. Pet. 35–62.
`
`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 length 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. ¶¶ 6–7.
`
`Figure 1 of Kannou, as annotated by Patent Owner, is reproduced
`
`below. Prelim. Resp. 28; see also Pet. 22 (Petitioner providing a similar
`
`annotated version of Figure 1 of Kannou).
`
`8
`
`VARTA Ex. 2006 Page 8 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`
`
`As shown in annotated Figure 1, electrode group 4 is stored in a sealed
`
`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 fabricated by rolling a positive
`
`electrode, separator 5, and negative electrode in a spiral shape. Id. 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
`
`roll shape by handling or the like during manufacturing, resulting in roll
`
`shifting and disintegration.” Id. ¶ 41. In Kannou’s inventive battery,
`
`9
`
`VARTA Ex. 2006 Page 9 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`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
`
`shifting and disintegration of the electrode group during manufacturing.” Id.
`
`In addition to its inventive battery design, Kannou also discloses a
`
`different battery 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. 30; see also Pet. 43, 46 (Petitioner
`
`providing similar annotated versions of Figures 6 and 7 of Kannou).
`
`
`
`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 shown 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
`
`tab 14 was welded to the positive electrode.” Id. ¶ 56. Likewise, the
`
`“negative electrode active-material containing layer at the end part 15 in the
`
`short side direction of the negative electrode was removed, and then a nickel
`
`10
`
`VARTA Ex. 2006 Page 10 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`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 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:
`
`Table 1 shows the results for the first, fiftieth, and one-hundredth discharge
`
`cycle for each battery tested, as well as the number of roll shifting events per
`
`100 parts experienced by each battery type. Id. ¶ 65.
`
`
`
`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
`
`
`
`
`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.
`
`11
`
`VARTA Ex. 2006 Page 11 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`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. Kawamura
`
`Kawamura discloses a lithium secondary battery with improved
`
`capacity and cycle-characteristics. Ex. 1007 ¶ 2. Figure 5 of Kawamura is
`
`reproduced below:
`
`
`
`Figure 5 is a sectional view showing the structure of the spiral-wound type
`
`cylindrical battery of one embodiment of Kawamura. Id. ¶ 30. The battery
`
`of Figure 5 has negative electrode active material layer 502 formed on
`
`negative electrode current collector 501 and positive electrode active
`
`material 505 formed on positive electrode current collector 504. Id. ¶¶ 92–
`
`12
`
`VARTA Ex. 2006 Page 12 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`93. Ionic conductor 507 is composed of a separator that retains an
`
`electrolyte solution therein. Id. ¶ 93. In combination, these various layers
`
`“form a stack” that is “rolled up multiple times.” Id.
`
`
`
`Positive electrode 506 is connected to positive electrode cap 509 “by
`
`way of the positive electrode lead 513” and negative electrode 503 is
`
`connected to negative electrode cap 508 “by way of negative electrode lead
`
`512.” Id. ¶ 95. Negative electrode lead 512 and positive electrode lead 513
`
`are spot welded to the negative and positive electrode caps, respectively. Id.
`
`¶ 116. Insulating plates 511 isolate the cylindrical electrode stack from the
`
`positive and negative electrode caps. Id. ¶¶ 92, 94.
`
`3. Analysis: Independent 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 top plane region connected
`
`to a lateral surface region (Pet. 37–38); (2) a housing having a height-to-
`
`diameter ratio of less than one (id. at 39); (3) an electrode separator
`
`assembly comprising a positive and negative electrode disposed inside the
`
`housing with end sides facing the planar bottom region of the positive and
`
`negative electrode (id. at 39–41); (4) a winding having a substantially
`
`centrally located axis and an open cavity positioned along the axis interiorly
`
`of the winding (id. at 41); (5) the planar top and bottom regions having a
`
`sub-region that is disposed both radially and axially adjacent one of the ends
`
`of the open cavity (id.); (6) the positive and negative electrodes each having
`
`a current collector in the form of a metal foil coated with active electrode
`
`material (id. at 42); (7) two metal foils functioning as conductors and
`
`electrically connecting the positive and negative electrodes to the housing
`
`halves and bearing flat on an inner surface of the planar bottom and top
`
`13
`
`VARTA Ex. 2006 Page 13 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`regions (id. at 42–44); and (8) at least one insulator disposed to prevent
`
`direct electrical contact between the metal conductors and the end side of the
`
`electrode separator assembly and wherein the button cell is configured as a
`
`secondary lithium ion battery and has no winding core (id. at 45–48).
`
`Petitioner concedes that Kannou does not disclose welding the
`
`electrodes to the positive and negative planar bottom and top regions (the
`
`flat housing), but contends one of ordinary skill in the art would have sought
`
`to use the spot welding technique of Kawamura in the battery of Kannou in
`
`order to improve “the electrical connectivity and stability of the cell.” Id. at
`
`35, 44–46. Petitioner further contends that one of ordinary skill in the art
`
`would have sought to add an additional insulator between the tabs and the
`
`adjacent end sides of the electrode group of Kannou in order to further
`
`protect against short circuits, as disclosed in Kawamura. Id. at 36, 46–47.
