SMA Solar Technology AG

Patent Trials and Appeals Board

Jan 21, 2021

IPR2019-01224 (P.T.A.B. Jan. 21, 2021)

Trials@uspto.gov Paper 30
571-272-7822 Date: January 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SOLAREDGE TECHNOLOGIES LTD.,
Petitioner,
v.
SMA SOLAR TECHNOLOGY AG,
Patent Owner.

IPR2019-01224
Patent 7,816,631 B2

Before LYNNE H. BROWNE, HYUN J. JUNG, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Denying Patent Owner’s Motion to Exclude
37 C.F.R. § 42.64

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INTRODUCTION
SolarEdge Technologies Ltd. (“Petitioner”) filed a Petition (Paper 2,
“Pet.”), requesting institution of an inter partes review of claims 1–18 of
U.S. Patent No. 7,816,631 B2 (Ex. 1101, “the ’631 patent”). SMA Solar
Technology AG (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes
review of claims 1–18 of the ’631 patent on all presented challenges. Paper
10 (“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 16, “PO
Resp.”), Petitioner filed a Reply (Paper 20, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 21, “PO Sur-reply”). Patent Owner also filed a
Motion to Exclude (Paper 25, “PO Mot. Exclude”), and Petitioner filed an
Opposition to the Motion to Exclude (Paper 26, “Pet. Opp.”). An oral
hearing in this proceeding was held on October 26, 2020, and a transcript of
the hearing is included in the record (Paper 29, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–18 of the ’631 patent are
unpatentable.
BACKGROUND
A. Real Parties in Interest and Related Matters
Petitioner states that the “real party-in-interest is Petitioner SolarEdge
Technologies Ltd.” Pet. 1. Patent Owner states that the “real party-in-
interest is SMA Solar Technology AG.” Paper 4, 2.
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The parties do not identify any related litigation matters in the United
States. Pet. 1; Paper 4, 2. The parties indicate that a European counterpart
to the ’631 patent has been asserted in Germany against Petitioner. Pet. 1
(citing Ex. 1135); Paper 4, 2. Petitioner also identifies four other petitions
challenging the ’631 patent based on different combinations of references.
Pet. 18. The ’631 patent is the subject of IPR2019-01223, IPR2019-01225,
IPR2019-01226, and IPR2019-01227. We instituted review in IPR2019-
01223, and we issue the Final Written Decision in that case concurrently
with this Decision. We denied institution in IPR2019-01225, IPR2019-
01226, and IPR2019-01227.
B. The ’631 Patent
The ’631 patent issued October 19, 2010, from an application filed
June 22, 2005. Ex. 1101, codes (22), (45).
The ’631 patent relates to “an inverter with a housing having a cooling
unit for cooling the electronic and/or electric components of the inverter.”
Ex. 1101, 1:13–15. The ’631 patent describes problems with prior art
inverter housings having vents and fans that allow contamination to enter the
housing, which in turn causes failures of the inverter. Id. at 1:21–29. The
’631 patent seeks to address these problems by providing an inverter housing
with two chambers having different characteristics. Id. at 1:40–50. Figure 1
of the ’631 patent is reproduced below.
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Figure 1 “is a perspective view, with portions broken away, of the housing.”
Id. at 2:16–18. Housing 1 includes partition wall 6 that divides housing 1
into chambers 7 and 8. Id. at 2:22–23. Partition wall 6 receives electronic
and electric components 5 that project into chamber 7. Id. at 2:24–26.
Cooling bodies 4 disposed on components 5 project into chamber 8. Id. at
2:27–30. The thermal connection between cooling body 4 and component 5
allows heat transfer from component 5 to cooling body 4. Id. at 2:32–35.
The ’631 patent emphasizes the different characteristics of chambers 7
and 8, and the different electrical components contained in each chamber.
Chamber 7 includes components with low power dissipation, with no
cooling or ventilation provided in the chamber. Id. at 2:49–52. Chamber 7
has a “higher protection grade” than chamber 8 “in order to make certain
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that the electric or electronic components are protected against dirt and
moisture.” Id. at 2:43–46. Chamber 8 includes fan 10 and vent slots 3 to
cool the chamber, and components such as a “transformer with a high
protection grade” that “makes them insensitive to contamination.” Id. at
2:36–41.
C. Challenged Claims
The ’631 patent has 18 claims, all of which Petitioner challenges. Of
those, claims 1, 9, and 17 are independent. Claims 2–8 depend from claim
1; claims 10–16 depend from claim 9; and claim 18 depends from claim 17.
Claim 1 is reproduced below with spacing and indentations added for
readability.
1. An inverter with a housing having a cooling unit for
cooling electronic components and electrical components of the
inverter mounted in said housing, said housing of the inverter
comprising
first and second chambers, said first and second chambers
being separated by a wall and configured to receive in the two
chambers the electronic components and the electrical
components said electronic components and electrical
component being cooled by the cooling unit,
said electronic components being sensitive to dirt and
humidity and being located on one side of the wall in said first
chamber which is closed and which has a higher IP grade rating
for protection to humidity and dust than the electrical
components mounted in said second chamber,
heat sink cooling fins which are located on the other side
of the wall in the said second chamber which is open to ambient
atmosphere, said heat sink including heat exchange structure
extending through said wall and being thermally conductively
coupled to said electronic components in said first chamber and
to said cooling fins in said second chamber and at least one of a
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choke and a transformer also being located in said second
chamber,
said electrical components in said second chamber being
less sensitive to humidity and dirt than said electronic
components in said first chamber, and
said second chamber having a cooling system including
said cooling unit positioned at one end of said second chamber
for cooling both said cooling fins and said electrical components.
Ex. 1101, 2:55–3:13 (formatting added).
D. Prior Art and Asserted Grounds
Petitioner asserts that claims 1–18 would have been unpatentable on
the following grounds (Pet. 15):
Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
1–7, 9–15, 17 103 Rodi2
1–7, 9–15, 17 103 Rodi, Brinkmann3
8, 16, 18 103 Rodi, Birger4
8, 16, 18 103 Rodi, Brinkmann, Birger
All references to Rodi, Brinkmann, and Birger in this Decision are to
their certified translations filed, respectively, as Exhibits 1108, 1105, and
1110. Petitioner also relies on Declarations of Jonathan R. Wood, Ph.D. and
James L. Mullins, Ph.D. See Ex. 1112 (“Wood Declaration”); Ex. 1144

1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’631 patent issued was filed
before that date, unless otherwise stated, our citations to Title 35 are to its
pre-AIA version.
2 EP 0 297 308 A2, published January 4, 1989 (Ex. 1107; Ex. 1108 (certified
translation)) (“Rodi”).
3 DE 296 07 354 U1, published August 22, 1996 (Ex. 1104; Ex. 1105
(certified translation)) (“Brinkmann”).
4 EP 0 900 621 A2, published March 10, 1999 (Ex. 1109; Ex. 1110 (certified
translation)) (“Birger”).
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(“Reply Wood Declaration”); Ex. 1120. Patent Owner relies on
Declarations of Yogendra Joshi, Ph.D. See Ex. 2101 (“Joshi Declaration”);
Ex. 2105 (“Response Joshi Declaration”); Ex. 21115 (“Revised Joshi
Declaration”).
ANALYSIS
A. Legal Standards
To prevail in its challenges, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e) (2012); 37 C.F.R.
§ 42.1(d) (2018). “In an [inter partes review], the petitioner has the burden
from the onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof
in an inter partes review).
Petitioner relies on obviousness in its challenges to the claims of the
’631 patent. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if

5 Patent Owner cites to an Exhibit 2111 in its Sur-reply, but there is no
Exhibit 2111 in the record for our review, as Patent Owner intentionally
served but did not file it. See PO Sur-reply ii (Ex. 2111 “Served (Not
Filed)”). Because Patent Owner’s Sur-reply indicates that for this “Revised”
Declaration of Dr. Joshi at Exhibit 2111 the “paragraphs citations remain the
same as in Ex. 2105,” we rely on the Joshi Declaration at Exhibit 2105 for
the substantive support for the citations to Exhibit 2111. To the extent this
“Revised” Declaration includes material or opinions beyond that in Exhibit
2105, we cannot and do not consider it in our analysis.
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the differences between the claimed subject matter and the prior art are such
that the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966).6
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). “The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant art” at the time of
the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Factors that may be considered in determining the level of ordinary skill in
the art include, but are not limited to, the types of problems encountered in
the art, the sophistication of the technology, and educational level of active
workers in the field. Id. In a given case, one or more factors may
predominate. Id.
Petitioner asserts that one of ordinary skill in the art “would have had
a bachelor’s degree in mechanical engineering, electrical engineering, or a
similar discipline and at least 3 years of design experience with power

