PGR2017-00010
`Patent Owner’s Response
`
`Paper No. 16
`
`
`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 RESPONSE TO PETITION
`
`_____________________________
`
`
`
`
`
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`TABLE OF CONTENTS
`
`2.
`
`ii
`TABLE OF EXHIBITS
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`CLAIM CONSTRUCTION ............................................................................ 3
`A.
`“a single dielectric layer” ...................................................................... 4
`B.
`“the first and second electrode pads are offset to each
`other” ...................................................................................................11
`III. ARGUMENT .................................................................................................18
`A.
`Rutt Does Not Teach the “Average Number Of Dielectric
`Grains” Element of Claims 1 and 8 .....................................................18
`1.
`Rutt Fails as a Secondary Reference Based on
`SEM’s Proposed Claim Construction .......................................19
`Rutt Fails as a Secondary Reference Even Under
`the Institution Decision .............................................................22
`B. One of Ordinary Skill in the Art Would Have Had No
`Motivation to Combine Itamura with Rutt ..........................................24
`1.
`Rutt’s IBLC Teachings are Inapplicable to
`Itamura’s MLCC .......................................................................24
`One of Ordinary Skill in the Art Would Have
`Avoided the Disadvantages of Using Rutt’s
`Multiple-Strata Layers ..............................................................28
`C. Ahn Does Not Teach the “Offset” Electrode Pads
`Arrangement of Claim 18 ....................................................................31
`IV. OTHER ARGUMENTS ................................................................................35
`V.
`CONCLUSION ..............................................................................................35
`CERTIFICATE OF WORD COUNT ......................................................................37
`CERTIFICATE OF SERVICE ................................................................................38
`
`
`2.
`
`i
`
`

`

`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`PGR2017-00010
`Patent Owner’s Response
`
`
`2008
`
`Declaration of Michael Randall in Support of Patent Owner’s
`Response to Petition (“Randall Declaration”)
`
`
`
`
`
`
`
`ii
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`Patent Owner Samsung Electro-Mechanics Co., Ltd. (“SEM” or “Patent
`
`Owner”) respectfully submits this Response to the Petition for Post-Grant Review
`
`(“Petition”) of U.S. Patent No. 9,326,381 (the “’381 Patent”) filed by Petitioner
`
`AVX Corporation (“AVX” or “Petitioner”).
`
`I.
`
`INTRODUCTION
`
`Most of the grounds asserted in the Petition were denied in the institution
`
`decision. The obviousness grounds that remain turn on specific questions of fact
`
`and claim construction regarding the teachings of two secondary references (Rutt
`
`and Ahn) and the alleged reasons for using them to modify the primary reference
`
`(Itamura). In order to properly evaluate Petitioner’s obviousness allegations, SEM
`
`proposes formal claim constructions for two key terms at issue. SEM also
`
`provides a supporting declaration with the expert opinions of Dr. Michael Randall,
`
`who has over twenty-five years of experience in the field of multilayer ceramic
`
`capacitors, including as the Manager of Ceramic Capacitor Research and
`
`Development at AVX. (See Randall Declaration (Ex. 2008) at ¶¶ 6–11.)
`
`SEM’s proposed claim constructions materially depart from the preliminary
`
`interpretations used by the Board in applying prior art in its institution decision.
`
`Those preliminary interpretations were based on the partially developed record at
`
`that early stage. After a comprehensive claim construction analysis, the Board
`
`should again consider whether the claimed “single dielectric layer” can cover the
`
`1
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`five strata shown in Rutt. The more granular analysis below demonstrates that
`
`such an interpretation conflicts with the intrinsic record and also impermissibly
`
`renders the claim term “single” mere surplusage. Similarly, the Board should
`
`again consider whether the “offset” electrode pads of claim 18 can be met by any
`
`two electrode pads that do not line up, in view of the more granular analysis
`
`presented below that exposes the fallacy of the Petition’s position.
