LONG HUA TECHNOLOGY CO., LTD.

Patent Trials and Appeals Board

Oct 18, 2021

IPR2021-00894 (P.T.A.B. Oct. 18, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Entered: October 18, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

A123 SYSTEMS, LLC,
Petitioner,
v.
LONG HUA TECHNOLOGY CO., LTD.,
Patent Owner.

IPR2021-00894
Patent 7,803,484 B2

Before CHRISTOPHER L. CRUMBLEY, KRISTINA M. KALAN, and
AVELYN M. ROSS, Administrative Patent Judges.
KALAN, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A123 Systems, LLC (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
requesting inter partes review of claims 1–19 of U.S. Patent No. 7,803,484
B2 (Ex. 1001, “the ’484 patent”). Long Hua Technology Co., Ltd. (“Patent
Owner”) filed a Preliminary Response to the Petition (Paper 9, “Prelim.
Resp.”).
To institute inter partes review, we must determine that the
information presented in the Petition shows “there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed
below, after considering the parties’ submissions and the evidence of record,
we determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing with respect to any claim of the ’484 patent. Thus, we decline to
institute inter partes review.
A. Related Proceedings
The parties identify Long Hua Technology Co., Ltd. v. A123 Systems,
LLC, No. 1:20-cv-11887-RGS (D. Mass.) (“the District Court litigation”) as
a related matter. Pet. 7; Paper 7, 2.
B. Real Parties-In-Interest
Petitioner identifies itself and its parent company, Wanxiang A123
Systems Asia Co., Ltd, as real parties-in-interest. Pet. 7. Patent Owner
identifies itself as the real party-in-interest. Paper 7, 2.
C. The ’484 Patent
The ’484 patent is titled “High Rate Capability Design of Lithium Ion
Secondary Battery.” Ex. 1001, code (54). The ’484 patent relates to a
“lithium ion secondary battery” that “includes LiFePO4 as a major
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component of the positive electrode active material.” Id. at code (57). In the
claimed lithium ion secondary battery, “an electrode layer of the positive
electrode active material on a current collector” has “a ratio of its area to its
thickness (A/t) greater than 1.2 × 106 mm, so that the layer has a reduced
ionic impedance.” Id. at 2:6–22. The claimed lithium ion secondary battery
has a high rate capability, namely, “the capacity at the discharge rate of 10C
is greater than 80% of the capacity of the discharge rate at 1C.” Id. at 2:6–
11; see also id. at 8:37–43, Fig. 3 (illustrating the relationship between area-
to-thickness ratio and discharge capability).
D. Illustrative Claim
Claims 1 and 6 are independent claims; claim 1 is representative and
is reproduced below:
1. A lithium ion secondary battery comprising a positive
electrode; a negative electrode; a separating film that separates
the positive electrode and the negative electrode; and an
electrolyte forming a lithium ion channel between the positive
electrode and the negative electrode, wherein the positive
electrode comprises a current collector substrate; one single tab
or a plurality of tabs connected to the current collector
substrate; and an electrode layer of a positive electrode material
on one surface of the current collector, wherein the positive
electrode material comprises LiFePO4 as a major component
thereof, and the electrode layer of the positive electrode
material has a ratio of its area to its thickness greater than
1.2×106 mm, and wherein the lithium ion secondary battery has
a ratio of its capacity at discharge rate of 10C to its capacity at
discharge rate of 1C is greater than 80%.
Ex. 1001, 8:59–9:6.
E. The Asserted Grounds of Unpatentability
Petitioner contends that claims 1–19 of the ’484 patent are
unpatentable on the following grounds. Pet. 9–10, 21–59.
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Ground Reference(s) Basis1 Claims Challenged
1 Hisamitsu2 § 102 1–19
2 Hisamitsu, general common
knowledge § 103 1–19
3 Hisamitsu, Gozdz,3 and general
common knowledge § 103 1–19
In support of its unpatentability arguments, Petitioner relies on the
declaration of Dr. Peter Khalifah. Ex. 1013.
II. ANALYSIS
A. Claim Construction
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2020).
Under Phillips, claim terms are afforded “their ordinary and customary
meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary
meaning of a claim term is the meaning that the term would have to a person
of ordinary skill in the art in question at the time of the invention.” Id.
at 1313. Only terms that are in controversy need to be construed, and then
only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the ’484 patent
has an effective filing date prior to the effective date of the applicable AIA
amendments, we refer to the pre-AIA versions of §§ 102, 103.
2 JP Pub. No. 2005-174691, published June 30, 2005 (Ex. 1002). Petitioner
provides a certified English translation of Hisamitsu as part of Ex. 1002.
3 US Pub. No. 2005/0233219 A1 (Ex. 1003).
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Regarding the limitation “wherein the lithium ion secondary battery
has a ratio of its capacity at discharge rate of 10C to its capacity at discharge
rate of 1C is greater than 80%,” Petitioner argues that it “carries no
patentable weight because it is either inherent by Patentee’s own admission,
or is an intended use or intended result.” Pet. 16.
Patent Owner argues that “Petitioner does not actually propose any
claim construction, but merely advocates eliminating the battery capability
limitation as having ‘unpatentable weight.’” Prelim. Resp. 17. Patent
Owner further argues that the claimed 10C discharge capability “is a
physical property readily measurable by one of ordinary skill in the art using
a suitable instrument,” and should be given patentable weight. Id. at 19.
Patent Owner proposes constructions for the terms “a positive electrode,” “a
negative electrode,” “a separating film that separates,” and “a lithium ion
channel.” Id. at 21–23.
We do not discern a discrete claim construction proposal from
Petitioner vis-à-vis the claimed 10C discharge capability; rather, Petitioner’s
argument is more of a discussion of whether this term should be given
patentable weight. We discuss this term below, in the context of analyzing
the individual grounds of unpatentability. We also determine that none of
the claim terms discussed by Patent Owner are in controversy such that they
require express construction. Vivid Techs., 200 F.3d at 803. On this record,
therefore, we decline to expressly construe any claim term.
B. Level of Ordinary Skill in the Art
Petitioner asserts that, at the time of filing of the ’484 patent, one of
ordinary skill in the art “would be a chemist having at least a Bachelor’s
degree with at least 5 years of experience in lithium ion battery chemistry.”
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Pet. 19 (citing Ex. 1013 ¶¶ 13–15). Patent Owner asserts that one of
ordinary skill in the art “would be a chemist or other material scientist
having a doctoral degree, or at least a Bachelor’s degree with at least 5 years
of experience in lithium ion battery development.” Prelim. Resp. 17.
Petitioner’s definition and Patent Owner’s definition overlap significantly,
and neither party asserts that adopting one definition or other would change
the outcome. Considering the two proposals, we regard a fair hybrid
definition of a person of ordinary skill in the art to be “a chemist or other
material scientist having at least a Bachelor’s degree with at least 5 years of
experience in lithium ion battery chemistry and development.” This level of
ordinary skill in the art is also reflected by the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
C. Asserted Anticipation over Hisamitsu (Ground 1)
Petitioner argues that claims 1–19 are anticipated by Hisamitsu.
Pet. 21–37.
1. Hisamitsu (Ex. 1002)
Hisamitsu is a patent titled “Bipolar Battery.” Ex. 1002, code (54).
Hisamitsu’s Figure 1 is reproduced below.

