`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`AVX CORPORATION
`Petitioner
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.
`Patent Owner
`
`
`Patent No. 9,326,381
`Issue Date: April 26, 2016
`Title: MULTILAYER CERAMIC CAPACITOR AND BOARD HAVING THE
`SAME MOUNTED THEREON
`_______________
`
`Post-Grant Review No. PGR2017-00010
`____________________________________________________________
`
`
`REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(d)(1)
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Petitioner Identifies the Claimed “Dielectric Grains” in Jeong ................ 1
`
` A. Sintered “Ceramic Particles” Are “Dielectric Grains” ............................. 3
`
` B. Jeong Necessarily Discloses an Average Number of Dielectric
`Grains in a Thickness Direction of 2 or Greater ........................................ 4
`
`II. The Group 39 Capacitors Establish Invalidity under 102(a)(1) ............... 6
`
` A. The Decision Misapprehends Petitioner’s Invalidity Argument .............. 7
`
` B. The Decision Overlooks Petitioner’s Evidence Authenticating the
`Group 39 Capacitors ..................................................................................... 9
`
` C. The Decision Implicitly Rules on Authentication, Contravening
`the Board’s Own Rules for Addressing Evidentiary Objections ............ 12
`
` D. Good Policy Reasons Exist for Admitting and Giving Weight to
`the Group 39 Capacitor Evidence at this Stage of the Proceeding ......... 14
`
`
`
`
`
`
`
`ii
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`
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`For the reasons discussed below, Petitioner respectfully requests rehearing
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`of certain aspects of the Institution Decision, Paper 11 (“Decision”).
`
`I.
`
`Petitioner Identifies the Claimed “Dielectric Grains” in Jeong
`
`In concluding that Jeong does not disclose the claimed “dielectric grains,”
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`the Board was misled by Patent Owner’s Preliminary Response, which asserted
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`that the “ceramic particles” of Jeong are merely “a source material ... transformed
`
`during [manufacturing] to contribute to the ultimate dielectric grains of the
`
`manufactured dielectric.” POPR at 8. Unfortunately, the Decision adopted this
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`reasoning (Dec. at 15) and, in doing so, overlooked Jeong’s teachings relied upon
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`in the Petition demonstrating that the “ceramic particles” are directed to the final,
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`completed capacitor—not a “source material” used during manufacturing. In fact,
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`the embodiment of Fig. 2 of Jeong, relied upon by Petitioner for its teaching of
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`“dielectric grains” (Pet. at 34-35) is directed to a sintered ceramic body for which
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`manufacturing is completed. Thus, the “ceramic particles” in ¶¶29 and 40 of Jeong
`
`are the final dielectric grains of “sintered ceramic body 110” that result from
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`manufacturing, and are not material used during manufacturing (Dec. at 15).
`
`In analogizing the “ceramic particles” of Jeong to the claimed “dielectric
`
`grains,” the Petition and Mr. Galvagni cited solely to the “ceramic particles 110a”
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`discussed with respect to Fig. 2 of Jeong, and equated these ceramic particles to the
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`claimed “dielectric grains.” Pet. at 34-35 (citing Jeong ¶¶29, 40); Ex.1003 at 43-
`
`1
`
`
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`47, 54-55. Figure 2 of Jeong discloses a capacitor having a “sintered ceramic body
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`110.” Ex. 1005 ¶¶24-25. The “sintered ceramic body 110” includes a “capacitive
`
`part 110A” having “ceramic dielectric layers 111” containing “ceramic particles
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`110a.” Id. ¶¶25, 29, 40; Fig. 2. These “ceramic particles 110a” are the dielectric1
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`grains in the manufactured capacitor of Fig. 2, which, as explained by Mr.
`
`Galvagni, is directed to a “sintered ceramic body,” i.e., a finished capacitor that has
`
`been sintered. Ex. 1003 at 48; Ex. 1005 ¶¶24-25.