`
`Finally, regardless of whether the Board adopts SEM’s claim constructions
`
`the challenged claims should survive the prior art obviousness challenge. As Dr.
`
`Randall explains, Rutt has separate boundary layers between each of its five
`
`dielectric strata, which precludes reading Rutt on the claimed “single” layer under
`
`any reasonable construction. Dr. Randall also explains why one of ordinary skill in
`
`the art would not have incorporated Rutt’s teachings directed to boundary layer
`
`concerns of “intergranular barrier layer capacitors” (IBLCs) to Itamura’s entirely
`
`different type of capacitor where no such concerns exist. Finally, Dr. Randall
`
`explains why ordinary artisans would not have embraced the separated electrode
`
`pad approach shown in Ahn.
`
`Accordingly, the Board should find all challenged claims of the ’381
`
`patentable over the instituted grounds.
`
`2
`
`

`

`II. CLAIM CONSTRUCTION
`
`PGR2017-00010
`Patent Owner’s Response
`
`
`In a post-grant review, a claim is “given its broadest reasonable construction
`
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`
`§ 42.200(b). The Federal Circuit recently explained that “[t]he correct inquiry . . .
`
`is not whether the specification proscribes or precludes some broad reading of the
`
`claim term” and the broadest reasonable construction “is not simply an
`
`interpretation that is not inconsistent with the specification,” but rather “is an
`
`interpretation that corresponds with what and how the inventor describes his
`
`invention in the specification, i.e., an interpretation that is ‘consistent with the
`
`specification.’” In re Smith Int’l, Inc., No. 16-2303, slip op. at 12–13 (Fed. Cir.
`
`Sept. 22, 2017). Furthermore, the Board must not construe claims “so broadly that
`
`its constructions are unreasonable under general claim construction principles.”
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`
`(emphasis in original).
`
`SEM’s preliminary response reserved factual and other disputes, such as the
`
`claim constructions below, for this later briefing. (Prelim. Resp. (Paper No. 6) at
`
`4–5.) Accordingly, the Board’s institution decision, based on the thin record at
`
`that juncture, concluded that Rutt’s five strata could potentially constitute the
`
`“single” dielectric layer of claims 1 and 8 (Institution Decision (Paper No. 11) at
`
`18) and that Ahn’s four aligned electrode pads might satisfy the claim 18
`
`3
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`requirement that “the first and second electrode pads are offset to each other” (id.
`
`at 26). Those preliminary views should be revisited in the context of a more
`
`developed record and a claim construction analysis based on the intrinsic evidence,
`
`(the claims and specification), relevant extrinsic evidence (the expert opinions of
`
`Dr. Randall and supporting exhibits), and relevant claim construction principles.
`
`“a single dielectric layer”
`
`A.
`Claim 1 recites a “ceramic body including dielectric layers,” goes on to
`
`specify that there must be “at least one of the dielectric layers interposed” between
`
`opposing first and second internal electrodes, and finally requires “an average
`
`number of dielectric grains in a single dielectric layer in a thickness direction
`
`thereof is 2 or greater.” (’381 patent (Ex. 1001) at Claim 1.) Claim 8 recites
`
`identical requirements. (Id. at Claim 8.) A person of ordinary skill in the art
`
`would have understood the recited “single dielectric layer” to mean an integral
`
`layer of dielectric material having no discernable constituent layers. (See Randall
`
`Declaration (Ex. 2008) at ¶¶ 103–106 and 145–154.)
`
`The claims themselves provide substantial support for this construction by
`
`their usage of the term “layer.” For instance, claim 1 uses the term “layer,”
`
`without the “single” modifier, when referencing a layer that does have multiple
`
`constituent layers, such as the “active layer” which includes “a plurality of first and
`
`second internal electrodes . . . with at least one of the dielectric layers interposed
`
`4
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`therebetween.” (Ex. 1001 at Claim 1; see also Randall Declaration (Ex. 2008) at
`
`¶ 149.) In addition, the use of the phrase “at least one of the dielectric layers
`
`interposed therebetween” indicates that multiple dielectric layers must be
`
`discernable as plural “layers,” so that “at least one” such layer can be identified.