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Hisamitsu’s Figure 1 is a schematic diagram of the flow of current in the
bipolar battery. Ex. 1002 ¶ 146. Figure 1 depicts current path 103 having
lowest resistance around a connection part of tab 102, and path 104 having
the highest resistance in a portion far from connection part of tab 102. Id.
¶ 16. Figure 1 also depicts intermediate layer cell 101 sandwiched between
outermost layer collectors 105. Id. ¶ 15. Hisamitsu discloses a “bipolar
battery formed by stacking a plurality of cells (cells) having a positive
electrode layer formed on one side of a single collector, and a negative
electrode layer formed on an opposite side of the collector such that the cells
sandwich electrolyte layers.” Id. ¶ 5.
Hisamitsu’s Figures 3A and 3B are reproduced below.

Figure 3(A) “is a planar view of the outermost layer collector of the inside of
the bipolar battery,” and Figure 3(B) “is a cross-sectional schematic diagram
of the bipolar battery.” Id. ¶ 146. In Figure 3(B), “a stack formed by
stacking cells (cells) around electrolyte layers is stored in a battery case 108
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by making tabs protrude out, the outermost layer collectors 105 are made
thicker than the collectors of intermediate layer cells sandwiched between
the outermost layer collectors 105.” Id. ¶ 19. Regarding the composition of
the stack of intermediate layer cells, Hisamitsu provides:
A lithium-transition metal complex oxide, which is a complex
oxide of a transition metal and lithium, may be suitably used as
the positive electrode active material. Specifically, a Li/Co
complex oxide such as LiCoO2, a Li/Ni complex oxide such as
LiNiO2, a Li/Mn complex oxide such as spinel (LiMn2O4), a
Li/Fe complex oxide such as LiFeO2, or a compound in which a
portion of these transition metals are substituted with other
elements may be used as the positive electrode active material.
These lithium-transition metal complex oxides are low cost
materials having excellent reactivity and cycle durability.
Therefore, these materials are advantageous in that using them
in electrodes forms a battery having excellent output
characteristics. Other examples include: phosphates and
sulfates of transition metals and lithium, such as LiFePO4;
transition metal oxides and sulfides such as V2O5, MnO2, TiS2,
MoS2, and MoO3; PbO2; AgO; NiOOH; and the like.

