PGR2017-00010
`Preliminary Response
`
`Paper No. 6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`AVX CORPORATION
`Petitioner
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.
`Patent Owner
`_____________________________
`
`Case No. PGR2017-00010
`Patent No. 9,326,381
`_____________________________
`
`
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO
`PETITION FOR POST-GRANT REVIEW
`
`_____________________________
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`PGR2017-00010
`Preliminary Response
`
`
`TABLE OF EXHIBITS ........................................................................................... iii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 3
`
`III. REASONS WHY THE BOARD SHOULD DENY POST-GRANT
`REVIEW .......................................................................................................... 4
`
`A. Grounds 1–3 Based on the Itamura Combination Should
`Be Denied .............................................................................................. 5
`
`1.
`
`Grounds 1–3 Should Be Denied Because Both
`Jeong and Rutt Lack the “Dielectric Grains”
`Feature of the Independent Claims Required for
`Petitioner’s Proposed Combination ............................................ 5
`
`a)
`
`b)
`
`Jeong’s Discussion of “Ceramic Particles”
`Does Not Disclose or Teach the Claimed
`“Dielectric Grains” .......................................................... 7
`
`Rutt Teaches to Have Only One Dielectric
`Grain in a Single Dielectric Layer .................................11
`
`2.
`
`Grounds 1–3 Should Additionally Be Denied
`Because the Petitioner Already Presented the Same
`Prior Art to the Office in its Third Party
`Submission ................................................................................13
`
`B. Grounds 4–9 Based on the Group 39 Capacitors Should
`Be Denied ............................................................................................14
`
`1.
`
`2.
`
`Grounds 4–9 Should Be Denied Because the
`Unauthenticated eBay Product Cannot Support the
`Allegations of Prior Public Availability ...................................16
`
`Grounds 4–9 Should Also Be Denied Because the
`Uninformed Hearsay Testimony of Petitioner’s
`Employee Cannot Support the Allegations of Prior
`Public Availability ....................................................................19
`
`i
`
`

`

`3.
`
`PGR2017-00010
`Preliminary Response
`
`
`Grounds 4–9 Should Also Be Denied Because the
`Evidence of Alleged Prior Availability, Even if
`Accepted as Admissible, Does Not Support the
`Allegations of Prior Public Availability ...................................22
`
`C. Grounds 2 and 5 Should Additionally Be Denied Because
`Ahn Lacks Dependent Claim 18’s “Offset” Electrode
`Pads Feature Required for Petitioner’s Proposed
`Combination ........................................................................................26
`
`IV. CONCLUSION ..............................................................................................29
`
`CERTIFICATE OF WORD COUNT ......................................................................31
`
`CERTIFICATE OF SERVICE ................................................................................32
`
`
`
`
`
`ii
`
`

`

`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`PGR2017-00010
`Preliminary Response
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`AVX’s Third Party Submission filed during original
`prosecution of the ’381 patent
`
`Supplemental Notice of Allowability from the file history of
`the ’381 patent
`
`Printout of eBay website’s listing for eBay item number
`111574917638 purchased by AVX declarant John Galvagni
`(accessed from http://www.eBay.com/itm/111574917638 on
`February 23, 2017)
`
`Printout of AVX website’s “Authorized Distributors & Sales
`Representatives” page (accessed from http://www.avx
`.com/contact-us/authorized/ on February 24, 2017)
`
`Printout of AVX website’s “Warning – Unauthorized
`Dealers/Distributors” page (accessed from http://www.avx
`.com/docs/corporate/Unauthorized-AVX-Distributors.pdf on
`February 24, 2017)
`
`Printout of eBay website’s “Condition” page (accessed from
`http://pages.eBay.com/help/sell/contextual/condition_1.html
`on February 24, 2017)
`
`Printout of Oxford English Dictionary website’s definition of
`“offset” (accessed from https://en.oxforddictionaries.com/
`definition/offset on April 25, 2017)
`
`iii
`
`
`
`

