AVX Corporationv.Greatbatch Ltd.

Patent Trial and Appeal Board

May 2, 2016

09384099 (P.T.A.B. May. 2, 2016)

Trials@uspto.gov Paper 18
571-272-7822 Date: May 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AVX CORPORATION,
Petitioner,

v.

WILSON GREATBATCH LTD.,
Patent Owner.
_______________

Case IPR2015-00101
Patent 6,219,222 B1
________________

Before MICHAEL J. FITZPATRICK, JENNIFER MEYER CHAGNON,
and J. JOHN LEE, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a)
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I. INTRODUCTION
Petitioner, AVX Corporation, filed a Petition for an inter partes
review of claims 1–14, 25–36, 47, and 48 of U.S. Patent No. 6,219,222 B1
(“the ’222 patent”). Paper 1 (“Pet.”). Patent Owner, Wilson Greatbatch,
Ltd., filed a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 8
(“Prelim. Resp.”). In a May 8, 2015, Institution Decision, we instituted trial
on a subset of those claims, namely claims 1–14, 25–32, 35, 36, 47, and 48.
Paper 9 (“Inst. Dec.”).
During the trial, Patent Owner filed a short Response, conceding that
all claims on which trial was instituted are unpatentable. Paper 13 (“PO
Resp.”). Patent Owner also filed a Motion to Amend the ’222 patent (Paper
12, “Mot.”), Petitioner filed an Opposition thereto (Paper 15, “Opp.”), and
Patent Owner filed a Reply in support of its Motion (Paper 16, “Reply”).
Neither party requested oral argument, and no hearing for such was held.
We hold claims 1–14, 25–32, 35, 36, 47, and 48 unpatentable, and we
deny the Motion to Amend.
II. THE ’222 PATENT
The ’222 patent relates to an electrolyte suitable for activating a
capacitor. Ex. 1001, 1:17–18. It has a solvent that includes water and
ethylene glycol with an ammonium salt dissolved therein. Id. at 1:18–20.
One or more acids can be used as an additive to achieve the appropriate pH,
conductivity, and breakdown voltage for a particular capacitor application.
Id. at 1:20–23.
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III. THE INSTITUTED GROUNDS
Trial was instituted on the following three grounds: (1) claims 1–4
and 25–27 as anticipated by Burger1; (2) claims 5–9 as anticipated by
Hildegard2; and (3) claims 10–14, 28–32, 35, 36, 47, and 48 as obvious over
Evans I3 and Hildegard. Inst. Dec. 19. The Institution Decision explains
how the Petition had demonstrated a reasonable likelihood of prevailing on
these grounds against the included claims, showing where each limitation of
the same was taught or suggested in the prior art. See Inst. Dec. 7–18. As
noted in the Institution Decision (Inst. Dec. 7, 9, 15), Patent Owner’s
Preliminary Response did not present arguments to the contrary. Prelim.
Resp. 7, 9, 27. During trial, Patent Owner went one step further and
“concede[d] that claims 1 to 14, 25 to 32, 35, 36, 47 and 48 are
unpatentable.” PO Resp. 1.
Based on the arguments in the Petition, and the evidence presented in
support (which are discussed at pages 7 to 18 of the Institution Decision), as
well as Patent Owner’s concession of unpatentability, we hold: (1) claims
1–4 and 25–27 were anticipated by Burger, (2) claims 5–9 were anticipated
by Hildegard, and (3) claims 10–14, 28–32, 35, 36, 47, and 48 would have
been obvious over Evans I and Hildegard.