`
`Thus, contrary to Patent Owner’s assertions and the conclusion reached in
`
`the Decision, these “ceramic particles 110a” are not a material used during
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`manufacturing to make the dielectric layers, but rather are the particles (i.e., grains)
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`that constitute the dielectric layers of the final device after sintering. Because
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`Jeong in ¶¶29 and 40 is discussing the final, sintered dielectric layer, its “ceramic
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`particles” are equivalent to the claimed “dielectric grains,” and none of the issues
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`alleged by Patent Owner (i.e., thermal expansion, tensile and compressive stress,
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`grain growth during sintering, etc. (see POPR at 9)) are relevant.
`
`Notably, the Petition nowhere cited to Jeong’s discussion of the
`
`manufacturing process, because that portion of Jeong does not discuss the size of
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`the dielectric layers or ceramic particles after sintering and after completion of
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`manufacturing. This portion of Jeong was introduced by Patent Owner to
`
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`1 Ceramic is a dielectric. See Ex. 1003 at 49-50; Ex. 1004 at 4:9-12; Ex. 1005 ¶29.
`
`2
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`
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`obfuscate Petitioner’s arguments, which in fact were based on the final, sintered
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`ceramic body where the “ceramic particles 110a” are equivalent to the claimed
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`“dielectric grains.” Petitioner requested leave to file a sur-reply to address this
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`obfuscation by Patent Owner, but was denied. See Paper 9.
`
`Sintered “Ceramic Particles” Are “Dielectric Grains”
`
`A.
`Patent Owner’s own arguments, as well as Rutt, confirm that the “particles”
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`of the sintered dielectric are the same as the claimed “dielectric grains.” Patent
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`Owner asserts that the “ceramic particles are a source material that is transformed
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`during the manufacturing process to contribute to the ultimate dielectric grains of
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`the manufactured dielectric.” POPR at 8. Patent Owner also points to Rutt’s
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`disclosure of “sintering temperatures” that “fuse ... ceramic particles into grains.”
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`Id. at 9. As noted above, the Petition relies only on portions of Jeong directed to a
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`manufactured capacitor where the particles have already been sintered, leaving
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`only the final particles of the dielectric. As both Patent Owner and Rutt confirm,
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`such sintered “ceramic particles” are synonymous with “dielectric grains.”
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`Further, the terms “grains” and “particles” are commonly interchanged when
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`discussing a dielectric. For example, Patent Owner’s own documents conflate the
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`terms. See Ex. 1016 ¶¶63,106, 110; claims 4, 5 (conflating the terms in “average
`
`number of dielectric particles” and “average particle diameter of the dielectric
`
`grains”). The POPR likewise refers to the “ceramic particles 110a” shown in the
`
`3
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`
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`final, sintered capacitor in Fig. 2 of Jeong as “dielectric grains.” POPR at 10 (“the
`
`average number of ceramic particles in dielectric layer 110A is less than 2, i.e., ...,
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`2, and 1 grains, which is an average of 1 2/3 dielectric grains”).
`
`Thus, the Decision erred in overlooking the fact that the only portions of
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`Jeong relied upon by Petitioner are directed to a final ceramic body having sintered
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`“ceramic particles 110a,” which Mr. Galvagni equates to the claimed “dielectric
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`grains” (Ex. 1003 at 44, 54-55), and which even Patent Owner admits to be true.
`
`B.
`
`Jeong Necessarily Discloses an Average Number of Dielectric
`Grains in a Thickness Direction of 2 or Greater
`
`The Decision asserts that “Petitioner fails to direct us to ... evidence that
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`explains how or why Jeong’s ‘ceramic particles’ ... necessarily line up such that
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`there are an average of two or greater grains in the thickness of the dielectric
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`layer.” Dec. at 17. Once again, the Board appears to have been misled by Patent
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`Owner—this time by Patent Owner’s discussion of the number of grains depicted
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`in Fig. 2 of Jeong (see POPR at 10). However, given the specific sizes described
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`in Jeong for its dielectric layers and grains, there would necessarily have to be an
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`average of 2 or more grains in the layer, no matter how the grains are “lined up.”