`

`PGR2017-00010
`Preliminary Response
`
`Patent Owner Samsung Electro-Mechanics Co., Ltd. (“SEM” or “Patent
`
`Owner”) respectfully requests that the Board deny the Petition requesting post-
`
`grant review of U.S. Patent No. 9,326,381 (the “’381 Patent”) filed by Petitioner
`
`AVX Corporation (“AVX” or “Petitioner”).
`
`I.
`
`INTRODUCTION
`
`The Petition for Post-Grant Review is AVX’s second attack against the ’381
`
`patent, after its Third Party Submission of six prior art references during original
`
`prosecution failed to convince the Examiner that any claims were unpatentable.
`
`The Petition should fail as well.
`
`AVX’s main attack in Grounds 1–3 is based on a combination of three
`
`references: U.S. Pat. No. 7,808,770 (“Itamura”), U.S. Pub. No. 2011/0152604
`
`(“Jeong”), and U.S. Pat. No. 5,134,540 (“Rutt”). AVX’s resort to three different
`
`references arises from its inability to show the key “dielectric grains” limitation
`
`recited in both independent claims. The Petition first attempts to show dielectric
`
`grains based on Jeong, but that position falls short of the goal because AVX does
`
`not and cannot explain how Jeong’s discussion about “ceramic particles” satisfies
`
`the claim requirement concerning “dielectric grains.”
`
`The Petition implicitly acknowledges that deficiency by including a fallback
`
`position, which is just a retread of the Rutt patent that AVX previously presented
`
`in its Third Party Submission with arguments alleging relevance to the very same
`
`1
`
`

`

`PGR2017-00010
`Preliminary Response
`
`“dielectric grains” limitation. The Examiner was correct in granting the claims of
`
`the ’381 patent over Rutt. The Board should maintain that decision both on the
`
`merits and as a discretionary denial of prior art and arguments already presented.
`
`The Petition’s secondary attack in Grounds 4–9 tries to make out a case of
`
`prior public availability based on AVX’s own “Group 39” capacitor products. But
`
`the evidence that allegedly supports this position does not amount to a “complete
`
`case” that satisfies the governing Federal Rules of Evidence.
`
`AVX’s primary evidence is a declaration from one of its retired employees,
`
`John Galvagni. (See Ex. 1003.) Mr. Galvagni’s invalidity analysis is predicated
`
`on an alleged AVX product that he bought in December 2016 from an
`
`unauthorized third-party seller on eBay who goes by the internet alias
`
`“huskerfan42011.” Neither the Petition nor Mr. Galvagni make any effort to
`
`properly authenticate the alleged AVX product, and instead uncritically rely on the
`
`eBay product’s packaging. This approach flouts AVX’s stark warning on its
`
`website to avoid unauthorized dealers who are known to be passing off inauthentic
`
`AVX products. It also ignores the admonition by “huskerfan42011” that his
`
`product is not “New” but is instead “New other,” thereby indicating either open
`
`packaging or other potential defects.
`
`That unauthenticated evidence is compounded by a declaration containing
`
`uncorroborated sales testimony from AVX employee Steve Shipman. (See Ex.
`
`2
`
`

`

`PGR2017-00010
`Preliminary Response
`
`1013.) Mr. Shipman does not claim to have any personal knowledge about the
`
`alleged production or sale of the eBay product analyzed by Mr. Galvagni, and
`
`instead testifies to information he purportedly saw in AVX’s business records. But
`
`the Petition does not provide the actual business records. Mr. Shipman’s testimony
`
`alone is inadmissible due to his lack of personal knowledge and because without
`
`any actual records his testimony is impermissible hearsay.
`
`In any event, even if the eBay product and Mr. Shipman’s testimony were all
`
`admissible evidence, the Petition still does not present a sufficient case of prior
`
`public availability. The alleged sales are either not shown to be public or are
`
`inconsistent with Mr. Shipman’s other assertions. AVX’s remaining allegations
`
`are based on a catalog that amounts to nothing more than marketing material that
`
`does not constitute an offer for sale under governing Federal Circuit precedent.
`
`Accordingly, all of the proposed grounds in the Petition are insufficient and
`
`the Board should not institute a post-grant review on any challenged claim.
`
`II. CLAIM CONSTRUCTION
`
`AVX dedicates an inordinate portion of its brief addressing what it sees as
`
`confusion over whether the thickness and width “of the ceramic body” is to be
`
`measured to include additional elements other than the ceramic body. There is no
`
`confusion. The express claim language says “when a thickness of the ceramic
`
`3
`
`