Id. ¶ 24.
2. Claim 1
i. Petitioner’s Arguments
Petitioner asserts that every element of claim 1 is found in Hisamitsu,
as follows (numbering provided by Petitioner):
1.a. A lithium ion secondary battery comprising (Pet. 21
(relying on Ex. 1002 ¶¶ 117–124, 3–8));

1.b. a positive electrode; a negative electrode (Pet. 21 (relying
on Ex. 1002 ¶¶ 14, 118, 119));

1.c. a separating film that separates the positive electrode and
the negative electrode; and (Pet. 21–22 (relying on Ex. 1002 ¶ 121));

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1.d. an electrolyte forming a lithium ion channel between the
positive electrode and the negative electrode, (Pet. 22 (relying on
Ex. 1002 ¶¶ 32–33, 124; Ex. 1003, Abstract, ¶ 87; Ex. 1013 ¶ 55));

1.e. wherein the positive electrode comprises a current
collector substrate; (Pet. 22 (relying on Ex. 1002 ¶¶ 14, 118, 119));

1.f. one single tab or a plurality of tabs connected to the current
collector substrate; and (Pet. 22–23 (relying on Ex. 1002 ¶¶ 121,
Figs. 3(A)–3(B));

1.g. an electrode layer of a positive electrode material on one
surface of the current collector, (Pet. 23 (relying on Ex. 1002 ¶¶ 14,
118, 119));

1.h. wherein the positive electrode material comprises
LiFePO4 as a major component thereof, and (Pet. 23–25, 31–32
(relying on Ex. 1002 ¶¶ 24–25));

1.i. electrode layer of the positive electrode material has a ratio
of its area to its thickness greater than 1.2×106 mm, and (Pet. 25–27,
32 (relying on Ex. 1002 ¶¶ 117–124, 24; Ex. 1013 ¶ 59));

