LG Chem, Ltd.v.Celgard LLC

Patent Trial and Appeal Board

Oct 5, 2015

09546266 (P.T.A.B. Oct. 5, 2015)

Trials@uspto.gov Paper 76
Tel: 571-272-7822 Entered: October 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

LG CHEM, LTD.,
Petitioner,

v.

CELGARD, LLC,
Patent Owner.
____________

Case IPR2014-00692
Patent 6,432,586 B1

Before FRANCISCO C. PRATS, DONNA M. PRAISS, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Statement of the Case
LG Chem, Ltd. (“Petitioner” or “LG Chem”) filed a Petition (Paper 4,
“Pet.”) to institute an inter partes review of claims 1–12 of U.S. Patent No.
6,432,586 B1 (Ex. 1001, “the ’586 patent”) pursuant to 35 U.S.C.
§§ 311‒319. A Preliminary Response was filed by Celgard, LLC (“Patent
Owner” or “Celgard”) on August 1, 2014. Paper 8. On October 8, 2014, we
instituted an inter partes review of claims 1–12 on the following grounds:
Claims Challenged Basis1 Reference(s)
1–3, 5, 6, and 11 § 102(b) Tojo2
4, 7–10, and 12 § 103(a) Tojo
1–6 and 11 § 103(a) Tobishima3 and Tojo
Paper 13 (“Dec. to Inst.”).
After trial was instituted, Patent Owner filed a Response on February
6, 2015. Paper 32 (“PO Resp.”). On May 4, 2015, Petitioner filed a Reply.
Paper 52 (“Reply”).
Petitioner supports its challenges with a Declaration, executed April
25, 2014, by Kuzhikalail M. Abraham, Ph.D. (“Abraham Decl.”) (Ex. 1003).
Patent Owner relies on a Declaration executed by Ralph E. White, Ph.D.,
P.E., on February 6, 2015 (“White Decl.”) (Ex. 2002), a Declaration