`

`PGR2017-00010
`Preliminary Response
`
`body is defined as T and a width thereof is defined as W.” One figure with
`
`inadvertently misplaced arrows does not rewrite the express claim language.
`
`AVX’s attention to this non-issue seems intended to deflect from its decision
`
`to simply imply other claim meanings, and thereby avoid having to present
`
`reasoned and evidence-based claim construction positions for official consideration
`
`by the Board. For example, as discussed below, the Petition implicitly interprets
`
`“dielectric grains” to include Jeong’s “ceramic particles” without any supporting
`
`rationale for expanding the express claim language. The Petition also tacitly
`
`construes the “single dielectric layer” of the independent claims to cover Rutt’s
`
`collection of multiple dielectric layers, again without any rationale. Finally, in
`
`applying Ahn to dependent claim 18, the Petition interprets “offset” electrode pads
`
`to cover aligned electrodes without explanation.
`
`The burden was on AVX to explain its construction of the claims. See 37
`
`C.F.R. § 42.204(b)(3). AVX’s failure to identify and support its implicit claim
`
`constructions is an additional reason to deny institution.
`
`III. REASONS WHY THE BOARD SHOULD DENY POST-GRANT
`REVIEW
`
`The Board should deny post-grant review of the ’381 patent for at least the
`
`reasons set forth below, which demonstrate why the Petition fails to show that it is
`
`“more likely than not” that any challenged claim is unpatentable. See 35 U.S.C.
`
`§ 324(a). The following discussion addresses only the most glaring and apparent
`
`4
`
`

`

`PGR2017-00010
`Preliminary Response
`
`failures of the Petition to satisfy the standard for institution, and reserves factual or
`
`other disputes for later briefing, if necessary.
`
`A. Grounds 1–3 Based on the Itamura Combination Should Be
`Denied
`
`
`
`Grounds 1–3 of the Petition are premised on the combination of three
`
`references: U.S. Pat. No. 7,808,770 (“Itamura”), U.S. Pub. No. 2011/0152604
`
`(“Jeong”), and U.S. Pat. No. 5,134,540 (“Rutt”). (See Petition at 12–65.) The
`
`Board should deny institution on these grounds because the Petition fails to
`
`establish that it is more like than not that the combination satisfies at least the
`
`“dielectric grains” limitation recited in both independent claims. The Board should
`
`additionally reject the Petition’s reliance on Rutt because AVX already presented
`
`Rutt, as well as arguments applying Rutt to the claims of the ’381 patent, to the
`
`Office during original prosecution.
`
`1. Grounds 1–3 Should Be Denied Because Both Jeong and
`Rutt Lack the “Dielectric Grains” Feature of the
`Independent Claims Required for Petitioner’s Proposed
`Combination
`
`Independent claims 1 and 8 both recite: “an average number of dielectric
`
`grains in single dielectric layer in a thickness direction thereof is 2 or greater.” An
`
`example of this feature is illustrated in Figure 5 of the ’381 patent, which shows a
`
`single dielectric layer (“111”) with an average number of dielectric grains (“111a”)
`
`in the thickness direction (i.e., the direction between internal electrodes 121 and
`
`5
`
`