`
`(Ex. 1001 at Claim 1; see also Randall Declaration (Ex. 2008) at ¶ 150.) Finally,
`
`claim 1 uses the designation “single” to reference one such distinguishable layer,
`
`i.e., in the term “a single dielectric layer.” (Id.)
`
`The specification also supports SEM’s proposed construction. Like the
`
`claims, the specification refers to an “active layer” portion of the MLCC that
`
`comprises multiple constituent layers. (Ex. 1001 at 2:46–51, 4:23–30, 6:14–18;
`
`see also Randall Declaration (Ex. 2008) at ¶ 152.) The specification also refers to
`
`a “cover layer” that comprises multiple constituent layers. (Ex. 1001 at 6:64–67,
`
`8:27–28, 10:31–41; see also Randall Declaration (Ex. 2008) at ¶ 103.) However,
`
`the specification adds the word “single” to the term “dielectric layer” in instances
`
`where there are no constituent layers. The specification also equates dielectric
`
`layers with the corresponding green sheets used to form them, e.g., in the
`
`explanation that the slurry is “dried to prepare a plurality of ceramic green sheets,
`
`thereby forming dielectric layers.” (Ex. 1001 at 8:9–14; see also Randall
`
`Declaration (Ex. 2008) at ¶ 103.) Finally, the description of the Figure 5
`
`embodiment includes a reference to “a single dielectric layer 111” to describe an
`
`5
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`MLCC that does not contain discernable constituent layers. (Ex. 1001 at 7:14–16
`
`and Fig. 5 (reproduced below, with annotation).)
`
`
`
`While SEM’s proposed construction reflects the process used to create the
`
`layers, it does not define the layers based on their method of manufacture. Instead,
`
`the proposed construction appropriately defines a single dielectric layer based on
`
`its visual characteristics in accordance with the specification’s instructions on how
`
`to measure the number of grains within that single layer. In particular, the
`
`specification explains that “the average number and the average grain size of the
`
`dielectric grains 111a may be measured from an image obtained by scanning a
`
`cross-section of the ceramic body 110 in the width direction.” (’381 patent (Ex.
`
`1001) at 7:45–48 (emphasis added).) The specification describes such visual
`
`measurements as involving measuring at thirty equidistant points of a single
`
`6
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`dielectric layer captured by the image. (Id. at 7:56–60.) Exemplary images are
`
`shown in Figure 4 and its enlarged view in Figure 5. (Id. at Figs. 4–5.)
`
`Dr. Randall explains that such images are commonly used to inspect and
`
`measure multilayer capacitors. (See Randall Declaration (Ex. 2008) at ¶¶ 147–
`
`148.) With those images, an ordinary artisan can visually analyze the capacitor
`
`and carry out measurements. (Id.) Dr. Randall confirms that one of ordinary skill
`
`in the art could have and would have visually identified a “single” dielectric layer
`
`in the image by locating an integral layer of dielectric material that cannot be
`
`discerned as having multiple constituent layers. (Id.)
`
`As one example, Dr. Randall points to a manual published by University of
`
`Maryland’s Center for Advanced Life Cycle Engineering (CALCE) that explains
`
`how to inspect MLCCs for damage and other defects. (Id. at ¶ 125 and n.10.) The
`
`images in that manual enable one of ordinary skill in the art to visually identify
`
`multiple, individual dielectric layers. (Id.) For example, with respect to the
`
`capacitor image below, Dr. Randall explains that one of ordinary skill in the art
`
`would have visually inspected the image and discerned three “single” dielectric
`
`layers between the pair of internal electrodes. (Id. (annotated image reproduced
`
`below).)