6 Neither party presents arguments or evidence as to secondary
considerations.
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electronics, including thermal management.” Pet. 24 (citing Ex. 1112
¶¶ 24–28). Patent Owner does not address Petitioner’s proposal in its
briefing, but its declarant Dr. Joshi agrees with Petitioner’s proposed level of
ordinary skill in the art. See Ex. 2101 ¶ 23.
We adopt Petitioner’s asserted level of ordinary skill because it is
consistent with the problems identified and solutions provided in the ’631
patent and the prior art.
C. Claim Construction
In inter partes reviews, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2019);
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (setting
forth claim construction approach in district court cases). Under that
standard, we generally give claim terms their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art at
the time of the invention, in light of the language of the claims, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1313–
14. Although extrinsic evidence, when available, may also be useful when
construing claim terms under this standard, extrinsic evidence is generally
“less reliable” than the intrinsic record. See id. at 1318–19. Only terms that
are in controversy need to be construed, and then only to the extent
necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan
Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
1. Whether “Inverter” in the Preambles Limits the
Independent Claims
The language that begins claim 1 reads as follows: “An inverter with
a housing having a cooling unit for cooling electronic components and
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electrical components of the inverter mounted in said housing, said housing
of the inverter comprising.” Ex. 1101, 2:55–2:58. The preambles of claims
9 and 17 recite: “An inverter comprising.” Id. at 3:31, 4:22. Patent Owner
contends that “inverter” in the preambles of all three independent claims
limits the claims. PO Resp. 19–20. Because the preamble to independent
claim 1 differs from independent claims 9 and 17, we will address each
claim separately.
a. Claim 1
As a threshold matter, we consider what the preamble to claim 1
includes. Claim 1 does not contain any colon or indentation separating the
preamble from the body of the claim. Ex. 1101, 2:55–58. The language that
begins claim 1 also includes two terms that could serve as the transition from
the preamble to the body of claim 1, “having” and “comprising.” See id. In
the Petition, Petitioner does not address the preamble or propose any
constructions for terms in the preamble other than to argue, for each of the
independent claims, that the preamble does not limit the claims. Pet. 25, 53,
63. When addressing the preambles, Petitioner assumes that all of the claim
language through the term “comprising” defines the preambles. Id.
Patent Owner argues that the term “having” in the preamble marks the
end of the preamble, rather than “comprising,” so that the entirety of the
preamble reads as “[a]n inverter with a housing having.” PO Resp. at 13.
Under that approach, the remaining language, “a cooling unit . . . and
electrical components of the inverter mounted in said housing, said housing
of the inverter comprising,” appears in the body of the claim and limits the
claim. Id. at 13–14. Patent Owner acknowledges that “comprising” is a
“common transitional term,” but contends that “having” may also be used as
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a transitional term and that it makes sense to view “having” as the
transitional term for claim 1 because that places the electronic and electrical
components and the cooling unit in the body of the claim as part of the
inverter, rather than as part of the housing. Id.; see also PO Sur-reply 2.
In its Reply, Petitioner argues that “comprising” signifies the end of
the preamble in claim 1 because “comprising” represents the typical
transitional term identifying the end of the preamble. Pet. Reply. 3–4.
Petitioner also argues that in cases addressing whether preambles are
limiting that include “having” as well as “comprising,” the cases presume
that “comprising” marks the end of the preamble rather than “having.” Id. at
4–5 (citing cases). Petitioner also contends that “comprising” marks the end
of the preamble of claim 1 because the next language in claim 1 identifies
the first and second chambers of the housing, which “is the main point of the
invention.” Id. at 5 (citing Ex. 1101, 1:40–50, 2:42–46).
We agree with Petitioner that the preamble of claim 1 ends at the term
“comprising” for several reasons. First, “comprising” represents the more
common transitional phrase. See PO Resp. 13 (acknowledging that
“‘comprising’ is considered a common transitional term”); Tr. 47:13–19
(Patent Owner’s counsel indicating that “having” transitional term “not as
common as ‘comprising’”). Second, the ’631 patent consistently uses
“comprising” as a transitional phrase in other claims, and never uses
“having” as a transitional phrase, suggesting that we should not read
“having” as the transitional phrase for claim 1. See Ex. 1101, 3:31, 4:1,
4:12, 4:22. Third, the body of claim 1 still makes sense when the preamble
concludes with “said housing of the inverter comprising” because the body
of the claim recites first and second chambers of the housing “configured to
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receive” certain electronic and electrical components arranged within the
housing. Id. at 2:57–2:13.
Having determined that the preamble of claim 1 ends at “comprising,”
we next consider whether “inverter” is limiting. Even if the body of the
claim does not include the term “inverter,” Patent Owner contends that
“inverter” in the preamble limits the claim because “the preamble breathes
life and meaning into the claims since the terms ‘cooling unit’ and
‘electronic components and electric components’ serve as antecedent basis
for the same terms in the body of the claim.” PO Resp. 15. In Patent
Owner’s view, since the preamble refers to “electronic components and
electrical components of the inverter,” once the body of the claim refers to
those components, it necessarily means that the inverter should be
considered limiting as well. Id. at 15–16. Patent Owner also contends that
dependent claim 7 refers to “inverter,” suggesting that the preamble to claim
1 was used as antecedent to “inverter” in claim 7. Id. at 17. As to the
specification, Patent Owner argues that it “refers only to an inverter and not
to any other device such as converter, power supply or module.” Id. at 17–
19. As to the prosecution history, Patent Owner contends that the applicant
relied on the inverter to distinguish the claims over the prior art of record.
Id. at 19–20.
Petitioner contends that the reference to “inverter” in the preamble
merely signifies intended use for certain claimed components. Pet. Reply 6–
7. As to the antecedent basis issue, Petitioner contends that dependent claim
7 supports its position that claim 1 does not require an inverter because
claim 7 does not use “inverter” in claim 1 to provide antecedent basis and
claim 7 merely requires electronic components found in an inverter, which
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would be unnecessary if claim 1 already required components found in an
inverter. Id. at 8–9. Petitioner also alleges that even if some language in the
preamble serves as antecedent basis for limitations in the body of claim 1,
that does not mean that “inverter” limits the claim. Id. at 9. As to the
specification, Petitioner argues that it stresses the two-chambers of the
housing and the manner in which it cools components as the key to the
invention, without describing the inverter functionality as important or
critical to the invention. Id. at 6–8. As to the prosecution history, Petitioner
argues that “inverter” was not used to distinguish the prior art because the
prior art at issue already disclosed inverters and the applicant never argued
that it failed to contain an inverter. Id. at 10–11.
In its Sur-reply, Patent Owner argues that the heat-dissipation aspects
of the invention are necessary because the inverter components generate that
heat, and therefore “inverter” is “essential to the invention” and
“underscored as important by the specification.” PO Sur-reply 3. Patent
Owner also contends that dependent claim 7 supports its position because it
refers back to the inverter. Id. at 4. As to the prosecution history issue,
Patent Owner contends that the applicant’s reliance on the term “inverter”
shows that it limits the claim even if that reliance did not distinguish the
claim over the prior art. Id. at 5.
A preamble generally limits a claim “if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999)). On the other hand, “a preamble is not limiting
‘where a patentee defines a structurally complete invention in the claim body
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and uses the preamble only to state a purpose or intended use for the
invention.’” Id. (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
These general principles support Petitioner’s position that “inverter” in the
preamble does not limit the claim. The body of the claim defines a
structurally complete invention requiring a two-chambered housing
configured to receive certain components arranged within the housing in
certain ways—that language does not suggest that “inverter” must be read as
a limitation in order to give those limitations meaning. See id. at 810
(concluding that preamble language was not “essential to understand
limitations or terms in the claim body”). Instead, “inverter” in the preamble
more closely resembles an intended use of the invention.7
We further consider several “guideposts” when determining whether
language in a preamble limits a claim. Catalina Mktg., 289 F.3d at 808. We
agree with Petitioner that those guideposts do not establish that “inverter” in
the preamble limits claim 1 here. For example, “inverter” in the preamble of
claim 1 does not provide antecedent basis for “inverter” for any limitation in
the body of claim 1 or for “inverter” recited in dependent claim 7. Claim 7
depends from claim 1 and further requires “wherein said electronic
components comprise electronic components normally found in an inverter.”
Ex. 1101, 3:26–28. As claim 7 and other claims make clear, when referring

7 The fact that “inverter” standing alone recites nothing more than intended
use becomes more apparent when considering the preambles of claims 9 and
17, which simply recite “An inverter comprising.” Ex. 1101, 3:31, 4:22; see
also Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328 (2019)
(finding preamble language reciting “personal recreational vehicle” not
limiting where it merely identified an intended use for the claimed power
distribution module, and did not impose any structural requirement on the
claimed module).
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back to a term that provides antecedent basis, the claims use “said” or “the”
to refer to the term. See, e.g., id. (“said electronic components”). Claim 7
refers to “an inverter,” however, which signifies that it does not rely on a
previous use of “inverter,” in the preamble of claim 1 for instance, to
provide antecedent basis. Id. (emphasis added). This distinguishes this
situation from cases where dependent claims clearly use terms in the
preamble of the independent claim from which they depend to provide
antecedent basis. See Pacing Tech. v. Garmin, 778 F.3d 1021, 1024 (Fed.
Cir. 2015) (finding recitation of “the repetitive motion pacing system” in
body of dependent claim relies on preamble of independent claim as
antecedent basis (emphasis added)). We also find Patent Owner’s reliance
on dependent claim 7 undermines its argument because Patent Owner
contends that claim 1, standing alone, requires electronic components of an
inverter; if so, claim 7 would add no meaningful limitation to claim 1. See
PO Resp. 15–17.8 Further, the fact that some terms in the preamble of claim
1 provide antecedent basis for terms in the body of claim 1 does not require
reading other terms, such as “inverter,” as limiting. See, e.g., TomTom, Inc.
v. Adolph, 790 F.3d 1315, 1323–24 (Fed. Cir. 2015) (“That [one] phrase in
the preamble . . . provides a necessary structure for claim 1 does not
necessarily convert the entire preamble into a limitation, particularly one that
only states the intended use of the invention.”).
As to the specification, which uses the term “inverter” in several
places, each use remains consistent with reading “inverter” as the intended

8 Petitioner also correctly points out that claim 7 does not require an inverter,
or components functioning as an inverter, and instead merely requires
components “normally found” in an inverter. See Pet. Reply 8, n.4.
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use of the claimed invention rather than a critical requirement of the
invention. See Ex. 1101, codes (54), (57), 1:1, 1:13, 1:15, 1:19, 1:21, 1:24,
1:28, 1:36, 1:41, 1:56. These references to “inverter” are found in the Title,
Abstract, Field of Invention, Description of the Prior Art, and Summary
sections of the specification and are often paired with a reference to the
inverter “housing,” which includes the structures that are the focus of the
alleged improvements over the prior art. See id. at 1:40–42 (stating that
object of invention “is solved . . . in that the housing of the inverter
comprises at least two chambers”). Notably, the specification acknowledges
that “[i]nverters are well known” and only mentions “inverter” once in the
Detailed Description of the Invention, in the first line noting that the
“inverter has the housing 1.” Id. at 1:19, 2:22. Nothing in the specification
suggests that “inverter” provides a critical part of the claimed invention that
must be read as part of the claimed invention in order for the invention to
have meaning. See Ex. 1144 ¶¶ 6–9 (Dr. Wood explaining why “inverter” is
not essential to the invention).
As to the prosecution history, “clear reliance on the preamble during
prosecution to distinguish the claimed invention from the prior art
transforms the preamble into a claim limitation because such reliance
indicates use of the preamble to define, in part, the claimed invention.”
Catalina Mktg., 289 F.3d at 808. “Without such reliance, however, a
preamble generally is not limiting when the claim body describes a
structurally complete invention.” Id. at 809. Patent Owner acknowledges
that when applicant invoked an “inverter” during prosecution, the prior art
the applicant was addressing disclosed an “inverter.” See PO Resp. 19 (“art
cited against the claim also was directed to components of an inverter”).
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Therefore, the presence of the term “inverter” in the preamble, standing
alone, did not distinguish the claims from the prior art. Patent Owner
suggests that “inverter” combined with other limitations of the claim
distinguished the prior art, but merely repeating language from the preamble
as part of an overall effort to distinguish the prior art does not convert that
language into a necessary part of the claimed invention, especially when the
applicant made no effort to distinguish the prior art using the claim term in
the preamble. See Catalina Mktg., 289 F.3d at 810 (finding that the
applicants “did not rely on the preamble phrase to distinguish over” the prior
art in question); Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d
1229, 1238 (Fed. Cir. 2017) (finding arguments in prosecution history in
relation to claim limitations in the body of the claim insufficient to
distinguish the prior art based on the language in the preamble).
Based on the foregoing, we do not construe “inverter” in the preamble
of claim 1 as limiting.
b. Claims 9 and 17
Patent Owner argues that “inverter” in the preambles to claims 9 and
17 limit those claims, but does not set forth any additional arguments beyond
those addressed above in support of its argument. See PO Resp. 11–20.
Patent Owner’s arguments are weaker here than with respect to claim 1.
Patent Owner does not argue that any portion of the preambles of claims 9
and 17 provides antecedent basis for any terms in the body of the claims.
See id. In addition, both preambles of claims 9 and 17 merely recite “[a]n
inverter comprising,” without any suggestion that the recitation of “inverter”
means anything more than an intended use, and the bodies of the claims
define complete inventions. Ex. 1101, 3:31–49, 4:22–45. Patent Owner’s
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arguments that the specification and prosecution history support its position
apply to claims 9 and 17, but those arguments are not persuasive for the
reasons provided above. Accordingly, we do not construe “inverter” in the
preambles of claims 9 and 17 as limiting.9
2. High Protection Grade
Petitioner argues that the limitation reciting a “component of a high
protection grade” in independent claims 9 and 17 should be construed as
“component of a protection grade sufficient to be insensitive to
contamination from exposure to ambient air.” Pet. 23. Petitioner relies on
the specification’s description of the components in the second chamber as
exposed to ambient air, which requires protection against dust and moisture
to function properly. Id. (citing Ex. 1101, 1:57–62, 2:36–39); see also Pet.
Reply 12–13. According to Petitioner, this link between the components
with a high protection grade and their ability to function while exposed to
ambient air supports its construction. Pet. 23–24.
In its Preliminary Response, Patent Owner argued that “a component
of a high protection grade” means “a component having an IP [(ingress
protection)] Rating of IP65.” Prelim. Resp. 22. In our Institution Decision,
we declined to adopt Patent Owner’s proposed construction as too narrow
and adopted Petitioner’s proposed construction. Inst. Dec. 20. In its
Response, Patent Owner argues that we should construe “a component of a
high protection grade” to mean “a component having a high ingress
protection (IP) grade.” PO Resp. 22. Patent Owner relies on the