`

`PGR2017-00010
`Preliminary Response
`
`122) that is greater than two. (See ’381 patent (Ex. 1001), Figure 5 and 7:14–50.)
`
`Figure 5 below shows three annotated measurements of 5, 5, and 4 dielectric
`
`grains in the thickness direction, for an average number of 4⅔ dielectric grains.
`
`(See ’381 patent (Ex. 1001), Figure 5 (below); see also ’381 patent (Ex. 1001) at
`
`7:42–50 (discussing a method of measuring the average).)
`
`’381 Patent (Ex. 1001), Figure 5 (annotated)
`
`
`
`The claims allow for multiple dielectric layers between internal electrodes
`
`by calling for “at least one of the dielectric layers interposed therebetween,” but
`
`they specifically state that “a single dielectric layer” of those interposed between
`
`the electrodes must satisfy the average dielectric grains requirement. (See ’381
`
`patent (Ex. 1001), Claims 1 and 8.)
`
`Table 4 of the ’381 patent shows test results demonstrating an undesirable
`
`6
`
`

`

`PGR2017-00010
`Preliminary Response
`
`increase in acoustic noise for a multilayer capacitor that has an average of less than
`
`two or more dielectric grains in a single dielectric layer. (See, e.g., ’381 patent
`
`(Ex. 1001) at Table 4 and 11:14–21.)
`
`The Petition concedes that the primary Itamura reference does not disclose
`
`the “dielectric grains” limitation. (See Petition at page 34.) The Petition instead
`
`cites two secondary references: Jeong and Rutt. Yet both of those secondary
`
`references likewise fail to disclose or teach the “dielectric grains” limitation.
`
`a)
`
`Jeong’s Discussion of “Ceramic Particles” Does Not
`Disclose or Teach the Claimed “Dielectric Grains”
`
`The Petition’s application of Jeong combines Jeong’s disclosure in ¶ [0029]
`
`of “first ceramic particles having an average particle size D1 of 0.1 μm to 0.3 μm”
`
`with its disclosure in ¶ [0040] that “the single dielectric layer 111 of the capacitive
`
`part 110A may have a thickness of 2 μm or less.” (See Petition at page 35.) That
`
`is, the Petition divides the 2 μm dielectric layer by the 0.1 μm to 0.3 μm ceramic
`
`particles to reach the conclusion that each dielectric layer contains 6–20 dielectric
`
`grains. (See id.) In so doing, the Petition equates Jeong’s number of ceramic
`
`particles per dielectric layer with the claimed number of dielectric grains per
`
`dielectric layer, and does so without providing any analysis attempting to bridge
`
`the gap between Jeong’s “ceramic particles” and the required “dielectric grains,”
`
`and no expert declaration to support this conflation of terms.
`
`The Board should reject the Petition’s reliance on Jeong due to its failure to
`
`7
`
`

`

`PGR2017-00010
`Preliminary Response
`
`provide any explanation why Jeong’s passages on ceramic particles disclose or
`
`teach the claim requirement regarding dielectric grains. See Microsoft Corp. v.
`
`Global Touch Solutions, LLC, IPR2015-01024, Paper No. 11, slip. op at 7
`
`(P.T.A.B. Sept. 23, 2015) (Petition held deficient where it pointed to prior art
`
`passages but failed to “explain[] persuasively” how they meet the claim
`
`requirement).
`
`The Board should in any event reject the Petition’s reliance on Jeong
`
`because it is incorrect to equate Jeong’s ceramic particles to the claimed dielectric
`
`grains. The evidence already of record shows persuasively that Jeong’s ceramic
`
`particles are a source material that is transformed during the manufacturing process
`
`to contribute to the ultimate dielectric grains of the manufactured dielectric layer,
`
`and AVX has not provided any reasoned explanation or expert testimony to show
`
`otherwise.
`
`Jeong itself states that its ceramic particles are the source material for the
`
`manufacturing process, when it describes its manufacturing method as beginning
`
`with the preparation of “ceramic green sheets” that “are manufactured by mixing
`
`first ceramic particles having an average particle size of 0.1 μm to 0.3 μm, a
`
`binder and a solvent to thereby produce a slurry and making this slurry into sheets
`
`having a thickness of a few micrometers by using a doctor blade method.” (See
`
`Jeong (Ex. 1005) at ¶ [0042] (emphasis added).) After electrode paste is layered
`
`8
`
`

