PRESIDIO COMPONENTS, INC. et al.

Patent Trials and Appeals Board

Jun 1, 2020

90014128 - (D) (P.T.A.B. Jun. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/014,128 04/20/2018 6816356 104298-0491 4355
26875 7590 06/01/2020
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/01/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRESIDIO COMPONENTS, INC.
Patent Owner and Appellant
____________

Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

2
Pursuant to 35 U.S.C. § 134(b) and 306, Patent Owner1 appeals from
the final rejection of claims 1, 3, 5, 6, 8, 9, 16, 18, 19, 35, 37, 39, 40, 42, 43,
50, 52, and 53. Claims 2, 4, 7, 10–15, 17, 20–34, 36, 38, 41, 44–49, 51, and
54 were not subject to reexamination. We have jurisdiction under
35 U.S.C. § 6(b).
An oral hearing was held on May 1, 2020. The record includes a
written transcript of the oral hearing.
We REVERSE.

STATEMENT OF THE CASE
Reexamination Proceedings and Related Litigation
U.S. Patent 6,816,356 B2 (“the ’356 patent”), entitled “Integrated
Broadband Ceramic Capacitor Array,” issued November 9, 2004 to Daniel
Devoe, Alan Devoe, and Lambert Devoe, based on Application No.
10/412,992, filed April 14, 2003, is said to be continuation-in-part of
Application No. 10/150,202, filed May 17, 2002, now U.S. Patent 6,587,327
B1, issued July 1, 2003.
The ’356 patent was asserted in Presidio Components Inc. v. Am.
Technical Ceramics Corp., 723 F.Supp.2d 1284 (S.D.Cal. 2010), aff’d in
part, 702 F.3d 1351 (Fed. Cir. 2012). The jury found the asserted claims
infringed, and not invalid.
After filing of the patent suit, two requests for ex parte reexamination
of the ’356 patent were filed on July 23, 2009 and July 2, 2010, assigned

1 Appellant identifies the real party in interest as Presidio Components, Inc.
(Appeal Br. 2.)
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

3
Reexamination Control Nos. 90/009,525 and 90/009,773, respectively. The
reexamination proceedings were merged. Ex Parte Reexamination
Certificate (8534th) was issued on September 13, 2011, US 6,816,356 C1,
without claim amendments.
The ’356 patent was asserted again in Presidio Components, Inc. v.
Am. Technical Ceramics Corp., No. 3:14–cv–02061, 2016 WL 7326609,
(S.D.Cal. Jan. 12, 2016), aff’d in part, 875 F.3d 1369 (Fed. Cir. 2017).
Again, the jury found the asserted claims infringed, and not invalid.
During the second patent suit, a third ex parte reexamination of the
’356 patent was filed on December 30, 2014, assigned Reexamination
Control No. 90/013,421. Ex Parte Reexamination Certificate (10775th) was
issued on December 8, 2015, US 6,816,356 C2, in which claims 1, 3, 35, and
37 were amended.

Claimed Subject Matter
The claims are directed a monolithic capacitor structure (Abstract),
including external conductive structures positioned to form a fringe-effect
capacitance (col. 4, ll. 52–60).

Representative Claim
Independent claim 1 reproduced below, is illustrative of the claimed
subject matter, with disputed limitations in italics:
1. A capacitor comprising:
a substantially monolithic dielectric body;
a conductive first plate disposed within the dielectric
body;
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

4
a conductive second plate disposed within the dielectric
body and forming a capacitor with the first plate;
a conductive first contact disposed externally on
the dielectric body and electrically connected to the first
plate; and
a conductive second contact disposed externally on
the dielectric body and electrically connected to the
second plate, and the second contact being located
sufficiently close to the first contact in an edge to edge
relationship in such proximity as to form a first fringe-
effect capacitance with the first contact that is capable of
being determined by measurement in terms of a standard
unit.

REFERENCES
AVX Corporation, AVX Multilayer Ceramic Chip Capacitor 1–44
(Feb. 1999) (Publication S-MCC20M299-C) (“AVX”).2
Patent Owner relied upon the following in rebuttal to the Examiner’s
rejections:
Declaration under 37 C.F.R. § 1.132 of Dr. Wayne Huebner, dated
February 19, 2019, accompanied by Exhibits A–B. (Appendix I).