1 The application which issued as the ’586 patent was filed on April 10,
2000. Ex. 1001, cover page. Accordingly, the versions of §§ 102 and 103 in
effect before the Leahy-Smith America Invents Act (AIA) apply to the
claims of the ’586 patent. See AIA, Pub. L. No. 112-29, § 3, 125 Stat. 284,
288 (2011).
2 JP 11-80395 (pub. Mar. 26, 1999) (Ex. 1010) (as translated, Ex. 1004).
3 JP 5-190208 (pub. July 30, 1993) (Ex. 1013) (as translated, Ex. 1005).
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executed by C. Glen Wensley, Ph.D., on February 6, 2015 (“Wensley
Decl.”) (Ex. 2015), and a Declaration executed by William J. Paulus on
February 6, 2015 (“Paulus Decl.”) (Ex. 2915).
Both parties filed Motions to Exclude Evidence. Paper 58; Paper 64.
Both parties filed Oppositions to the Motions to Exclude Evidence.
Paper 69; Paper 70. Both parties filed Replies to the Oppositions to the
Motions to Exclude Evidence. Paper 72; Paper 73.
An oral hearing was held on June 29, 2015. A transcript of the oral
hearing is included in the record. Paper 75 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). 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 1–11 of the ’586 patent are
unpatentable.
B. Related Proceedings
The ’586 patent has been asserted in the U.S. District Court for the
Western District of North Carolina in Celgard, LLC v. SK Innovation Co.,
Ltd., No. 3:13-cv-00254 and Celgard, LLC v. LG Chem, Ltd., No. 3:13-cv-
00043. Pet. 1.
Concurrent with this proceeding, the ’586 patent claims were subject
to inter partes review in IPR2014-00679 and IPR2014-00680 (Paper 7).
Final decisions in both of those proceedings recently issued, on September
25, 2015. The ’586 patent claims were also challenged in IPR2014-00524
(Pet. 1), which was recently terminated after settlement between the parties.
Previously, the ’586 patent was subject to an inter partes review, IPR2013-
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00637, which was terminated by agreement of the parties before any
decision on whether to institute proceedings issued. Id. at 1–2.
C. The ’586 Patent (Ex. 1001)
The ’586 patent discloses that commercializing lithium containing
high-energy rechargeable batteries has been difficult, mainly because of
“dendrite growth that occurs after repetitive charge-discharge cycling.” Ex.
1001, 1:21–22. Specifically, “[w]hen lithium dendrites grow [from the
lithium-containing anode] and penetrate the separator [between the
electrodes], an internal short circuit of the battery occurs (any direct contact
between anode and cathode is referred to as ‘electronic’ shorting, and
contact made by dendrites is a type of electronic shorting).” Id. at 1:27–31.
“Some shorting . . . may result in thermal runaway of the lithium battery, a
serious safety problem for [a] lithium rechargeable battery.” Id. at 1:31–35.
To address those issues, the ’586 patent describes an improved
electrode separator for a high-energy rechargeable lithium battery. Id. at
1:40–53. The separator includes two specific layers: “[1] at least one
ceramic composite layer and [2] at least one polymeric microporous layer.”
Id. at 1:46–47.
The ’586 patent explains that the ceramic composite layer “is, at least,
adapted for preventing electronic shorting (e.g. direct or physical contact of
the anode and the cathode) and blocking dendrite growth.” Id. at 2:54–57.
The ’586 patent explains that the ceramic composite layer is
composed of a mixture of two types of components: “[1] a matrix material
having [2] inorganic particles dispersed therethrough.” Id. at 3:9–10
(drawing reference numerals removed). The ’586 patent explains that the
“[c]eramic composite layer is nonporous (it being understood that some
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pores are likely to be formed once in contact with an electrolyte, but ion
conductivity of [that] layer is primarily dependent upon choice of the matrix
material and particles).” Id. at 3:10–14 (drawing reference numerals
removed).
The ’586 patent explains that, although the matrix material may also
perform the function of carrying the battery electrolyte, the matrix material
is “that component of a separator which, in part, prevents electronic shorting
by preventing dendrite growth.” Id. at 3:18–20.
The ’586 patent explains that the matrix component of the ceramic
composite layer can be “any gel forming polymer suggested for use in
lithium polymer batteries or in solid electrolyte batteries.” Id. at 3:32–34.
The ’586 patent discloses that a variety of inorganic particles may be used in
the ceramic composite layer, including, “for example, silicon dioxide (SiO2),
aluminum oxide (Al2O3), calcium carbonate (CaCO3), titanium dioxide
(TiO2), SiS2, SiPO4, and the like, or mixtures thereof. The preferred
inorganic particle is SiO2, Al2O3, and CaCO3.” Id. at 3:53–57.
Turning to the polymeric microporous layer of the ’586 patent’s
separator, the patent explains that that layer “is, at least, adapted for blocking
(or shutting down) ionic conductivity (or flow) between the anode and the
cathode during the event of thermal runaway.” Id. at 2:58–60.
In contrast to the substantially non-porous ceramic composite layer
discussed above, the ’586 patent explains that the polymeric microporous
layer “consists of any commercially available microporous membranes (e.g.
single ply or multi-ply), for example, those products produced by Celgard
Inc. of Charlotte, North Carolina, Asahi Chemical of Tokyo, Japan, and
Tonen of Tokyo, Japan.” Id. at 3:60–64.
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D. Illustrative Claims
Claims 1, 7, and 12, which are the only independent claims of the
’586 patent, and which are reproduced below, are illustrative of the claims at
issue:
1. A separator for a high energy rechargeable lithium
battery comprises:
at least one ceramic composite layer, said layer including
a mixture of inorganic particles in a matrix material; said layer
being adapted to at least block dendrite growth and to prevent
electronic shorting; and
at least one polyolefinic microporous layer, said layer
being adapted to block ionic flow between an anode and a
cathode.
7. A separator for a high energy rechargeable lithium
battery comprises:
at least one ceramic composite layer or coating, said
layer including a mixture of 20–95% by weight of
inorganic particles selected from the group consisting of SiO2,
Al2O3 , CaCO3 , TiO2, SiS2, SiPO4, and mixtures thereof, and
5–80% by weight of a matrix material selected from the group
consisting of polyethylene oxide, polyvinylidene fluoride,
polytetrafluoroethylene, copolymers of the foregoing, and
mixtures thereof; and
at least one polyolefinic microporous layer having a
porosity in the range of 20–80%, an average pore size in the
range of 0.02 to 2 microns, and a Gurley Number in the range
of 15 to 150 sec.
12. A separator for an energy storage system comprises:
at least one ceramic composite layer or coating, said
layer including a mixture of 20–95% by weight of
inorganic particles selected from the group consisting of SiO2,
Al2O3, CaCO3, TiO2, SiS2, SiPO4, and mixtures thereof, and 5–
80% by weight of a matrix material selected from the group
consisting of polyethylene oxide, polyvinylidene fluoride,
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polytetrafluoroethylene, copolymers of the foregoing, and
mixtures thereof, said layer being adapted to at least block
dendrite growth and to prevent electronic shorting; and
at least one polyolefinic microporous layer having a
porosity in the range of 20–80%, an average pore size in the
range of 0.02 to 2 microns, and a Gurley Number in the range
of 15 to 150 sec, said layer being adapted to block ionic flow
between an anode and a cathode.
II. ANALYSIS
A. Claim Interpretation
As a first step in our analysis, we determine the meaning of the
claims, for purposes of this decision, using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b). Under that standard, claim terms “are . . .
given their ordinary and customary meaning,” as would be understood by
one of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
In the Decision to Institute, we concluded that the broadest reasonable
construction of the claim recitation, “ceramic composite layer . . . adapted to
at least block dendrite growth” (Ex. 1001, 4:41–44 (claim 1), 6:9–19 (claim
12)), encompasses any such layer capable of blocking dendrite growth with
any degree of effectiveness. Dec. 6–7.
Patent Owner contends that our construction is unreasonably broad,
and proposes instead that we construe the claim term to mean “ceramic
composite layer . . . capable of preventing dendrites from growing all the
way through the ceramic composite layer during the specified, stated, or
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intended number of repetitive charge-discharge cycles of a rechargeable
battery.” PO Resp. 15.
Patent Owner contends that its construction is consistent with the
language in the claims, as well as an ordinary artisan’s understanding of the
claimed invention. Id. Specifically, Patent Owner contends that the
separator, as claimed, must be suitable for use in a high energy rechargeable
lithium battery, and such a battery, by definition, must be capable of
undergoing a certain number of charge-discharge cycles without
experiencing an electrical short, as shown by extrinsic evidence of industry
standards. Id. at 18–19 (citing Ex. 1005 ¶¶ 16–18, Fig. 2; Ex. 2002 ¶ 55
(White Decl.), Ex. 2009, 21:12–22:13 (Deposition of Kuzhikalail M.
Abraham, Ph.D. (“Abraham Depo.”)); Ex. 2500, 3; Ex. 2501).
Patent Owner contends that its proposed construction is consistent
also with the Specification of the ’586 patent, because the primary goal of
the ’586 patent is to improve prior art separators by manufacturing them
such that they block dendrite formation and prevent electronic shorting. Id.
at 15–16. Patent Owner contends that, given the ’586 patent’s focus on
solving the dendrite problem in rechargeable lithium batteries, “it is
reasonable to consider blocking dendrites in the context of what would result
in a useful rechargeable battery that could remain effective throughout the
type of repetitive charge-discharge cycling that can cause dendrites.” Id. at
17–18.
Petitioner, on the other hand, contends that Patent Owner’s proposed
construction is not supported by either the Specification or extrinsic
evidence of what a person of ordinary skill in the art would understand the
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claim term to mean. Reply 2–3 (citing Ex. 2002 ¶ 77; Ex. 1030, 82:15–16;
Ex. 1031 ¶ 7).
We agree with Petitioner that Patent Owner’s proposed construction is
not supported by the trial record.
We acknowledge, as noted above in our discussion regarding the ’586
patent disclosure, that the objective of the ’586 patent is to eliminate
electronic shorts caused by lithium dendrite formation. We acknowledge
also Patent Owner’s evidence that an ordinary artisan would have
understood that a primary goal of the ’586 patent would have been to ensure
that no dendrite-caused electronic shorting occurs during the specified,
stated, or intended number of charge-discharge cycles of a rechargeable
battery.
Our reviewing court, however, has “cautioned against reading
limitations into a claim from the preferred embodiment described in the
specification, even if it is the only embodiment described, absent clear
disclaimer in the specification.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1369 (Fed. Cir. 2004).
Patent Owner does not direct us to any specific disclosure in the
Specification of the ’586 patent clearly limiting or defining dendrite
blocking as impeding dendrite growth for the entire intended life of a
rechargeable battery. Accordingly, because the ’586 patent does not clearly
disclaim the scope of dendrite blocking in the manner Patent Owner
advances, we are not persuaded that we should limit the claims to the
asserted primary goal, or preferred result, of the ’586 patent. We, therefore,
decline to adopt Patent Owner’s proffered claim construction.
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Although we decline to read limitations from the Specification into
the claims, we must, nonetheless, take into account the relevant disclosures
in the Specification in determining the reasonable scope of the claims.
The claim language at issue appears in independent claims 1 and 12,
and recites, in full, that the ceramic composite layer must be “adapted to at
least block dendrite growth and to prevent electronic shorting.” Ex. 1001,
4:43–44 (claim 1), 6:18–19 (claim 12).
As noted above, the Specification of the ’586 patent discloses that
dendrite growth, which results in electronic shorting, occurs after repetitive
charge-discharge cycling of the battery. Id. at 1:20–31.
The ’586 patent does not explain with any specificity, however, what
structural or functional properties, for example hardness, must be possessed
by a ceramic composite layer that is “adapted to” block dendrite growth.
Nor does the Specification of the ’586 patent require any particular degree of
effectiveness in that respect. Nonetheless, as noted above, the ’586 patent
does disclose that a ceramic composite layer which is nonporous except for
pores resulting from electrolyte contact, and which is composed of inorganic
particles dispersed in a polymeric matrix, is adapted to block dendrite
growth and prevent electronic shorting. See id. at 3:9–59.
In addition to the Specification, “dictionary definitions are also
pertinent” in determining the broadest reasonable meaning of claim terms.
In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).
The ordinary meaning of “to block,” is “to obstruct by placing obstacles in
the way,” and the ordinary meaning of “to obstruct,” in turn, is “to hinder,
interrupt, or delay the passage, progress, course, etc. of.” Random House
Webster’s College Dictionary 144, 916 (2d ed. 2000).
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Accordingly, based on the evidence before us, we conclude that the
broadest reasonable construction of a ceramic composite layer, adapted to at
least block dendrite growth and prevent electronic shorting, encompasses
any such layer capable of hindering, interrupting, or delaying the passage,
progress, or course of dendrite growth, with any degree of effectiveness
sufficient to prevent electronic shorting.
Patent Owner contends that, by construing the language at issue to
encompass dendrite blocking to any degree of effectiveness, we effectively
rewrite the claim. PO Resp. 16. We are not persuaded. As noted above, we
apply to the claims before us the broadest reasonable construction an
ordinary artisan would give, in light of the Specification. In the instant case,
as discussed above, Patent Owner does not direct us to any clear or specific
disclosure in the Specification describing a minimum degree of dendrite
growth blocking, other than electronic short prevention, to which an
ordinary artisan would understand the claim to be limited.
Patent Owner contends that it is “unreasonable to have a construction
that could be met by some slowing of dendrites, but would allow others to
grow through and short out the battery potentially causing a fire or
explosion.” Id. at 17. As is evident, however, claims 1 and 12 expressly
require the ceramic composite layer to prevent electronic shorting. The
claims, therefore, do not encompass a ceramic composite layer that allows a
dendrite to grow through the separator unhindered and cause a short.
In sum, for the reasons discussed, based on the evidence before us, we
conclude that the broadest reasonable construction of a ceramic composite
layer, adapted to at least block dendrite growth encompasses any such layer
capable of hindering, interrupting, or delaying the passage, progress, or
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course of dendrite growth, with any degree of effectiveness sufficient to
prevent electronic shorting.
B. Claims 1–3, 5, 6, and 11: Anticipation by Tojo
Petitioner contends that claims 1–3, 5, 6, and 11 of the ’586 patent are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Tojo. Pet. 14–26.
Patent Owner contends that Tojo does not anticipate those claims
because Tojo does not describe a separator with a ceramic composite layer
“adapted to at least block dendrite growth and to prevent electronic shorting”
as recited in claim 1, and required by its dependent claims 2, 3, 5, 6, and 11.
PO Resp. 1, 21; see also id. at 27 (“The only issue presented in Ground 1 on
claims 1–3, 5–6 and 11 is whether the teaching of Tojo discloses a ceramic
composite separator layer that is inherently adapted to block dendrite
growth.”).
For the reasons below, we agree with Patent Owner that Petitioner has
not shown by a preponderance of the evidence that Tojo describes a
separator including that feature.
Tojo addresses issues facing separators used in high energy density
lithium batteries, the type of battery recited in claims 1 and 11 of the ’586
patent. Ex. 1004 ¶ 3. As required by claim 1, Tojo discloses that its
separator includes two layers, a “surface protection layer” composed of a
polyolefin, such as polypropylene or polyethylene, and a composite coating
layer which includes “inorganic microparticles of aluminum oxide, silicon
dioxide, or the like and a resin that acts as a binder.” Id. at 1.
As required by claim 1, the composite layer of Tojo’s separator
includes inorganic particles, which may be aluminum oxide or silicon
dioxide. Id. ¶ 18. As claim 1 also requires of its ceramic composite layer,
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the composite layer of Tojo’s separator includes a matrix material, termed a
“binder,” which is “not particularly limited if it is one that has been used
conventionally, and, for example, various polyesters, various polyolefins,
various rubbers, various acrylic resins, and the like can be used alone or as
mixtures.” Id. ¶ 22.
To show that Tojo meets claim 1’s dendrite-blocking requirement,
Petitioner directs us to Tojo’s disclosure that its separators have high surface
hardness and mechanical strength, which inhibit tearing and penetration by
microparticles of electrode material produced during manufacture or storage,
ultimately resulting in a reduced internal short circuit rate. Pet. 16 (citing
Ex. 1004 ¶ 8). Petitioner relies on paragraph 43 of the Abraham Declaration
to support its position that the high mechanical strength of Tojo’s composite
layer, which is not prone to being penetrated by microparticles, means that it
is capable of blocking dendrite growth and preventing electronic shorting.
Id. at 15 (citing Ex. 1003 ¶ 43). The Abraham Declaration states:
By including a layer with inorganic materials that is not prone
to being penetrated by microparticles, Tojo provides a layer that
is not prone to being penetrated by dendrite growth. That is,
the microparticles that are blocked by Tojo’s separator layer
include[] dendrites.
Ex. 1003 ¶ 43 (citation omitted).
As Patent Owner contends, however (PO Resp. 21, 25–27), Tojo
describes its ceramic composite layer as “porous” and having “open holes.”
Ex. 1004 ¶¶ 8, 25.
Tojo discloses that the surface protection layer can be formed “by
screen printing so that it has open holes in the manner of a mesh or the like.”
Id. ¶ 25. Alternatively, Tojo discloses:
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[P]ores matching the porous structure of the substrate can be
formed in the surface protection layer by performing an
ultrasonic treatment on the resin constituting the surface
protection layer in the presence of a poor solvent . . . .
Id. ¶ 26. Tojo discloses further that pores may be produced by “extracting,
stretching, adding a foaming agent.” Id. ¶ 27. Tojo exemplifies using
ultrasonication to produce pores in its ceramic composite layer. Id. ¶¶ 43,
46.
Regarding the size of the open holes, Tojo discloses:
The size of the open holes is not particularly limited, but taking
into account the electroconductive particle size that causes
internal short-circuiting when the surface protection layer is
used as a separator for a cell, 0.1 µm to 1 mm is adequate, and 5
µm to 20 µm is preferred. The open holes preferably take up
about 40 to 80% of the entire surface area in the surface of the
surface protection layer.
Id. at ¶ 25.
Patent Owner argues that the ability of Toro’s separator to stop hard
particles is not sufficient to establish that Tojo inherently discloses the
ability to block dendrites. PO Resp. 32. Patent Owner contends that
dendrites do not have common characteristics with the microparticles Tojo
sought to block. Id. at 25. According to Patent Owner, dendrites are
smaller, softer, and “can adapt in size and shape over multiple cycles,
whereas foreign object debris, such as electrode microparticles or burrs,
introduced during cell manufacture have a fixed size and shape.” Id. at 24
(citing Ex. 2002 ¶¶ 47, 48, 102); see id. at 22–23.
Moreover, Patent Owner contends, “there is greater current density
where ionic flow occurs through pores, and dendrite growth will be created
by and likely follow that current.” Id. at 28–29 (citing Ex. 2002 ¶¶ 44–47,
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104, 107, Ex. 2009 at 41:13–42:2). While dendrite growth through a
separator is less likely to occur through highly tortuous pores, Patent Owner
asserts that the embodiment in Tojo that provides detail about the holes in its
surface hardness layer “is likely to result in holes straight through the layer
with little or no tortuosity.” Id. at 29 (citing Ex. 1004 ¶ 25, Ex. 2002 ¶ 106).
Patent Owner contends that a hole straight through the separator will not
necessarily block dendrite growth. Id. (citing Ex. 2002 ¶ 106).
Given Dr. White’s experience in the field of battery technology, we
credit his testimony on this issue. Ex. 2002 ¶¶ 3–16 (White Decl.); Ex. 2003
(Curriculum Vitae of Dr. White). Moreover, to support his opinion, Dr.
White cites (Ex. 2002 ¶ 47) to the Handbook of Battery Materials (Ex. 2007,
“the Handbook”), a reference to which Petitioner’s expert, Dr. Abraham,
also cites (Ex. 1003 ¶ 43 (citing Ex. 1026)).
The Handbook discloses:
Even these small pores [in microporous separators] cannot
prevent the formation of so-called “microshorts”, arising by
metal deposition (e.g., dendrites) from the solution phase. The
pores of modern separators have a diameter of about 0.1 µm,
equal to 100 nm, while metal ions have a diameter of few
angstroms, equal to 0.5–1 nm. On an atomic scale even
micropores are barn doors!
Ex. 2007, 247.
As Patent Owner contends (PO Resp. 32), the opinion of Petitioner’s
expert, Dr. Abraham, regarding whether dendrites could grow through
Tojo’s porous ceramic composite layer, is based on equating the ability of a
separator to block hard microparticles with the ability to block soft
dendrites:
Q. So if I understand the opinion that you just gave about Tojo
and microparticles and dendrites, you’re saying the surface
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hardness of a separator would have to be harder to block or
prevent tearing from microparticles than it would be to block a
dendrite?
. . .
A. No, that’s not what I said. What I said was that the surface
hardness of the Tojo separator was able to stop penetration of
microparticles of hard metals, so if they are able to stop
penetration of microparticles of hard metals then they should
definitely be able to stop microparticles of soft metals which are
also metallic particles. So if something can stop a hard particle,
then I would think it is easier to stop soft particles, softer metal
particles.
Ex. 2009, 141:1–20.
As discussed above, the broadest reasonable construction of a ceramic
composite layer, adapted to at least block dendrite growth and prevent
electronic shorting, encompasses any such layer capable of hindering,
interrupting, or delaying the passage, progress, or course of dendrite growth,
with any degree of effectiveness sufficient to prevent electronic shorting.
As also discussed above, Tojo discloses that the pores in its ceramic
composite layer can range from 0.1 µm to 1 mm in size. Ex. 1004 ¶ 25.
Viewing the record as a whole, including the testimony of Dr. White
and Dr. Abraham, as well as the Handbook’s disclosure that separator pores
as small as 0.1 µm are effectively barn doors, which cannot prevent
electronic shorts caused by dendrite growth, Patent Owner persuades us that
Tojo’s porous ceramic composite layer is not capable of hindering,
interrupting, or delaying the passage, progress, or course of dendrite growth,
with any degree of effectiveness that prevents electronic shorting. That is,
Patent Owner persuades us that Tojo’s separators do not include a ceramic
composite layer that is adapted to at least block dendrite growth and to
prevent electronic shorting, as recited in claim 1 of the ’586 patent.
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Petitioner does not persuade us that the preponderance of the evidence
supports a contrary finding.
As noted above, Petitioner bears the burden of proving unpatentability
by a preponderance of the evidence. 35 U.S.C. § 316(e). In the instant case,
Petitioner contends that Tojo necessarily describes a ceramic composite
layer adapted to at least block dendrite growth, and that Tojo’s ceramic
composite layer inherently blocks dendrite growth, despite the pores
discussed above. Reply 6–10. Petitioner asserts that the prevention of
dendrite growth “is a distinct possibility” from Tojo’s teaching of preventing
“adverse events.” Id. at 6. Petitioner further asserts that Tojo is not limited
to straight-through pores because Tojo teaches methods of making the
porous surface protection layer that “are widely used in industry to create
pore structures that are highly tortuous.” Id. at 7. Petitioner further asserts
that blocking dendrite growth is the natural result of combining polymeric
matrix materials with inorganic particles of the type and proportion
described in the ’586 patent because “the ’586 patent requires no other
feature for achieving this property.” Id. at 9.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. ‘Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.’” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002). Given the evidence discussed above that the pores in Tojo’s
ceramic composite layer would allow dendrite growth, Petitioner does not
persuade us that, because Tojo’s ceramic composite layer contains the
inorganic particles and matrix material required by claim 1, Tojo necessarily
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teaches that its ceramic composite layer is adapted to block dendrite growth.
See Pet. Reply 8–10. Moreover, even assuming for argument’s sake that
larger dendrites would be blocked by Tojo’s pores (see id. at 5), Petitioner
does not dispute that dendrites may grow at an atomic scale (id.; Ex. 1031 ¶
10), and the evidence discussed above supports a finding that Tojo’s pores
would not block dendrites of that size from producing an electronic short.
As Petitioner argues (Reply 7), and as noted above, Tojo discloses
that the ceramic composite layer may be made “by extracting, stretching,
adding a foaming agent” in addition to a screen printing process. Petitioner
asserts that this means that “Tojo describes tortuous pores” (id. at 8) because
“[s]uch methods are widely used in industry to create pore structures that are
highly tortuous.” Id. at 7 (citing Ex. 1004 ¶ 27, Ex. 1031 ¶¶ 17–20).
Petitioner reasons that “[b]ecause Tojo describes tortuous pores, it would
block dendrite growth by PO’s own admission.” Id. at 8 (citing Ex. 1033,
40:2–14, Ex. 2002 ¶ 221).
Petitioner does not direct us, however, to any clear or specific
evidence suggesting that the “highly tortuous” pore structures allegedly
produced by known methods would be in any way comparable to, or
predictive of, highly tortuous pores in Tojo’s porous ceramic composite
layer made by extracting, stretching, or adding a foaming agent.
We acknowledge Petitioner’s argument that Dr. White’s testimony in
one of the related district court proceedings is inconsistent with his
testimony in the instant proceeding. Reply 8 n.1 (citing Ex. 1040). As noted
above, however, his testimony here, that dendrites can grow through Tojo’s
porous ceramic composite layer (see, e.g. Ex. 2002 ¶ 106), is supported by
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the Handbook, a reference upon which Petitioner’s expert also relies. Ex.
1003 ¶ 43 (citing Ex. 1026).
Petitioner also does not persuade us (Reply 7–8) that Dr. White’s
deposition testimony establishes that Tojo’s alternative methods of forming
the ceramic composite layer would necessarily produce pores with a
tortuosity sufficient to block dendrite growth.
As to the use of evaporation of a solvent to form pores, Dr. White
testified as follows:
Q. Okay. How would one create tortuous pores in a ceramic
composite layer?
. . .
THE WITNESS: I think we talked about the formation of pores
before the break. And I mentioned that it was possible to form
such pores by evaporation of a solvent that had been used to
form the paste that was used to form the ceramic composite
layer on the micropore separator.
Ex. 1033, 81:12–21.
As to whether tortuous pores would block dendrite growth, Dr. White
testified as follows:
Q. Okay. Under what circumstances would a separator having
pores be able to block a dendrite from growing through the
pores?
A. The answer to that question would depend upon the
characteristics of the separator as a whole. If the separator as a
whole has characteristics such that the path for the dendrite
through the pores and the separator would be long and tortuous,
for example, it could be a very thick separator, it could be a
separator with pores that are not straight-through pores, then it
would be possible for such a separator to block dendrite growth.
Id. at 40:2–14.
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Thus, Dr. White’s deposition testimony advanced by Petitioner
establishes, at best, that it is possible that tortuous pores could form using
Tojo’s technique, and that it is also possible under the proper circumstances
that those pores could be sufficiently tortuous to block dendrite growth. As
discussed above, however, inherency must necessarily, not possibly, result
from the prior art disclosure. In re Cruciferous Sprout Litig., 301 F.3d at
1349.
In sum, for the reasons discussed, Petitioner does not persuade us that
it has shown, by a preponderance of the evidence, that Tojo describes
inherently a separator with a ceramic composite layer adapted to at least
block dendrite growth and prevent electronic shorting, as claim 1 requires.
Because we determine that Petitioner has not shown that Tojo describes a
separator having all of the features required by claim 1 and its dependent
claims 2, 3, 5, 6, and 11, we find that Petitioner has not established that
claims 1–3, 5, 6, and 11 are unpatentable under 35 U.S.C. § 102(b) as
anticipated by Tojo.
C. Claims 4, 7–10, and 12: Obviousness over Tojo
Petitioner challenged claims 4, 7–10, and 12 of the ’586 patent in the
Petition as either anticipated or obvious over Tojo. Pet. 14. We instituted
trial as to claims 4, 7–10, and 12 based on Petitioner’s obviousness
challenge to those claims under 35 U.S.C. § 103(a) over Tojo. Dec. to Inst.
30.
When evaluating claims for obviousness, “the scope and content of
the prior art are to be determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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(2007) (quoting Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
Secondary considerations, if present, also must be considered. Id.
We take into consideration both parties’ assertions regarding the level
of ordinary skill when evaluating the parties’ contentions regarding the
scope and content of the prior art, and the differences between the prior art
and the challenged claims. In that regard, both experts generally agree that
an ordinarily skilled artisan at the critical time would have had a degree in
chemistry, physics, material science, or chemical engineering, at least three
years of experience in the battery industry or research and development of
lithium batteries, and knowledge of the components and problems of lithium
batteries, including dendrite growth, electronic shorting, and separators.
Ex. 1003 ¶¶ 18–20 (Abraham Decl.); Ex. 2002 ¶ 76 (White Decl.). We note
also that the level of ordinary skill in the art may be evidenced by the cited
references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
Claim 4 depends from claim 1 and includes claim 1’s requirement that
the separator be adapted to at least block dendrite growth and prevent
electronic shorting. Claim 12 recites that limitation expressly. Ex. 1001,
6:18–20.
As discussed above, Petitioner does not persuade us that it has
established that Tojo’s separator includes that feature, because of the pores
in Tojo’s ceramic composite layer. Because Petitioner relies on this
limitation being inherently present in Tojo as argued with respect to claim 1
(Pet. 19, 23), Petitioner does not provide any evidence to support the
obviousness of this limitation. In the context of an obviousness analysis,
inherency “‘may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
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not sufficient.’” In re Oelrich, 666 F.3d 578, 581 (C.C.P.A. 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)). An inherent
disclosure is one that is “sufficient to show that the natural result flowing
from the operation as taught would result in the performance of the
questioned function.” Id.; Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
1186, 1195 (Fed. Cir. 2014) (“[T]he concept of inherency must be limited
when applied to obviousness, and is present only when the limitation at issue
is the ‘natural result’ of the combination of prior art elements.”) (quoting In
re Oelrich, 666 F.2d at 581). As discussed above, the preponderance of the
evidence leads us to conclude that Tojo’s disclosure would not necessarily
produce pores with a tortuosity sufficient to block dendrite growth. Thus,
even if an ordinary artisan were to find it obvious to try one of the specific
matrix materials recited in dependent claim 4 (id. at 19), the resulting
ceramic composite layer required by both claim 4 and claim 12 would,
nonetheless, have the pores that Tojo teaches should be present in that layer.
Therefore, a preponderance of the evidence does not support a finding that it
would have been obvious that the separator disclosed by Tojo would result
in a separator having the dendrite-blocking feature required by claims 4 and
12.
Accordingly, because Petitioner has not shown that Tojo teaches or
suggests all of the features required by claims 4 and 12, we conclude that
Petitioner has not established by a preponderance of the evidence that claims
4 and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Tojo.
Regarding independent claim 7, and claims 8–10 which depend
therefrom, Petitioner relies upon the structural limitations of the ceramic
composite layer, the polyolefinic microporous layer, and the inorganic
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particles shown to be present in Tojo with regard to claims 1–3. Pet. 20; see
id. at 14–18. Regarding the matrix materials specified by claims 7 and 10,
Petitioner asserts they would have been obvious (id. at 18–19) over Tojo’s
disclosure that resin binders are “used conventionally” (Ex. 1004 ¶ 22), “not
particularly limited” (id.), and the specifically identified “urethane” (id.
¶ 31) and “rubbers” (id. ¶ 22). Petitioner argues that one of ordinary skill in
the art would envisage polyethylene oxide (recited in claims 7 and 10) from
Tojo’s disclosure of “various rubbers.” Pet. 18, 21 (citing Ex. 1004 ¶ 22,
Ex. 1003 ¶¶ 52–53). Regarding the matrix material taught by Tojo, the
Abraham Declaration states “Tojo provides that the resin binder is not
restricted” and that polyethylene is an “example[] of rubber or rubber type
polymers.” Ex. 1003 ¶¶ 52–53. Petitioner also relies upon the Abraham
Declaration to demonstrate that Tojo discloses overlapping ranges with the
porosity, average pore size, and Gurley Number ranges claimed in claims 7
and 8. Pet. 21‒22 (citing Ex. 1004 ¶¶ 15, 29; Ex. 1003 ¶¶ 54‒58, 60‒63).
Patent Owner contends that one of ordinary skill in the art would not
envisage polyurethane from the disclosure of urethane in Tojo because
urethane is not mixed with inorganic particles in the embodiment disclosed
in paragraph 31 of Tojo. PO Resp. 35–36 (citing Ex. 2002 ¶¶ 127–129).
Patent Owner also contends that polyethylene oxide and polyacrylonitrile are
neither rubbers nor “conventionally used as binders for combination with
inorganic microparticles” in the battery industry in 2000. Id. at 36 (citing
Ex. 2002 ¶¶ 127–131, Ex. 2015 ¶¶ 29–30). Patent Owner further argues that
it would not have been obvious to try the claimed matrix materials in Tojo’s
separator because “[t]he selection of a polymer for use in a cell is not a
simple matter.” Id. at 36–37. Citing the Declaration of C. Glen Wensley,
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Ph.D. (Ex. 2015 ¶¶ 18–22), Patent Owner asserts that multiple material
properties are involved in the selection of a binder and that Petitioner has not
explained why one skilled in the art would have been led to the particularly
claimed binders other than the identified species/genus relationship. PO
Resp. 37–38.
Patent Owner does not point to any clear or specific evidence
supporting its assertion that one of ordinary skill in the art would understand
Tojo’s disclosure of resin materials to be so restrictive that a resin in an
embodiment that does not include inorganic particles would not be an
obvious choice for use as a resin in the embodiment containing inorganic
particles. Tojo explicitly states that the resin in its embodiment with
inorganic particles preferably acts as a binder and the binder “is not
particularly limited.” Ex. 1004 ¶ 22. Regarding polyethylene oxide in
particular, which is recited in claims 7 and 10, Dr. Wensley states
Under certain circumstances polyethylene oxide may be
blended with or grafted to different kinds of rubbers, such as
butyl rubbers. Although those blended or grafted materials
would be considered rubbers, polyethylene oxide on its own
would not be considered a rubber.
Ex. 2015 ¶ 29. Patent Owner does not assert on this record that such rubber
type polymers are not resins, conventionally used as binders, or used in
lithium batteries. The evidence in the trial record is that polyethylene oxide
was being used in lithium batteries in the 2000 time frame, but not in a
commercial product. Ex. 1030, 100:3–101:17. Petitioner asserts that the
prosecution history of the ’586 patent confirms polyethylene oxide,
polyvinylidene fluoride, polytetrafluoroethylene, and polyurethane were in
use as matrix materials in the prior art. Reply 11–12 (citing Ex. 1002;
Ex. 1039, 4:1–19).
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Based on the trial record, the preponderance of the evidence
establishes that it would have been obvious to select the matrix material
claimed in claims 7 and 10 in view of Tojo’s broad disclosure of suitable
resins and various rubbers, in particular. In a determination of obviousness,
a reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art. Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). It is not limited to
specific examples contained in its disclosure. In re Mills, 470 F.2d 649, 651
(CCPA 1972).
Patent Owner does not dispute the calculations presented by Dr.
Abraham concerning the porosity, average pore size, and Gurley Number
ranges disclosed by Tojo overlapping with the ranges claimed in claims 7
and 8. Given Dr. Abraham’s qualifications and experience (Ex. 1003 ¶¶ 3–
17), we credit his testimony on this issue (id. ¶¶ 54–63, 65).
In sum, having considered the prior art advanced by Petitioner in light
of Patent Owner’s arguments and evidence regarding its teachings, we find
that the preponderance of the evidence is that an ordinarily skilled artisan
would have been prompted to use known polymers for the matrix materials
broadly described by Tojo in the ceramic composite layer. Accordingly, on
this record, we conclude that an ordinary artisan would have had reason to
prepare a separator having all of the features of claims 7–10.
D. Claims 1–6 and 11: Obviousness over Tobishima and Tojo
Petitioner challenged claims 1–12 of the ’586 patent in the Petition as
obvious over the combination of Tobishima and Tojo. Pet. 26. We
instituted trial as to claims 1–6 and 11. Dec. to Inst. 30.
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Patent Owner contends that there is no reason to combine Tojo with
Tobishima because the references propose different solutions to different
problems. PO Resp. 41. Patent Owner argues further that addition of Tojo’s
inorganic particles to Tobishima’s separator would reduce the conductivity
of the separator by displacing the electrolyte in the separator’s impregnated
polymer layer (id. at 43), as well as inhibiting the crosslinking of
Tobishima’s gel-like film (id. at 46).
For the reasons below, we conclude that Petitioner has shown by a
preponderance of the evidence that the combination of Tobishima and Tojo
describes a separator and battery that encompass all of the limitations in
claims 1–6 and 11.
Tobishima describes a separator in a rechargeable lithium battery that
has a two-layered structure:
(1) a porous polyolefin polymer film with a melting point of
180ºC or lower, a thickness of 20 to 100 µm and a porosity of
30% or greater is used in combination with
(2) a 20 to 150 µm thick polymer film having a polymer
matrix allowing trapping and impregnation of nonaqueous
solvent and ion dissociative lithium salt.
Ex. 1005 ¶ 6 (paragraphing added). Tobishima discloses that the minimum
thickness of the polymer matrix film is 20 µm in order to prevent internal
shorts due to “penetration by dendritic lithium.” Id. ¶ 11. The preferred
maximum thickness of 150 µm is in view of the design condition that “too
great a thickness will lead to the problem of reducing the charge capacity of
the cathode and anode of the cell and lowering the energy of the cell.” Id.
The stated advantages of the cell are:
(A) [it] does not develop internal shorts due to dendritic
lithium deposition even when charging and discharging are
repeated over a long period of time, making it possible to
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achieve a long charge/discharge cycle life and also making it
possible to avoid risks such as ignition due to internal shorts;
and
(B) in the event of external shorts or charging with excessive
current, in order to avoid the dangerous situation where lithium
melts inside the cell, the component materials of the separator
melt rapidly at a temperature below the melting point of lithium
(180ºC), and thus function to cause clogging and block electric
current, making it possible to avoid further temperature
increase.
Id. ¶ 8 (paragraphing added).
Petitioner contends that Tobishima teaches all of the features required
by claim 1 except for the microparticles in the matrix material. Pet. 26–31.
Petitioner further contends that it would have been obvious to one of
ordinary skill in the art to combine the microparticles of Tojo with the
polymeric matrix material of Tobishima because Tobishima “suggests the
need of increasing the mechanical strength of the electrolyte solution
impregnated polymer layer . . . providing a motivation for combining with
the strength-enhancing microparticles of Tojo” (id. at 28 (citing Ex. 1005
¶ 11; Ex. 1003 ¶ 84)). Petitioner further asserts that the microparticles of
Tojo are combinable with Tobishima’s polymeric matrix “because Tojo
teaches any conventional binders––including ‘various polyesters, various
polyolefins, various rubbers, and various acrylic resins[’]––may be mixed
with the microparticles.” Id. (citing Ex. 1004 ¶¶ 22, 31, Ex. 1003 ¶¶ 82–84).
Regarding claim 2, which is directed to the weight percent in the
mixture of inorganic particles and matrix material, Tojo teaches a mixture
weight ratio of 500 parts or less of binder to 100 parts of inorganic
microparticles. Ex. 1004 ¶ 22; Pet. 32. Regarding claim 3, Tojo teaches
aluminum oxide, silicon dioxide, and titantium dioxide as examples of the
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inorganic microparticles. Ex. 1004 ¶ 18; Pet. 32. Regarding the matrix
materials of claim 4, Tobishima discloses polyacrylonitrile, polyethylene
oxide, and polymethacrylate. Ex. 1005 ¶ 11. Regarding claims 5 and 6,
which are directed to the microporous layer, Tobishima discloses
polyolefinic films including a polyethylene film. Id. ¶¶ 10, 12, 16; Pet. 33.
Regarding the rechargeable lithium battery of claim 11 that requires
any one of the separators of claims 1 through 10, Tobishima discloses a
rechargeable lithium battery having an anode, a cathode, and an electrolyte
solution. Ex. 1005, Abstr., ¶ 2; Pet. 36‒37.
Patent Owner asserts that modifying Tobishima’s polymer matrix with
Tojo’s inorganic particles for the reason of improving mechanical strength
of the separator presumes Tojo and Tobishima are referring to the same
meaning of mechanical strength. PO Resp. 44 (citing Ex. 2002 ¶¶ 139–140;
Ex. 2016, 534–35). According to Patent Owner, the mechanical strength
that Tobishima describes being improved by polymer crosslinking would be
“thought of as mechanical stability or dimensional stability, such that a film
made of the compound would be free standing.” Id. (citing Ex. 1005 ¶ 11).
Patent Owner contends that Tojo, on the other hand, “is not at all concerned
with enhancing the dimensional stability of an electrolyte impregnated
polymer film” but, rather, “the hardness of the surface protection layer”
which is improved by adding inorganic particles that are preferably hard. Id.
at 46 (citing Ex. 1004 ¶ 18).
Patent Owner also asserts that “simply adding inorganic particles to a
gel polymer does not in all cases improve mechanical strength of the gel
polymer” and may even make a film “fragile” if too little or too much is
added. Id. at 45 (citing Ex. 2002 ¶¶ 141–142; Ex. 1027, 1252). Patent
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Owner also argues that a person of ordinary skill in the art would not add
inorganic particles to a polymer before crosslinking because crosslinking
would be inhibited. Id. (citing Ex. 2002 ¶¶ 141–143). Patent Owner further
argues that the addition of inorganic particles to Tobishima’s gel-like film
“would result in a substance similar to wet glue with sand in it.” Id. at 46
(citing Ex. 2002 ¶ 141).
Both Tobishima and Tojo refer to “mechanical strength” as a property
to be optimized in the polymer matrix of their respective separators. Ex.
1005 ¶ 11; Ex. 1004 ¶ 7. Tobishima provides crosslinking of the polymer as
an optional means for increasing mechanical strength; Tojo provides a
separator having a mixture of inorganic particles in a resin as another means
for improving mechanical strength. Id. Patent Owner lists many aspects of
mechanical strength of a polymer that can be tested, affected, and improved.
PO Resp. 44 (citing Ex. 2016, 534–35). Even if one skilled in the art
reading Tobishima would understand “crosslinking” to teach or suggest
mechanical stability or dimensional stability specifically, the term
“mechanical strength” itself has a broader meaning according to Patent
Owner. Moreover, Tobishima provides crosslinking as one way the polymer
material “may be modified.” Ex. 1005 ¶ 11 (“to increase mechanical
strength, the polymer materials used may be modified to have a cross-linked
structure.”) Thus, Tobishima is not limiting in terms of how the mechanical
strength of the polymer may be increased nor does it require crosslinking as
a necessary step.
Regarding the issue of adding inorganic particles to a polymer in an
amount that is too little or too much to improve mechanical strength, the
person having ordinary skill in the art must be regarded as skillful and
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ordinarily creative, not as a mere literalistic automaton. Transocean
Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617
F.3d 1296, 1304 (Fed. Cir. 2010); In re Sovish, 769 F.2d 738, 742 (Fed. Cir.
1985). Moreover, the article that Patent Owner cites for showing various
effects caused by the addition of inorganic particles acknowledges that the
addition of inorganic particles affects whether the combination yielded a free
standing film. Ex. 1027, 1253 (“The use of ceramic makes it possible to
prepare a highly conductive, freestanding film . . . .”).
In sum, having considered the prior art advanced by Petitioner in light
of Patent Owner’s arguments and evidence regarding the cited references’
teachings, we find that an ordinarily skilled artisan would have been
prompted to combine Tojo’s inorganic particles in the polymer matrix of
Tobishima. Accordingly, the preponderance of the evidence on this trial
record shows that an ordinary artisan would have had reason to prepare a
separator having all of the features of claims 1–6 and a battery having all of
the features of claim 11.
E. Secondary Considerations
Before concluding whether the challenged claims would have been
obvious, in addition to the teachings in the prior art, the objective indicia of
nonobviousness must be considered “as part of all the evidence, not just
when the decision maker remains in doubt after reviewing the art.” Eurand,
Inc. v. Mylan Pharms. Inc. (In re Cyclobenzaprine Hydrochloride Extended–
Release Capsule Patent Litig.), 676 F.3d 1063, 1076–77 (Fed. Cir. 2012)
(citation omitted).
Although Petitioner bears the ultimate burden of persuasion under
35 U.S.C. § 316(e), as Petitioner contends (Reply 18), “[f]or objective
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evidence to be accorded substantial weight, its proponent [Patent Owner]
must establish a nexus between the evidence and the merits of the claimed
invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). In
particular, the objective indicia “must be tied to the novel elements of the
claim at issue” and must “‘be reasonably commensurate with the scope of
the claims.’” Institut Pasteur & Universite Pierre Et Marie Curie v.
Focarino, 738 F.3d 1337, 1347 (Fed. Cir. 2013) (quoting Rambus Inc. v.
Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)).
As noted above, the prior art evidence of obviousness teaches or
suggests separators having all of the features required by claims 1–11.
Accordingly, we consider the objective evidence of nonobviousness as it
relates to claims 1–11.
Patent Owner contends that objective evidence of nonobviousness
shows that the claimed separator solved a long-felt need (PO Resp. 48–50),
was copied by Petitioner, the alleged infringer in one of the copending
district proceedings (id. at 50–53), achieved wide industry acceptance (id. at
53–56), and experienced significant commercial success (id. at 56–60).
Petitioner replies, essentially, that Patent Owner has failed to establish
adequately a nexus between the objective indicia advanced by Patent Owner
and the subject matter recited in the claims. Reply 21–25. Petitioner also
contends that Patent Owner has incorporated excessive argument into its
Response from its supporting documents. Id. at 15–16.
As to incorporation by reference, 37 C.F.R. § 42.6(a)(3) states that
“[a]rguments must not be incorporated by reference from one document into
another document.”
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To show a nexus between the claims and the objective evidence of
nonobviousness, Patent Owner relies on testimony by Dr. White from one of
the copending district court proceedings noted above, to show that
Petitioner’s allegedly infringing product contains all of the features of the
claims. See PO Resp. 53, 57. Specifically, in addition to the Declaration by
Dr. White prepared for this proceeding (Ex. 2002), Patent Owner cites to a
Declaration by Dr. White submitted in support of Patent Owner’s motion for
preliminary injunction in the copending district court litigation (Ex. 2903
(“White PI Declaration”)). PO Resp. 53, 57.
As Petitioner contends, Patent Owner cites to numerous paragraphs of
the White Declaration prepared for this proceeding, but does not, in its
Response, discuss with any specificity the information and arguments
presented in that Declaration. See PO Resp. 53 (citing Ex. 2002 ¶¶ 166–
209); id. at 57 (same). The White Declaration itself, in turn, cites
extensively to additional evidence, including a Declaration by Premanand
Ramadass (Ex. 2907), which was also prepared to support Patent Owner’s
motion for preliminary injunction in the copending infringement proceeding.
Ex. 2002 ¶¶ 188, 190–95, 201.
Patent Owner also cites to Exhibits 13, 17, and 21 of the White PI
Declaration (Ex. 2903). PO Resp. 53, 57. Exhibits 13, 17, and 21 of the
White PI Declaration contain extensive claims charts and analysis. See Ex.
2903, Exhibit 13, 1–8; id. at Exhibit 17, 1–11; id. at Exhibit 21, 1–20. As to
claims 1–11 at issue here, only claims 1, 4, and 7 are discussed, which
occurs at pages 1–7 of Exhibit 13 of the White PI Declaration, at pages 1–7
of Exhibit 17 of the White PI Declaration, and at pages 1–13 of Exhibit 21
of the White PI Declaration.
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In its Patent Owner Response, however, Patent Owner does not
discuss with any specificity the information or arguments presented in the
two Declarations by Dr. White, the accompanying claim charts, or the
accompanying Declaration by Mr. Ramadass. Accordingly, Patent Owner’s
Response improperly incorporates by reference the arguments and claims
analysis from both of Dr. White’s Declarations, as well as the Declaration by
Mr. Ramadass.
Even disregarding the procedural infirmities in Patent Owner’s
Response, however, Petitioner persuades us that the evidence of secondary
considerations is not entitled to substantial weight, because Patent Owner
has not established a sufficient nexus between the merits of the claimed
subject matter and that evidence. Petitioner persuades us also that the
evidence of secondary considerations is not reasonably commensurate in
scope with the claimed subject matter.
Patent Owner relies on the district court’s order granting a preliminary
injunction to show that Petitioner’s allegedly infringing product, on which
Patent Owner bases most of its contentions regarding secondary
considerations of obviousness, includes all of the features of the challenged
claims. PO Resp. 57 (citing (Ex. 2904 (“PI Order”)).
The PI Order mentions only claim 1 of the ’586 patent. See
Ex. 2904, 8 (“Having reviewed [the] description of the claims detailed [in]
the claim charts, it appears likely that the SRS [safety reinforced separators]
sold, offered for sale, used, and imported into this country by defendants
infringes at least claim 1 of the ’586 patent.”). As noted above, the objective
evidence of nonobviousness is pertinent to claims 1–11. Moreover, on
appeal of the PI Order, the Federal Circuit found that the district court had
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not made adequate findings of fact regarding infringement, and remanded
the case back to the district court. Celgard, LLC v. LG Chem, Ltd., No.
2014-1675, 2015 WL 4757745, at *3, *6 (Fed. Cir. Aug. 12, 2015).
As to the issue of long-felt but unsolved need, Patent Owner focuses
entirely on the problem of dendrite growth. PO Resp. 48–50. Patent Owner
acknowledges two proposed solutions existed, Tobishima (Ex. 1005) and
Song4 (Ex. 2011), but asserts “there is no evidence that either works.” PO
Resp. 50 (citing Ex. 2002 ¶ 149). Song, however, states “[t]he use of
continuous or non-porous polymeric membranes which provide few or no
continuous free paths for electrolyte solution in which lithium dendrites
propagate has been one of several successful approaches to suppressing the
problem of dendrite growth.” Ex. 2011, 1. The White Declaration does not
refute that the Song approach was successful at blocking dendrite growth.
Instead, Dr. White states that the solution proposed by Song does not
“suggest[] applying a ceramic coating to solve the dendrite issue.” Ex. 2002
¶ 149.
Accordingly, we agree with Petitioner that Patent Owner has not
shown a sufficient nexus between the claimed subject matter and the
evidence of long-felt but unsolved need in view of an existing solution to the
problem of dendrite growth that claims 1–6 also solve. In addition, Patent
Owner has not explained adequately how the separators recited in claims 7–
11 meet that need, given that none of those claims requires the separator to
be capable of blocking dendrite growth. Thus, Patent Owner has not