`

`PGR2017-00010
`Preliminary Response
`
`on those sheets, they are then stacked and “pressurized in the lamination direction”
`
`and later “fired at a temperature of 1200° C, for example, thereby manufacturing a
`
`sintered ceramic body.” (See Jeong (Ex. 1005) at ¶¶ [0046] and [0049].)
`
`Jeong also describes the processes that affect the ceramic particles during
`
`manufacturing, including “thermal expansion” of the ceramic material as well as
`
`thermal expansion of the adjacent electrode layers by which “tensile and
`
`compressive stress acts on dielectric layers.” (See Jeong (Ex. 1005) at ¶ [0034]
`
`(emphasis added).) Additional insight into the effects of the manufacturing
`
`process is provided by Rutt, which discusses “sintering temperatures sufficiently
`
`high to fuse said ceramic particles into grains.” (See Rutt (Ex. 1006) at 11:14–
`
`16 (emphasis added).) In fact, the primary issue dealt with by Rutt is “grain
`
`growth of the ceramic . . . during the sintering.” (See Rutt (Ex. 1006) at 5:9–10
`
`(emphasis added).) The Petition and expert declarations fail to address these issues
`
`of thermal expansion, tensile and compressive stress, fusing particles into grains,
`
`or grain growth during sintering. The mere existence of these unacknowledged
`
`factors is enough to disprove the Petition’s treatment of ceramic particles as
`
`equivalent to the ultimate dielectric grains.
`
`Finally, while Jeong does create some minor confusion by continuing to use
`
`the term “ceramic particles” in the context of the manufactured product, it is clear
`
`from the passage quoted above that the cited particle sizes relate to the particles
`
`9
`
`

`

`PGR2017-00010
`Preliminary Response
`
`prior to manufacturing, rather than the sizes of the dielectric grains formed as a
`
`result of the manufacturing process. (See Jeong (Ex. 1005) at ¶ [0042].) And what
`
`little indication Jeong does provide in regard to its dielectric grains is its Figure 2
`
`illustration, where the average number of ceramic particles in dielectric layer 110A
`
`is less than 2, i.e., measurements of 2, 2, and 1 grains, which is an average of 1⅔
`
`dielectric grains.1 (See Jeong (Ex. 1005) at Figure 2 (below, in part).)
`
`
`
`Jeong (Ex. 1005), Figure 2 (in part and annotated)
`
`Because the Petition and supporting declarations fail to explain AVX’s
`
`position that Jeong’s ceramic particles satisfy the dielectric grains requirement, and
`
`because they do not in fact satisfy that requirement, the Board should reject the
`
`Petition’s reliance on Jeong in Grounds 1–3.
`
`
`1 Note that protective layer 110B is not “interposed” between internal electrodes
`and thus is not a “dielectric layer” that could meet the dielectric grains
`requirement. (See ’381 patent (Ex. 1001) at Claims 1 and 8.)
`
`10
`
`

`

`PGR2017-00010
`Preliminary Response
`
`
`Rutt Teaches to Have Only One Dielectric Grain in a
`Single Dielectric Layer
`
`b)
`
`The Petition’s application of Rutt points to its description of two dielectric
`
`grains “between respective electrodes 16 and 18” in Figures 1 and 1A, and its
`
`description of five dielectric grains “between areas 32, 33 (in which internal
`
`electrodes are formed)” in Figure 2. (See Petition at 35.) This analysis implicitly
`
`treats the entire region “between” Rutt’s internal electrodes as the claimed “single
`
`dielectric layer” that must meet the dielectric grains requirement. (See ’381 patent
`
`(Ex. 1001), Claims 1 and 8 (emphasis added).) The Petition and supporting
`
`declarations here again fail to provide any analysis explaining why the entire area
`
`“between respective electrodes” satisfies a claim requirement that expressly must
`
`be met by a “single” dielectric layer. The Board should thus reject the Petition’s
`
`reliance on Rutt due to that omission. See Microsoft, IPR2015-01024, Paper No.
`
`11, slip. op at 7.
`
`The Board should also reject the Petition’s reliance on Rutt because the
`
`region “between respective electrodes” does not constitute a “single dielectric
`
`layer.” Instead, Rutt discloses multiple dielectric layers between internal
`
`electrodes, with each layer containing only a single ceramic grain. In particular,
`
`Rutt’s description of its Figure 2 embodiment states that “each layer 30 of the
`
`monolith was comprised of five strata each stratum being composed essentially
`
`of a single ceramic grain extending throughout the entire depth of the
`
`11
`
`