1.j. wherein the lithium ion secondary battery has a ratio of its
capacity at discharge rate of 10C to its capacity at discharge rate of 1C
is greater than 80% (Pet. 27–32 (relying on Ex. 1002 ¶¶ 117–124;
Ex. 1013 ¶¶ 70–73, 76)).
Regarding limitation 1.h., Petitioner argues that Hisamitsu’s
finite list of materials that could be used as positive electrode active
materials specifically includes LiFePO4. Pet. 24–25. Regarding
limitation 1.i., Petitioner argues that Hisamitsu’s Example 1 “is
directed to a battery including a positive electrode layer applied to a
collector surface of an electrode having an area of 210 mm x 300
mm” where the “thickness of the positive electrode layer was 30 μm”
yielding a ratio of 2.1 x 106 mm. Id. at 26. Regarding limitation 1.j.,
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Petitioner argues first that the “language of 1.j. is inherent” and also
that the “language of 1.j. carries no patentable weight.” Id. at 27–31.
ii. Patent Owner’s Arguments
Patent Owner argues that Hisamitsu does not anticipate the challenged
claims. Prelim. Resp. 29–45. More particularly, Patent Owner argues that
Hisamitsu does not disclose limitations 1.c., 1.d., 1.f., 1.h., 1.i., and 1.j. Id.
at 29–30. Patent Owner argues that Hisamitsu fails to disclose positive and
negative electrodes because Hisamitsu’s intermediate layers (cells) “cannot
reasonably correspond to the claimed positive and negative electrodes
because they are neither positive nor negative and because no tabs are
connected thereto,” and that any separating film (1.c.) is not located between
positive and negative electrodes, and therefore cannot anticipate. Id. at 30–
31. Patent Owner also argues that Hisamitsu discloses LiMn2O4, not
LiFePO4, (1.h.) in its examples, and the single mention of LiFePO4 in
Hisamitsu (Ex. 1002 ¶ 24) is insufficient to anticipate the claim. Id. at 31.
Additionally, Patent Owner argues that the tables in Hisamitsu provide
values for testing of bipolar batteries made with LiMn2O4, not and because
“no experimental result for LiFePO4 is disclosed,” the limitations of 1.i.
and 1.j. are not met. Id. at 31–32. Patent Owner provides a claim chart
including a column titled “Defect and Patent Owner Explanation,” detailing
the perceived deficiencies with Petitioner’s case. Id. at 33–45.
iii. Analysis
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). To anticipate, a reference “must not only disclose all
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elements of the claim within the four corners of the document, but must also
disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
Petitioner relies on Hisamitsu’s “positive electrode layer being
provided on one surface of a collector and a negative electrode layer being
provided on an opposite surface of the collector” to anticipate the “positive
electrode” and the “negative electrode” (1.b.) with a “separating film that
separates the positive electrode and the negative electrode” (1.c.) arranged as
in the claim. Pet. 21–22 (relying on Ex. 1002 ¶¶ 14, 118, 119, 121). One of
the paragraphs of Hisamitsu Petitioner cites refers to a “plurality of cells
(cells) having a positive electrode layer provided on one surface of a
collector and a negative electrode layer provided on an opposite surface of
the collector” (Ex. 1002 ¶ 14) (emphasis added), disclosing a plurality of
bipolar electrodes having a negative surface and an opposing positive
surface, arranged in a stack, each separated by its own film, resulting in
multiple positive electrodes, multiple negative electrodes, and multiple
films. Ex. 1002, Figs. 1, 3(B). Hisamitsu, therefore, appears to disclose a
battery having multiple collectors: outermost layer collectors 105, as well as
a plurality of internal cells in stack 101, each having its own collector. Id. It
is unclear, and Petitioner does not explain, which of these multiple
“sandwiching separators” between the multiple stacked bipolar electrode
layers having a positive and a negative surface it is relying on to meet the
claimed limitations of a positive electrode, a negative electrode, and a
separating film. Pet. 21–22 (citing Ex. 1002 ¶ 121). As noted by Patent
Owner, to “the extent Hisamitsu’s bipolar battery can be compared with the
claimed lithium ion secondary battery, a POSITA would at best point to
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Hisamitsu’s outermost layer collectors 105 as corresponding to the claimed
positive and negative electrodes.” Prelim. Resp. 35. However, Petitioner
does not specifically indicate that the outermost layer collectors 105
correspond to the claimed positive electrode and negative electrode,
particularly in its arguments regarding limitations 1.b., 1.c., 1.d., 1.e., 1.g.,
or 1.i., and we decline to make and analyze that argument on Petitioner’s
behalf. If Petitioner intended to choose a single one of Hisamitsu’s bipolar
electrodes or sandwiching separators in stack 101 to furnish the anticipating
elements, Petitioner has not sufficiently indicated or explained that, either.
Petitioner’s lack of clarity regarding which of the plurality of
collectors of Hisamitsu is the basis of its challenge is compounded by its
mapping of limitations 1.e. and 1.f., “one single tab or a plurality of tabs