4 J.Y. Song et al., Review of gel-type polymer electrolytes for lithium-ion
batteries, 77 J. POWER SOURCES 183–197 (1999) (Ex. 2011) .
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advanced evidence adequate to support a finding that claims 1–11 of the
’586 patent solved a long-felt, unsolved need.
Regarding the issue of copying, Patent Owner contends that it had a
business relationship with Petitioner, in which Patent Owner provided base
separator material to Petitioner, and Petitioner applied a ceramic coating to
that material, thereby practicing the claimed invention. PO Resp. 52–53
(citing Ex. 2915 ¶¶ 6–10, 12, 15, 16 (Paulus Decl.)). Patent Owner contends
that, after switching to a different base film supplier, “[r]ather than develop a
new product, [Petitioner] merely copied its old SRS products it developed
with [Patent Owner] and which infringe the ‘586 patent. Thus, this
secondary consideration favors a finding of non-obviousness.” Id. at 53.
As to Patent Owner’s contentions regarding copying, we find that
Petitioner has the better position. The Federal Circuit has explained that
“[n]ot every competing product that arguably falls within the scope of a
patent is evidence of copying; otherwise, ‘every infringement suit would
automatically confirm the nonobviousness of the patent.’” Wyers v. Master
Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quoting Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004)). Rather,
copying requires evidence of efforts to replicate a specific
product, which may be demonstrated through internal company
documents, direct evidence such as disassembling a patented
prototype, photographing its features, and using the photograph
as a blueprint to build a replica, or access to the patented
product combined with substantial similarity to the patented
product.
Id.
Further, as Petitioner argues, Patent Owner did not provide a ceramic
coated separator to Petitioner (product, prototype, or otherwise), but, rather,
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Petitioner provided its separator technology to Patent Owner. Reply 18–19
(citing Ex. 2907 ¶ 4; Ex. 1043 ¶ 8–10). Petitioner also argues that meetings
with Patent Owner concerned only Patent Owner’s base film, not a ceramic
coated separator. Id. at 19 (citing Ex. 1043 ¶ 11). Patent Owner’s evidence
of receiving “customized specifications” and “production requirements”
from Petitioner is consistent with Petitioner’s argument that the supply of
technology went from Petitioner to Patent Owner rather than the other way
around. See Ex. 2915 ¶¶ 9–10.5
Moreover, in testifying that the product asserted as infringing claims
1, 4, and 7 includes all of the claimed features, Dr. White noted that the
ceramic composite layer of the allegedly infringing product is expressly
described as being porous. Ex. 2903, Exhibit 17, 1, 3 (White PI Decl.). In
contrast, as noted above, the ’586 patent describes its ceramic composite
layer as nonporous, except for some pores that may result from contact with
electrolyte. Ex. 1001, 3:10–12.
Given this significant difference in the description of the ceramic
composite layer of the ’586 patent, as compared to that of Petitioner’s
allegedly infringing product, Petitioner persuades us that Patent Owner has
not advanced evidence adequate to support a finding that Petitioner copied
the product described in the ’586 patent.

