UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EVE ENERGY CO., LTD.,
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`____________
`
`IPR2021-00474
`Patent 9,496,581 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claim Unpatentable
`Dismissing Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`VARTA Ex. 2007 Page 1 of 30
`EVE Energy v. VARTA
`IPR2022-01484
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EVE ENERGY CO., LTD.,
`Petitioner,
`
`v.
`
`VARTA MICROBATTERY GMBH,
`Patent Owner.
`____________
`
`IPR2021-00474
`Patent 9,496,581 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claim Unpatentable
`Dismissing Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`VARTA Ex. 2007 Page 1 of 30
`EVE Energy v. VARTA
`IPR2022-01484
`
`
`
`INTRODUCTION
`I.
`Eve Energy Co., Ltd. filed a Petition (Paper 2, “Pet.”) requesting the
`Board institute an inter partes review of claims 1–13 of U.S. Patent
`No. 9,496,581 B2 (Ex. 1001, “the ’581 patent”). Varta Microbattery GmbH,
`the owner of the ’581 Patent, filed a Preliminary Response (Paper 7,
`“Prelim. Resp.”). Each party identified itself as the sole real party-in-
`interest to this proceeding. Pet. 1; Paper 4, 2.
`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 ’581 patent. Paper 10 (“Decision on Institution” or “DI”). Pursuant
`to the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct.
`1348, 1355 (2018), and USPTO Guidance,1 we instituted review of all
`challenged claims on all asserted grounds. Id.
`Following institution of trial, Patent Owner filed a Patent Owner
`Response (Paper 16, “PO Resp.”), Petitioner filed a Reply (Paper 20, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 23, “Sur-reply”).
`After institution, Patent Owner filed a Contingent Motion to Amend
`(Paper 17, “Motion to Amend” or “MTA”), proposing substitute claims 26–
`38 for original claims 1–13, contingent on those original claims being found
`unpatentable. Petitioner filed an Opposition (Paper 21, “MTA Opp.), Patent
`
`1 In accordance with USPTO Guidance, “[i]f 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”).
`
`VARTA Ex. 2007 Page 2 of 30
`
`
`
`Owner filed a Reply in Support of its Motion (Paper 24, “MTA Reply”), and
`Petitioner filed a Sur-reply (Paper 27, “MTA Sur-reply”).
`In support of their respective positions, Petitioner relies on the
`testimony of Mr. Marc Juzkow (Ex. 1011, “Juzkow Declaration”; Ex. 1017,
`“Juzkow Supplemental Declaration”; Ex. 2006, “Juzkow Deposition”) and
`Mr. Jonathan Merz (Ex. 1013, 22, “Merz Translation Declaration”;
`Ex. 2011, “Merz Deposition”). Patent Owner relies on the testimony of
`Dr. Martin C. Peckerar (Ex. 2004, “Peckerar Declaration”; Ex. 2025,
`“Peckerar Supplemental Declaration”), Mr. Philipp Miehlich (Ex. 2008), and
`Dr. Hans Jurgen Lindner (Ex. 2009).
`An oral hearing was held on May 24, 2022, and a transcript of the
`hearing is included in the record (Paper 29, “Tr.”).
`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 not shown
`by a preponderance of the evidence that claim 13 of the ’581 patent is
`unpatentable. Petitioner’s challenges to claims 1–12 are moot in view of the
`Office’s subsequent cancellation of these claims. We dismiss as moot Patent
`Owner’s Revised Contingent Motion to Amend as to proposed substitute
`claims 26–38.
`
`A. Related Proceedings
`The parties indicate that the ’581 patent is the subject of multiple
`district court actions: VARTA Microbattery GmbH v. Samsung Electronics
`America, Inc., No. 2:20-cv-00029-JRG (E.D. Tex.); 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-
`
`VARTA Ex. 2007 Page 3 of 30
`
`
`
`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.