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`Specifically, Jeong discloses that its “dielectric layers 111” have a thickness
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`of up to 2 μm. See Pet. at 35. These layers consist of dielectric grains having a
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`size of 0.1-0.3 μm. Id. As known to a POSITA and depicted in the ’381 Patent,
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`Jeong, Rutt, and the Group 39 capacitors, dielectric layers consist of closely
`
`4
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`
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`arranged grains with minimal distance there between. See ’381 Patent at Fig. 5;
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`Jeong at Fig. 2; Rutt at Figs. 1-3; Ex. 1003 at 102-103, 110 (Figs. 12-13, 15
`
`depicting photographs of a dielectric of the Group 39 capacitors). Given that
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`Jeong’s dielectric grains have a size in the range of 0.1-0.3 μm, there is simply no
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`way to arrange the grains such that there would be fewer than at least 6 grains
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`across a 2 μm thick dielectric layer.
`
`The Decision asserts that “Figure 2 ... appears to show, in magnified layer
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`110a, elements (grains, particles, etc.) that are not on average two along the
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`thickness of the layer.” Dec. at 17. However, it is legal error to assume that
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`drawings show the precise proportions of its constituent elements. Hockerson-
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`Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)
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`(“[P]atent drawings do not define the precise proportions of the elements and may
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`not be relied on to show particular sizes.”) Further, Jeong expressly discloses the
`
`actual dimensions for its dielectric layer and grains (see ¶¶29, 40), making it clear
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`that when stacked, many more than 2 of the 0.1-0.3 μm particles would be required
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`to span the 2 μm thickness of the dielectric layer. This express disclosure in Jeong
`
`confirms that Fig. 2 is merely schematic, and not meant to be a literal depiction:
`
`Dielectric Layer
`Thickness (2 μm)
`
`
`
`Ceramic Particles 110a (0.1-0.3 μm)
`
`
`
`5
`
`
`
`Indeed, dividing the 2 μm thickness of the dielectric layer by the largest
`
`disclosed particle size (0.3 μm) shows that at least 6 particles are required to span
`
`that thickness. Pet. at 34-35. As such, Jeong’s disclosure of a 2 μm thick dielectric
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`layer consisting of 0.1-0.3 μm-sized grains satisfies the claimed “average number
`
`of dielectric grains ... in a thickness direction [of] 2 or greater.” Petitioner thus
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`requests that the instituted ground of rejection for Claims 1-4, 6-11, and 13-19 be
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`updated to include Jeong and further requests institution for Claims 5 and 12.
`
`II. The Group 39 Capacitors Establish Invalidity under 102(a)(1)
`35 U.S.C. § 102(a)(1)(post-AIA) provides that a patent is invalid where the
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`claimed invention was “in public use, on sale, or otherwise available to the public
`
`before the effective filing date of the claimed invention.” Grounds 4-9 in the
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`Petition were based on a product manufactured, offered for sale, and sold by
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`Petitioner before the priority date of the ’381 patent. See Pet. at 2-5, 65-106. To
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`show that this product exhibited the limitations of the challenged claims, Petitioner
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`procured exemplary capacitors manufactured by AVX in 2012 under the same part
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`number, i.e., the Group 39 capacitors. Petitioner demonstrated that these Group 39
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`capacitors corresponded to part number 0612YC105KAT2A, were manufactured
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`before the priority date of the ’381 patent, and were part of a “lot” from which
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`many thousands of capacitors were manufactured, offered for sale (at least through
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`the product catalog), and sold to third parties, all before the priority date. Ex. 1003
`
`6
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`
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`¶¶47-59; Ex. 1012 ¶¶3-10; Ex. 1013 ¶¶3-10; Ex. 1014 ¶¶1-5.