`

`PGR2017-00010
`Preliminary Response
`
`stratum.” (See Rutt (Ex. 1006) at 6:14–17 (emphasis added).) Rutt’s Figure 5
`
`illustrates this by bracketing the five strata 30A, 30B, 30C, 30D, and 30E as
`
`collectively comprising layer 30. (See Rutt (Ex. 1006), Figure 2 (below).)
`
`Rutt (Ex. 1006), Figure 2
`
`
`
`Rutt’s description of its manufacturing process shows that it is the individual
`
`strata that constitute the “single” layers, when it describes a step where the “dried
`
`film was cut into rectangular pieces and stacked in groups of five.” (See Rutt (Ex.
`
`1006) at 5:56–57 (emphasis added).) Thus, while Rutt does refer to Figure 2’s
`
`composition of five strata as a “layer,” it is plainly not a “single layer” as called for
`
`by the claims.
`
`Rutt’s other embodiment shown in Figures 1 and 1A is likewise composed
`
`12
`
`

`

`PGR2017-00010
`Preliminary Response
`
`of separate “strata defined by grains 24 and grains 25.” (See Rutt (Ex. 1006) at
`
`4:31–35 and Figs. 1 and 1A.)
`
`Because the Petition and supporting declarations fail to explain AVX’s
`
`position that the entire area between Rutt’s dielectric layers constitutes the claimed
`
`“single dielectric layer,” and because Rutt actually discloses multiple dielectric
`
`layers each with a single dielectric grain, the Board should reject the Petition’s
`
`reliance on Rutt in Grounds 1–3.
`
`2. Grounds 1–3 Should Additionally Be Denied Because the
`Petitioner Already Presented the Same Prior Art to the
`Office in its Third Party Submission
`
`The Board should also reject Grounds 1–3 because they rely on the same
`
`Rutt reference that AVX already presented to the Office in its Third-Party
`
`submission. The Board has express authorization and discretion to reject petitions
`
`in instances such as this under § 325(d), which states that “[i]n determining
`
`whether to institute or order a proceeding under this chapter, chapter 30, or
`
`chapter 31, the Director may take into account whether, and reject the petition or
`
`request because, the same or substantially the same prior art or arguments
`
`previously were presented to the Office.” 35 U.S.C. § 325(d) (emphasis added).
`
`AVX’s Third Party Submission identified Rutt as “Document 3.” (See Ex.
`
`2001 at 40.) That submission included a “Concise Description of Relevance” with
`
`arguments attempting to apply Rutt to the then-pending claims, which later issued
`
`13
`
`

`

`PGR2017-00010
`Preliminary Response
`
`unaltered in the ’381 patent. (See Ex. 2001 at 13–18.) The Examiner then
`
`expressly considered Rutt, and indicated that consideration in the Supplemental
`
`Notice of Allowability. (See Ex. 2002 at 3.)
`
`Submission of prior art and corresponding arguments during original
`
`prosecution is treated as a previous presentation to the Office that triggers the
`
`Board’s discretionary power to reject petitions under § 325(d). See Prism Pharma
`
`Co., Ltd. V. Choongwae Pharma Corp., IPR2014-00315, Paper No. 14, slip op. at
`
`13 (P.T.A.B. July 8, 2014).
`
`The Petition does not even mention the fact that Rutt was previously
`
`presented to the Office, much less provide the requisite “persuasive reasoning”
`
`why the Board should institute post-grant review over the same prior art and
`
`arguments. See Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper No. 8,
`
`slip op. at 7 (P.T.A.B. Sept. 11, 2014). Consequently, because the same prior art
`
`and same arguments were already presented to the Office by the same party, the
`
`Board should reject the Petition’s reliance on Rutt in Grounds 1–3 pursuant to its
`
`discretionary authority under 35 U.S.C. § 325(d).
`
`B. Grounds 4–9 Based on the Group 39 Capacitors Should Be
`Denied
`
`Grounds 4–9 of the Petition are premised on an alleged prior public
`
`availability of AVX’s “Group 39” capacitors. (See Petition at 65–107.) The Board
`
`should deny institution on these grounds because the Petition fails to establish that
`
`14
`
`