9 Although we conclude that “inverter” does not limit these claims, for the
reasons discussed below, we conclude that Petitioner establishes that all of
the challenged claims are unpatentable even if the claims require an inverter.
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specification’s description of a high protection grade component as having
an IP rating of IP65, “which is an ingress protection grade.” Id. (citing Ex.
1101, code (57), 1:57–63, 2:36–39, 2:46–48). Patent Owner contends that
“a POSITA [(person of ordinary skill in the art)] would understand that a
component with a high IP grade is, by definition, a component that itself is
enclosed with (or comprises) an enclosure that provides that high IP grade.”
Id. at 22–23. Patent Owner argues that the “sensitivity of the component
itself has no bearing on the protection grade of the component, and thus
cannot be the basis for a definition of the protection grade of the
component.” Id. at 23; see also PO Sur-reply 8. Patent Owner also contends
that Petitioner’s proposal lacks support in the specification and improperly
encompasses components located in open chambers that may lack sufficient
protection. PO Resp. 23 (citing Ex. 1101, 1:26–29). Patent Owner stresses
that “it is an enclosure of the component itself that provides a high
protection grade . . . and that the protection grade is not provided by the
insensitivity of the component.” Id. at 23–24 (citing Ex. 1101, 1:40–50,
2:36–39); see also PO Sur-reply 9–10. According to Patent Owner, “a
POSITA knows that certain types of components such as transformers and
chokes can be relatively insensitive to moisture and dust,” but this does not
mean that they necessarily have an “IP grade” because that requires an
enclosure. PO Resp. 24.
In its Reply, Petitioner argues that Patent Owner’s new proposal
“unnecessarily inserts limitations into the claims, while also being vague as
to what constitutes a ‘high’ grade.” Pet. Reply 11–12 (citing Ex. 1143, 118–
119, 128–131; Ex. 1144 ¶¶ 10–13). Petitioner contends that the
specification’s reference “to one particular standard (‘e.g. IP65’) is merely
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an example.” Id. at 12 (citing Ex. 1101, 1:61; Ex. 1143, 118–22; Ex. 1144
¶ 11). Petitioner also contends that claim 1 refers to “IP grade rating” with
respect to the first chamber, and the absence of “IP” in claims 9 and 17
suggests a broader meaning. Id. (citing Ex. 1143, 132).
We find Petitioner’s proposed construction for “high protection
grade” more consistent with the claims and specification. Patent Owner’s
primary complaint as to Petitioner’s construction involves the reference to
“insensitivity”—Petitioner’s proposal covers components “sufficient to be
insensitive to contamination from exposure to ambient air.” Pet. 23.
Whatever the drawbacks of such an approach, Petitioner’s proposal tracks
very similar language the specification uses to describe components of a
“high protection grade.” See Ex. 1101, 2:36–39 (describing components in
cooled chamber 8 having a “high protection grade” that “makes them
insensitive to contamination”). Given that the specification links high
protection grade with the insensitivity of components so that they can
function in the open, cooled chamber, we see no issue with Petitioner’s
proposal that tracks that same approach. See id.; see also id. at 1:57–62; Ex.
1112 ¶ 113.
In addition, Patent Owner’s approach introduces additional concerns.
In our Institution Decision, we emphasized that we did “not view the
specification’s reference to ‘e.g. IP65’ as a definition of ‘high protection
grade,’” “and read the passage as stating that IP65 provides one example of
a grade that falls within the scope of ‘high protection grade.’” Inst. Dec. 20.
We also emphasized that “high protection grade” in claims 9 and 17 did not
specify any particular grade, while claim 5 specifies an “IP grade rating” of
“IP65.” Id. While Patent Owner’s revised proposal avoids a specific
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numerical rating, it still requires some specific numerical “IP grade” without
any reference to “IP” in claims 9 or 17. Several claims, including claims 1,
5, and 10, refer to “IP grade rating,” strongly suggesting that the applicant
knew how to specifically claim an IP grade rating when it desired, and that
we should not read that requirement into other claims that avoid that claim
language. Patent Owner’s proposal also begs the question of how “high” the
IP grade must be to meet the claim limitation. When pressed on this issue at
the oral hearing, Patent Owner’s counsel indicated that “high” would mean
more than halfway up the IP grade scale of 00-68, or higher than an IP grade
of 34. Tr. 57:1–25. While such a numeric definition provides clarity,
nothing in the specification suggests that “high protection grade” means IP
grades above 34. Similarly, Patent Owner argues “that a component with a
high IP grade is, by definition, a component that itself is enclosed with (or
comprises) an enclosure that provides that high IP grade.” PO Resp. 22–23.
Nothing in the specification supports this “enclosure” requirement either,
and we are reluctant to read requirements into claims that the specification
never mentions.
Based on the foregoing, we construe “high protection grade” in claims
9 and 17 to mean “component of a protection grade sufficient to be
insensitive to contamination from exposure to ambient air.”
3. At Least One of a Choke and a Transformer; At Least
One of a Transformer, a Cast Winding, and a Choke
Petitioner contends that “at least one of a choke and a transformer” in
claim 1 means “at least one choke or transformer,” and “at least one of a
transformer, a cast winding and a choke” in claims 13 and 17 means “at least
one transformer, cast winding or choke.” Pet. at 21–22 (emphasis added).
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Petitioner contends that the limitations should be read in the disjunctive
because the specification indicates that the “second chamber may have a
transformer or a choke (both of which are described as cast windings), but
need not have both.” Id. at 21 (citing Ex. 1101, 1:45–49, 2:36–39, 2:42–49).
Petitioner also argues that the Patent Owner affirmatively adopted this
construction during prosecution. Id. at 22.
In our Institution Decision, we noted the apparent agreement of the
parties as to these constructions and adopted Petitioner’s proposed
constructions. Inst. Dec. 21–22. In its Response, Patent Owner does not
address our adoption of Petitioner’s proposals or argue for any different
constructions. Accordingly, because the full record presents no dispute
regarding these limitations, we adopt Petitioner’s proposed constructions and
construe (1) “at least one of a choke and a transformer” as “at least one
choke or transformer” and (2) “at least one of a transformer, a cast winding
and a choke” as “at least one transformer, cast winding or choke.”
4. Higher IP Grade Rating
Petitioner contends that when claim 1 recites a “first chamber . . .
which has a higher IP grade rating for protection to humidity and dust than
the electrical components mounted in said second chamber,” the claim
means a first chamber “which protects against the ingress of moisture and
dust to a greater degree than the second chamber.” Pet. 19. According to
Petitioner, the specification supports its proposed construction because it
stresses that the two chambers have different protection ratings. Id. at 19–
20. Petitioner contends that the limitation should not be construed to require
“that the first chamber has a higher protection against dust and moisture
ingress than the electronics in the second chamber,” as the claim language
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suggests, because a later limitation requires those same components to have
less sensitivity than the components in the first chamber. Id. at 20–21.
Petitioner also contends that the specification never compares “the
protection rating of the first chamber to the protection rating of the
electronics in the second chamber,” suggesting that the claim should not be
construed to cover an embodiment not disclosed in the specification. Id.; see
also Pet. Reply 13–14.
Patent Owner argues that the limitation “should be interpreted as what
the term recites” and that the “ordinary and customary meaning of the term
is clear on its face.” PO Resp. 21; see also PO Sur-reply 7. According to
Patent Owner, the “term clearly compares the IP grade rating of the first
chamber with the IP grade rating of the electrical components (of the
inverter) mounted in the second chamber.” PO Resp. 21.
The disputed language includes a comparison of IP grades between
the first chamber and the “components mounted in said second chamber.”
Although both components and the second chamber are referenced, the
language references the components first and appears to require a
comparison of the IP grade rating of the first chamber and those components
rather than the second chamber itself. If the claim meant to clearly compare
the IP grade rating of the first chamber and second chamber, as Petitioner
proposes, the claim could have placed the reference to “components” after
“second chamber,” e.g., “first chamber . . . has a higher IP grade rating than
said second chamber having components therein,” or something similar.
Patent Owner asks us to stop our analysis after reading the disputed phrase,
and not even consult the specification because the claim language contains
no ambiguity. See PO Resp. 21 (“[T]he term is clear on its face. It does not
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need to be interpreted.”); Tr. 95:14–22, 96:6–11 (“[T]o construe it, you don’t
need to go to the spec to construe it.”).
We decline to limit our analysis to the disputed claim language in
isolation. The “context in which a term is used in the asserted claim can be
highly instructive” and “claims must be read in view of the specification, of
which they are a part.” Phillips, 415 F.3d at 1314–15 (citation and quotation
marks omitted). When we consider other language in claim 1, ambiguities
arise. For example, the limitation at issue seems to stress that the
components in the second chamber have an IP grade rating lower than the IP
grade rating of the first chamber, but a later limitation requires those same
components in the second chamber to be “less sensitive to humidity and
dirt” than components in the first chamber, which generally suggests a
higher protection level, or higher IP grade, for the components in the second
chamber. Ex. 1101, 2:64–67, 3:8–10. Requiring the same components to
have a comparatively low protection rating in one context and a high
protection rating in another creates confusion as to the claim meaning.
Turning to the specification, we find no support for a reading of the claim
requiring a comparison of IP grade ratings between the first chamber and
components in the second chamber. Instead, the specification stresses that
the first chamber has a higher IP grade rating than the second chamber itself,
not the components within that chamber. Ex. 1101, 2:4–5, 2:42–46.
Because the specification only describes a relative comparison of IP grades
between the first chamber and second chamber, and never mentions a
comparison of IP grades between the first chamber and components in the
second chamber, we view the disputed limitation, which references both the
components in the second chamber and the second chamber itself, as
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referring to the second chamber’s IP grade rating for comparison with the
first chamber’s IP grade rating. Construing the limitation as requiring a
comparison of IP grades between the chambers also resolves the tension
with the later limitation requiring components in the second chamber “less
sensitive to humidity and dirt.” Ex. 1101, 3:8–10.
Based on the foregoing, we adopt Petitioner’s construction and
construe “first chamber . . . which has a higher IP grade rating for protection
to humidity and dust than the electrical components mounted in said second
chamber” to mean a first chamber “which protects against the ingress of
moisture and dust to a greater degree than the second chamber.”
D. Challenge Under § 103(a) Based on Rodi and Brinkman
Petitioner contends that claims 1–7, 9–15, and 17 are unpatentable
over Rodi and Brinkman. Pet. 24–64. For these challenges, Petitioner relies
on the Wood Declarations. Id.
1. Rodi (Ex. 1108)
Rodi describes “a switchgear cabinet for electrical or electronic
components, which is divided into two regions.” Ex. 1108, code (57).
Figure 1 of Rodi is reproduced below.
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Figure 1 is a perspective view of Rodi’s switchgear cabinet. Id. 2:45–
46. The switchgear cabinet includes two regions 1, 2 separated by dividing
wall 3. Id. at 2:49–3:2. Region 1, with a suggested protection rating of
IP20, houses “components of high power loss, which are less demanding
with respect to the protection class,” such as heat sinks 6, 7 and transformer
9. Id. at 3:5–16. Region 1 includes fan 4 and air slots 5, 8 so that ambient
air can be drawn through region 1 to cool the components housed within the
region. Id. at 3:10–19. Region 2, with a suggested protection rating of IP54,
houses sensitive electronic modules such as power semiconductors 10, 11.
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Id. at 3:2–5, 3:30–32. Region 2 includes radial fan 18 to “conduct the heat
generated by the electronics to the outer walls.” Id. at 4:8–16.
Rodi describes mounting semiconductors 10, 11 on dividing wall 3,
with openings in wall 3 providing direct contact between semiconductors 10,
11 and heat sinks 6, 7. Ex. 1108, 3:30–34. The openings in wall 3 allow
heat sinks 6, 7 to “extend into the first region and be cooled by outside air.”
Id. at 1:49–53. Rodi’s separation of the cabinet into two regions enables the
protection of highly sensitive components in one region protected from dust
and moisture, while components such as transformers, chokes, and heat
sinks with high heat loss that are “less sensitive to environmental influences”
are disposed in another region “cooled by the outside air.” Id. at 1:24–40.
2. Brinkmann (Ex. 1105)
Brinkmann “relates in particular to the cooling of power components
in frequency inverters comprising a housing that is completely closed in
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accordance with protection level IP65.” Ex. 1105, 1. The only figure of
Brinkmann is reproduced below.