1 U.S. Patent No. 3,138,746 (June 23, 1964). Ex. 1002.
2 U.S. Patent No. 3,580,845 (May 25, 1971). Ex. 1004.
3 U.S. Patent No. 5,369,547 (Nov. 29, 1994). Ex. 1007.
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IV. PATENT OWNER’S MOTION TO AMEND
During an inter partes review, a patent owner may file a motion to
amend the patent by proposing substitute claims for challenged claims. 35
U.S.C. § 316(d)(1)(B). Any such amendment may not enlarge the scope of
the claims of the patent or introduce new matter. Id. § 316(d)(3).
A. The Proposed Claims
Patent Owner’s Motion seeks to amend the ’222 patent by
substituting, for challenged (and unpatentable) claims 10, 35, and 36,
proposed claims 49, 50, and 51, respectively. Mot. 1. Like claims 10, 35,
and 36, each of proposed claims 49–51 is directed to a capacitor comprising
an anode, cathode, and electrolyte. Claim 49 is representative and is
reproduced below, as provided by Patent Owner in the “Claim Appendix
(Marked-Up)” appended to the Motion, which shows its differences with
unpatentable claim 10.
49. (Proposed substitute for original claim 10) A
capacitor, which comprises:
(a) an anode of tantalum [a valve metal];
(b) a cathode of ruthenium oxide; and
(c) an electrolyte activating the anode and the cathode,
the electrolyte [comprising] consisting essentially of:
(i) a mixed solvent of water and ethylene glycol,
wherein the water is present, by weight, up to about 85%
and the ethylene glycol is present, by weight, up to about
95%;
(ii) a solute of [an] ammonium acetate present, by
weight, up to about 50% [salt dissolved in the solvent];
and
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(iii) a mixed [an] acid of acetic acid and
phosphoric acid, wherein the acetic acid is present, by
weight, up to about 80% and the phosphoric acid is
present, by weight, up to about 6%.
Mot. 7. As can be seen above in claim 49, and which is also true for claims
50 and 51, the anode must be made of tantalum, and the electrolyte must
include a solute of ammonium acetate and a mixed acid of acetic acid and
phosphoric acid. Mot. 7–8. Additionally, in each of claims 49–51, “the
electrolyte consisting essentially of” language “permit[s] inclusion [within
the electrolyte] of components not listed in the claim, provided that they do
not materially affect the basic and novel properties of the invention.” AK
Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1239 (Fed. Cir. 2003)
(citations and internal quotation marks omitted).
B. Analysis
As the moving party, Patent Owner bears the burden of proof to
establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c).
Thus, the burden is not on Petitioner to prove that the proposed claims are
unpatentable. Rather, Patent Owner must prove that they are patentable over
prior art already of record and any additional material prior art made of
record in the current proceeding pursuant to Patent Owner’s duty of candor
under 37 C.F.R. § 42.11. See MasterImage 3D, Inc. v. RealD Inc., No.
IPR2015-00040, Paper 42, at 2–3 (PTAB July 15, 2015) (“MasterImage
3D”).
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1. Patent Owner Has Not Demonstrated That The
Proposed Claims Are Patentable Over The Prior Art
Patent Owner’s Motion states only the following with respect to
patentability of the proposed claims:
V. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE ART
Substitute independent claims 49 to 51 are each directed
to a capacitor comprising a tantalum anode and a ruthenium
oxide cathode activated with aspects of the electrolytes set forth
in independent claims 33 and 34. Claims 33 and 34 were
determined to be valid over the prior art of record in the Decision
dated May 8, 2015.
Mot. 6.
The premise on which the sole basis for patentability presented by
Patent Owner in its Motion is based (i.e., that we have already determined
that claims 33 and 34 are valid over the prior art of record) is an erroneous
one. First, the Institution Decision does not address all “prior art of record”
relevant to the Motion to Amend.4 Rather, it addresses only the art
presented in the Petition and only the subset of that art asserted by Petitioner
against claims 33 and 34. Second, we have not determined that any claim is
“valid” over any prior art. Rather, and with respect to claims 33 and 34 in
particular, what we determined in the Institution Decision was that Petitioner
had not shown a reasonable likelihood of prevailing on either of the two

4 Prior art of record includes: “a. any material art in the prosecution history
of the patent; b. any material art of record in the current proceeding,
including art asserted in grounds on which the Board did not institute
review; and c. any material art of record in any other proceeding before the
Office involving the patent.” MasterImage 3D, at 2.
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grounds presented to challenge those claims. Inst. Dec. 13 (“Petitioner has
not shown a reasonable likelihood that it would prevail in challenging claims
33 and 34 as anticipated by Hildegard.”), 14 (“On the record before us,
Petitioner has not shown a reasonable likelihood that it would prevail in
challenging claims 33 and 34 as obvious over Burger in view of Alwitt or
Bernard.”). In particular, we noted that claims 33 and 34 include the
transitional phrase “the electrolyte consisting essentially of” and determined
that the Petition failed, in both grounds, to address whether inclusion of an
additional component present in the asserted prior art electrolyte would
affect the basic and novel properties of the inventions of claims 33 and 34.
Inst. Dec. 13–14.5
In its Opposition, Petitioner argues that Patent Owner has not met its
burden to prove claims 49–51 are patentable over the prior art of record and
material prior art known to Patent Owner. Opp. 3–5. We agree with
Petitioner. Unquestionably, the Motion to Amend does not show
patentability of the proposed claims over any prior art, nor does it identify
any additional material prior art not already of record in this proceeding.