`

`PGR2017-00010
`Preliminary Response
`
`it is more likely than not that any product satisfying the claim elements was
`
`publicly available before the priority date of the ’381 patent. Moreover, as set
`
`forth below, a decision to institute on these grounds would require the Board to
`
`rely on legally unsupportable evidence that is uncorroborated, unauthenticated, and
`
`generally unreliable hearsay evidence.
`
`While specific factual disputes are to be resolved after institution, the case is
`
`to be given a threshold assessment at the institution stage under a “more likely than
`
`not” standard. See 35 U.S.C. § 324(a). That standard was intentionally selected to
`
`be higher than the “reasonable likelihood” standard that governs institution
`
`decisions for inter partes review, because post-grant review allows petitioners to
`
`raise issues that are not permitted in inter partes review, such as alleged prior
`
`public availability, and consequently “[t]he Office wants to ensure that petitioners
`
`raising such issues present a complete case at the outset.” See 157 Cong. Rec.
`
`S1367 (March 8, 2011) (emphasis added).
`
`The completeness of the case presented at the outset is judged in accordance
`
`with the Federal Rules of Evidence that govern Board proceedings, including post-
`
`grant review. See 37 C.F.R. § 42.62(a). Three evidentiary rules in particular are
`
`plainly implicated by the Petition: (1) Rule 901’s requirement for authentic
`
`evidence, (2) Rule 602’s requirement for personal knowledge, and (3) Rule 802’s
`
`bar against hearsay evidence. See Fed. R. Evid. 901(a), 602, and 802. As
`
`15
`
`

`

`PGR2017-00010
`Preliminary Response
`
`discussed below, the eBay product analyzed by Mr. Galvagni does not satisfy the
`
`requirements for authentication and the evidence allegedly tying that product to
`
`prior public availability comes from a witness who lacks personal knowledge and
`
`resorts to impermissible hearsay. Each of these defects alone are enough to deny
`
`institution of the prior availability case AVX presents in Grounds 4–9.
`
`However, even if the evidence was admissible, Grounds 4–9 should still be
`
`rejected because the Petition fails to establish that any of the purported prior
`
`activity was public.
`
`1. Grounds 4–9 Should Be Denied Because the
`Unauthenticated eBay Product Cannot Support the
`Allegations of Prior Public Availability
`
`AVX’s prior public availability case is premised on the technical analysis of
`
`an alleged AVX product purchased by AVX’s retired employee, John Galvagni.
`
`(See Ex. 1003 and Ex. 1011.) Mr. Galvagni’s declaration states that the capacitors
`
`he analyzed were purchased by him from “a private reseller via the website
`
`www.eBay.com on December 20, 2016.” (See Ex. 1003 at 75.) That eBay product
`
`is unauthenticated and thus inadmissible evidence.
`
`The sole exhibit provided by Mr. Galvagni for that sale (Ex. 1025) conceals
`
`the identity of the private seller, but eBay’s public record of the sale identifies the
`
`seller under the internet alias “huskerfan42011.” (See Ex. 2003.) That private
`
`seller is not an authorized distributor or sales representative for AVX products.
`
`16
`
`

`

`PGR2017-00010
`Preliminary Response
`
`(See Ex. 2004.) AVX starkly warns in a disclaimer on its website against
`
`purchasing products from such unauthorized dealers, because their products “may
`
`not be authentic AVX products or may be products that have been reprocessed,
`
`badly stored, or out-of-date.” (See Ex. 2005 (reproduced below) (emphasis
`
`added).) That disclaimer goes on to state that “AVX will neither guarantee the
`
`quality of such products nor will it respond to warranty relating to that
`
`product.” (See id. (emphasis added).) As such, according to AVX’s own
`
`statements, the unauthorized status of a seller is enough for it to disclaim any
`
`responsibility for such products.
`
`Ex. 2005 (in part)
`
`17
`
`
`
`