5 In reaching our decision, we have considered the evidence set forth in
Patent Owner’s Motion for Observation on the Cross-Examination of
Petitioner’s Reply Witness Jongmoon Chin (Paper 63) and Petitioner’s
Response (Paper 67). At best, Patent Owner’s observations characterize
Mr. Chin’s deposition testimony as identifying potential opportunities where
information about Celgard’s separator know-how could have been obtained.
In addition, we agree with Petitioner that Patent Owner’s observations are
argumentative and that they assume evidence not in the record.
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As to the issue of industry praise and acceptance, Patent Owner
advances the testimony of Mr. Paulus as evidence that, as of 2013, about
46% of all plug-in electric vehicles in the United States used batteries with
ceramic coated separators, that that figure was 70.8% when calculated by
megawatt hour, that about 56% of all plug-in electric vehicles sold in the
United States having a ceramic-coated battery separator were supplied by
Petitioner, LG Chem, and that Petitioner, LG Chem, supplies batteries to
26% of all plug-in vehicles sold in the United States that use a lithium-ion
battery. PO Resp. 54 (citing Ex. 2915 ¶¶ 21–24 (Paulus Decl.)). Moreover,
Patent Owner contends, “[i]ndustry participants have adopted advertising
materials touting the benefits of and importance of ceramic coating on safety
and more specifically in the prevention of dendrite growth.” Id. at 55–56
(citing Ex. 2002 ¶¶ 160, 162, 216–222; Ex. 2901; Ex. 2902; Ex 2903 at
Exhibit 11; Ex. 2912).
As Petitioner contends (Reply 23–24), certain of the advertising
documents advanced by Patent Owner point to numerous features, aside
from the dendrite blocking and short prevention, as desirable properties of
the advertised lithium ion batteries. See Ex. 2903, Exhibit 11 (LG Chem
website noting that the “lithium-ion batteries of LG Chem’s Mobile Battery
Division have outstanding competitiveness in terms of high capacity, ultra
slimness, and safety”); Ex. 2912, 1–2 (LG Chem Power Inc. website noting
the reliability, cost, power density, energy density, light weight, and
environmental friendliness of its lithium-ion batteries). Moreover, as noted
above, claims 7–11 do not require the ceramic composite layer to be adapted
to at least block dendrite growth and prevent electronic shorting, the safety
features that Patent Owner contends provide the basis for the cited
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advertising documents, as well as the alleged industry praise and acceptance.
Accordingly, viewing the totality of the record on this issue, Patent Owner
has not advanced evidence adequate to establish a sufficient nexus, or
commensurateness of scope, between the subject matter recited in claims 1–
11, and the evidence of industry praise and acceptance.
As to commercial success, Patent Owner again relies on evidence
relating to its relationship with Petitioner LG Chem. Specifically, Patent
Owner contends, Patent Owner saw “a huge increase in sales once
[Petitioner] started practicing the ’586 patent.” PO Resp. 57. More
specifically, Patent Owner contends, before its relationship with Petitioner,
Patent Owner sold only $10,000,000 worth of base separator material,
whereas from 2009 to mid-2013, Patent Owner sold $100,000,000 worth of
separator material to Petitioner for ceramic coating and use in electric
vehicles. Id. (citing Ex. 2915 ¶ 21 (Paulus Decl.)). Patent Owner contends
that Petitioner has stated that it annually sells approximately $2.4 billion of
infringing batteries worldwide. Id. at 58 (citing Ex. 2002 ¶ 213–14; Ex.
2910; Ex. 2911). Patent Owner reiterates its contentions, noted above,
regarding Petitioner’s share of the plug-in hybrid battery market. Id. (citing
Ex. 2915 ¶¶ 23, 24).
Patent Owner contends that the asserted commercial success of
Petitioner’s allegedly infringing products “is attributable, at least in part to
the novel feature of the ’586 patent –– the ability of the ceramic layer to
block dendrite growth.” Id. As evidence, Patent Owner directs us to
marketing and other statements by Petitioner, which Patent Owner contends
advertise the safety of Petitioner’s separators. Id. (citing Ex. 2002 ¶¶ 216–
222; Ex 2903, Exhibit 11; Ex. 2912; Ex. 2913). Moreover, Patent Owner
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contends, “that the commercial success of [Petitioner’s] products is
attributable at least in part to the SRS technology is shown by the fact that
the ceramic coating increases cost of the total battery and adds mass to the
battery and thus decreases driving range,” which are negatives that
[Petitioner] would not add to its separators absent some economic benefit.
Id. at 60 (citing Ex. 2002 ¶¶ 223–24; Ex. 2915 ¶ 26).
As Petitioner contends (Reply 24–25), the advertising documents
advanced by Patent Owner point to a number of features, aside from dendrite
blocking and short prevention, as desirable properties of the advertised
lithium ion batteries which are not claimed by the ’586 patent. See Ex.
2903, Exhibit 11(LG Chem website noting that the “lithium-ion batteries of
LG Chem’s Mobile Battery Division have outstanding competitiveness in
terms of high capacity, ultra slimness, and safety”); Ex. 2912, 1–2 (LG
Chem Power Inc. website noting the reliability, cost, power density, energy
density, light weight, and environmental friendliness of its lithium-ion
batteries). Petitioner also advances evidence that Patent Owner’s
commercial success analysis is flawed because additional economic and
market factors are responsible for the success of its lithium ion batteries,
including the increased demand for electric vehicles and lithium ion batteries
generally, the ability to leverage earnings from business divisions to expand
its battery business, financial assistance from federal and local governments,
marketing, and supply chain relationships. Reply 25 (citing Ex. 1047 ¶¶ 16–
23).
Moreover, Patent Owner does not explain with any specificity how or
why claims 7–11 require the recited separators to contain ceramic particles
of the type and concentration required to provide the dendrite-blocking
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functionality asserted as the basis for Petitioner’s commercial success. See
PO Resp. 59 (citing Ex. 2002 ¶ 2216) (“The extremely high amount of
nanoceramic used in . . . [Petitioner’s] SRS products leads to tiny, tortuous
pores and a layer that is adapted to block dendrite growth—a key element
for safe lithium-ion batteries.”).
In sum, viewing the totality of the record on this issue, we agree with
Petitioner that Patent Owner has not advanced evidence adequate to
establish a sufficient nexus, or commensurateness of scope, between the
subject matter recited in claims 1–11, and the evidence of commercial
success.
F. Conclusion on Obviousness
As discussed above, having considered the prior art advanced by
Petitioner in light of Patent Owner’s arguments and evidence regarding the
cited references’ teachings, Petitioner persuades us, based on the teachings
in Tojo alone and in combination with Tobishima, that an ordinary artisan
would have been prompted to prepare a separator having all of the features
of claims 1–11. As also discussed above, having considered Patent Owner’s
evidence and arguments regarding objective indicia of nonobviousness,
Petitioner persuades us that Patent Owner’s evidence does not show a
sufficient nexus, or commensurate scope, between the subject matter recited
in claims 1–11 and the objective indicia.
Accordingly, under these circumstances, taking into consideration the
record as a whole, we conclude that Petitioner has shown by a
preponderance of the evidence that an ordinary artisan would have