connected to the current collector substrate” (1.f.) wherein “the positive
electrode comprises a current collector substrate” (1.e.). Pet. 22. Petitioner
argues that Hisamitsu’s “tabs for extracting current” are “connected to
outermost layer collectors 105 at connection parts 106,” but this connection
of the tabs to the outermost connection layer collectors 105 does not line up
with Petitioner’s apparent reliance elsewhere, such as in limitations 1.b.,
1.c., 1.d., 1.e., 1.g., and 1.i., on the bipolar electrode layers in stack 101 as
the claimed positive electrode and negative electrode. Id. at 22–23 (citing
Ex. 1002 ¶¶ 14, 118, 119). With respect to limitation 1.e., for example,
Petitioner relies on the “positive electrode layer being provided on one
surface of a collector” on one side of one of Hisamitsu’s plurality of
collectors, which has a “negative electrode layer being provided on an
opposite surface.” Id. at 22 (citing Ex. 1002 ¶¶ 14, 118, 119). Although not
specified by Petitioner, this appears to be a reference to one or more of the
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plurality of stacked bipolar electrode layers 101, because only the collectors
of the stack 101 have a positive electrode layer on one surface and a
negative electrode layer on the other. Hisamitsu’s outermost layer
collectors 105 have only a positive electrode layer or a negative electrode
layer, but not both. Ex. 1002 ¶ 45. On the other hand, the collectors of the
stack 101 are not connected to the tabs for extracting current; they are
sandwiched between outermost collection layers 105 as shown in Figure 1.
Ex. 1002, Fig. 1. Hisamitsu’s tabs 102 are connected to outermost layer
collectors 105. Id. at Figs. 1, 3(B). Thus, Petitioner cannot have it both
ways, relying on stacked bipolar electrode layers 101 in most of the
limitations that include a positive and negative electrode, and then relying on
outermost layer collectors 105 in limitation 1.f. In re Arkley, 455 F.2d 586,
587 (CCPA 1972) (an anticipatory reference must “clearly and
unequivocally disclose” the claimed invention “without any need for
picking, choosing, and combining various disclosures”).
Hisamitsu’s lack of specific use of LiFePO4 in Example 1 also
hampers Petitioner’s case. As pointed out by Patent Owner, Hisamitsu’s
Example 1 results, shown in Table 1, refer “to the capacity retention rate of
example bipolar batteries made by using lithium manganate (not LFP)” i.e.,
LiMn2O4 instead of LiFePO4 “as the positive electrode material.” Prelim.
Resp. 32. Hisamitsu measured this LiMn2O4-employing battery “before and
after 1,000 cycles of 10C charge and 10C discharge (not the capacity ratio
of 10C and 1C discharges).” Id. Petitioner does not provide sufficient
reasoning to support a conclusion that Hisamitsu would obtain the exact
same capacity results with LiFePO4 as with LiMn2O4, or that a battery using
LiFePO4 would have the same area-to-thickness ratio as the layers disclosed
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in Hisamitsu using LiMn2O4. Even if Hisamitsu had conducted an
experiment with LiFePO4, which Hisamitsu did not, Patent Owner correctly
points out that Hisamitsu did not provide any experimental information on
the capacity ratio of 10C and 1C discharges in Example 1. Prelim. Resp. 32.
Without this data, it would be difficult to determine the Hisamitsu battery’s
“ratio of its capacity at discharge rate of 10C to its capacity at discharge rate
of 1C” (1.j.).
Regarding Petitioner’s argument that the ratio limitation 1.j. is either
admittedly inherent, or an intended use, we find neither to be the case.
Patent Owner stated in prosecution that the lithium ion secondary battery
having a 10C discharge capability greater than 80% is a “unique property of
the claimed lithium ion secondary batteries brought about by ‘the electrode
layer of the positive electrode material has [sic] a ratio of its area to its
thickness greater than 1.2 × 106 mm.’” Ex. 1011, 6 (quoted in Pet. 28).
Petitioner interprets the “brought about by” portion of this statement to mean
that a battery having the claimed area-to-thickness ratio “would necessarily
have the claimed 10C discharge capability.” Pet. 28. We disagree. The
“brought about by” language does not rise to the level of an unequivocal
admission, as Petitioner would have us read it. Rather, this language appears
to indicate that the area-to-thickness ratio is a contributor to the claimed
capacity at discharge rate ratio, not that there is a 1:1 correlation between
area-to-thickness ratio and capacity at discharge rate ratio. As Patent Owner
notes, one of ordinary skill in the art “knows that parameters other than area
and thickness could be modified to achieve the capacity ratio threshold,”
such as the “composition of the positive electrode material, concentration, or
proportion of the LiFePO4 material, the porosity and tortuosity of the
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electrode structure, the type and amount of conductive additive, the type and
amount of binder, and the composition/structure of the negative electrode.”
Prelim. Resp. 19.
We also do not find that limitation 1.j. is a “non-limiting aspect of
how the device operates,” an “intended use,” or merely “informational,” as
argued by Petitioner. Pet. 29. Rather, the language of limitation 1.j. sets