`PEAG, LLC d/b/a JLab Audio, 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.); VARTA Microbattery GmbH v. Guangdon Mic-Power New
`Energy Co., Ltd., No. 2:21-cv-00036-JRG (E.D. Tex.); VARTA Microbattery
`GmbH v. Audio Partnership LLC, et al., No. 2:21-cv-00037-JRG (E.D.
`Tex.); VARTA Microbattery GmbH v. PEAG, LLC d/b/a JLab Audio, 2:21-
`cv-0038-JRG (E.D. Tex.); and VARTA Microbattery GmbH v. GN Audio A/S
`et al., 2:21-cv-0134-JRG (D. Del.). Pet. 2–3; Paper 4, 2–3.
`The ’581 patent was also the subject of an inter partes review filed by
`another petitioner. See IPR2020-01211, Paper 1. In that proceeding, we
`held in our Final Written Decision that claims 1–12 of the ’581 patent were
`unpatentable, but granted Patent Owner’s Motion to Amend as to substitute
`claims 14–25. See id., Paper 48. The Office issued a Trial Certificate
`finally canceling claims 1–12 and entering claims 14–25 on April 11, 2022.
`
`B. The ’581 Patent (Ex. 1001)
`The ’581 patent is titled “Button Cells and Method for Producing
`Same” and issued November 15, 2016, with claims 1–13. Ex. 1001,
`codes (54), (45), 12:15–13:12. The ’581 patent describes a button cell that
`includes a housing cup and a top separated by a seal that forms a housing
`with parallel flat bottom and top areas, and an electrode-separator assembly
`including a flat positive and negative electrode, 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 side surfaces of the
`
`VARTA Ex. 2007 Page 4 of 30
`
`
`
`winding facing in an axial direction relative to the flat bottom and top areas.
`Id. at code (57), 9:34–39, 11:11–24. The ’581 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 3:22–30.
`According to the ’581 patent, it was known in the art to have button
`cells with electrode-separator assemblies contained within the housing, but
`the prior art button cells always contained these assemblies inserted flat such
`that the electrode layers are aligned essentially parallel to the flat bottom and
`top areas of the housing. Ex. 1001, 1:44–45, 3:36–39. The ’581 patent
`states that various problems occur in button cells that contain such
`electrode-separator assemblies, including increased scrap rates due to faults
`that can occur when the assemblies make contact with one another, as well
`as the potential that the assemblies will leak. Id. at 1:58–60, 1:66–2:4.
`The ’581 patent states it was also known in the art to close button cells
`in a liquid-tight manner by beading the edge of the cell cup over the cell top
`and that button cells without beading cannot be loaded as heavily in the axial
`direction as compared to button cells with a beaded-over cup edge,
`especially with respect to axial mechanical loads caused in the interior of the
`button cell. Id. at 2:5–7, 2:18–23. The ’581 patent explains that the axial
`forces, which may occur, for example, as a result of volume changes during
`charging and discharging processes, can lead to leaks more readily in button
`cells without beading than in button cells with beading. Id. at 2:23–29.
`Thus, the ’581 patent indicates there was a need in the art for a button cell
`
`VARTA Ex. 2007 Page 5 of 30
`
`
`
`that is resistant to mechanical loads in the axial direction and is
`manufactured without a beaded-over cup edge. Id. at 2:32–36.
`Figure 4 of the ’581 patent, reproduced below, illustrates a button cell
`according to an embodiment of the claimed invention.
`
`
`Figure 4 of the ’581 patent, above, shows button cell 400 including a
`housing comprising cup part 401 and top part 402, with seal 403 arranged
`therebetween, and an assembly of electrodes 407 and 408 and separators 405
`and 406, contained as spiral winding 404 within the housing. Id. at 11:11–
`21, Fig. 3. Top part 402 is inserted into cup part 401 such that the casing
`areas of top part 402 and cup part 401 overlap and the edge of cup part 401
`is not beaded over the edge of top part 402.