6 We understand Patent Owner’s citation to paragraph 2221 of the White
Declaration (Ex. 2002) to refer to paragraph 221 instead.
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considered the separators recited in claims 1–6 as obvious in view of
Tobishima and Tojo, the separators recited in claims 7–10 as obvious in
view of Tojo, and the battery recited in claim 11 as obvious in view of
Tobishima and Tojo.
III. MOTIONS TO EXCLUDE
A. Petitioner’s Motion to Exclude
Petitioner moves to exclude all or portions of Exhibit 2002 (White
Declaration), Exhibit 2015 (Wensley Declaration), and Exhibit 2915 (Paulus
Declaration) for lacking personal knowledge under FRE 602. Petitioner
further objects to Exhibit 2002 as lacking relevance to Dr. White’s expertise
under FRE 702 and 703 and constituting improper patent law testimony
under 37 C.F.R. § 42.65. Petitioner also moves to exclude Exhibits 2008,
2009, 2900–2902, 2905–2907, 2910, 2912–2914, and 2916 as inadmissible
hearsay under FRE 801 and 802 and Exhibits 2500, 2501, 2904–2906,
2908–2914, and 2916 as irrelevant under FRE 401 and 402 as not cited or
relied upon by Patent Owner in this proceeding. Paper 58, 1. As the
movant, Petitioner has the burden of proof to establish that it is entitled to
the requested relief. See 37 C.F.R. § 42.20(c). For the reasons stated below,
Petitioner’s Motion to Exclude is denied.
1. Exhibit 2002 (White Declaration)
Petitioner seeks to exclude the White Declaration or paragraphs 56,
58, 59, 61, 63–65, 147, 157, 159, 161, 202, 210, 216, 221, 223, and 224 of
the White Declaration because Dr. White lacks personal knowledge of the
matters asserted therein. Paper 58, 2–3. Petitioner also asserts that Dr.
White is not qualified to evaluate financial data or determine whether a
product has experienced commercial success to provide the opinions
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expressed in paragraphs 210, 216, and 224. Id. at 4. Petitioner further
asserts that paragraphs 150, 152, 153, 156, 163, 165, 167, 206, 207, and 209
should be excluded because they relate to patent law practice (non-
obviousness, infringement, and preliminary injunctions). Id. at 5.
Patent Owner contends that the cited paragraphs relay legal findings
that provide context for Dr. White’s opinions. Paper 70, 2–3. Patent Owner
also contends that information relevant to the nexus between the claimed
invention and the commercial success of Petitioner’s separator product is
consistent with Dr. White’s role in this proceeding in connection with the
issue of obviousness. Id. at 2.
We deny Petitioner’s Motion to exclude the disputed testimony. Dr.
White is not offered as a legal expert in this proceeding. We understand his
testimony regarding the legal parameters as context in which he provides his
opinions concerning the technology, and have given it the appropriate
weight.
2. Exhibit 2015 (Wensley Declaration)
Petitioner seeks to exclude the Wensley Declaration, because Dr.
Wensley lacks personal knowledge of the matters asserted in paragraphs 23,
24, and 26, as well as the corresponding paragraphs of Exhibit 2002 (¶¶ 118,
119, 121, 137, 143) and Patent Owner’s Response (pages 34, 35, 37, 43).7
Paper 58, 10–11.
Patent Owner contends that Dr. Wensley has extensive experience
with a wide variety of membrane materials and polymers as set forth in his
Declaration (Ex. 2015) and curriculum vitae (Ex. 2017). Paper 70, 8–9. On