`
`In the Decision, the Board declined to institute Grounds 4-9 because it found
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`“insufficient factual basis ... that the [Group 39 capacitors] [were] the same as what
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`was allegedly sold in 2012 or offered for sale in 2008.” As described below,
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`however, the Decision misapprehends and overlooks key aspects of Petitioner’s
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`argument and evidence regarding the Group 39 capacitors, while also misapplying
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`the Board’s own rules and applicable law on authentication.
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`A. The Decision Misapprehends Petitioner’s Invalidity Argument
`The Decision misapprehends Petitioner’s Grounds 4-9 when it concludes
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`that “Petitioner has not established that the Group 39 capacitors qualifies as prior
`
`art.” Dec. at 27. As noted above, the Petition relied upon the Group 39 capacitors
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`to show that the 0612YC105KAT2A products sold in 2012 were prior art. See Pet.
`
`at 5 (“The AVX product having part [no.] 0612YC105KAT2A (e.g., the Group 39
`
`capacitors) is prior art under §102(a)(1).”). Thus, it was not necessary to prove
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`that the Group 39 capacitors themselves were prior art, only that they faithfully
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`represent products made, offered for sale, and/or sold before the priority date.
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`This, the petition accomplished.
`
`For example, the Group 39 capacitors acquired by Mr. Galvagni were
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`labeled not only with AVX’s name and requisite part number, 0612YC105KAT2A
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`(see Ex. 1003 ¶49, Fig. 1), but also the capacitance of the parts (1 F), dielectric
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`7
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`
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`used (X7R), and voltage (16V) – all of which match corresponding specifications
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`from the AVX catalog for this part number. Pet. at 3-4; Ex.1003 ¶¶48-50. Further,
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`the Group 39 capacitors were labeled with the shop order number and specification
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`number, from which Mr. Galvagni and Mr. Shipman were able to determine the
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`“lot” number from which the parts were manufactured, which likewise confirmed
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`them to be 0612YC105KAT2A products. Ex.1003 ¶¶48, 52; Ex.1013 ¶¶3-4.
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`As explained by both Mr. Galvagni and Mr. Shipman, the lot number
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`represents a group of capacitors manufactured at the same time, all of the same
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`product type and part number. Id. Based on this lot number, Petitioner was able to
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`determine when this lot of capacitors was manufactured, and also when capacitors
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`from this lot were sold to third parties – all of which predates the priority date of
`
`the ’381patent. Ex.1003 ¶¶53-57; Ex.1013 ¶¶5-10.
`
`While hesitating to credit Petitioner’s evidence that the Group 39 capacitors
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`are representative of the 0612YC105KAT2A product sold in 2012 and before, the
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`Decision fails to identify any reasons to doubt this evidence. Mr. Galvagni and
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`Mr. Shipman provided explanations regarding what manufacturing by “lots”
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`entails, including the fact that the parts from a given lot are all manufactured
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`together at the same time and are identified with the same part number, and are
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`subsequently sold to third parties in various quantities. Ex.1003 ¶52; Ex.1013 ¶4.
`
`Thus, the Decision erred in requiring that the Group 39 capacitors
`
`8
`
`
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`themselves be proven to be prior art. Instead, it is the 0612YC105KAT2A product
`
`that is prior art under § 102(a)(1) (Pet. at 5), and the Group 39 capacitors simply
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`demonstrate that this product exhibited the claim limitations at issue.
`
`B.
`
`The Decision Overlooks Petitioner’s Evidence Authenticating the
`Group 39 Capacitors
`
`In questioning whether the parts acquired by Mr. Galvagni were counterfeit
`
`or tampered with (Dec. at 29-30), the Decision overlooks key evidence establishing
`
`this to not be the case. First, all information on the labels on the products acquired
`
`by Mr. Galvagni match what would be expected, e.g., part number, capacitor type
`
`(i.e., LICC), capacitance value, dielectric material used, and voltage, based both on
`
`Mr. Galvagni’s personal experience and on the product catalog description.