REJECTION
Claims 1, 3, 5, 6, 8, 9, 16, 18, 19, 35, 37, 39, 40, 42, 43, 50, 52, and 53
stand rejected under 35 U.S.C. § 102(b) as being anticipated by AVX.

OPINION
We are persuaded by Patent Owner’s arguments (Appeal Br. 30; see
also Reply Br. 3) that AVX does not describe the limitation “a first fringe-

2 Also referred to as “1999 MLC Catalog” or “1999 AVX MLC Catalog.”
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

5
effect capacitance . . . capable of being determined by measurement in terms
of a standard unit,” as recited in independent claim 1.
The Examiner found that the multilayer capacitor of AVX, composed
of barium titanate ceramic dielectric, discloses all the features of
independent claim 1 (Final Act. 4–5), including the limitation “the second
contact being located sufficiently close to the first contact in an edge to edge
relationship in such proximity as to form a first fringe-effect capacitance
with the first contact that is capable of being determined by measurement in
terms of a standard unit” (id. at 6). In particular, the Examiner cited
language from In re Best, 562 F.2d 1252, 1255 (CCPA 1977), and found
that:
Because the 402-sized, Y5V capacitor disclosed in the 1999
AVX MLC Catalog has all the elements and structure recited in
the claim which the [Patent Owner] does not dispute, the result
which is the forming of “first fringe-effect capacitance” must
exist and its value that “is capable of being determined by
measurement in terms of a standard unit” as recited in the
claim.
(Ans. 23.) We do not agree with the Examiner’s findings.
Independent claim 1 recites “a first fringe-effect capacitance . . .
capable of being determined by measurement in terms of a standard unit.”
To properly interpret the meaning of this limitation, we turn to the
Specification of the ’356 patent.
The ’356 patent discloses that prior art ceramic capacitor structures, as
illustrated in Figure 8A, “suffer from a number of drawbacks” (col. 4, ll. 6–
7), such that “the upper frequency response of even these parallel
combinations may not meet the requirements of very wide band (GHz)
devices in current use” (col. 4, ll. 11–14). Figure 21A of the ’356 patent,
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

6
reproduced below, illustrates a typical plot of insertion loss as a function of
frequency for the prior art capacitor of Figure 8A (col. 7, ll. 3–6):

As depicted in Figure 21A, “the insertion loss experiences one or more
increases, such as that shown at a frequency f1.” (Col. 7, ll. 6–7.)
In contrast to the prior art ceramic capacitor structure of Figure 8A,
the ’356 patent discloses that “the integrated capacitor array of the present
invention provides superior performance by providing less insertion loss
than combinations of discrete capacitors.” (Col. 4, ll. 34–37.) Figure 9A of
the ’356 patent illustrates an “integrated capacitor in accordance with certain
aspects of the invention” (col. 6, ll. 18–20), such that the capacitor includes
the feature of “external conductive plates 72 and 74 in the lower section 62
of the device . . . extended toward each other so as to create a capacitance
between plates 72 and 74 based upon fringe electric field extending to and
from the adjacent edges of those plates” (col. 7, ll. 22–26). Figure 21B of
the ’356 patent, reproduced below, illustrates a plot of insertion loss as a
function of frequency for the capacitor of Figure 9A (col. 7, ll. 7–9):
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