`

`PGR2017-00010
`Preliminary Response
`
`That inauthenticity is further indicated by the “Item condition” status in the
`
`eBay listing, where “huskerfan42011” designated his unauthorized product as
`
`“New other” (rather than simply “New”). (See Ex. 2003.) According to eBay
`
`guidelines, the “New other” condition is to be used when a product is not sealed in
`
`its original packaging or has other problems that could indicate inauthenticity or
`
`lack of genuineness. (See Ex. 2006.)
`
`Rule 901 of the Federal Rules of Evidence governs post-grant review
`
`proceedings and requires that items be authenticated by “evidence sufficient to
`
`support a finding that the item is what the proponent claims it is.” Fed. R. Evid.
`
`901(a). The Petition does not identify any testimony under Rule 901(b)(1) from
`
`any individual who has actual knowledge of where the eBay product really came
`
`from.
`
` The Petition
`
`instead apparently seeks
`
`to
`
`invoke
`
`the distinctive
`
`characteristics authentication process under Rule 901(b)(4) by pointing to the
`
`packaging label on the eBay product. (See Petition at 3–4 and Ex. 1003 at ¶¶ 48–
`
`50.) But Rule 901(b)(4) says that those characteristics must be “taken together
`
`with all the circumstances.” Fed. R. Evid. 901(b)(4). Here, those circumstances
`
`include the source of the product being from an unauthorized eBay seller, the fact
`
`that the eBay seller designated the product as “New other” rather than “New,” and
`
`AVX’s warning that unauthorized sellers are passing off inauthentic products as
`
`AVX products.
`
`18
`
`

`

`PGR2017-00010
`Preliminary Response
`
`Given those circumstances, the packaging label is insufficient to establish
`
`that the eBay product is an authentic AVX product rather than an inauthentic
`
`product manufactured at some unknown time and passed off on eBay by
`
`“huskerfan42011” as an AVX product. The fact that Mr. Galvagni bypassed
`
`AVX’s twenty-nine North American distributors and sale representatives (see Ex.
`
`2004), and bypassed AVX itself, to instead buy a product from an unauthorized
`
`seller on eBay raises serious questions about authenticity. Furthermore, AVX
`
`effectively asks the Board to accept the eBay product as authentic even though, if
`
`AVX were presented with a product under the same circumstances presented to the
`
`Board, AVX would deny responsibility for the product due to the fact that it was
`
`purchased from an unauthorized dealer. (See Ex. 2005.)
`
`The Board should heed AVX’s own warning and find the unauthorized eBay
`
`product to be unauthenticated and thus inadmissible evidence. And because the
`
`eBay product forms the basis for Grounds 4–9, the Board should consequently
`
`deny institution of those grounds.
`
`2. Grounds 4–9 Should Also Be Denied Because the
`Uninformed Hearsay Testimony of Petitioner’s Employee
`Cannot Support the Allegations of Prior Public Availability
`
`The eBay product discussed above was purchased by Mr. Galvagni in
`
`December 2016 and thus even if it was admissible it would still not be enough to
`
`form a case of prior public availability. The Petition’s only link from that
`
`19
`
`

`

`PGR2017-00010
`Preliminary Response
`
`December 2016 eBay product to its alleged prior public availability is the
`
`declaration testimony of its employee Steve Shipman. (See Petition at 4 (citing Ex.
`
`1013).) Critically, the Petition does not provide any actual business record or
`
`other direct evidence of prior public availability of the eBay product analyzed. In
`
`fact, the only sales document provided is a single invoice that is only allegedly
`
`related to the eBay product based on Mr. Shipman’s uncorroborated testimony.
`
`(See Petition at 4 (linking the Ex. 1018 sales document to the Group 39 capacitors
`
`by way of “business records,” with citations