`
`7
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`Other extrinsic evidence also supports SEM’s proposed construction. For
`
`instance, the primary prior art reference cited in the Petition—Itamura—states the
`
`
`
`following:
`
`The structure of the third layer 16 is not limited to the
`two-layer structure described above. The third layer 16
`may include a single layer or three or more layers.
`
`(Ex. 1004 at 7:27–29 (emphasis added).) In this passage, the word “single” is
`
`clearly used to differentiate a single layer from a layer in which multiple
`
`constituent layers can be discerned—such as Itamura’s “third layer 16” having
`
`either a “two-layer” structure or a structure with “three or more layers.” (See
`
`Randall Declaration (Ex. 2008) at ¶ 153.) A “single” layer, by contrast, is
`
`therefore one in which there are no discernable constituent layers.
`
`Rutt likewise reflects this usage where it describes a “control” example
`
`having “a thicker single film the total thickness of which approximately equaled
`
`the plurality of stacked films,” which is compared to an inventive example where
`
`“layers of ceramic were fabricated by multiple sub-layers or strata.” (Ex. 1006 at
`
`8
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`8:25–32 (emphasis added); see also id. at 7:17–20.) In Rutt, as in both Itamura and
`
`the ’381 patent, the word “single” is used to differentiate a layer that can be
`
`discerned as having multiple constituent layers (e.g., “multiple sub-layers”) from
`
`one that does not. (See Randall Declaration (Ex. 2008) at ¶ 154.) In fact, Dr.
`
`Randall explains that the term “strata” used in Rutt is a synonym for “layer,” a
`
`conclusion Rutt effectively affirms when it interchangeably makes the reference to
`
`“sub-layers or strata.” (Id. at ¶ 146 and n.20.) Rutt’s own use of the word “single”
`
`to distinguish an alternative to the multiple-strata embodiment relied on by the
`
`Petition should preclude a construction where that embodiment is also considered a
`
`“single” layer.
`
`SEM’s proposed construction also conforms to relevant and significant
`
`claim construction principles by not reading the word “single” out of the claims
`
`entirely and by properly recognizing the patentee’s intent to not claim “one or
`
`more” dielectric layers. See Microsoft, 789 F.3d at 1298 (broadest reasonable
`
`construction may not be “unreasonable under general claim construction
`
`principles”).
`
`The first relevant claim construction principle is that a construction may not
`
`“render the disputed claim language mere surplusage.” Texas Instruments, Inc. v.
`
`U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993); see also Enzo
`
`Biochem Inc. v. Applera Corp., 780 F.3d 1149, 1154 (Fed. Cir. 2015) (reading
`
`9
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`phrase out of claim impermissibly broadens it). In order to avoid rendering the
`
`term “single” mere surplusage, the term “a single dielectric layer” should be
`
`interpreted to require a layer in which multiple constituent layers cannot be further
`
`discerned. If the term “a single dielectric layer” is interpreted in a way that would
`
`encompass a collection of several dielectric layers, then there would be no
`
`difference between the terms “a dielectric layer” and “a single dielectric layer” –
`
`all dielectric layers would satisfy the “single” requirement, rendering the word
`
`“single” as mere surplusage. Such a construction should be avoided where
`
`possible, as here. Properly construing “a single dielectric layer” as SEM proposes
`
`accords meaning to the term “single” so that only a subset of dielectric layers
`
`qualify, i.e., those that cannot be visually distinguished as having several
`
`constituent layers.1
`
`The second relevant claim construction principle is that the term “a” does
`
`not mean “one or more” when “the claim language and specification indicate that
`
`‘a’ means one and only one.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011);
`
`see also Insituform Technologies, Inc. v. Cat Contracting, Inc., 99 F.3d 1098, 1106
`
`(Fed. Cir. 1996) (restricting claim to singular interpretation based on the
`
`
`1 Likewise, the term “a single dielectric layer” cannot simply mean the entire area between
`opposing internal electrodes. As noted above, claim 1 states that there is “at least one” of the
`dielectric layers interposed between opposing first and second internal electrodes. Therefore,
`construing “a single dielectric layer” to be the entire area between opposing first and second
`internal electrodes would then render the words “at least one” mere surplusage.