7

In contrast to Figure 21A, which exhibits an insertion loss at frequency f1,
Figure 21B illustrates that “the insertion loss is relatively smooth throughout
a broad range of frequencies.” (Col. 7, ll. 10–11.)
Thus, according to the ’356 patent, the limitation “a first fringe-effect
capacitance . . . capable of being determined by measurement in terms of a
standard unit,” encompasses plots of insertion loss as a function of
frequency for a capacitor (e.g., the smooth insertion loss of Figure 21B).
AVX relates to multiplayer ceramic capacitors. In particular, AVX
explains that “[a] multilayer ceramic (MLC) capacitor is a monolithic block
of ceramic containing two sets of offset, interleaved planar electrodes that
extend to two opposite surfaces of the ceramic dielectric.” (P. 36.) AVX
further explains that “EIA [(Electronic Industries Alliance)] Class 2
capacitors typically are based on the chemistry of barium titanate and
provide a wide range of capacitance values and temperature stability” and
“[t]he most commonly used Class 2 dielectrics are X7R and Y5V.” (Id.)
Initially, while we agree with the Examiner that the MLC capacitor of
AVX is substantially identical to the capacitor recited in independent
claim 1, next we must consider the Patent Owner’s rebuttal evidence that the
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

8
limitation “a first fringe-effect capacitance . . . capable of being determined
by measurement in terms of a standard unit” is not inherently present in the
MLC capacitor of AVX.
Patent Owner submitted a Declaration under 37 C.F.R. § 1.132 of Dr.
Wayne Huebner, dated February 19, 2019. The relevant portions of the
Huebner Declaration are reproduced below:
For the evaluations described here, S-parameters were
measured in radio-frequency and microwave frequency ranges,
ranging from 1 MHz (one million cycles per second) to 50 GHz
(fifty billion cycles per second). The two terminal capacitors
being tested may be characterized at these frequencies by the
four scattering S-parameters, which are known as S21, S12,
S11, and S22, and are typically measured and presented in the
standard unit of decibels or dB . . . .
(¶ 45.)
S21 and S12 are often referred to as “insertion loss” because
they are a measurement in dB of the fraction of energy that is
lost by the insertion of the device into a wave transmission line.
These S-parameters provide information on device performance
and can be easily measured by commercially available network
analyzers, such as the analyzer used in the tests described here,
and are the parameters referenced in the [’]356 patent at Figures
21A and 21B.
(¶ 47.)
For testing of S-parameters, the S-parameters of the microstrip
trace were measured for an ATC 550L 0402 size capacitor
[claim 1 of the ’356 patent], and also measured for an 0402 size
standard MLCC Capacitor having physical dimensions that
match the specifications shown for an 0402 capacitor in the
[prior art AVX] 1999 MLC Catalog.
(¶ 50.)
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

9
Exhibit B, slide 6 shows the insertion loss curves measured for
each of the four possible orientations of an 0402 size ATC
550L device [claim 1 of the ’356 patent]. The curves are
closely matched and show a relatively smooth curve ranging
from 0 to 0.5 dB of loss.
(¶ 60.)
In contrast, Exhibit B, slide 7 shows the insertion loss curves
measured for each of the four possible orientations of a standard
0402 size MLCC device which conforms to the size
specifications shown the [prior art AVX] 1999 MLC Catalog.
. . . Furthermore, the absolute value of insertion loss of the
standard 0402 MLCC device is much greater than that seen on a
550L 0402 device.
(¶ 61.)
In summary, my measurements comparing the infringing 550L
series capacitors [claim 1 of the ’356 patent] and a standard
MLCC in the 0402 size meeting the dimensions of the [prior art
AVX] 1999 MLC Catalog clearly shows substantial
degradation in insertion loss performance of the latter . . . .
This demonstrates that the standard MLCC lacks, as claimed in
the [’]356 patent, “a fringe-effect capacitance with the first
contact that is capable of being determined by measurement in
terms of a standard unit.”
(¶ 63.)
Slide 6 from Exhibit B,3 a graph of insertion loss as a function of
frequency for the “0402 size ATC 550L device,” corresponding the claimed
invention, is reproduced below (with selected text omitted):

3 The “smooth” shape of the insertion loss as a function of frequency from
Slide 6 is similar in appearance to Figure 21B of the ’356 patent (present
invention).
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

10

Slide 7 from Exhibit B,4 a graph of insertion loss as a function of
frequency for the prior art “standard 0402 size MLCC device,” is reproduced
below (with selected text omitted):

4 The shape of the insertion loss as a function of frequency from Slide 7,
with an insertion loss increase at about 10 GHz, is similar in appearance to
Figure 21A of the ’356 patent (prior art), with an insertion loss increase at
frequency f1.
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