The figure “is a partially sectional side view of a frequency inverter.”
Id. at 3. Frequency inverter 1 comprises housing 2 and cooling element 3
with cooling element projection 6. Id. Housing wall 4 has recess 5 through
which cooling element projection 6 extends inwardly into housing 2. Id.
Power components 8 are fixed to planar cooling element surface 7 of cooling
element projection 6. Id. Housing 2 “is substantially closed on all sides in
accordance with protection level IP65.” Id.
3. Claims 1–4, 7, 9–15, and 17
Petitioner asserts that Rodi and Brinkmann disclose all of the
limitations of claims 1–4, 7, 9–15, and 17 and that one of ordinary skill in
the art would have been motivated to apply Brinkmann’s teachings to Rodi.
Pet. 24–47, 53–64. We first address the challenges to these claims using
Petitioner’s claim constructions, which we find persuasive and adopt as our
own for the reasons set forth above, followed by an analysis using Patent
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Owner’s proposed constructions and addressing Patent Owner’s arguments
based on those constructions.
a) Analysis Based on Petitioner’s Constructions
As discussed above, we find Petitioner’s claim construction
arguments persuasive and adopt Petitioner’s constructions as our own.10
Patent Owner does not argue that the combination of Rodi and Brinkman
fails to disclose any of the limitations of the challenged claims if we adopt
Petitioner’s constructions, nor does Patent Owner argue that Petitioner failed
to articulate a sufficient motivation to combine the references.
Petitioner contends that Rodi discloses all of the limitations of claims
1–4, 7, 9–15, and 17 with the possible exception of an “inverter” and “heat
exchange structure extending through said wall,” which Petitioner contends
Brinkmann discloses. See Pet. 24, 28, 36–40, 57–58. Petitioner provides
analysis of each limitation in the challenged claims with citations to the
references that correspond to each of the claim limitations and the relevant
declaration testimony. Id. (citing Ex. 1112). Petitioner also sets forth
rationales supporting the combination of Rodi and Brinkmann. See id. at 28,
40–43.
We have reviewed Petitioner’s challenge of claims 1–4, 7, 9–15, and
17. See Pet. 24–47, 53–64. Patent Owner does not dispute that Petitioner
carried its burden of proving that the combination of Rodi and Brinkmann
discloses all of the limitations of claim 1 or that one of ordinary skill in the

10 Although Petitioner broadly argues that the preamble does not limit the
claims, it does not dispute that terms appearing both in the preamble and the
body of claim 1, such as “cooling unit” and “electronic and electrical
components” limit the claim. See Pet. 25, 30. We agree that such terms
appearing in both the preamble and body of claim 1 limits claim 1.
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art would have been motivated to combine Rodi and Brinkmann, when using
Petitioner’s constructions. See PO Resp. 25–40. Based on our review of
Petitioner’s arguments and evidence for these claims, we determine that
Petitioner establishes by a preponderance of the evidence that the
combination of Rodi and Brinkmann discloses all of the limitations of claims
1–4, 7, 9–15, and 17, and that one of ordinary skill in the art would have
been motivated to combine Rodi and Brinkmann in the manner Petitioner
proposes and for the reasons provided by Petitioner. We adopt Petitioner’s
arguments and evidence as to the obviousness of claims 1–4, 7, 9–15, and 17
based on Rodi and Brinkmann as our own. See Pet. 24–47, 53–64; Ex. 1112
¶¶ 122–183, 199–243.11
b) Analysis Based on Patent Owner’s Constructions
Although we reject Patent Owner’s claim constructions for the
reasons discussed above, for completeness, we will assume for purposes of
this analysis that Patent Owner’s claim constructions govern. Patent Owner
raises several arguments against Petitioner’s challenges based on the