forth a particular, quantifiable, physical property of the claimed battery that
can be discerned and tested. Petitioner argues that limitation 1.j. is similar to
the “providing information” limitation of Praxair Distribution, Inc. v.
Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1029 (Fed.
Cir. 2018), which was found to lack patentable weight. We disagree,
because the limitation here sets forth measurable, numerical properties of the
apparatus itself in terms of unit and ratio, rather than “ineligible
information” or an “ineligible mental process.” Praxair, 890 F.3d at 1033.
Although limitation 1.j. is not inherent by admission, and although
Petitioner has not persuaded us that it does not carry patentable weight, we
nevertheless look to determine whether Petitioner has shown that that the
capacity at discharge rate ratio is an inherent property that follows from the
area-to-thickness ratio. Pet. 32 (“the 10C discharge capability greater than
80% is an inherent property of the battery of Example 1 of Hisamitsu’s
example 1”). Petitioner has not provided persuasive evidence that this
property is inherent. Id. at 27–31, 32. Rather, Petitioner relies on the
prosecution history statement above (Ex. 1011, 6) and language from the
specification (Ex. 1001, 2:7–12) to argue that “Patentee has disclaimed any
notion the 10C discharge capability is an additional structural feature.” Pet.
28. Having reviewed the prosecution history statement and the relied-upon
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portion of the patent, we find that they do not support Petitioner’s allegations
of inherency. Moreover, Hisamitsu’s lack of experimental information on
the capacity ratio of 10C and 1C discharges in Example 1 to arrive at the
claimed 80% is problematic, as is the lack of any specific results or support
for the allegedly inherent properties of a positive electrode using LiFePO4;
these two factors, at least, render Petitioner’s inherent anticipation case
insufficient as to limitation 1.j.
On this record, Petitioner has not demonstrated a reasonable
likelihood of prevailing on its case for anticipation of claim 1 by Hisamitsu.
3. Claims 2–19
Petitioner argues that Hisamitsu also discloses each limitation of
claims 2–19. Pet. 33–37. Independent claim 6 contains substantially the
same disputed limitations as claim 1, apart from specifying that the positive
electrode element is “a lithium compound [which] has a conductivity of a
level between 10-5 to 10-10 S/cm” instead of “LiFePO4” as in claim 1.
Because Petitioner argues that this limitation is disclosed by Hisamitsu’s
disclosure of LiFePO4, we apply the same reasoning to claim 6 as to claim 1,
addressed above. Pet. 34; Prelim. Resp. 45. Petitioner’s remaining
arguments relating to the dependent claims do not overcome the problems
with the claim 1 and claim 6 arguments, and because each of the dependent
claims depend directly or indirectly on claim 1 or claim 6, those problems
are not cured by Petitioner’s additional arguments directed to the dependent
claims. Having reviewed Petitioner’s arguments with respect to claims 2–
19, we are not persuaded that Petitioner has demonstrated a reasonable
likelihood of prevailing on its anticipation contentions as to these claims.
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D. Asserted Obviousness Based on Hisamitsu and General Common
Knowledge (Ground 2)
Petitioner asserts that claims 1–19 would have been obvious over
Hisamitsu and general common knowledge. Pet. 38–49 (incorporating by
reference the Hisamitsu anticipation ground).
With respect to limitation 1.h., Petitioner argues that “general
knowledge supports that use at 80 to 90% [of LiFePO4] of would be
considered a major component.” Id. at 38 (citing Ex. 1003 ¶ 85, Ex. 1013
¶ 61). Petitioner also argues that substituting LiFePO4 for LiMn2O4 in
Hisamitsu’s Example 1 would have been “obvious to try” in “order to
produce a battery having excellent output characteristics,” with a reasonable
expectation of success. Id. at 38–39 (citing Ex. 1013 ¶ 59–60). Regarding
limitation 1.i., Petitioner argues that “it would be obvious that the positive
electrode layer is in the claimed ratio” of area to thickness greater than 1.2 x
106 mm, because one of ordinary skill in the art “would consider it
implausible that more than 40% of the current collector area” would be “free
of the active material coating.” Id. at 40 (citing Ex. 1013 ¶¶ 65–66).
Regarding limitation 1.j., Petitioner argues that one of ordinary skill in the
art “would expect that LiFePO4 batteries would exhibit a 10C discharge
capability greater than 80%,” because that “was known in lithium ion
secondary batteries having LiFePO4 as the positive electrode active
material.” Id. at 41 (citing Ex. 1003 ¶¶ 55, 84, 85). Petitioner further relies
on Example 1 of Gozdz (Ex. 1003 ¶ 55) to evidence the general knowledge
of one of ordinary skill in the art as to lithium ion secondary batteries having
the claimed components and discharge capacity. Pet. 42–43.
Patent Owner argues that it would not be “obvious to try” a different
positive electrode active material, such as LiFePO4, in Example 1, because it
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was “well known in the art that the conductivity of LiFePO4 is extremely