`
`10
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`specification). Here, both the claim language and specification indicate that “a
`
`single dielectric layer” does not mean “one or more” dielectric layers and instead
`
`means “one and only one.” The claims themselves reflect this intent by the express
`
`addition of the word “single” to modify the term “dielectric layer.” The
`
`significance of the “single” recitation is especially meaningful here because it
`
`differentiates the claimed “single dielectric layer” from usage of the term “layer”
`
`elsewhere in the claims, such as where the claims recite “at least one” of the
`
`dielectric layers. (See ’381 patent (Ex. 1001) at 13:42–43.) That singular intent is
`
`also reflected throughout the specification as described above. See pages 5–7,
`
`supra.
`
`Consequently, the claims, specification, extrinsic evidence, and relevant
`
`claim construction principles all show that one of ordinary skill in the art would
`
`have understood “a single dielectric layer” to mean an integral layer of dielectric
`
`material having no discernable constituent layers.
`
`“the first and second electrode pads are offset to each other”
`
`B.
`Claim 18 recites “the first and second electrode pads are offset to each other
`
`in a width direction of the multilayer ceramic capacitor.” (’381 patent (Ex. 1001)
`
`at Claims 1 and 8.) A person of ordinary skill in the art would have understood
`
`that the recitation “the first and second electrode pads are offset to each other”
`
`means that each electrode pad of a first polarity connected to the multilayer
`
`11
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`ceramic capacitor is out of line, in the width direction, from all electrode pads of a
`
`second polarity connected to the capacitor. (See Randall Declaration (Ex. 2008) at
`
`¶¶ 155–156, 159–161, and 164–166.)
`
`Support for this construction is found in the claims and specification. For
`
`instance, the specification describes a Fig. 7 embodiment where one electrode pad
`
`is in line with one opposing electrode pad and a Fig. 8 embodiment where two
`
`electrode pads are connected to the same external electrode and spaced apart from
`
`each other, and both are in line with electrode pads connected to the opposing
`
`external electrode. (See ’381 patent (Ex. 1001) at 12:5–16, 13:1–12 and Figs. 7
`
`and 8; Randall Declaration (Ex. 2008) at ¶ 159.) The specification also describes
`
`“another exemplary embodiment” shown in Fig. 9, where the electrode pads are
`
`described as “offset to each other.” (See ’381 patent (Ex. 1001) at 13:13–22 and
`
`Fig. 9; Randall Declaration (Ex. 2008) at ¶¶ 159–160.)
`
`The term “offset” is only used in relation to the Fig. 9 embodiment and is
`
`not used in relation to either of the Fig. 7 or 8 embodiments. (See ’381 patent (Ex.
`
`1001) at 12:5–13:22.) The embodiments of Figs. 7 and 8 are respectively reflected
`
`in dependent claims 17 and 19. (See ’381 patent (Ex. 1001) at Claims 17 and 19;
`
`Randall Declaration (Ex. 2008) at ¶ 161.) The proposed construction of claim 18
`
`properly recognizes the “offset” embodiment of Fig. 9, without inappropriately
`
`ensnaring the embodiments of Figs. 7 and 8.
`
`12
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`Furthermore, in connection with the embodiment of Fig. 9, the specification
`
`teaches that “since the first and second electrode pads 221" and 222" may be offset
`
`to each other in the width direction of the multilayer ceramic capacitor, contraction
`
`and expansion may be offset to each other, such that an effect of reducing acoustic
`
`noise may be further excellent.” (’381 patent (Ex. 1001) at 13:18–22.) Dr.