11
In view of Dr. Huebner’s statements that: (i) “[t]he curves [from
Slide 6] are closely matched and show a relatively smooth curve ranging
from 0 to 0.5 dB of loss” (¶ 60) while “the absolute value of insertion loss of
the standard [prior art] 0402 MLCC device [from Slide 7] is much greater
than that seen on a 550L 0402 device” (¶ 61); and (ii) “my measurements
comparing the infringing 550L series capacitors and a [prior art] standard
MLCC in the 0402 size . . . shows substantial degradation in insertion loss
performance of the latter,” which “demonstrates that the standard MLCC
lacks, as claimed in the ’356 patent, a ‘fringe-effect capacitance with the
first contact that is capable of being determined by measurement in terms of
a standard unit’” (¶ 63), Patent Owner has demonstrated that the limitation
“a first fringe-effect capacitance . . . is capable of being determined by
measurement in terms of a standard unit,” is not inherent in the MLC
capacitor of AVX.
Other than stating that the “Examiner acknowledges and appreciates
the comments from Dr. Huebner regarding the test results” and “[t]hese
comments were consulted in reexamining the patentability of the claims”
(Ans. 32), the Examiner has not provided any commentary with respect to
adequacy of Patent Owner’s declaration evidence, which is legal error. See
In re Alton, 76 F.3d 1168, 1174 (Fed. Cir. 1996) (“the summary dismissal of
the declaration, without an adequate explanation” is error).
Accordingly, we are persuaded by Patent Owner’s comments, as
follows:
In summary, Dr. Huebner’s testing compared the
infringing 550 series capacitors to a standard MLCC. This test
was done with parts in the 0402 size, and particularly on a
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

12
standard MLCC meeting the dimensions of an 0402 part
according to the 1999 AVX MLC Catalog. Dr. Huebner
concluded that the 0402 part “clearly shows substantial
degradation in insertion loss performance of the latter, and in
addition, orientation sensitivity.[”] This demonstrates that the
standard MLCC lacks, as claimed in the ’356 patent, a “fringe-
effect capacitance with the first contact that is capable of being
determined by measurement in terms of a standard unit.”
(Appeal Br. 30.)
Patentee’s expert Dr. Huebner . . . establish[es] that an
0402 sized MLCC – including one that complies with the
specifications in the 1999 AVX MLC Catalog -- does not
evidence a fringe-effect capacitance that is “determinable by
measurement in terms of a standard unit”. In short, the testing
that has been presented actually repudiates the conclusion that
the claimed invention is inherently accomplished by a capacitor
meeting the specifications of the 1999 AVX MLC Catalog.
(Reply Br. 3.)
Therefore, we do not agree with the Examiner that AVX discloses the
limitation “a first fringe-effect capacitance . . . capable of being determined
by measurement in terms of a standard unit.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 102(b). Claims 3, 5, 6, 8, 9, 16, 18, and 19 depend from
independent claim 1. We do not sustain the rejection of claims 3, 5, 6, 8, 9,
16, 18, and 19 under 35 U.S.C. § 102(b) for the same reasons discussed with
respect to independent claim 1.
Independent claim 35 recites limitations similar to those discussed
with respect to independent claim 1. We do not sustain the rejection of
claim 35, as well as dependent claims 37, 39, 40, 42, 43, 50, 52, and 53, for
the same reasons discussed with respect to claim 1.
Appeal 2020-002498
Reexamination Control 90/014,128
Patent 6,816,356 B2

13
CONCLUSION
The Examiner’s decision rejecting claims 1, 3, 5, 6, 8, 9, 16, 18, 19,
35, 37, 39, 40, 42, 43, 50, 52, and 53 under 35 U.S.C. § 102(b) as being
anticipated by AVX is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5, 6, 8,
9, 16, 18,
19, 35, 37,
39, 40, 42,
43, 50, 52,
53
102(b) AVX 1, 3, 5, 6, 8,
9, 16, 18,
19, 35, 37,
39, 40, 42,
43, 50, 52,
53

REVERSED

PATENT OWNER:
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202