`
`Ex.1003 ¶¶47-50. In addition, the capacitor packaging, i.e., the 7” inch reel shown
`
`in Mr. Galvagni’s Fig. 1 (Ex.1003 ¶49), likewise matches the AVX product
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`catalog, where the next to last digit in the part number (here, “2”) corresponds to a
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`7” reel (see Ex.1008 at 60). Similarly, the capacitors were sold in a quantity of
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`2,000, which is identical to quantities sold by AVX. Ex.1003 ¶¶48, 57.
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`The Decision also overlooks evidence of authenticity based on the capacitors
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`themselves. Specifically, both the Petition and Mr. Galvagni note that the Group
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`39 capacitors have physical dimensions that match what is expected for this
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`product based on the specifications in the AVX product catalog. Pet. at 5; Ex.
`
`1003 ¶60. For example, Mr. Galvagni measured for the Group 39 capacitors an
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`9
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`
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`average width of 1.505 mm,2 and an average thickness of 1.2 mm. Ex.1003 ¶74.
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`These measurements nearly identically match the 1.6 ± 0.25 mm width (Ex.1008 at
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`61 (dimension corresponding to “0612” parts)) and 1.27 mm thickness (id.
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`(dimension corresponding to thickness “A,” which is the last digit in the part
`
`number) that are reported in the catalog for the 612YC105KAT2A parts. While
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`Mr. Galvagni did not expressly measure the longer length dimension of the Group
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`39 capacitors, it can be seen from his Fig. 14 (Ex.1003 ¶84), that the length is only
`
`slightly twice as long as the width, which again matches what is expected based on
`
`the AVX catalog, certainly within the variation allowed (Ex.1008 at 61 (reporting
`
`the short dimension as 1.6±0.25 mm and the long dimension as 3.2±0.25 mm).
`
`These dimensions further confirm that these are LICC-type capacitors. See id. at
`
`58, 60 (“LICC ... has its terminations on the longer side of its rectangular shape.”).
`
`Thus, not only are the Group 39 capacitors the same product type (i.e.,
`
`LICC) as expected, they also are marked, quantitized, and packaged exactly as
`
`expected based on the AVX catalog and Mr. Galvagni’s experience. The Group 39
`
`capacitors further exhibit specific physical dimensions that match those of the
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`612YC105KAT2A product from the catalog—which is significant given the wide
`
`variety of product dimensions shown just on page 61 of the catalog alone. That the
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`2 Mr. Galvagni’s report uses terminology consistent with the ’381 patent, which
`
`swaps the terms “length” and “width” relative to the AVX catalog. See Pet. at 103.
`
`10
`
`
`
`Group 39 capacitors exhibit the dimensions from the AVX catalog is also evidence
`
`that they have not materially changed in the four years since their manufacture.3
`
`It is also noteworthy that neither the Decision nor Patent Owner have
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`pointed to any inconsistencies or suspect information that would support any
`
`speculation that the Group 39 capacitors are not from the identified lot of
`
`612YC105KAT2A products. Indeed, given the representations of the seller from
`
`whom Mr. Galvagni obtained the Group 39 capacitors, i.e. that they are
`
`0612YC105KAT2A AVX 1uf 16V 0612 Low Inductance Capacitors (Ex.1003
`
`¶47; Ex.1025), were the capacitors in fact counterfeit, the seller would have been
`
`violating eBay’s policy against fraudulent sales. See https://pages.ebay.com/help/
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`policies/replica-counterfeit.html. It is highly improbable that a third party would
`
`have obtained the original AVX capacitors, removed them from the reel, replaced
`
`them with parts having the exact same properties and dimensions as the originals,
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`and sold them in violation of eBay’s fraud policy - all for less than $100.