`The ’581 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 401. Id. at 11:21–24. The ’581 patent further
`discloses that insulating means 411 and 412 are arranged between the end
`faces of the winding and cup part 401 and top part 402. Id. at 11:28–31.
`
`VARTA Ex. 2007 Page 6 of 30
`
`
`
`Figure 5 of the ’581 patent, reproduced below, illustrates another
`
`embodiment of a button cell according to the claimed invention.
`
`
`Figure 5 of the ’581 patent, above, shows button cell 500 comprising cup
`part (cell cup) 501 and top part (cell top) 502 connected to one another,
`sealed by seal 510, which together form a housing with flat bottom area 503
`and flat top area 504 parallel to it. Id. at 11:35–41. The ’581 patent
`discloses that cell top 502 is inserted into cell cup 501 such that the casing
`areas of the cell top and the cell cup overlap and the edge of cell cup 501 is
`not beaded over edge 511 of cell top 502. Id. at 3:1–3, 11:44–51.
`
`The ’581 patent further discloses that button cell 500 contains an
`assembly within the housing comprising electrodes 508 and 509 and
`separators 507 in the form of a winding, whose end faces in the direction of
`flat bottom area 503 and flat top area 504 which is parallel to it. Id.
`at 11:52–59. The ’581 patent also discloses that the assembly is wound up
`on winding core 512 in the center of the button cell, and winding core 512
`and the electrodes and separators wound around it are aligned at right angles
`to flat bottom and flat top areas 503 and 504. Id. at 11:59–63.
`
`VARTA Ex. 2007 Page 7 of 30
`
`
`
`The ’581 patent explains that if the volume of the electrodes increases
`or decreases during a charging or discharging process, the mechanical forces
`that result act predominantly radially, and can be absorbed by the casing area
`of the button cell. Id. at 11:63–67. According to the ’581 patent, because of
`the right-angled alignment of the electrodes, radial forces can be absorbed
`much better than axial forces by the housing of the button cell, which results
`in the button cell having improved sealing characteristics. Id. at 3:52–56.
`
`C. Illustrative Claims
`Petitioner challenged claims 1–13 of the ’581 patent. Pet. 9. As noted
`above, the Office subsequently canceled claims 1–12 of the patent pursuant
`to the Final Written Decision in IPR2020-01211, leaving claim 13 as the
`sole remaining challenged claim. Nevertheless, because claim 13 depends
`from canceled claims 1, 10, and 11, we reproduce these claims below:
`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, and
`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,
`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, and
`one of the electrodes connects to the flat bottom area or
`the flat top area via an output conductor comprising a
`
`VARTA Ex. 2007 Page 8 of 30
`
`
`
`foil resting flat between an end face of the spiral
`winding and the flat top or the flat bottom area to which
`it is connected.
`10. A method of producing a button cell according
`to claim 1, comprising inserting an electrode-separator
`assembly with flat layer electrodes into the housing such
`that the flat layers of the electrode are aligned essentially
`at right angles to the flat bottom and top areas, wherein the
`housing comprises a metallic cup part and a metallic top
`part.
`11. The method as claimed in claim 10, wherein the
`electrode-separator assembly is inserted as a winding.
`Ex. 1001, 12:16–36, 12:64–13:4.
`
`Claim 13 reads as follows:
`13. The method as claimed in claim 11, wherein the
`winding is heat-treated on its end faces before being
`installed, and subjected to a temperature at which the
`separator is thermoplastically deformable.