`
`Randall explains why one of ordinary skill in the art reading this description would
`
`understand that each electrode pad is out of line with all opposing electrode pads,
`
`because an electrode pad that is in line with an opposing electrode pad—even if
`
`offset to some other electrode pad—would not cause the offset contraction and
`
`expansion that reduces acoustic noise. (See Randall Declaration (Ex. 2008) at
`
`¶¶ 162–164.) Dr. Randall illustrates the difference between in line and offset
`
`electrode pads (reproduced below) and shows that the decreased noise emission
`
`from “offset” electrodes is a consequence of having each electrode pad out of line
`
`with all opposing electrode pads. (See id. at ¶ 163.) One of ordinary skill in the art
`
`would have understood this benefit from reading the ’381 patent and interpret the
`
`term “offset” accordingly. (Id. at ¶¶ 164–165.)
`
`13
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`
`
`Support for this construction is also found in the common dictionary
`
`definition of “offset,” which is to “place out of line” or “the amount or distance by
`
`which something is out of line.” (See Ex. 2007 (emphasis added).) Dr. Randall
`
`explains that this definition of “offset” supports the understanding of one of
`
`ordinary skill in the art that “offset” requires each electrode pad be “out of line”
`
`with any opposing electrode pads. (See Randall Declaration (Ex. 2008) at ¶¶ 155–
`
`156.)
`
`Consequently,
`
`the claims, specification, and extrinsic evidence all
`
`demonstrate that one of ordinary skill in the art would have understood that the
`
`claim recitation “the first and second electrode pads are offset to each other” means
`
`each electrode pad of a first polarity connected to the multilayer ceramic capacitor
`
`14
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`is out of line, in the width direction, from all electrode pads of a second polarity
`
`connected to the capacitor.
`
`III. THE ’381 PATENT
`
`The ’381 patent is directed to a multilayer ceramic capacitor (“MLCC”)
`
`designed to reduce the undesired acoustic noise that can arise during operation.
`
`(See Randall Declaration (Ex. 2008) at ¶¶ 100–101; Ex 1006 at 1:37–51.) The
`
`acoustic noise results from vibrations of the MLCC due to piezoelectric or
`
`electrostrictive effects when an electric field is generated between electrodes
`
`contained within the MLCC. (Id.) Those piezoelectric or electrostrictive effects
`
`are due to the properties of the dielectric materials used in the MLCC. (Id.)
`
`The ’381 patent teaches to minimize acoustic noise by a combination of
`
`external and internal parameters, including a specified “average number of
`
`dielectric grains in a single dielectric layer in the thickness direction.” (Ex. 1001 at
`
`7:16–27; see Randall Declaration (Ex. 2008) at ¶ 100; see also Ex. 1001 at Fig. 4
`
`(below left, showing pertinent external parameters) and Fig. 5 (below right, with
`
`annotation, showing exemplary measurement of dielectric grains).)
`
`15
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`
`
`The ’381 patent also teaches particular electrode pad arrangements that
`
`minimize the transfer of vibrations from the MLCC to the circuit board on which it
`
`is mounted, including where the electrode pads are in an “offset” arrangement.
`
`(Ex. 1001 at 13:13–22; see Randall Declaration (Ex. 2008) at ¶¶ 162–163; see also
`
`Ex. 1001 at Fig. 9 (below, with annotations)).
`
`
`
`16
`
`

`

`IV. THE PRIOR ART
`
`A.
`
`Itamura
`
`PGR2017-00010
`Patent Owner’s Response
`
`
`Itamura is directed to so-called “reverse” geometry MLCCs. (Ex. 1004 at
`
`2:1–3; see Randall Declaration (Ex. 2008) at ¶ 107.) Itamura teaches to include a
`
`resistor component within its external terminal electrodes to increase the
`
`equivalent series resistance (ESR) of the MLCC while achieving a low equivalent
`
`series inductance (ESL). (Ex. 1004 at 5:64–6:3; see Randall Declaration (Ex.