7 Petitioner cites Paper 34, which is the redacted version of Patent Owner’s
Response. The unredacted version is Paper 32.
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this basis Patent Owner asserts that the identified evidence should not be
excluded because Dr. Wensley has personal knowledge and his testimony is
consistent with the role of an expert witness. Id.
Given Dr. Wensley’s experience (see Ex. 2015 ¶¶ 2–7; Ex. 2017), we
agree with Patent Owner that Dr. Wensley qualifies to testify as an expert
regarding the subject matter at issue and, therefore, deny Petitioner’s Motion
to exclude his Declaration.
3. Exhibit 2915 (Paulus Declaration)
Petitioner seeks to exclude the Paulus Declaration because Mr. Paulus
does not have personal knowledge of the matters asserted in paragraphs 6, 8,
12–15, 18–24, and 26 and includes speculative statements (¶¶ 6, 15, 18)
inconsistent with FRE 602. Paper 58, 11–12.
Patent Owner contends that “in the ordinary course of performing his
job, Mr. Paulus gained first-hand knowledge of the facts contained within
the challenged paragraphs of his declaration” and he states in his declaration
that he has “‘personal knowledge of the matters set forth in [his] declaration,
except where otherwise indicated.’” Paper 70, 9–10.
Petitioner provides no clear basis for refuting Mr. Paulus’s express
statement. That Mr. Paulus might not have provided documentary support
for all of his testimony goes to his credibility and to the ultimate weight to
be accorded to the disputed testimony, and is not an adequate basis for
exclusion. Accordingly, we deny Petitioner’s Motion to Exclude the Paulus
Declaration.
4. Exhibits 2008, 2009, 2900–2902, 2905–2907, 2910, 2912–2914, and
2916 (Inadmissible Hearsay)
Petitioner seeks to exclude Exhibits 2008, 2009, 2900–2902, 2905–
2907, 2910, 2912–2914, and 2916 as inadmissible hearsay because Dr.
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White, Patent Owner, and/or Mr. Paulus relies upon them to provide the
truth of the matters asserted therein. Paper 58, 7. Petitioner asserts that no
hearsay exception applies because an expert such as Dr. White may testify to
opinions based on inadmissible hearsay, but may not transmit hearsay to the
Board. Id. at 10 (citing Triboro Quilt Mfg. Corp. v. Luve LLC, 2014 WL
1508606, at *7 (S.D.N.Y. Mar. 18, 2014)).
Patent Owner contends that Exhibits 2008, 2009, 2900–2902, 2905–
2907, 2910, 2912–2914 and 2916 are not hearsay because it is proper for Dr.
White, as an expert in this case, to rely upon inadmissible facts so long as
experts in a particular field would reasonably rely on the same facts and
Petitioner makes no argument that the exhibits are untrustworthy or
inaccurate. Paper 70, 6. Regarding Exhibit 2907 (Ramadass Declaration),
Patent Owner asserts that it does not constitute an out of court statement
subject to exclusion as hearsay because a deposition of Mr. Ramadass was
not secured by Petitioner. Id. at 6–7. Even if the Declaration is hearsay,
Patent Owner argues that Exhibits A and B thereto fall into the exception of
business records as confirmed in the Ramadass Declaration. Id. at 7.
Regarding Exhibits 2905, 2906, 2910–2912, and 2914, Patent Owner asserts
they are not hearsay because they are statements of a party-opponent under
FRE 801 and are the sort of information commonly relied upon by experts
under FRE 703. Id. at 8.
We agree with Patent Owner on this issue. As Patent Owner
contends, FRE 703 allows the proponent of the expert opinion to disclose the
evidence underlying an expert opinion to the jury if the “probative value in
helping the jury evaluate the opinion substantially outweighs [its] prejudicial
effect.”
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As evidenced by the discussion on the merits above, we find that these
exhibits have substantial probative value in helping us to evaluate Dr.
White’s opinion. Moreover, because the Board is not a lay jury, and has
significant experience in evaluating expert testimony, the danger of
prejudice in this proceeding is considerably lower than in a convention
district court trial.
In sum, for the reasons discussed, we deny Petitioner’s Motion to
Exclude Exhibits 2008, 2009, 2900–2902, 2905–2907, 2910, 2912–2914,
and 2916.
5. Exhibits 2500, 2501, 2904–2906, 2908–2914, and 2916 (Relevance)
Petitioner seeks to exclude these exhibits as unrelated to the
technology at issue and/or the patent at issue. Paper 58, 5–6.
Patent Owner contends that Exhibits 2904–2906, 2908–2914, and
2916 are directly relevant to secondary considerations of non-obviousness
because they are supporting evidence to the district court’s decision
concerning infringement and Petitioner advances no argument of prejudice.
Paper 70, 3–4. Patent Owner also asserts that Exhibits 2500 and 2501 are
not specifically argued in Petitioner’s motion to exclude, but are also
relevant to the understanding of one of ordinary skill in the art at the time of
the invention. Id. at 4 n.2.
Because Dr. White attests that he reviewed Exhibits 2904–2906 and
2908–2913 in reaching the opinions he expressed in this case, Petitioner has
not shown that they are irrelevant under FRE 401 and 402. Because
Exhibits 2914 and 2916 also relate to the marketing of Petitioner’s lithium
ion battery, Petitioner also has not shown adequately that they are irrelevant.
Accordingly, we decline to exclude Exhibits 2904–2906, 2908–2914, and
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2916. Regarding Exhibits 2500, and 2501, because Petitioner bears the
burden on its Motion to Exclude these exhibits and fails to explain why they
are not relevant, we also decline to exclude Exhibits 2500 and 2501.
B. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude all or portions of Exhibit 1003
(Abraham Declaration), Exhibit 1031 (Second Abraham Declaration), and
Exhibit 1047 (Vander Veen Declaration) under FRE 402, 403, 602, 702,
703, 801, and 802.8 Patent Owner also moves to exclude Exhibits 1004
(Tojo translation) and 1033–1037 as unfairly prejudicial under FRE 402 and
403 (as well as FRE 901 with regard to the reliability of the Tojo
translation). Paper 64, 1. As the movant, Patent Owner has the burden of
proof to establish that it is entitled to the requested relief. See 37 C.F.R.
§ 42.20(c). For the reasons stated below, Patent Owner’s Motion to Exclude
is denied.9
1. Exhibits 1003 and 1031 (Abraham Declarations)
Patent Owner seeks to exclude Exhibits 1003 and 1031 on the basis
that Dr. Abraham did not “perform a correct legal analysis in providing his
opinions on anticipation and obviousness related to claims 1-6 and 11-12 of
the ’586 patent” (Paper 64, 2) and “because he has no legal foundation for
his analysis or conclusions that claims 1-12 of the ’586 patent are obvious”
(id. at 5). Patent Owner contends that Dr. Abraham did not apply or explain