`D. Prior Art and Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–13 are unpatentable based on the
`following grounds:
`
`VARTA Ex. 2007 Page 9 of 30
`
`
`
`Claims Challenged
`1–12
`
`35 U.S.C. §2
`103
`
`Reference(s)/Basis
`Brown,3 Arai,4 Okochi,5 Higuchi6
`
`13
`
`103
`
`Brown, Arai, Okochi, Higuchi,
`Kageyama7
`
`1, 2, 4, 5, 8–11
`
`102(b)
`
`Kano8
`
`Pet. 9. Petitioner contends that Brown, Arai, Okochi, Kageyama, and Kano
`are prior art to the ’581 patent under 35 U.S.C. § 102(b), while Higuchi is
`prior art under § 102(a). Id. at 9–10. Patent Owner did not contest the prior
`art status of any reference, and we find that the references are prior art to
`the ’581 patent.
`
`2 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 to which the ’581 patent claims priority was
`filed before this date, the pre-AIA version of § 103 applies.
`3 U.S. Patent No. 3,748,182 to Brown, issued July 24, 1973 (Ex. 1002).
`4 U.S. Patent Application No. 2006/0124973 A1 to Arai et al., published
`June 15, 2006 (Ex. 1004).
`5 European Patent EP 0829105 B1 to Okochi et al., published March 18,
`1998 (Ex. 1009).
`6 Chinese Patent Application Publication CN 101286572A to Higuchi et al.,
`published October 15, 2008 (Ex. 1008). Petitioner submitted a certified
`English translation of Higuchi as Exhibit 1003.
`7 Japanese Unexamined Patent Application Publication No. H07-153488 to
`Kageyama, published June 16, 1995 (Ex. 1012). Petitioner submitted a
`certified English translation of Kageyama as Exhibit 1006.
`8 Japanese Unexamined Patent Application Publication No. JP 2003-31266
`to Kano et al., published January 31, 2003 (Ex. 1014). Petitioner submitted
`a certified English translation of Kano as Exhibit 1013.
`
`VARTA Ex. 2007 Page 10 of 30
`
`
`
`II. ANALYSIS
`
`A. Legal Standards
`To prevail in its challenge, Petitioner must demonstrate by a
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d) (2019). A claim is unpatentable under
`35 U.S.C. § 103 if the differences between the claimed subject matter and
`the prior art are such that the subject matter, as a whole, would have been
`obvious at the time of the invention to a person having ordinary skill in the
`art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question
`of obviousness is resolved on the basis of underlying factual determinations
`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
`
`VARTA Ex. 2007 Page 11 of 30
`
`
`
`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 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 ’581 patent
`is a person holding a bachelor’s degree in engineering
`(mechanical, electrical or chemical), general science, materials
`science or the equivalent and 3-4 years of work experience with
`electrochemical cell packaging systems.
`DI 8 (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. 5 (stating that
`
`VARTA Ex. 2007 Page 12 of 30
`
`
`
`“[t]he claims are patentable regardless of which definition is used.”); 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))).
`Petitioner contends that the terms of the challenged claims should be
`given their ordinary and customary meaning, but does not state with
`specificity what the ordinary and customary meaning of any term may be.
`Pet. 17. In our Decision on Institution, we interpreted Petitioner’s position
`to be that no claim term of the ’581 patent requires express construction, and
`Petitioner did not disagree with this understanding during trial. Patent
`Owner agreed that no claim term required construction beyond its plain and
`ordinary meaning. PO Resp. 6.
`We agree that no claim terms require express construction for
`purposes of resolving the dispute between the parties. See Nidec Motor,868
`
`VARTA Ex. 2007 Page 13 of 30
`
`
`
`F.3d at 1017; Vivid Techs., 200 F.3d at 803 (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`D. Alleged Obviousness over Brown, Arai, Okochi, Higuchi, and
`Kageyama
`The sole ground of unpatentability asserted by Petitioner as to
`remaining original claim 13 is based on obviousness over the combined
`disclosures of Brown, Arai, Okochi, Higuchi, and Kageyama. Pet. 72–77.