low and using LiFePO4 as the positive electrode material for Hisamitsu’s
bipolar battery would render it to perform comparatively worse than using
LiMn2O4” as in Hisamitsu. Id. at 46–47 (citing Pet. 39; “the ‘349 patent,”
1:17–22). Patent Owner also challenges Petitioner’s allegations of
reasonable expectation of success, arguing that Hisamitsu teaches that
lithium-transition metal complex oxides are advantageous, but that LiFePO4
is not a lithium-transition metal complex oxide and therefore is not identified
by Hisamitsu as “advantageous,” but, rather, as merely “one of the other
examples.” Id. at 47–48 (citing Ex. 1002 ¶ 24). Regarding the discharge
limitation, Patent Owner argues that Gozdz fails to “disclose any capacity
ratio of the discharge rate capabilities.” Id. at 50. Regarding the area-to-
thickness limitation, Patent Owner argues that “the cited references, taken
alone or in combination, simply do not disclose the claimed area to thickness
ratio being greater than 1.2 x 106 mm.” Id. at 51. Patent Owner presents its
own claim chart to support its arguments that Petitioner’s ground does not
meet the limitations of the challenged claims. Id. at 52–55.
As discussed above, we are not persuaded that Hisamitsu discloses,
expressly or inherently, every element of claims 1–19. Petitioner’s reliance
on general common knowledge does not fill in these gaps or cure these
shortcomings in connection with the limitations not disclosed by Hisamitsu.
Because these missing elements are not supplemented by general common
knowledge, this ground falls for at least the same reasons articulated above.
It is also unclear how Petitioner arrives at the claimed ratio of area to
thickness: “the minimum claimed area-to-thickness ratio in the ’484 patent
is 1.2 × 106 mm which, when applied to Hisamitsu, is 57% of the nominal
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collector area of Hisamitsu;” Petitioner also does not explain how it is
“implausible that more than 40% of the current collector area of Hisamitsu
collector would be free of the active material coating.” Pet. 40 (citing
Ex. 1013 ¶ 66). The declaration provides no further clarity, without which
we are unable to determine how Petitioner arrived at this calculation and
how to interpret Petitioner’s arguments based on this calculation.
Finally, it is also unclear, based on Petitioner’s proffered reasoning,
how general knowledge could supply the claimed capacity ratio. Although
Petitioner argues that “general knowledge as further supported by the
Declaration shows that it was known that LiFePO4 when used in a lithium
ion secondary battery would provide a 10C discharge capability in the
claimed range,” this does not necessarily lead to the claimed ratio. Pet. 43,
49 (citing Ex. 1013 ¶ 84). Absent values for the necessary components of
this calculation, which Petitioner has not identified, we are not certain how
Petitioner’s obviousness-based ground mathematically arrives at a “ratio of
its capacity at discharge rate of 10C to its capacity at discharge rate of 1C”
of “greater than 80%.”
Petitioner refers back to its Ground 1 arguments to contend that
claims 2–19 “are further considered obvious in view of the combination of
Hisamitsu and general common knowledge, as provided in Section IX.A.
[Ground 1].” Pet. 44; see also Prelim. Resp. 56–57 (arguing that Hisamitsu
and general common knowledge cannot render claims 2–19 obvious). We
refer back to the Ground 1 analysis to reiterate that Petitioner has not
demonstrated a reasonable likelihood of prevailing on its contentions based
on Hisamitsu, and we do not find that Petitioner’s additional arguments
based on general common knowledge cure this lacking.
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On this record, we are not persuaded that Petitioner has met its burden
of demonstrating that claims 1–19 would have been obvious over the
combination of Hisamitsu and general common knowledge.
E. Asserted Obviousness Based on Hisamitsu, Gozdz, and General
Common Knowledge (Ground 3)
Petitioner asserts that claims 1–19 would have been obvious over
Hisamitsu and Gozdz. Pet. 50–59 (incorporating by reference the Hisamitsu
anticipation ground and the Hisamitsu-based obviousness ground).
1. Gozdz
Gozdz is a patent titled “Lithium Secondary Cell with High Charge
and Discharge Rate Capability.” Ex. 1003, code (54). Gozdz “relates to a
non-aqueous electrolyte secondary cell,” namely, “a battery having a fast
charge and discharge rate capability and low rate of capacity fade during
such high rate cycling.” Id. ¶ 3. Gozdz teaches forming its positive
electrode using “88 g of doped LiFePO4” in its positive electrode slurry. Id.
¶¶ 84–100.
2. Claim 1
Petitioner relies on Hisamitsu to meet most of the limitations of the
challenged claims, and argues that Gozdz discloses “a lithium ion secondary
battery including an electrolyte forming a lithium ion channel between a
positive electrode and a negative electrode,” “a positive electrode material
having LiFePO4 as a major component thereof,” and “a 10C discharge
capability being greater than 80%.” Pet. 50 (citing Ex. 1003, Abstract,
¶¶ 87, 85, 55). Petitioner reasons that one of ordinary skill in the art would
have been motivated to combine Gozdz and Hisamitsu because “(i) Gozdz