8 We have considered the evidence set forth in Patent Owner’s Motions for
Observation on the Cross-Examinations of Drs. Abraham and Vander Veen
(Papers 61 and 62) in reaching our decisions on Patent Owner’s Motion to
Exclude as they relate to the Abraham and Vander Veen Declarations..
9 Because we deny Patent Owner’s motion on the merits, we decline to
decide whether Patent Owner’s objections were identified with sufficient
particularity. See Paper 69, 1–3.
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the meaning of claim constructions for the ’586 patent. Id. at 3–5. Patent
Owner also contends that Dr. Abraham “improperly looks to the’586 patent
as support for his combination” and “does not explain why a POSITA would
use certain compounds.” Id. at 7. Patent Owner further asserts that Dr.
Abraham did not apply properly secondary considerations of non-
obviousness nor the correct legal standards for inherency. Id. at 9–10.
Petitioner asserts that Patent Owner failed to preserve its objections
because it failed to provide notice with “sufficient particularity” in
accordance with 37 C.F.R. § 42.64. Paper 69, 1. Petitioner contends that
listing the applicable Federal Rule of Evidence with a parenthetical
describing its purpose is insufficient notice. Id. at 2 (quoting Ex. 2934).
Petitioner also asserts that Patent Owner’s argument goes to the weight of
Dr. Abraham’s testimony, rather than its admissibility. Id. at 3. Petitioner
further asserts that Dr. Abraham’s testimony was consistent with the Board’s
conclusion on claim construction and that his testimony is properly based on
technical issues in the case. Id. at 3–5. Regarding the reason to combine the
prior art, Petitioner points to Dr. Abraham’s Declaration and deposition
testimony as showing the reason for combining comes from the prior art
itself and not the ’586 patent. Id. at 6. (citing Ex. 1003 ¶¶ 78–84; Ex. 2929,
185:12–15).
We deny Patent Owner’s Motion to Exclude Dr. Abraham’s
Declarations (Exhibits 1003 and 1031). We are not persuaded that any
potential deficiency in Dr. Abraham’s understanding of the legal concepts of
unpatentability warrants excluding his testimony entirely. See Nutrition 21
v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991) (“An expert’s
opinion on the ultimate legal conclusion is neither required nor indeed
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‘evidence’ at all.”) (citation omitted). Patent Owner also does not persuade
us that Dr. White’s alleged failure to apply a claim construction consistent
with the Board’s warrants exclusion of his testimony. Indeed, Patent Owner
does not explain adequately how adoption of a particular claim construction
would have changed the technical aspects of his testimony. Moreover, the
alleged deficiencies in Dr. Abraham’s analysis go to the weight to be
accorded his testimony rather than its admissibility. Lastly, as noted above,
because the Board, unlike a lay jury, has significant experience in evaluating
expert testimony, the danger of prejudice in this proceeding is considerably
lower than in a conventional district court trial.
In sum, for the reasons discussed, we deny Patent Owner’s Motion to
Exclude Dr. Abraham’s testimony.
2. Exhibit 1047 (Vander Veen Declaration) and Exhibits 1048–1061
Patent Owner seeks to exclude the Vander Veen Declaration on the
basis that it is conclusory and is disconnected from any issue in the case
because it did not consider the factors of commercial success, did not
analyze the ’586 patent or claims, and Dr. Vander Veen did not understand
the issue of whether there is a nexus between the patented technology and
LG Chem’s success. Paper 64, 12–14. Patent Owner further asserts that the
Vander Veen Declaration should be excluded as untimely because evidence
pertaining to commercial success and other objective indicia of nonobvious
was available to Petitioner at the time it filed its Petition. Id. at 14. Patent
Owner also argues that Exhibits 1048–1061 should be excluded as
inadmissible hearsay because they are not authenticated. Id.
Petitioner contends that the Vander Veen Declaration noted Dr.
Abraham’s opinions on the lack of nexus, set forth factors analyzed by
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economists to determine commercial success, and analyzed those factors to
the available data. Paper 69, 9 (citing Ex. 1047 ¶¶ 27, 11–32). Regarding
Exhibits 1048–1067, Petitioner asserts that Patent Owner fails to show that
any are not of a type reasonably relied upon by experts in Dr. Vander Veen’s
field. Id. at 11. Petitioner further asserts that the exhibits are self-
authenticating because they bear the appearance, contents, substance and
circumstances to support a finding that the thing is what its proponent claims
it is, such as Exhibit 1048, which is Dr. Vander Veen’s curriculum vitae. Id.
at 12 (citing FRE 901(a)).
We agree with Petitioner and deny Patent Owner’s Motion to Exclude
Dr. Vander Veen’s Declarations and Exhibits 1048–1067 thereto.
3. Exhibit 1004 (Tojo Translation)
Patent Owner seeks to exclude, under FRE 402, 403, and 901, the
Tojo translation and Dr. Abraham’s reliance on it because the translation
materially differs from the translation in co-pending IPR2014-00679 (Ex.
2011). Paper 64, 10–12.
The translation of Tojo in the instant proceeding was accompanied by
the required translator affidavit, as Petitioner contends. Paper 69, 7–8; Ex.
1004.10 The fact that certain terms might not have been translated in
precisely the same manner in the co-pending proceeding does not persuade
us that the translation of record in this proceeding is substantively
inaccurate. Patent Owner does not direct us to any specific evidence, other
than the differences in the translations, suggesting that the translation is