`Petitioner contends that claim 13 is unpatentable because its subject matter
`would have been obvious over the combined disclosures of these references
`in view of the knowledge of a person of ordinary skill in the art. Id. In
`evaluating this ground of unpatentability, we also must review Petitioner’s
`ground challenging claims 1, 10, and 11 as obvious over the combined
`disclosures of Brown, Arai, Okochi, and Higuchi, as claim 13 depends from
`these claims and Petitioner incorporates its analysis of that ground in
`discussing the unpatentability of claim 13. Id. at 72 (citing id. at 31–33).
`Petitioner also relies on the declaration testimony of Mr. Juzkow to support
`its arguments. See id.
`1. Brown (Ex. 1002)
`Brown is a U.S. Patent entitled “Button Type Cell Casing and Sealed
`Button Type Battery,” issued July 24, 1973. Ex. 1002, 1. Brown discloses a
`battery, which may be a rechargeable button cell battery, that has a cover
`casing and a spirally wound electrode assembly. Id. at 1:11–30, 52–59. The
`structure of Brown’s battery is shown in its Figure:
`
`VARTA Ex. 2007 Page 14 of 30
`
`
`
`
`Brown’s Figure, with color annotations added by Patent Owner,
`depicts positive components cathode 18, case 11, and threaded metal stud 14
`shaded in red, while negative components anode 20, cover 12, and threaded
`socket 16 are shaded in blue. PO Resp. 4. Between the oppositely-charged
`components of case 11 and cover 12 is electrically insulating gasket 13,
`shown with green cross-hatching. Id.; Ex. 1002, 2:2–5. Metallic conducting
`strip 21 connects cathode 18 and case 11. Ex. 1002, 2:15–16.
`2. Arai (Ex. 1004)
`Arai is a U.S. Patent Application entitled “Energy Storage Device,
`Module Thereof and Electric Vehicle Using the Same,” published June 15,
`2006. Ex. 1004, codes (43), (54). Arai describes a rechargeable battery cell
`having a battery can, battery lid, and a gasket in between that serves as an
`electrically insulating seal. Id. ¶¶ 82–83. Within the battery is a spiral
`wound electrode assembly having positive and negative electrodes. Id. The
`electrodes each have metal foil electrode tabs welded to them, which are
`then connected to the battery can or battery lid, providing an electrical
`
`VARTA Ex. 2007 Page 15 of 30
`
`
`
`connection between the electrode and the housing. Id. ¶ 83. Figure 1 of
`Arai illustrates the arrangement of these elements:
`
`
`Figure 1 of Arai, with color annotations added by Petitioner, shows
`negative electrode tab 6 (yellow) connecting negative electrode layer 4
`(blue) with battery can 10, and positive electrode tab 7 (purple) connecting
`positive electrode layer 2 (red) with battery lid 11. Ex. 1004 ¶¶ 43–54, 83;
`Pet. 24.
`3. Okochi (Ex. 1009)
`Okochi is a European Patent entitled “Non-Aqueous Electrolyte
`Secondary Batteries,” published March 18, 1998. Ex. 1009, codes (43),
`(54). Okochi describes a rechargeable battery having a spirally wound
`electrode assembly. Id. ¶¶ 1, 21. The positive and negative electrodes of
`Okochi’s battery have metal foils which act as collectors, and which are spot
`welded to the electrode and the inner surface of the cell container. Id. ¶¶ 17,
`25.
`
`VARTA Ex. 2007 Page 16 of 30
`
`
`
`4. Higuchi (Ex. 1003)
`Higuchi is a Chinese Patent Application entitled “Coin-shaped Non-
`Aqueous Electrolyte Secondary Battery,” published October 15, 2008.
`Ex. 1003, codes (43), (54).9 Higuchi describes a coin-shaped rechargeable
`battery having a strip-shaped anode, strip-shaped cathode, and strip-shaped
`separator which are wound together to form a cylindrical wound body. Id.
`at 3–4,10 Fig. 5B.