`
`Patent Owner contends Petitioner’s arguments and evidence do not
`
`support institution because Petitioner relies on the battery of Comparative
`
`Example 1 of Kannou, and not its inventive battery design. Prelim. Resp.
`
`39–41. According to Patent Owner, one of ordinary skill in the art
`
`considering Kannou’s teaching of removing output conductors in favor of
`
`direct contact between the electrodes and the housing would not have then
`
`selected the battery of Comparative Example 1 for improvement, as it was
`
`“provided to illustrate the problems associated with using an output
`
`conductor.” Id. at 41 (asserting that Kannou teaches one of ordinary skill in
`
`the art to eliminate the use of output conductors in favor of short, axial
`
`current paths that are provided by direct contact between the electrodes and
`
`the housing).
`
`Upon review of the parties’ arguments and supporting evidence, we
`
`agree with Patent Owner that Petitioner has failed to adequately explain why
`
`14
`
`VARTA Ex. 2006 Page 14 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`one of ordinary skill in the art would have sought to modify the battery of
`
`Comparative Example 1 to arrive at the subject matter of claim 1. See
`
`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)).
`
`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
`
`selected the battery of Comparative Example 1 from amongst the potential
`
`battery designs disclosed in the record, and then sought to improve this
`
`battery by using an internal weld. Indeed, Petitioner and Mr. Gardner do not
`
`even discuss 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 electrical connections
`
`between the positive and negative current collectors and the container or
`
`housing. Pet. 21–23 (discussing Kannou’s disclosures), 42–44; Ex. 1003
`
`¶¶ 88–92 (Mr. Gardner discussing Kannou’s disclosures), 147–149.
`
`We recognize that a petitioner is not necessarily precluded in an
`
`obviousness ground from relying on a comparative example or an
`
`15
`
`VARTA Ex. 2006 Page 15 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`embodiment with lower performance than another embodiment in the same
`
`or a different reference. But when the reference itself disparages 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
`
`that use tabs to form the electrical connection between the negative and
`
`positive electrodes and the container could not solve the problem of
`
`providing a battery with high discharge capacity), ¶¶ 41, 65 (indicating that
`
`the battery of Comparative Example 1 is subject to disintegration during
`
`manufacturing). Petitioner does not adequately provide such an explanation
`
`in the Petition, and fails to address the structural, electrical, or
`
`manufacturing differences between the inventive battery of Example 1 and
`
`the battery of Comparative Example 1 of Kannou.
`
`In view of the foregoing, we determine that Petitioner has not
`
`explained sufficiently for purposes of institution why one of ordinary skill in
`
`the art would have combined the disclosures of Kannou and Kawamura to
`
`arrive at the subject matter of claim 1 of the ’506 patent. Accordingly,
`
`Petitioner has not demonstrated a reasonable likelihood that claim 1 would
`
`have been obvious over these references.
`
`4. Independent Claim 11 and Dependent Claims 2–9 and 12–19
`
`Petitioner’s arguments with respect to independent claim 11 and
`
`dependent claims 2–9 and 12–19 do not remedy the deficiencies noted above
`
`for independent claim 1. Pet. 35–37, 48–62. Thus, Petitioner has not
`
`demonstrated a reasonable likelihood that claims 2–9 and 11–19 would have
`
`been obvious over Kannou and Kawamura.
`
`16
`
`VARTA Ex. 2006 Page 16 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 B2
`
`C. Claims 10 and 20 over Kannou, Kawamura, and Kaun; Claims 1–9
`and 11–19 over Kannou, Kawamura, and Kubota; and Claims 1–9
`and 11–19 over Kannou, Kawamura, and Myerberg
`
`Petitioner contends the subject matter of claims 10 and 20 would have
`
`been obvious over the combined disclosures of Kannou, Kawamura, and
`
`Kaun, and that the subject matter of claims 1–9 and 11–19 would have been
`
`obvious over either the combination of Kannou, Kawamura, and Kubota or
`
`the combination of Kannou, Kawamura, and Myerberg. Pet. 62–84. In each
`
`of these grounds, Petitioner relies on its reasons for combining Kannou and
`
`Kawamura discussed above. Id. at 62, 70–71, 78. Accordingly, for the
`
`reasons set forth above, Petitioner fails to demonstrate a reasonable
`
`likelihood that any of claims 1–20 would have been obvious over the
`
`combination of Kannou, Kawamura, and Kaun/Kubota/Myerberg.
`
`III. CONCLUSION
`
`For the reasons set forth herein, Petitioner does not demonstrate a
`
`reasonable likelihood that it would prevail in showing that any of the
`
`challenged claims (claims 1–20) are unpatentable. As such, the Petition is
`
`denied.
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied.
`
`
`
`
`
`
`
`
`
`
`
`17
`
`VARTA Ex. 2006 Page 17 of 18
`
`

`

`IPR2021-01207
`Patent 10,804,506 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
`
`18
`
`VARTA Ex. 2006 Page 18 of 18
`
`