`
`2008) at ¶¶ 107–108.) Itamura’s MLCC is otherwise a standard MLCC. (Randall
`
`Declaration (Ex. 2008) at ¶ 109.)
`
`B. Rutt
`
`Rutt
`
`is directed
`
`to “boundary
`
`layer” devices,
`
`including varistors,
`
`intergranular barrier
`
`layer capacitors (“IBLCs”), and positive temperature
`
`coefficient of resistance (“PTCR”) thermistors. (Randall Declaration (Ex. 2008) at
`
`¶ 110; see Ex. 1006 at 2:32–41 and 10:3–22.) Boundary layer devices are devices
`
`that typically contain ceramic dielectrics with a two phase structure comprised of
`
`semiconducting grains and insulating boundary regions. (Randall Declaration (Ex.
`
`2008) at ¶ 111; see also Ex. 1006 at 10:8–15.) The electrical characteristics of
`
`boundary layer devices depend on the number of boundary layers, and Rutt
`
`therefore teaches to have multiple “strata” between electrodes to achieve
`
`“predictable and
`
`readily
`
`repeatable break down or operating voltage
`
`17
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`characteristics.” (Ex. 1006 at 2:32–35; see Randall Declaration (Ex. 2008) at
`
`¶¶ 111 and 116.)
`
`C. Ahn
`
`Ahn describes approaches for mounting MLCCs on circuit board in a way
`
`that reduces acoustic noise. (Ex. 1006 at ¶ [0004]; see Randall Declaration (Ex.
`
`2008) at ¶¶ 134–135.) In particular, Ahn teaches that acoustic noise can be
`
`reduced by mounting the MLCC on the circuit board so that its internal electrodes
`
`are horizontal, and by reducing the height of the solder used to connect the MLCC
`
`to the electrode pads of the circuit board. (Ex. 1006 at ¶ [0016]; see Randall
`
`Declaration (Ex. 2008) at ¶ 135.) Ahn also describes a separated electrode pad
`
`arrangement that is meant “to reduce the soldering amount.” (Ex. 1007 at
`
`¶ [0077]; see Randall Declaration (Ex. 2008) at ¶ 137).
`
`V. ARGUMENT
`
`A. Rutt Does Not Teach the “Average Number Of Dielectric Grains”
`Element of Claims 1 and 8
`
`The Petition concedes that Itamura fails to disclose “an average number of
`
`dielectric grains in a single dielectric layer in a thickness direction thereof is 2 or
`
`greater,” as required by claims 1 and 8. The instituted grounds rely on Rutt’s
`
`teachings of its dielectric layer comprising “five strata.” But Rutt’s dielectric layer
`
`is a composite layer that can readily be discerned into five constituent layers and
`
`18
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`thus does not meet SEM’s proposed construction of “a single dielectric layer.”
`
`Furthermore, Rutt in fact has separate barrier layers between each of its five
`
`dielectric strata, which precludes a “single” layer determination under any
`
`reasonable construction.
`
`1.
`
`Rutt Fails as a Secondary Reference Based on SEM’s
`Proposed Claim Construction
`As explained above, a person of ordinary skill in the art would have
`
`understood “a single dielectric layer” to mean an integral layer of dielectric
`
`material that cannot be discerned into multiple constituent layers. See II.A, supra.
`
`Rutt’s layer 30 is a composite layer that can readily be discerned into five
`
`constituent layers (i.e., “multiple sub-layers or strata,” see Ex. 1006 at 8:26). (See
`
`Randall Declaration (Ex. 2008) at ¶ 122.) Therefore, Rutt does not disclose or
`
`teach the element of both claims 1 and 8 requiring “an average number of
`
`dielectric grains in a single dielectric layer in a thickness direction thereof is 2 or
`
`greater.”
`
`Dr. Randall explains that one of ordinary skill would have discerned
`
`multiple constituent layers in Rutt’s dielectric layer 30. (Randall Declaration (Ex.