`
`At this stage of the proceeding, and absent any actual evidence or reason to
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`3 Since the products are used in computers, cell phones, etc., one would expect they
`
`will remain unchanged over the product life, which includes the 4 years between
`
`manufacturing of the capacitors and testing by Mr. Galvagni. US v. Franchi-
`
`Forlando, 838 F.2d 585, 588 (1st Cir. 1988) (stating the inquiry as whether there is
`
`a reasonable probability that the evidence was not altered in any material respect).
`
`11
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`
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`question otherwise, the evidence presented in the Petitioner was sufficient to make
`
`it more likely than not that the Group 39 capacitors were what Petitioner represents
`
`them to be, and they should have been credited as such in the Decision. US v.
`
`Combs, 369 F.3d 925, 938 (6th Cir. 2004) (“Physical evidence is admissible when
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`the possibility of misidentification or alteration is ‘eliminated, not absolutely, but
`
`as a matter of reasonable probability.’”); US v. Kelly, 14 F.3d 1169, 1175 (7th
`
`Cir.1994) (“Merely raising possibility of tampering or misidentification is
`
`insufficient to render evidence inadmissible.”); Avocent Redmond Corp. v. Rose
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`Elecs., No. C06-1711RSL, 2012 WL 5499832, at *2 (W.D. Wash. Nov. 13, 2012)
`
`(crediting evidence based on indicia of authenticity, lack of contrary evidence
`
`calling authenticity into question, and parties’ ability to introduce further evidence
`
`regarding authenticity at trial); US v. Roberson, 897 F.2d 1092, 1096 (11th Cir.
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`1990) (admitting evidence despite break in chain of custody where no indication of
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`tampering); Stuckey v. Northern Propane Gas Co., 874 F.2d 1563, 1574 (11th Cir.
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`1989) (admitting evidence that looked like it was expected to look).
`
`C. The Decision Implicitly Rules on Authentication, Contravening
`the Board’s Own Rules for Addressing Evidentiary Objections
`
`While not citing Fed. R. Evid. (“FRE”) 901 or mentioning “authentication,”
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`the Decision denies Grounds 4-9 on the basis that it is unwilling to “speculate that
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`the [Group 39 capacitors] [are] the same, exact, physical product allegedly sold in
`
`2012 or allegedly offered for sale in 2008.” That is, the Decision questions
`
`12
`
`
`
`whether the Group 39 capacitors are what Petitioner says they are – namely
`
`exemplary capacitors of AVX part no. 0612YC105KAT2A, manufactured in 2012
`
`as part of a “lot” of such capacitors, from which thousands of capacitors were sold
`
`before the priority date. While not styling it as such, this can only be a question as
`
`to the authenticity of the Group 39 capacitors. The Decision identifies no other
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`reason for denying Grounds 4-9 other than an unwillingness to accept the Group 39
`
`capacitors as being what Petitioner (and all record evidence to date) says they are.
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`As such, the Decision contravenes the Board’s own rules and the FRE.
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`The Decision implicitly undergoes a de facto authentication analysis,
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`assigning little or no weight to the Group 39 capacitors based on doubts about their
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`authenticity as representative 0612YC105KAT2A products sold in 2012.
`
`However, whether a given item of evidence is what its proponent claims it to be is
`
`a matter directly addressed by FRE 901. Thus, the Decision sidesteps and thwarts
`
`the purpose of the Board’s rules under 37 C.F.R. § 42.64(b)-(c), which expressly
`
`provide for evidentiary objections (such as to authenticity), an opportunity to
`
`address such objections through supplemental evidence, briefing on any motions to
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`exclude, and ultimately argument during the oral hearing if applicable.
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`Here, sufficient evidence (as discussed above) was submitted from which a
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`reasonable fact-finder could conclude that the Group 39 capacitors were in fact
`
`what Petitioner claimed them to be. In a preliminary assessment of authenticity,
`
`13
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`
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`that is all that is required for the evidence to be admitted and considered for what
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`the proponent says it is. In dismissing Petitioner’s evidence that the Group 39
`
`capacitors are representative of the products sold in 2012, the Decision ignores its
`
`own rules on how evidentiary objections are to be dealt with in these proceedings.