11 We need not set forth formal findings as to the undisputed assertions by
Petitioner that the references disclose the limitations of these claims, and
Petitioner’s undisputed rationale for the combination of the references. See
In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“Although the
Board did not make findings as to whether any of the other claim limitations
(such as fusion apertures or anti-migration teeth) are disclosed in the prior
art, it did not have to: NuVasive did not present arguments about those
limitations to the Board. . . . The Board, having found the only disputed
limitations together in one reference, was not required to address undisputed
matters.”); Paper 11, 7 (emphasizing that “any arguments for patentability
not raised in the response may be deemed waived”). Here and elsewhere in
this Decision, we adopt Petitioner’s argument and evidence as our own to
make the clear the basis for our conclusion that the claims at issue would
have been obvious.
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assumption that we adopt one or more of Patent Owner’s claim construction
arguments. While we do not find Patent Owner’s arguments persuasive, we
address Patent Owner’s arguments to show that even if we had adopted
Patent Owner’s claim construction arguments, we would still find that
Petitioner met its burden of showing that claims 1–4, 7, 9–15, and 17 would
have been obvious.
i. Inverter Having a Housing with Two Chambers
(Claims 1, 9, 17)
We assume for purposes of this analysis that the preamble limits the
claims in the manner Patent Owner contends, such that “all claim elements
recited in this claim are claim elements of an inverter (including a housing
with two chambers and electronic and electrical components).” PO Resp.
25. In the Petition, Petitioner argues that Rodi’s switchgear cabinet
discloses a “housing” and adding Brinkmann’s inverter to Rodi’s cabinet
would have been obvious because it involves adding common power supply
electronics to a power supply housing. Pet. 25 (citing Ex. 1108, code (57),
Figs. 1–2, 1:24–53, 2:26–39, 2:44–3:47, 4:35–57), 28 (citing Ex. 1105, 3;
Ex. 1112 ¶¶ 147, 164–165). Petitioner also contends that Rodi discloses the
first and second chambers of the housing, chambers 1 (open chamber), 2
(sealed chamber), separated by dividing wall 3. Id. at 28–29 (citing
Ex. 1108, code (57), Figs. 1–2, 1:24–53, 2:44–3:44; Ex. 1112 ¶¶ 115–116,
148).
According to Patent Owner, if claim elements are “of an inverter,”
then the Rodi-Brinkmann combination fails to disclose an inverter having a
housing with two chambers, as required in some form by each of
independent claims 1, 9, and 17. PO Resp. 25–30 (argument as to claim 1),
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35 (relying on same argument for claims 9 and 17). In support of its
argument, Patent Owner contends that the claims not only require an
inverter, but “an inverter configured to convert DC power to AC power, i.e.,
configured to receive DC power at its input, convert DC power to AC power
and provide AC power at its output.” PO Resp. 25 (citing Ex. 2105 ¶ 81).
Patent Owner then argues that Rodi does not disclose such an inverter and
that Brinkmann’s “frequency inverter” receives AC power, converts AC
power to AC power on another frequency, and provides AC power. Id. at
25, 28–29. According to Patent Owner, the addition of Brinkmann’s
frequency inverter to Rodi’s “switchgear cabinet,” which “typically receives
AC power from the grid,” would not result in an inverter as Patent Owner
defines it. Id. at 29 (citing Ex. 1112 ¶¶ 71–72; Ex. 2104, 57:12–15, 62:16–
22; Ex. 2105 ¶¶ 95–97); see also PO Sur-reply 12–13. Patent Owner also
argues that if Rodi’s switchgear cabinet received DC power, there would be
no reason to combine it with Brinkmann’s AC to AC frequency inverter. PO
Resp. 29–30 (citing Ex. 2105 ¶ 98).
As to Patent Owner’s contentions, Petitioner argues that Patent
Owner’s statement that switchgear/power supply cabinets, such as Rodi’s,
typically receive DC power lacks any support. Pet. Reply 14 (citing PO
Resp. 26; Ex. 1143, 180–181). Petitioner also argues that Brinkmann’s
frequency inverter indisputably contains an inverter, and once placed inside
Rodi’s housing, Rodi’s housing discloses an inverter housing. Id. at 16.
Petitioner also contends that “nothing in either the claims or specification of
the ’631 patent requires that the housing itself have any particular input or
output.” Id. (citing Ex. 1144 ¶ 21). Petitioner further argues that “with
Brinkmann’s inverter in the sealed chamber of Rodi, the transformer and
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heat sinks in the open chamber are inverter components in an inverter
housing, just as the transformer and heat sink in the open chamber of the
’631 patent are inverter components in an inverter housing.” Id. at 17 (citing
Ex. 1144 ¶ 24). Petitioner also argues that Rodi does not limit its application
to powering printing presses as Patent Owner suggests, and merely cites that
as an example. Id. (citing Ex. 1108, 2:26–27).
In its Sur-reply, Patent Owner argues that “inverter housing” does not
encompass every housing that contains an inverter inside and a “switchgear
cabinet is a term of art having a well understood meaning that is distinct and
different from that of an inverter housing.” PO Sur-reply 11 (citing PO
Resp. 26; Ex. 2111 ¶¶ 84–85). Patent Owner also argues that Rodi’s large
switchgear cabinet, which “holds a plethora of components and provides a
plurality of functions,” does not become an inverter housing merely by
placing Brinkmann’s inverter inside the cabinet. Id. at 12 (citing Ex. 2111
¶¶ 84, 91).
As noted above, Petitioner contends that Rodi unquestionably
discloses a housing that includes an inverter having two chambers, and that
is all the claim requires. See Pet. Reply 16–17. We agree. The fact that
Rodi’s housing—its cabinet—includes other components that perform other
power delivery functions beyond inverting does not change the fact that the
cabinet houses an inverter. The claims require nothing more. For similar
reasons, housing Brinkmann’s inverter in Rodi’s cabinet on Rodi’s dividing
wall, with sensitive components within closed chamber 2 (the claimed “first
chamber”) and less sensitive components within open chamber 1 (the
claimed “second chamber”), as Petitioner proposes, results in a combination
that includes inverter components residing in both chambers as the claims
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require. See Pet. 28–30, 38–43.12 We are persuaded by Petitioner’s
arguments and evidence on these points, including credible declarant
testimony from Dr. Woods, and we adopt them as our own. See id.; Pet.
Reply 16–18; Ex. 1112 ¶¶ 115–141, 147–150, 162–166; Ex. 1144 ¶¶ 14–17,
20–24.
Patent Owner’s arguments place unwarranted restrictions on the scope
of the claims. For example, Patent Owner argues that some housings that
contain inverters, such as Rodi’s switchgear cabinet, are not inverter
housings and contends that “switchgear cabinet” is a “term of art . . .
different from that of an inverter housing.” PO Sur-reply 11; Ex. 2105
¶¶ 84–85. Such an argument that relies on distinctions between terms of art
in a given field requires further elaboration, if not a devoted claim
construction argument explaining why a construction of “inverter” or
“housing” in the ’631 patent does not cover a housing that includes an
inverter in Rodi. Simply stating it, without support to authority beyond an
identical statement from a declarant, does not persuade us that we should
read the claim so narrowly that it does not cover the Rodi-Brinkmann
combination. See id. Patent Owner also fails to support its implicit
argument that the claimed housing cannot house other components that are
not part of the inverter—an argument refuted by the open-ended nature of
the claims. See PO Su-reply 12 (citing Ex. 2111 ¶¶ 84, 91).