5 Our Institution Decision includes a typographical error with respect to why
we did not institute trial of claims 33 and 34 as anticipated by Hildegard.
Wherein that Decision states that “Electrolyte B [of Hildegard] contains a
component—chromic acid—that is not recited in claims 33 and 34,” we
meant boric acid, not chromic acid, as is clear in Hildegard. Compare Inst.
Dec. 12 (containing the typographical error), with id. at 10 (correctly
describing components of Hildegard’s Electrolyte B and citing Ex. 1004,
2:42–57, 3:10).
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Patent Owner belatedly provided some arguments for patentability for
the first time in its Reply, but such arguments are untimely. See 37 C.F.R.
§ 42.23(b). Regardless, the arguments presented in the Reply are not
persuasive. The Reply briefly summarizes several references cited in a
contemporaneously filed Information Disclosure Statement (Ex. 2015),
which Patent Owner had originally submitted to the Office on August 27,
1999, during the examination of the application from which the ’222 patent
issued. Reply 2–6. The Reply does not, however, discuss patentability of
the claims over those references or identify what Patent Owner considers the
closest prior art with respect to the proposed claims. In fact, the only prior
art the Reply addresses in terms of patentability of the proposed claims is the
combination of Evans I and Hildegard that Petitioner specifically raises in its
Opposition. Reply 6–9. Even assuming this combination of references is
the closest prior art, Patent Owner has not demonstrated that the proposed
claims are patentable over them. Thus, Patent Owner has failed to carry its
burden of establishing the patentability of the proposed substitute claims
over all prior art of record.
2. Patent Owner Has Not Demonstrated That The
Proposed Claims Are Patentable Over Evans I and
Hildegard
Petitioner argues that the record demonstrates that claims 49–51 are
unpatentable as obvious over Evans I and Hildegard. Opp. 5–8.
Significantly, we have already determined, and Patent Owner has conceded,
that claims 10–14, 28–32, 35, 36, 47, and 48 are unpatentable as obvious
over these same references. PO Resp. 1 (“Patent Owner concedes that
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claims 1 to 14, 25 to 32, 35, 36, 47 and 48 are unpatentable over Grounds 1
to 9 raised in the Petition.”). Claims 10–13 collectively include all of the
limitations (or, in certain instances, narrower limitations) than those present
in each of claims 49–51. The only material distinction is that claims 49–51
recite “the electrolyte consisting essentially of,” whereas claim 10 recites
(and claims 11–13 incorporate) “the electrolyte comprising.”6
Before we address that distinction, we first address the prior art
teachings of Evans I and Hildegard as applied to proposed claims 49–51.
a. Evans I
Evans I discloses a capacitor that has an anode made of tantalum,
which meets the element (a) of each proposed claims 49–51. Ex. 1007,
5:31–37. The capacitor has a cathode that includes a metal body that may be
titanium having a porous coating of ruthenium oxide, which meets the
element (b) of each proposed claims 49–51. Id. at 5:37–41, 5:25–27, 5:6–
15. Evans I also discloses an electrolyte in contact with the disclosed
tantalum anode and ruthenium oxide-coated cathode, which meets the
element (c) of each proposed claims 49–51 (but not sub-elements (i)–(iii)).
Id. at 5:23–26.