10 Petitioner incorrectly cites Ex. 1015, which is a certified translation of
JP 11-67273 not JP 11-80395.
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inaccurate. Accordingly, we deny Patent Owner’s Motion to Exclude the
Tojo translation (Ex. 1004).
4. Exhibits 1033–1037 (Unfairly Prejudicial)
Patent Owner seeks to exclude Exhibit 1033 because it is a deposition
transcript of Patent Owner’s expert taken in a separate proceeding, its use in
this proceeding is outside the agreement of the parties, and it is irrelevant to
this proceeding. Paper 64, 15. Patent Owner also seeks to exclude Exhibits
1034–1037 as exceeding the scope of a reply because it introduces new
evidence with Dr. Abraham’s second Declaration (Ex. 1031) to demonstrate
the knowledge of a POSITA, which should have been presented previously
at the time of the Petition. Id. at 14–15 (citing Ex. 1003 ¶¶ 49, 52–53; Ex.
1031 ¶ 27).
Petitioner contends that the deposition transcript of Dr. White is
appropriate for a reply because it contradicts his previously-made
Declaration. Paper 69, 13. Petitioner further asserts that Patent Owner made
Exhibit 1033 publicly available in a co-pending proceeding and cannot
control the use of publicly available documents. Id. at 14. Petitioner also
contends that Exhibits 1034–1037 are responsive to Dr. White’s declaration
(Ex. 2002) concerning the conventional use of PEO and PVDF as gel
polymer electrolyte separators. Id. at 12 (citing Ex. 1035 ¶ 27).
We agree with Petitioner and deny Patent Owner’s Motion to Exclude
Exhibit 1033.
IV. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that claims
1–11 of the ’586 patent are unpatentable on the following grounds:
(1) Claims 7–10 under 35 U.S.C. § 103(a) as obvious over Tojo; and
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(2) Claims 1–6 and 11 under 35 U.S.C. § 103(a) as obvious over
Tobishima and Tojo.
Petitioner has not shown, by a preponderance of the evidence, that
claims 1–6, 11, and 12 of the ’586 patent are unpatentable based on the
following grounds:
(1) 1–3, 5, 6, and 11 under 35 U.S.C. § 102(b) as anticipated by Tojo;
and
(2) Claims 4 and 12 under 35 U.S.C. § 103(a) as obvious over Tojo.

V. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1–11 of the ’586 patent are determined to be
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is denied;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
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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PETITIONER:

Timothy Riffe
Hyun Jin In
FISH & RICHARDSON P.C.
riffe@fr.com
IPR39531-0002IP1@fr.com

PATENT OWNER:

Cyrus A. Morton
Bryan J. Vogel
ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
camorton@rkmc.com
bjvogel@rkmc.com
celgardIPR@rkmc.com