`
`2008) at ¶ 122.) Those constituent layers are Rutt’s “five distinct strata 30A, 30B,
`
`30C, 30D, and 30E” and are shown in Rutt’s “photo micrograph” of Figure 2
`
`(below). (See Ex. 1006 at 4:43–47 and Fig. 2.)
`
`19
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`
`
`Rutt (Ex. 1006), Figure 2 (multiple constituent layers 30A–30E of layer 30)
`
`This is further shown by Rutt’s description of how its dielectric layer 30 is
`
`manufactured. Rutt describes “milling” zinc oxide (i.e., turning it into a powder)
`
`and combining it with an acrylic latex binder and a dispersant (a mixture that
`
`includes a solvent) to create a “water slurry,” which is then applied to stainless
`
`steel surface and “cut into rectangular pieces that are stacked in groups of five.”
`
`(Ex. 1006 at 5:35–49 and 5:56–57; see Randall Declaration (Ex. 2008) at ¶¶ 123.)
`
`Rutt’s process mirrors the ’381 patent’s process for forming its green sheets
`
`by “mixing the ceramic powder, a binder, and a solvent to prepare the slurry and
`
`forming the prepared slurry as sheets having a thickness of several μm by a doctor
`
`blade method.” (Ex. 1001 at 8:15–18 and 8:25–27; see Randall Declaration (Ex.
`
`20
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`2008) at ¶ 124.)2 Rutt’s cut pieces are ultimately labeled “strata” (Ex. 1006 at
`
`6:14–15), while the ’381 patent refers to its corresponding pieces as “dielectric
`
`layers.” (Ex. 1001 at 8:13–14; see Randall Declaration (Ex. 2008) at ¶ 124.) One
`
`of ordinary skill in the art would have consequently understood that each of Rutt’s
`
`“strata” must be a “dielectric layer” as the ’381 patent uses that term in relation to
`
`its corresponding elements. (See Randall Declaration (Ex. 2008) at ¶ 124.) And
`
`because Rutt’s “strata” are dielectric layers, Rutt’s layer 30 could not be “a single
`
`dielectric layer” because it is made up of the multiple constituent strata.
`
`Because a person of ordinary skill in the art would have understood “a single
`
`dielectric layer” to mean an integral layer of dielectric material that cannot be
`
`discerned as having multiple constituent layers, Rutt’s composite layer that can be
`
`discerned as including multiple constituent layers is not “a single dielectric layer.”
`
`Rutt therefore does not teach “an average number of dielectric grains in a single
`
`dielectric layer in a thickness direction thereof is 2 or greater,” as recited in claims
`
`1 and 8. As the “average number” claim element is not met, the combination of
`
`Itamura and Rutt cannot render claim 1 obvious, and the combination of Itamura,
`
`Rutt, and Ahn likewise cannot render claim 8 obvious.
`
`
`2 While Rutt’s green sheet formation mirrors that of the ’381 patent in substance, Rutt’s process
`is significantly more complex and thus undesirable as discussed below. See II.B.2, infra.
`
`21
`
`

`

`PGR2017-00010
`Patent Owner’s Response
`
`
`2.
`
`Rutt Fails as a Secondary Reference Even Under the
`Institution Decision
`Even if the Board declines to adopt SEM’s proposed construction, it should
`
`still find the challenged claims patentable, because Rutt’s composite layer 30 is not
`
`“a single dielectric layer” under any possible interpretation. Specifically, Rutt’s
`
`“layer” includes not only the dielectric “strata” but also boundary layers between
`
`each strata. (See Randall Declaration (Ex. 2008) at ¶¶ 117 and 174.) These
`
`interposed boundary layers should preclude Rutt’s “layer” from being “a single
`
`dielectric layer” under any reasonable construction.
`
`Rutt teaches that its “layer 30” should contain at least two dielectric sub-
`
`layers or strata, and that the stratum are to be separated from each other