6 In its Reply, Patent Owner asserts that there is a second distinction, stating:
“Additionally, claims 49 to 51 include water, which is not present in
[Hildegard’s] Electrolyte B.” Reply. 7. This is factually inaccurate, as
Hildegard discloses an “aqueous solution” of ammonia in its Electrolyte B.
Ex. 1004, 2:42–57, 3:10. In any event, Patent Owner has already admitted
that Electrolyte B contains water by conceding, for example, that claim 5
(which requires water) is anticipated by Hildegard. PO Resp. 1.
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b. Hildegard
Hildegard discloses electrolytes for use with capacitors. Ex. 1004,
1:14–15. In particular, it teaches an “Electrolyte B,” which discloses an
electrolyte consisting of, by mass, 230 grams ammonia (25% aqueous
solution), 410 grams of ethylene glycol, 93 grams of boric acid, 35 grams of
phosphoric acid, and 231 grams of acetic acid. Ex. 1004, 2:42–57, 3:10.
Petitioner offers declaration testimony from Jan Petrzilek, Ph.D., that
some of the acetic acid in Electrolyte B would react with the ammonia to
form ammonium acetate. Ex. 1011 ¶ 19. Dr. Petrzilek, implying that some
of the phosphoric acid also would react with the ammonia, testifies that not
all of either the acetic acid or phosphoric acid would react with the
ammonia, and, thus, some amount of those acids remain in Electrolyte B.
Ex. 1011 ¶ 19. Dr. Petrzilek explains that this is because the molar amount
of ammonia is lower than the molar amounts of those acids. Id. Thus, Dr.
Petrzilek concludes that the final mixture of Electrolyte B necessarily
includes ammonium acetate, acetic acid, and phosphoric acid. Id. We find
Dr. Petrzilek’s testimony to be credible and persuasive.
The final mixture of Electrolyte B contains water “up to about 85%”
and ethylene glycol “up to about 95%,” which meets element (c)(i) of each
of proposed claims 49–51. Ex. 1004, 2:50–52. After the ammonia and
acetic acid react, the resulting ammonium acetate would have to constitute
less than about 50% of the electrolyte by weight, which meets element (c)(ii)
of each of proposed claims 49–51. Ex. 1011 ¶ 19. After the ammonia reacts
with both acids, some amount of each acid would remain, and such
remaining amounts would be less than the maximum limits recited in
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element (c)(iii) of each of proposed claims 49–51. Ex. 1011 ¶ 19; Pet. 26–
27.
c. Evans I In View Of Hildegard
The Petition asserts, and we determine, that it would have been
obvious to modify the capacitor of Evans I to substitute its electrolyte with
Hildegard’s Electrolyte B as a mere substitution of a prior art element
according to its established function. Pet. 43 (citing KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 401 (2007); Ex. 1011 ¶¶ 26–27). Indeed, Patent Owner
conceded that this was an obvious modification. PO Resp. 1.
d. “the electrolyte consisting essentially of”
Hildegard’s Electrolyte B contains boric acid. Ex. 1004, 2:42–57,
3:10. Although it is not a listed component of the electrolytes of proposed
claims 49–51, the presence of boric acid, is not necessarily outside the scope
of those claims.
“The phrase ‘consisting essentially of’ . . . represents a middle ground
between the open-ended term ‘comprising’ and the closed-ended phrase
‘consisting of.’” AK Steel, 344 F.3d at 1239. “In view of the ambiguous
nature of the phrase, it has long been understood to permit inclusion of
components not listed in the claim, provided that they do not ‘materially
affect the basic and novel properties of the invention.’” Id. (citations
omitted). Thus, proposed claims 49–51 would encompass inclusion of boric
acid in the electrolyte, as taught in Hildegard, unless its inclusion would
materially affect the basic and novel properties of the invention.
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As the moving party, it is Patent Owner’s burden to prove that its
proposed claims are patentable over the prior art. To meet that burden with
respect to Evans I and Hildegard, Patent Owner must prove that the boric
acid in Electrolyte B would materially affect the basic and novel properties
of Patent Owner’s invention, such that it would be excluded from the
electrolytes of proposed claims 49–51. In that regard Patent Owner asserts,
without citation to Hildegard or any other evidence, that Hildegard “clearly
assert[s]” that boric acid would have a material effect. Reply 8 (quoting
Prelim. Resp. 17). We are not persuaded by this attorney argument.
Patent Owner further asserts that Burger (Ex. 1002)7 “teaches that
borates in ethylene glycol ‘are also unsuitable for use in capacitors requiring
highly conducting electrolytes as exemplified by the so-called wet slug type
of capacitor where the anode consists of a sintered, porous block (the ‘slug’)
of a film forming metal, usually tantalum.’” Reply 9 (quoting Prelim. Resp.
24–25 (quoting Ex. 1002, 1:12–16) (emphasis added initially in Prelim.
Resp.)). Patent Owner does not explain, and we do not discern, how this
teaching by Burger proves that including boric acid in the electrolytes of
proposed claims 49–51 would materially affect the basic and novel
properties of the claimed invention. In particular, Patent Owner does not
identify the basic and novel properties of its claimed invention, explain why
boric acid is purportedly unsuitable for use in the capacitor of Evans I, or

7 Burger refers to U.S. Patent No. 3,138,746 (June 23, 1964), which was
cited in the Petition in certain non-instituted grounds of unpatentability.
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discuss how such unsuitability relates to the unidentified basic and novel
properties of Patent Owner’s claimed invention.
V. CONCLUSION
Based on the information presented in the Petition and Patent Owner’s
concession, we determine claims 1–4 and 25–27 were anticipated by Burger,
claims 5–9 were anticipated by Hildegard, and claims 10–14, 28–32, 35, 36,
47, and 48 would have been obvious over Evans I and Hildegard.
The Motion to Amend is denied because Patent Owner has not
demonstrated that the proposed claims are patentable over the prior art of
record, including, for example, the art raised by Petitioner in its Opposition
(i.e., Evans I and Hildegard).
VI. ORDER
Accordingly, it is
ORDERED that claims 1–14, 25–32, 35, 36, 47, and 48 of U.S. Patent
No. 6,219,222 B1 are unpatentable;
FURTHER ORDERED that the Motion to Amend is denied; and
FURTHER ORDERED that, because this Decision is final, a party to
the proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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Petitioner:

Tim F. Williams
Jason W. Johnston
DORITY & MANNING, P.A.
timw@dority-manning.com
jwj@dority-manning.com

Patent Owner:

Michael F. Scalise
GREATBATCH, INC.
mscalise@greatbatch.com

Richard Neifeld
NEIFELD IP LAW, PC
rneifeld@neifeld.com