`5. Kageyama (Ex. 1006)
`Kageyama is a Japanese Patent Application titled “Manufacturing
`Method of Cylindrical Non-Aqueous Electrolyte Battery,” and published
`June 16, 1995. Ex. 1006, codes (43), (54).11 Kageyama relates to
`preparation of a wound electrode body wherein the electrode separator
`protrudes from the ends of the electrode, and after winding the separator is
`bent over the ends of the electrode by heat molding. Id. at code (57). While
`Kageyama does not limit the method for heat molding the separator, it
`specifically references hot air blowing and using a heating jig to apply heat
`and pressure from above and below the winding. Id. ¶ 22. Kageyama
`discloses that in traditional battery windings, slight displacements in the
`position of the electrodes and separators during manufacturing may lead to
`
`9 Petitioner provides a certified English translation of Higuchi in the record.
`Ex. 1003, 1; see id. at 23 (translator’s declaration). All citations to Higuchi
`are to the certified translation rather than the Chinese language original.
`10 We refer to the pagination added by Petitioner in the lower-right corner of
`the page.
`11 Petitioner provides a certified English translation of Kageyama in the
`record. Ex. 1006, 1; see id. at 12 (translator’s declaration). All citations to
`Kageyama are to the certified translation rather than the Japanese language
`original.
`
`VARTA Ex. 2007 Page 17 of 30
`
`
`
`the electrodes coming into contact with one another. Id. ¶ 7. By extending
`the length of the separator, and then bending the separator over the ends of
`the electrodes, contact between the electrodes can be prevented without
`increasing the volume of the battery casing. Id. ¶¶ 9, 16.
`6. Petitioner’s Proposed Combination
`Petitioner contends that, when considered together, Brown, Arai,
`Okochi, Higuchi, and Kageyama suggest the limitations of claim 13, and
`that a person of ordinary skill in the art would have been motivated to
`combine the disclosures of the references in a manner that would result in
`the claimed method of producing a button cell. Pet. 72–77. Petitioner
`begins its analysis with the cell of Brown, which Petitioner alleges discloses
`a housing cup and housing top separated by an electrically insulating seal
`(Pet. 34–35) and a spiral-wound electrode-separator assembly with flat layer
`electrodes connected by a separator (id. at 35–38). Brown’s electrode layers
`are aligned at right angles to the flat top and bottom of the housing and
`formed into a spiral winding, and Petitioner argues that Higuchi also
`discloses this spiral winding arrangement of electrodes. Id. at 38–44.
`With regard to the claim limitation that “one of the electrodes
`connects to the flat bottom area or the flat top area via an output conductor
`comprising a foil resting flat between an end face of the spiral winding and
`the flat top or the flat bottom area,” Petitioner contends that Brown discloses
`an output conductor comprising a metallic connecting strip, but concedes
`that strip does not rest flat between the end face of the spiral winding and the
`top or bottom area of the housing. Pet. 44–45. Petitioner directs us to Arai
`or Okochi for this aspect of the claimed battery. Id. at 45–47. For example,
`Arai is said to disclose an output conductor that is a foil, welded to the
`
`VARTA Ex. 2007 Page 18 of 30
`
`
`
`electrodes and resting flat between an end face of the spiral winding and the
`flat top or bottom area of the housing. Id. at 45–46 (citing Ex. 1004 ¶¶ 18,
`48–49, 79, 81, 83; Ex. 1011 ¶¶ 148–150). To illustrate this structure,
`Petitioner provides the following annotated version of Figure 1 of Arai, as
`prepared by Mr. Juzkow:
`
`
`
`Figure 1 of Arai, reproduced above as annotated by Mr. Juzkow,
`shows wound electrodes shaded blue and red, with output conductor 6
`shaded yellow resting flat between insulator 9 and the battery housing.
`Ex. 1011 ¶ 150.