12 For the Rodi-Brinkmann combination, Patent Owner’s argument here
focuses on the alleged lack of “an inverter in the sense of claim 1, namely an
inverter (with a two-chambered housing) configured to convert DC to AC.”
PO Resp. 29–30. Patent Owner does not argue that the combination lacks
inverter components in each chamber of the housing if we conclude that the
combination discloses a two-chambered inverter housing. See id.
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Patent Owner takes a similar approach when it argues that the claims
not only require an inverter, but “an inverter configured to convert DC
power to AC power, i.e., configured to receive DC power at its input,
convert DC power to AC power and provide AC power at its output.” PO
Resp. 25 (citing Ex. 2105 ¶ 81). Nothing in the claims or the specification,
however, suggests that the invention only covers structures that have “DC
power as its input.” See id.; Pet. Reply 16 (citing Ex. 1144 ¶ 21). We
decline to read in any such requirement, especially when Patent Owner has
not argued for a claim construction, supported by the intrinsic record, that
would support its position. Accordingly, the fact that Brinkmann discloses
an AC-AC frequency inverter or that printing presses may not typically
receive DC power as an input does not adequately support Patent Owner’s
argument that the Rodi-Brinkmann combination does not disclose an
inverter in a housing having two chambers.
ii. First Chamber Having Higher IP Rating (Claim 1)
For purposes of this analysis, we assume that when claim 1 recites a
“first chamber . . . which has a higher IP grade rating for protection to
humidity and dust than the electrical components mounted in said second
chamber,” the claim means a first chamber with a higher IP grade rating than
the components in the second chamber, not a higher IP grade rating than the
second chamber itself. See PO Resp. 21. Petitioner contends that Rodi
discloses a first chamber with an IP54 rating and that the Rodi-Brinkmann
combination would have an IP65 rating because Brinkmann’s sealed
chamber has an IP rating of IP65, and one of ordinary skill in the art would
have been motivated to apply it to provide further protection. Pet. 33–34
(citing Ex. 1108, 3:1–9; Ex. 1112 ¶¶ 155). Petitioner also argues that one of
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ordinary skill in the art “would have been motivated to use electrical
components having IP grade ratings lower than IP65 and IP54 in the second
chamber for cost reasons, because he or she would have known that lower
grade ratings would still allow for suitable electrical performance, and
because passive electrical components, such as transformers and chokes, are
relatively insensitive to degradation caused by exposure to dust and
moisture.” Id. at 34 (citing Ex. 1112 ¶ 155; Ex. 1124; Ex. 1125; Ex. 1126,
12.1, 12.4, 12.10).
Patent Owner argues that although “components such as transformers
and chokes can be relatively insensitive to moisture and dust . . . . that does
not mean that they automatically have an IP grade.” PO Resp. 31 (citing
Ex. 2105 ¶ 104). Patent Owner contends that neither Rodi nor Brinkmann
disclose IP grades for the components in their open chamber, which means
they do not have an IP grade. Id. at 32 (citing Ex. 2105 ¶¶ 105–106; Inst.
Dec. 32). Patent Owner further contends that Petitioner’s various rationales
for selecting components with a lower IP grade are flawed. Id. at 33–35
(citing Ex. 1112 ¶¶ 85–88, 155; Ex. 2104, 103:13–19; Ex. 2105 ¶¶ 107–
110). For example, Patent Owner argues that (1) Rodi’s open chamber
already has an IP20 grade, and no further protection of the components in
that chamber is necessary; (2) the added cost to provide an IP grade
undermines the motivation to provide the added protection; and
(3) “replacing” components without an IP grade to components with an IP
grade cannot be deemed a mere “design choice.” See id.
In its Reply, Petitioner argues that “it would have been obvious for a
POSITA to use any commercially-available transformer, with the IP grade
selected based on the degree of protection the POSITA wanted to achieve”
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and that Patent Owner concedes that “the most common transformer had an
IP grade of IP20.” Pet. Reply 18–19 (citing PO Resp. 31; Pet. 33–34;
Exs. 1124–1126; Ex. 1143, 189–190; Ex. 1144 ¶¶ 25–26, 33). Petitioner
also contends that components with no stated protection would not have no
IP grade as Patent Owner assumes; they would have an IP grade of IP00,
which is also lower than the IP grade of the first chamber in Rodi (IP54). Id.
at 19 (citing Ex. 1112 ¶¶ 88–90, 155; Ex. 1114, 15, 41, 45; Ex. 1143, 192–
194; Ex. 1144 ¶¶ 26–27; Ex. 2104, 95:5–9).
In its Sur-reply, Patent Owner argues that Petitioner now argues that
one would have been motivated to provide components having whatever IP
grade that one wanted, but argues that Petitioner should be held to its
position in the Petition, which relies on lower cost as a reason to provide a
lower IP grade. PO Sur-reply 14 (citing Pet. 34; Pet. Reply 18; Ex. 112
¶ 155). Patent Owner also argues that transformers are available with or
without IP grades, so the lack of an IP grade for a component, such as the
transformer in Rodi, does not indicate a grade of IP00. Id. at 14–16.
We need not reach the parties’ dispute over whether Rodi’s silence on
the IP grade rating of its components indicates no rating or an IP00 rating.
We find Petitioner’s more general argument persuasive and credible—that
“it would have been obvious for a POSITA to use any commercially-
available transformer, with the IP grade selected based on the degree of
protection the POSITA wanted to achieve.” Pet. Reply 18. The argument
finds support in the wide availability of transformers with various IP grade
ratings. See Ex. 1024, 1 (product data sheet showing transformers with
“IP23, IP54 or IP65 protection” available); Ex. 1025, 2 (noting that available
transformers “can be supplied either open or enclosed in steel wall or floor
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mounted enclosures up to IP65 rating”), Ex. 1026, 12.1, 12.4, 12.10.
Petitioner persuasively argues that in the Rodi-Brinkman combination, one
of ordinary skill in the art would have been motivated to raise the closed
chamber IP rating from IP54 to IP65 as Brinkmann teaches, but either way,
selecting an IP rating for a transformer in the second, open chamber under
IP65 or IP54 would have been obvious. Pet. 33–34 (citing Ex. 1108, 3:1–9;
Ex. 1112 ¶¶ 155); Pet. Reply 18 (citing Ex. 1143, 190–194; Ex. 1144 ¶¶ 25–
26, 33). Petitioner also sets forth several persuasive reasons why one of
ordinary skill in the art would have been motivated to select commercially-
available transformers with an IP grade rating lower than IP65 or IP54.
Pet. 33–34 (citing Ex. 1112 ¶ 155); Pet. Reply 18–19 (citing Pet. 33–34; Ex.
1112 ¶¶ 88–90, 155; Ex. 1143, 190–194; Ex. 1144 ¶¶ 25–26). These reasons
include the lack of any need to select parts with a very high rating such as
IP54 or IP65 due to their relatively insensitivity to moisture and dust, the
wide availability of transformers with IP ratings below IP54 or IP65, and the
ability to save money by selecting a less protected transformer. See id.
Patent Owner’s arguments do not persuade us that one of ordinary
skill in the art would not have been motivated to select a component in the
second chamber with an IP grade rating less than IP65 or IP54. Patent
Owner does not dispute (1) that transformers with ratings less than IP54
were widely available and that a rating of IP20 was most common; (2) that a
transformer with an IP rating below IP65/IP54 would perform adequately in
many environments, because an IP65/IP54 rating is not required for many
applications given the relative insensitivity of transformers to the
environment; and (3) that transformers with less than an IP54 rating would
save money compared to a transformer with an IP65/IP54 rating. See PO
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Sur-reply 14 (acknowledging availability of transformers with multiple IP
grades). Patent Owner concedes these critical points, but then takes these
same issues to the extreme by arguing that the relative insensitivity of
transformers means that one of ordinary skill in the art would be motivated
to use a transformer with no rating, because the device could still function
and such a transformer would maximize cost savings. See PO Resp. 33–34.
These arguments do not refute Petitioner’s case or explain why one of
ordinary skill must limit its selection to the most extreme, cheapest choice,
when some environments may call for a more protected transformer that
costs a bit more than the least expensive option.
iii. Component of a High Protection Grade (Claims 9
and 17)
For purposes of this analysis we assume that when claims 9 and 17
refer to a component having a “high protection grade” it means a high IP
grade, as Patent Owner proposes. PO Resp. 36. In the Petition, Petitioner
argues that Rodi describes transformer 9 and component 13 as “less sensitive
to environmental influences” and less sensitive to dust and moisture. Pet.
55–56 (citing Ex. 1108, 1:35–40, 3:1–9; Ex. 1112 ¶¶ 75, 85, 209). Petitioner
contends that such components have a high protection grade, as evidenced
by their location in Rodi’s open second chamber. Id. at 56 (citing Ex. 1108,
1:24–26, 3:1–9; Ex. 1112 ¶ 209; Ex. 1114, 7, 9, 13, 16, 18).
Patent Owner acknowledges that Rodi’s resistors and transformer
“can be relatively insensitive to moisture and dust,” but argues that
insensitivity does not necessarily equate to a high IP grade. PO Resp. 37
(citing Ex. 1114, 7; Ex. 1124; Ex. 1125; Ex. 1126; Ex. 2105 ¶¶ 76–77, 116–
118). Patent Owner further argues that Rodi’s silence regarding IP grade
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means that its components do not have an IP grade, and that in any event,
they would not need an IP grade because Rodi’s open chamber provides
protection, i.e., IP20. Id. at 38 (citing Ex. 1108, 3:5–6; Ex. 2104, 103:13–
19, 168:19–169:1; Ex. 2105 ¶¶ 120–121). As to whether it would have been
obvious to select a high IP grade for Rodi’s transformer 9 or choke, Patent
Owner “notes” that Petitioner’s declarant, Dr. Wood, made his own inverters
in the past and included an open housing with components that “were neither
particularly protected nor individually enclosed according to an IP protection
grade.” Id. at 39 (citing Ex. 1112 ¶ 70; Ex. 2104, 78:7–17); see also PO
Sur-reply 18. Patent Owner also contends that one would not have been
motivated to add an enclosure that provides a higher IP grade for cost
reasons, and that a higher IP grade is unnecessary. PO Resp. 39–40 (citing
Ex. 1112 ¶ 155; Ex. 2105 ¶¶ 123–127).
Petitioner argues that even using Patent Owner’s new construction for
“high protection grade,” it would have been obvious to select components
having a high IP grade given their placement in a chamber exposed to dust
and moisture. Pet. Reply 20 (citing Ex. 1112 ¶¶ 88–90; Ex. 1143, 61–62,
171, 191–194; Ex. 1144 ¶¶ 30–39). Petitioner also argues that “[i]f the
power supply were going to be subject to strong jets of water and prevalent
dust, a POSITA would know to use an IP grade as high as IP65 to protect the
components from that environment.” Id. (citing Ex. 1144 ¶ 30).
In its Sur-reply, Patent Owner argues that Petitioner’s obviousness
argument “essentially states that selecting a high IP grade for the
components in the second chamber is nothing else than an optimization
through routine experimentation,” and argues that this new argument should
not be considered. PO Sur-reply 19 (citing Pet. Reply 20). Patent Owner
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also argues that routine optimization theory fails because it lacks a result-
effective variable. Id. Finally, Patent Owner contends that Petitioner fails to
identify any need or demand to select a component with high IP grade. Id. at
20.
We find that Petitioner establishes sufficiently that it would have been
obvious to select a high IP grade for Rodi’s transformer 9 or choke in the
second chamber. Petitioner, supported by credible testimony from its
declarant, persuasively argues that selecting a component with a high IP
grade for use in an environment more prone to contamination would have
been obvious. See Pet. Reply 20 (citing Ex. 1112 ¶¶ 88–90; Ex. 1143, 61–
62, 171, 191–194; Ex. 1144 ¶¶ 30–39); Pet. 34 (transformers come in variety
of IP grade ratings, including IP54), 55–56 (components in open chamber
call for less sensitivity to contamination); Ex. 1112 ¶¶ 88–90; Ex. 1144
¶¶ 30–33; Ex. 1024, 1; Ex. 1025, 2; Ex. 1026, 12.1, 12.4, 12.10. This
evidence includes product documents indicating that transformers with a
“high” IP grade were known and readily available commercially. See
Ex. 1024, 1; Ex. 1025, 2. Contrary to Patent Owner’s assertion, Petitioner
explains that one may need such a transformer and would have been
motivated to provide the added protection of a high IP grade in certain
environments subject to contamination, such as an open chamber of a
housing. See Pet. Reply 20; Pet. 34, 55–56; Ex. 1112 ¶¶ 88–90; Ex. 1144
¶¶ 30–33. We adopt Petitioner’s argument and evidence in support of its
obviousness argument as to the “high protection grade” limitation in claims
9 and 17 as our own. See Pet. Reply 20; Pet. 34, 55–56; Ex. 1112 ¶¶ 88–90;
Ex. 1144 ¶¶ 30–33; Ex. 1024, 1; Ex. 1025, 2.
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Patent Owner’s arguments do not persuade us that Petitioner failed to
make its case here. Notably, Patent Owner concedes that “the same
transformer can be purchased with different enclosures providing different
IP grades based on the enclosure this transformer may be enclosed with.”
PO Resp. 24 (citing Ex. 1026, 4). Patent Owner argues that even though it
may have been possible to select a high IP grade for a component, there
would have been no reason to do so given the cost considerations. Patent
Owner’s briefing does not take into account the breadth of the limitation it
conceded at the oral hearing, where Patent Owner contended that a “high” IP
grade rating on the scale of IP00-IP68 includes any component with a rating
above IP34. Tr. 57:1–25. The question becomes whether it would have
been obvious to select components having an IP grade above IP34 when
components having various IP grade ratings, including IP54 and IP65, were
already well known and readily available in the art. See Ex. 1144 ¶¶ 30–33;
Ex. 1024, 1; Ex. 1025, 2. Patent Owner does not argue or point to any
evidence that such a minor change would have resulted in material cost
differences, or persuasively argue that such a difference would have
dissuaded one of ordinary skill in the art from making such a selection.
Patent Owner’s argument that there is no need for such protection fails to
persuasively refute Petitioner’s position that such protection may have been
desired when placing a component in an open chamber exposed to
contamination, including jets of moisture or dust, and the availability of
transformers having IP ratings well above IP34 presumably exist to meet
that market need. We also do not view a selection of a known, available
component with a slightly higher IP rating as requiring “optimization” of the
type that requires a result-effective variable, and therefore this does not
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amount to an improper “new” argument as Patent Owner argues. See PO
Sur-reply 19–20. Finally, we view the issue of whether Dr. Wood
personally constructed a device that meets the claim requirements prior to
this dispute, or failed to do so, as largely irrelevant and insufficient to
undermine Petitioner’s obviousness arguments.
c) Conclusion as to Claims 1–4, 7, 9–15, and 17
We find that Petitioner has proven by a preponderance of the evidence
that the combination of Rodi and Brinkmann discloses all of the limitations
of claims 1–4, 7, 9–15, and 17, using Petitioner’s proposed constructions
that we adopt, or using Patent Owner’s proposed constructions. We also
find that Petitioner has established by a preponderance of the evidence that
one of ordinary skill in the art would have been motivated to combine Rodi
and Brinkmann for the reasons stated by Petitioner. See Pet. 28, 40–43.
4. Dependent Claim 5
Claim 5 depends from claim 1 and further requires “wherein said IP
grade rating is IP 65.” Ex. 1101, 3:21–22. Claim 5 refers back to the “IP
grade rating” related to the first chamber in claim 1, and therefore requires a
first chamber having an IP grade rating of IP65. See id. at 2:64–65. Neither
party proposes any claim constructions for terms appearing in claim 5.
Petitioner contends that in addition to being within the general
knowledge in this art, Brinkmann discloses a closed chamber with an IP
grade rating of IP65. Pet. 49 (citing Ex. 1105, 1, 3; Ex. 1112 ¶ 188).
Petitioner argues that one of ordinary skill in the art would have been
motivated to increase Rodi’s protection level in its closed chamber from
IP54 to IP65 to increase protection of the components inside, which may be
especially appropriate in outdoor environments, such as construction sites,
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moving vehicles, or trains. Id. at 48–49 (citing Ex. 1112 ¶ 186). Petitioner
also argues that when combining Rodi and Brinkmann, one of ordinary skill
in the art would have been motivated to have Rodi’s closed chamber meet
the IP65 rating of Brinkmann’s closed chamber because Rodi expressly
teaches the advantages of protecting electronics in a closed chamber, and
Brinkmann improves upon that protection. Id. at 50 (citing Ex. 1112
¶¶ 130–133, 140, 189–191). Petitioner also contends that “a PHOSITA
would have appreciated that the benefit would apply to Rodi, which, like
Brinkmann, similarly places electronics in a sealed chamber to protect them
from dust and moisture.” Id. at 50–51 (citing Ex. 1108, code (57), 1:24–34,
1:43–49, 3:1–5, Figs. 1–2; Ex. 1105, 1–3, Fig. 1; Ex. 1112 ¶ 133).
Patent Owner argues that because Rodi relates to a switchgear cabinet
typically used for printing presses, “it is not obvious why the switchgear
cabinet should be operated outdoors” where an IP grade of IP65 might be
more appropriate. PO Resp. 41. According to Patent Owner, Rodi’s
existing IP54 protection “seems to be pretty high and sufficient for indoor
operation,” especially in light of Dr. Wood’s personal experience building
inverters without such protection. Id. at 41–42. Patent Owner also states
that Petitioner’s reference to protection from jets of moisture or dust would
only apply outdoors, and “notes that it is not clear why the switchgear
cabinet of Rodi should be moved outside and exposed to heavy dust and jets
of moisture when the related printing presses are located indoors in a
production facility.” Id. at 42–43 (citing Pet. 48–49; Ex. 1112 ¶ 186; Ex.
2105 ¶¶ 134–135); see also PO Sur-reply 22. Patent Owner also alleges that
increasing the IP rating from IP54 to IP65 would not involve a simple
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substitution and would require careful balancing of many parameters. PO
Resp. 43 (citing Ex. 2105 ¶ 136).
In its Reply, Petitioner contends that sealed enclosures of up to IP65
were known in the art and that “[t]he ’631 patent did not invent the idea of
having a hermetically-sealed chamber meeting the rating of IP65.” Pet.
Reply 20 (citing Exs. 1114; 1121; 1122). Petitioner also argues that given
Brinkmann’s use of just such an enclosure for an inverter, use of such an IP
grade was a known option for those seeking more protection for an
enclosure. Id. at 20–21 (citing Pet. 48–50; Ex. 1112, ¶¶ 184–193; Ex. 1144,
¶¶ 40, 43; Ex. 2104, 170–71). Petitioner further replies that Patent Owner’s
argument that printing presses were unlikely to be in environments requiring
IP65 protection lacks support, and Patent Owner’s references to what Dr.
Wood built on his own time are irrelevant. Id. at 21 (citing Ex. 1108, 2:26–
27; Ex. 2104, 164, 166; Ex. 1144 ¶ 41; PO Resp. 41–42).
We find that it would have been obvious to increase the rating of
Rodi’s closed chamber from IP54 to IP65 given Brinkmann’s disclosure of a
closed chamber with an IP65 rating. Ex. 1105, 1 (disclosing “housing that is
completely closed in accordance with protection level IP65”), 3 (same).
Petitioner provides straightforward and persuasive reasons why one of
ordinary skill in the art would have been motivated to modify Rodi with
Brinkmann’s teachings—because Rodi itself espouses the need to protect
components within a closed container, and some environments warrant the
increased protection level afforded by the IP65 rating. See Pet. 48–50; Pet.
Reply 20–21; Ex. 1112 ¶¶ 130–133, 140, 186, 189–191; Ex. 1133 ¶¶ 40, 41,
43; Ex. 2104, 170–171. We adopt Petitioner’s argument and evidence on
these points as our own.
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Patent Owner’s arguments focus on its skepticism that Rodi’s
switchgear cabinet would be used in an outdoor environment that would
require an IP65 rating. See, e.g., PO Resp. 41. But Patent Owner provides
no support at all for its statement that “it is not obvious why the switchgear
cabinet should be operated outdoors” and that Rodi’s existing IP54
protection “seems to be pretty high and sufficient for indoor operations.”
PO Resp. 41–42. Patent Owner’s reference to Dr. Wood’s prior work
building inverters is irrelevant, and does not persuasively undermine
Petitioner’s and Dr. Wood’s reasons why one would be motivated to make
the combination. Further, the ’631 patent does not restrict the application of
its switchgear cabinet to printing presses alone, and the mere fact that a
power supply or “switchgear” cabinet such as Rodi’s does not often see
outdoor use, e.g., on a construction site, does not suggest that providing a
chamber with IP65 protection, as Brinkmann teaches, is nonobvious. See
Ex. 1108, 2:26–27 (“Such a switchgear cabinet can be used on a printing
press.”). As to the difficulty in making an IP65 enclosure, Patent Owner
vaguely alleges it may not be “simple” to move from an IP54 enclosure to an
IP65 enclosure, but Petitioner correctly points out that the ’631 patent
provides no disclosure as to how to provide an IP65 enclosure, and simply
assumes one of ordinary skill in the art knows how to do so, underscoring
the ease with which one of ordinary skill in the art could achieve the task
using available information. See PO Resp. 43; Pet. 49; Ex. 1112 ¶ 187.
5. Dependent Claim 6
Claim 6 depends from claim 1 and further requires “wherein said at
least one of the choke and the transformer is located on a side of the wall in
said second chamber.” Ex. 1101, 3:23–25. The “wall” in claim 6 refers
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back to the wall separating the chambers in claim 1. Id. at 2:58–59. Neither
party proposes any claim constructions for terms appearing in claim 6.
Petitioner argues that Rodi discloses a number of components in its
second chamber, including transformers and chokes. Pet. 51 (citing
Ex. 1108, 1:35–40, 3:3–39, Figs. 1–2). Petitioner also argues that Rodi
expressly states that these items can “be positioned on the dividing wall 3.”
Id. at 52 (quoting Ex. 1108, 3:35–39) (citing Ex. 1108, Fig. 2; Ex. 1112
¶ 197). Petitioner contends that Rodi’s figures depict component 13, which
can be a choke, on dividing wall 3. Id. (citing Ex. 1108, Fig. 2; Ex. 1112
¶¶ 196–198).
Patent Owner argues that “Rodi does not explicitly show that the
choke or transformer is located at the dividing wall 3.” PO Resp. 44. Patent
Owner contends that “component 13 is not identified as a choke” and
therefore Rodi does not disclose a choke on wall 3, and transformer 9 is
shown mounted on a different wall. Id. (citing Ex. 1108, Fig. 1; Ex. 2104,
167:9–168:2; Ex. 2105 ¶ 140).
Petitioner argues that failing to recognize that “components” 13 do not
include a choke “treats a POSITA as a dunce.” Pet. Reply 22. According to
Petitioner, “[a] POSITA reading Rodi would have understood that, while the
‘components’ 13 on the wall did not necessarily all have to be chokes, they
would obviously include a choke, since that is the only component (aside
from the transformer 9 and heat sinks 6 and 7, each labeled separately in the
figure) described as being in that chamber.” Id. (citing Ex. 1108, 1:35–40;
Ex. 1112 ¶¶ 196–197; Ex. 2104, 171–172; Ex. 1143, 196–197; Ex. 1144
¶¶ 44–45). Patent Owner did not address Petitioner’s arguments in the
“dependent claims” section of its Sur-reply. PO Sur-reply 21–22.
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Petitioner has easily satisfied its burden of proof here. Rodi describes
“components” in the second chamber that include transformers, chokes, and
heat sinks. Ex. 1108, 1:35–40. Rodi also refers to “components 13” in that
same second chamber that can “be positioned on the dividing wall 3.” Id. at
3:35–37. This text alone supports Petitioner’s argument, because
“components 13” in the second chamber refers back to the list of
components in the second chamber that includes transformers, chokes, and
heat sinks, and Rodi describes placing any such components on wall 3. See
id. In addition, Rodi shows components 13 on wall 3 in Figures 1 and 2,
along with transformer 9 within the second chamber and heat sinks 6, 7 on
wall 3. Id. at Figures 1–2. We agree with Petitioner that this suggests that
components 13 represents a group of components that includes a choke,
because the other components mentioned as residing in the second chamber
(transformer 9, heat sinks 6, 7) are already depicted in the Figures. See id.;
Pet. Reply 22.
6. Conclusion
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves weighing of the fact findings to conclude whether the
claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361
(Fed. Cir. 2017). Above, based on the full record before us, we provide our
factual findings regarding (1) the level of ordinary skill in the art, (2) the
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scope and content of the prior art, and (3) any differences between the
claimed subject matter and the prior art.13
In particular, we find that (1) Petitioner’s proposed level of ordinary
skill in the art is consistent with the art of record; (2) Rodi and Brinkmann
disclose all the limitations of claims 1–7, 9–15, and 17 using either party’s
proposed claim constructions; (3) one of ordinary skill in the art would have
been motivated to combine Rodi with Brinkmann in the manner Petitioner
proposes; and (4) there is no objective evidence of nonobviousness in the
record. Weighing these underlying factual determinations, a preponderance
of the evidence persuades us that claims 1–7, 9–15, and 17 of the ’631 patent
are unpatentable over the combination of Rodi and Brinkmann.
E. Challenges Under § 103(a) Based on Rodi, Brinkman, and
Birger
Petitioner contends that claims 8, 16, and 18, which depend from
claims 1, 9, and 17, respectively, are unpatentable as obvious over Rodi,
Brinkmann, and Birger. Pet. 64–68. These claims require the lack of an air
movement device in the first chamber (the chamber with more protection).
Ex. 1101, 3:29–30, 4:20–21, 4:46–47. For this challenge, Petitioner relies
on the Wood Declarations. Id.
Birger seeks to minimize dust contamination in a power supply by
employing a two-chambered power supply housing, with a sealed chamber
containing sensitive circuits, and an open chamber enabling cooling of the
circuits. Ex. 1110, code (57), Figs. 1–2, ¶¶ 3–6. A partition wall 30
separates closed circuit chamber 14 from open chamber 16. Id. ¶¶ 45–47.