motivates advantages of LiFePO4 as a positive electrode active material; and
(ii) Hisamitsu discloses LiFePO4 as one of a finite list of positive electrode
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active materials.” Id. at 51. Petitioner further argues that both references
teach the same “technical solution” and, therefore one of ordinary skill in the
art “would readily combine their teachings.” Id. at 53.
Patent Owner restates its argument that Hisamitsu fails to disclose
numerous critical elements of the challenged claims, and adds that Gozdz
“also fails to cure the deficiencies of Hisamitsu.” Prelim. Resp. 57–58.
Regarding the discharge limitation, Patent Owner reiterates that Gozdz “at
best discloses the fast charging and slow discharging of a lithium ion
secondary battery” over many charging and discharging cycles, but fails to
teach or suggest a battery “having ‘a ratio of its capacity at discharge rate of
10C to its capacity at discharge rate of 1C is greater than 80%,’ as recited in
claim 1.” Id. at 58–59. Patent Owner additionally argues that Gozdz fails to
cure the deficiencies of Hisamitsu with respect to the ratio of area to
thickness and the ratio of capacity at discharge rate. Id. at 59. Patent Owner
presents its own claim chart to support its arguments that Petitioner’s ground
does not meet the limitations of the challenged claims. Id. at 60–62.
As discussed above, we are not persuaded that Hisamitsu discloses,
expressly or inherently, every element of claims 1–19. Petitioner’s reliance
on Gozdz does not fill in these gaps or cure these shortcomings in
connection with the limitations not disclosed by Hisamitsu or general
common knowledge. Because these claimed limitations are not
supplemented by Gozdz or general common knowledge, this ground falls for
at least the same reasons articulated above.
Although Gozdz discloses using LiFePO4 in its positive electrode, it is
unclear that Gozdz satisfactorily discloses the required ratio of area to
thickness and ratio of capacity at discharge rate. As argued by Patent
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Owner, Gozdz “at best discloses” the fast charging (at 10C rate) and the
slow discharging (at 1/10C rate) of a lithium ion secondary battery to
compare its charging ability after many cycles to a new lithium ion
secondary battery. Prelim. Resp. 58.
Petitioner also argues that “the 10C discharge capability is considered
to be shown for a lithium ion secondary battery including a positive
electrode active material having LiFePO4 as a major component thereof,”
but this does not necessarily lead to the claimed ratio. Pet. 58–59 (citing
Ex. 1013 ¶ 93). Absent values for the necessary components of this
calculation, which Petitioner has not identified, we are not certain how
Petitioner’s obviousness-based ground mathematically arrives at the claimed
“ratio of its capacity at discharge rate of 10C to its capacity at discharge rate
of 1C is greater than 80%.”
Petitioner refers back to its Ground 1 arguments to contend that
claims 2–19 “are further considered obvious in view of the combination of
Hisamitsu and Gozdz, as provided in the claim chart of Section IX.A.
[Ground 1].” Pet. 53; see also Prelim. Resp. 62–63 (arguing that Hisamitsu,
Gozdz, and general common knowledge cannot render claims 2–19
obvious). We refer back to the analysis of Ground 1 and Ground 2 to
reiterate that Petitioner has not demonstrated a reasonable likelihood of
prevailing on its contentions based on Hisamitsu, or based on Hisamitsu and
general common knowledge. We do not find that any of Petitioner’s
additional arguments based on Gozdz cure this lacking.
On this record, we are not persuaded that Petitioner has met its burden
of demonstrating that claims 1–19 would have been obvious over the
combination of Hisamitsu, Gozdz, and general common knowledge.
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F. Discretion Under 35 U.S.C. § 314(a)
Patent Owner argues that the Board should exercise its discretion to
deny institution under 35 U.S.C. § 314(a) in view of the District Court
litigation. Prelim. Resp. 63–66 (citing Apple Inc. v. Fintiv, Inc., IPR2020-
00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). Petitioner does not
present arguments directed to whether we should exercise our discretion to
deny institution under 35 U.S.C. § 314(a). See generally Pet. For the
reasons stated above, we decline to institute inter partes review. Because
we base our denial of institution on the merits of this case, it is unnecessary
for us to analyze whether we should also discretionarily deny institution
under 35 U.S.C. § 314(a).
III. CONCLUSION
For the reasons set forth above, we determine that Petitioner has not
demonstrated a reasonable likelihood of prevailing with respect to at least
one challenged claim of the ’484 patent. Thus, we decline to institute inter
partes review on the grounds asserted in the Petition.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted.

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FOR PETITIONER:
Barbara McCoy
John Russell
Kia Freeman
MCCOY RUSSELL LLP
mccoy@mccrus.com
john@mccrus.com
kfreeman@mccarter.com

FOR PATENT OWNER:
Hsuanyeh Chang
Stephen Chow
HSUANYEH LAW GROUP PC
hsuanyeh@hsuanyeh.com
stephen.y.chow@hsuanyeh.com