`Okochi is said to contain a similar disclosure, with a rechargeable
`battery with a spirally wound electrode having a metal foil collector welded
`to the negative electrode and the inner surface of the bottom of the cell.
`Pet. 47–48. In view of these disclosures, Petitioner contends that a person of
`ordinary skill in the art would have understood the metallic connecting strip
`21 of Brown, shown below as annotated by Mr. Juzkow, “should be
`modified to rest flat between the end face of the spiral winding and the
`
`VARTA Ex. 2007 Page 19 of 30
`
`
`
`metallic bottom, as disclosed by Arai and Okochi.” Pet. 48 (citing Ex. 1011
`¶ 153).
`
`
`Brown’s Figure, reproduced above with annotations provided by
`
`Mr. Juzkow, shows output conductor 21 shaded in red positioned between
`the overlapping portions of casing halves 11 and 12, next to insulating
`gasket 13. Ex. 1002, 2:13–16, Figure; Ex. 1011 ¶ 146.
`
`Petitioner contends that a person of ordinary skill in the art would
`have had a reasonable expectation of success in making this modification,
`because all three of Brown, Arai, and Okochi disclose cells that use spirally
`wound electrode assemblies. Pet. 48. And “[t]he motivation for doing so
`would be to preserve the compactness of the button cell.” Id. (citing
`Ex. 1011 ¶¶ 153–156).
`
`Turning to claim 10, which is directed to a method of making the
`button cell of claim 1, and claim 11, which specifies that the electrode-
`separator assembly of claim 10 is a winding, Petitioner notes that Brown
`teaches that various methods of forming its button cell assembly are suitable,
`
`VARTA Ex. 2007 Page 20 of 30
`
`
`
`and that Arai teaches a specific method for winding and assembling its
`electrode-separator assembly. Pet. 66–71.
`
`Finally, with respect to claim 13, which adds to the method of
`claim 11 that the winding is heat-treated on its end faces before being
`installed, at a temperature at which the separator is thermoplastically
`deformable, Petitioner directs us to the teachings of Kageyama. Pet. 74–77.
`Kageyama is said to disclose heat treating an electrode winding to deform its
`separator, using either hot air or a heating jig. Id. at 73 (citing 1006 ¶ 22;
`Ex. 1011 ¶ 233). Mr. Juzkow testifies that it was well-known to heat treat
`the end faces of spirally wound electrodes to thermoform the separator layer,
`and that a person of ordinary skill in the art would have applied these
`heating techniques to cells such as those disclosed in Brown, Arai, or
`Higuchi “in order to cause the separator layers to either shrink or be softened
`so that they could be molded as desired for a particular type of battery.”
`Ex. 1011 ¶ 237.
`Patent Owner does not challenge Petitioner’s characterization of the
`prior art’s disclosures, or its allegations regarding the teachings of Brown,
`Arai, Okochi, Higuchi, or Kageyama. 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 limitation of
`claim 13 of the ’581 patent is present in the five prior art references.
`Patent Owner, however, does argue that Petitioner has not provided a
`persuasive reason why one of ordinary skill in the art would have modified
`the cell of Brown to include an output conductor that rests flat against the
`top or bottom casing of a button cell (id. at 23–31), and argues that a person
`of ordinary skill in the art would not have had a reasonable expectation of
`
`VARTA Ex. 2007 Page 21 of 30
`
`
`
`success in doing so (id. at 31–37). With respect to claim 13 specifically,
`Patent Owner also contends that a person of ordinary skill in the art would
`not have had a reason to add the additional heat treatment step of Kageyama.
`Id. at 37–39. Patent Owner also asserts that objective indicia support the
`nonobviousness of the claim. Id. at 39–49. We address these contested
`issues below.
`7. Reason to Combine the References
`Patent Owner argues that Petitioner’s proposed modification to the
`cell of Brown, by moving the output conductor to lie flat against the bottom
`of the housing, lacks sufficient supporting motivation. PO Resp. 21–
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