13 Neither party presents argument and evidence as to objective indicia of
nonobviousness.
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Electronics 62 in closed chamber 14 are mounted adjacent to radiator/heat
sink 32, which extends through aperture 64 in wall 30. Id. ¶ 49, 51–52.
Fans 40 blow air on cooling fins 34 of heat sink 32 within open chamber 16
in order to cool electronics 62 in closed chamber 14. Id. ¶¶ 49, 51, 54.
Birger states that it does not include an airflow device such as a fan in closed
chamber 14 to minimize dust contamination. Id. ¶ 41.
Petitioner contends that although Rodi discloses a fan in its first
chamber, the claims of Rodi do not require the fan and one of ordinary skill
in the art would have viewed the fan as an optional feature with
corresponding costs and benefits. Pet. 64–65 (citing Ex. 1108, 4:8–16, 5:1–
20; Ex. 1112 ¶ 248). Petitioner relies on Birger as teaching the avoidance of
an airflow device in its closed chamber 14. Id. at 65–66 (citing Ex. 1108,
code (57), 1:24–53, 2:44–3:47; Ex. 1110, code (57), Figs. 1–2, ¶¶ 3–6, 18,
21–23, 26–32, 34, 37, 41, 45–49, 51–54; Ex. 1112 ¶¶ 248–250). Petitioner
alleges that it would have been obvious to combine Birger with the Rodi-
Brinkmann combination for a number of reasons, including the benefits
described by Birger that stem from the lack of air movement within the
chamber, such as protecting against unwanted contamination, which Rodi
itself recognizes as a concern. Id. at 66–68 (citing Ex. 1105, 1–3, Fig. 1; Ex.
1108, code (57), 1:24–53, 2:26–39, 2:44–3:47, 4:35–57, 5:48–52; Ex. 1110,
code (57), ¶¶ 1–7, 21, 26–31, 45–54; Ex. 1112 ¶¶ 244–245, 250–253).
Patent Owner argues that Rodi’s fan is not optional and performs
functions that stress its importance and undermine the motivation to remove
the fan. PO. Resp. 45–46 (citing Ex. 1108, 4:8–19; Ex. 2105 ¶¶ 144–146).
Patent Owner also argues that removing the fan as Birger suggests renders
“Rodi [and/or] Brinkmann unsatisfactory for its intended purpose.” Id. at 47
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(citing Ex. 2105 ¶ 152). Patent Owner further contends that Birger teaches
mounting all circuit components in the closed chamber 14 rather than open
cooling chamber 16, such that no motivation exists to add Birger to Rodi,
which teaches mounting certain components in its open chamber. Id. at 48–
49 (citing Ex. 1108, 1:35–40; Ex. 1110 ¶¶ 7, 24, 25; Ex. 2105 ¶ 153).
In its Reply, Petitioner argues that Rodi’s description of the benefits
of a fan in its closed chamber does not mean that removal of a fan in Rodi’s
device renders its device inoperable. Pet. Reply 23. According to
Petitioner, “[r]emoving an optional feature is obvious, even though by
definition one loses the benefit of the feature.” Id. Petitioner also argues
that using a fan has costs and benefits, and among the benefits are “less
power usage, cost, complexity, and less likelihood of contamination
infiltration.” Id. (citing Pet. 65). Petitioner also argues that Rodi’s inclusion
of components in its open chamber is irrelevant, and Birger’s ability to cool
its device while placing all of its components in the sealed chamber “only
underscores to a POSITA that fan 18 is not necessary in Rodi.” Id. at 24
(citing Ex. 1144 ¶ 49). Patent Owner did not address Petitioner’s arguments
in the “dependent claims” section of its Sur-reply. PO Sur-reply 21–22.
Based on our review of the record, Petitioner has established
sufficiently that the combination of Rodi, Brinkmann, and Birger discloses
all of the limitations of claims 8, 16, and 18, and that one of ordinary skill in
the art would have been motivated to modify Rodi-Brinkmann with the
further teachings of Birger. Birger itself discloses the closed chamber
without a fan limitation. Ex. 1110 ¶ 41. As to the motivation to combine,
Birger itself expressly teaches the advantages in removing a fan from the
closed chamber—less dust contamination of circuits—which complements
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Rodi’s stated goal of reducing contamination of sensitive components in its
closed chamber. Id.; Ex. 1108, code (57), 1:28–34, 3:1–5). These aspects of
the references themselves, coupled with the credible testimony of Dr. Wood
identifying other advantages stemming from the removal of a fan,
adequately support Petitioner’s motivation to combine argument. See id.;
Ex. 1112 ¶¶ 248–250; Ex. 1144 ¶¶ 46–48.
Patent Owner’s arguments focus on the alleged inoperability of Rodi’s
device without a fan in its closed chamber, but nothing in Rodi suggests that
its device will not work at all without a fan, and Birger suggests that power
devices operate even when all circuitry resides in the closed container. See
PO Resp. 47–48. Whether to retain or remove a fan undoubtedly includes
costs and benefits as Petitioner acknowledges, but Patent Owner’s
arguments do not establish that the costs are so steep that removing a fan as
Birger teaches would have been nonobvious. See PO Resp. 46–49; Pet.
Reply 23. Finally, as to Patent Owner’s argument that the lack of
components in Birger’s cooled chamber undermines the motivation to
combine with Rodi, we agree with Petitioner that placing some heat-
generating components in Rodi’s open cooled chamber, while Birger does
not, underscores that Rodi’s fan is not necessary in its closed chamber
because less than all of the components reside in its closed chamber. See id.
at 24.
Based on the foregoing, we find that (1) Petitioner’s proposed level of
ordinary skill in the art is consistent with the art of record; (2) Rodi,
Brinkmann, and Birger disclose all the limitations of claims 8, 16, and 18;
(3) one of ordinary skill in the art would have had a reason to combine the
Rodi, Brinkmann, and Birger in the manner Petitioner proposes; and
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(4) there is no objective evidence of nonobviousness in the record.
Weighing these underlying factual determinations, a preponderance of the
evidence persuades us that claims 8, 16, and 18 of the ’631 patent are
unpatentable over the combination of Rodi, Brinkmann, and Birger.
F. Remaining Challenges
Petitioner includes additional challenges based at least in part on
Rodi. For example, Petitioner contends that claims 1–7, 9–15, and 17 are
unpatentable as obvious over Rodi alone. Pet. 24–64. Petitioner also
contends that claims 8, 16, and 18 are unpatentable as obvious over Rodi and
Brinkmann or Rodi and Birger. Id. at 64–68. We need not reach the merits
of these challenges because we have already concluded that all challenged
claims are unpatentable for the reasons provided above. See SAS Inst. Inc.
v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a
final written decision addressing all of the claims it has challenged”); Boston
Sci. Scimed, Inc. v. Cook Grp. Inc., Nos. 2019-1594, -1604, -1605, 2020
WL 2071962, at *4 (Fed. Cir. Apr. 30, 2020) (non-precedential)
(recognizing that the “Board need not address issues that are not necessary
to the resolution of the proceeding” and, thus, agreeing that the Board has
“discretion to decline to decide additional instituted grounds once the
petitioner has prevailed on all its challenged claims”).
G. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1119, 1121, 1123, 1127,
1130, and 1131, and related portions of Exhibits 1112 and 1141. PO Mot.
Exclude 1, 7–8. Petitioner opposes Patent Owner’s Motion to Exclude in all
respects. Pet. Opp. 1–14.
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As to Patent Owner’s effort to exclude the Exhibits 1119, 1121, 1123,
1127, 1130, and 1131, and 1141, the arguments appear weak, but we need
not reach the merits of these issues because we do not rely on any of the
exhibits in our analysis. Patent Owner’s Motion to Exclude is therefore
moot as to Exhibits 1119, 1121, 1123, 1127, 1130, and 1131, and 1141.
As to Patent Owner’s effort to exclude portions of Ex. 1112, Dr.
Wood’s Declaration, Patent Owner’s arguments fall into two groups. For
paragraphs 70, 79, 81, 82 of Exhibit 1112, which discuss allegedly
inadmissible Exhibits 1127, 1130, and 1131, Patent Owner argues that the
paragraphs “should be excluded under FRE 702 as an opinion not based on
sufficient facts or data and under FRE 401 as irrelevant because they are
based on inadmissible evidence.” PO Mot. Exclude 6–7. Petitioner argues
that “Patent Owner provides no explanation of which statements it purports
are not based on sufficient facts or data,” and argues that the cited exhibits
are admissible. Pet. Opp. 9–10.
We agree with Petitioner that Patent Owner’s arguments are not
adequately developed and do not support exclusion of the paragraphs in
question. Patent Owner does not specify which statements in the cited
paragraphs are not based on sufficient facts or data, and does not support its
argument that we must exclude paragraphs that cite to inadmissible exhibits
with any citation to legal or other authority. Cf. FRE 703 (allowing experts
to base opinions on inadmissible facts or data under certain circumstances).
As to paragraphs 49–62, 68–74, 246, and 247 of Exhibit 1112, Patent
Owner argues that the Petition does not cite to the paragraphs, and they are
therefore irrelevant. PO Mot. Exclude 8. Petitioner argues that these
paragraphs provide basic background information and that several of the
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paragraphs are cited in either Petitioner’s Reply or Dr. Wood’s Reply
Declaration. Pet. Opp. 13–14.
We disagree with Patent Owner’s apparent position that we should
exclude all paragraphs from a declarant’s declaration that are not cited in a
party’s papers. Such material could be relevant or helpful background to the
Board when reviewing the technical background of the prior art or the
declarant’s expertise. Further, Patent Owner’s list of “uncited” material is
inaccurate because several paragraphs were relied upon by Petitioner, and
Patent Owner does not explain how such paragraphs can be irrelevant under
these circumstances. See Pet. Reply 18 (citing Ex. 1112 ¶ 72), 21 (citing Ex.
1112 ¶ 70); Ex. 1144 ¶¶ 23, 37, 42.
Based on the foregoing, we deny Patent Owner’s Motion to Exclude.