`
`Most importantly, this approach deprived Petitioner of the opportunity afforded
`
`under the rules to provide supplemental evidence in response to an authenticity
`
`objection, such as that raised by Patent Owner in its Preliminary Response. For
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`this reason alone, this rehearing request should be granted.
`
`D. Good Policy Reasons Exist for Admitting and Giving Weight to
`the Group 39 Capacitor Evidence at this Stage of the Proceeding
`
`Because fraudulent evidence is relatively rare, it makes little sense to impose
`
`a high authentication bar for all evidence at the petition stage, absent some
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`identified basis to question authenticity. For practicality reasons, courts typically
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`ask parties to reach agreement on authenticity where no specific authenticity
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`concerns have been identified, in order to not clog and delay the proceedings with
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`evidence to prove authentication for every piece of evidence. See, e.g., US v.
`
`Kubini, 304 F.R.D. 208, 219 (W.D. Pa. 2015); Higgs v. Trans. Specialist Sanford,
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`No. 5:07CV-P77-R, 2009 WL 1939026, at *2 (W.D. Ky. July 6, 2009).
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`The same policy should be adopted and applied with respect to institution
`
`decisions. As noted above, the Board already has rules that allow parties to
`
`address objections regarding evidentiary issues, such as authenticity. Given this
`
`14
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`
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`safeguard, it is poor policy for the Board to sua sponte apply its own authenticity
`
`analysis at this stage, because it would force all petitioners to submit evidence of
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`authentication of every exhibit at the petition stage, including the huge number of
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`documents that accompany a typical petition. Such a requirement is wildly
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`disproportionate to the actual risk of fraudulent evidence, and only burdens the
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`parties and clogs the Board’s proceedings with extraneous authenticity evidence,
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`when no such objections may ever be made by Patent Owner if a trial is instituted.
`
`The better policy is for the Board to credit the Group 39 capacitors and
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`evidence of authenticity submitted thus far—especially given the absence of any
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`contrary evidence that the Group 39 capacitors are not what Petitioner says they
`
`are—and allow Patent Owner to challenge authenticity after institution. This
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`approach will reduce unnecessary effort and expense in proving authenticity for all
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`evidence at the petition phase, while allowing the parties a fair chance to contest
`
`and/or prove authenticity during trial when there is a true evidentiary question.
`
`
`For the foregoing reasons, Petitioner respectfully requests that the instituted
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`grounds be modified to include Jeong and claims 5 and 12, and that Grounds 4-9
`
`based on the Group 39 capacitors be instituted.
`
`Dated: August 1, 2017
`
`
`
`
`
`By:
`
`/Michael Houston/
`Michael Houston
`Reg. No. 58,486
`Foley & Lardner LLP
`E-Mail: MHouston@foley.com
`
`15
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`
`
`
`Nicholas M. Lagerwall
`Reg. No. 63,272
`Foley & Lardner LLP
`E-Mail: nlagerwall@foley.com
`
`16
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`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Request for
`
`Rehearing was served on August 1, 2017 by electronic mail on the following
`
`counsel of record for Patent Owner:
`
`Hosang Lee
`HLee@mwe.com
`
`Bernard J. Knight
`BKnight@mwe.com
`
`Alexander P. Ott
`AOtt@mwe.com
`
`McDermott Will & Emery
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`Patent Owner has consented to electronic service.
`
`Dated: August 1, 2017
`
`By:
`
`/Michael Houston/
`
`Respectfully submitted,
`
`Michael Houston
`Reg. No. 58,486
`Foley & Lardner LLP
`E-Mail: MHouston@foley.com
`
`Nicholas M. Lagerwall
`Reg. No. 63,272
`Foley & Lardner LLP
`E-Mail: nlagerwall@foley.com
`
`
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