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CONCLUSION14
A summary of our conclusions appears in the chart below:
Claim(s)
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–7, 9–
15, 17
103(a)15 Rodi
1–7, 9–
15, 17
103 Rodi, Brinkmann 1–7, 9–15, 17
8, 16, 18 103 Rodi, Birger
8, 16, 18 103 Rodi, Brinkmann,
Birger
8, 16, 18
Overall
Outcome
1–18

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
15 Because we determined that all of the challenged claims are unpatentable
based on other challenges, we did not reach the grounds based on Rodi alone
or Rodi and Birger.
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ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–18 of U.S. Patent 7,816,631 B2 have been
shown, by a preponderance of the evidence, to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
the parties 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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For PETITIONER:
Frederic Meeker
John Hutchins
Michael Cuviello
John Curry
Bradley Van Pelt
Zachary Getzelman
BANNER & WITCOFF, LTD.
fmeeker@bannerwitcoff.com
jhutchins@bannerwitcoff.com
mcuviello@bannerwitcoff.com
jcurry@bannerwitcoff.com
bvanpelt@bannerwitcoff.com
zgetzelman@bannerwitcoff.com

For PATENT OWNER:
Steven Slater
Michael Kucher
John Koetter
SLATER MATSIL, LLP
sslater@slatermatsil.com
mkucher@slatermatsil.com
jkoetter@slatermatsil.com

Thomas Eschweiler
ESCHWEILER & POTASHNIK, LLC
docketing@eschweilerlaw.com