MEC Resources, LLC

Patent Trials and Appeals Board

Aug 11, 2020

IPR2019-00583 (P.T.A.B. Aug. 11, 2020)

Trials@uspto.gov Paper 31
571-272-7822 Date: August 11, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

KEMET ELECTRONICS, CORP. and VISHAY AMERICAS, INC.,
Petitioner,

v.

MEC RESOURCES, LLC,
Patent Owner.
____________

IPR2019-00583
Patent 6,137,390
_______________

Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

ORDER
Denying Petitioner’s Motion to Exclude
37 C.F.R. § 42.64(c)

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I. INTRODUCTION
A. Background and Summary
KEMET Electronics, Corp. and Vishay Americas, Inc. (collectively,
“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
review of claims 1–20 (“the challenged claims”) of U.S. Patent
No. 6,137,390 (Ex. 1001, “the ’390 patent”). MEC Resources, LLC (“Patent
Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to the
Petition. We instituted an inter partes review of the challenged claims on
August 12, 2019. Paper 8 (“Dec. on Inst.”), 39. After institution, Patent
Owner filed a Response (Paper 15, “PO Resp.”) to the Petition, Petitioner
filed a Reply (Paper 20, “Pet. Reply”) to the Response, and Patent Owner
filed a Sur-reply (Paper 21, “PO Sur-reply”) to the Reply. We held an oral
hearing on May 13, 2020, and a transcript of the hearing is included in the
record. Paper 30 (“Tr.”).
For the reasons set forth below, Petitioner has shown by a
preponderance of the evidence that claims 1–20 of the ’390 patent are
unpatentable.
B. Real Parties in Interest
Petitioner identifies the following real parties in interest: 1) KEMET
Electronics, Corp.; 2) KEMET Corp.; 3) TOKIN Corp.; 4) Vishay Americas,
Inc.; 5) Vishay Intertechnology, Inc.; and 6) Vishay Dale Electronics, LLC.
Pet. 70. Patent Owner identifies itself as the only real party in interest.
Paper 6, 2.
C. Related Matters
The parties indicate that the ’390 patent is the subject of the following
district court cases: 1) MEC Resources, LLC v. Vishay Americas, Inc., No.
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3:18-cv-2770 (N.D. Tex.); and 2) MEC Resources, LLC v. KEMET
Electronics Corp., No. 3:18-cv-2771 (N.D. Tex.). Pet. 70; Paper 6, 2.
D. The ’390 Patent
The ’390 patent relates to an inductor “with improved inductance and
minimized electromagnetic induction (EMI) interference.” Ex. 1001, 1:6–9.
Specifically, the ’390 patent explains that its improvement involves
compression molding a conventional inductor coil with a layer of a magnetic
resin mixture. Id. at 1:59–63, 2:60–64. According to the ’390 patent, “[o]ne
of the advantages of the method disclosed in the present invention is that the
inductance of the coil can be controlled by adjusting the magnetic
permeability of the magnetic-resin mixture, and/or the thickness of the
magnetic-resin layer.” Id. at 2:1–5. Further, “[b]y using the compression
molding process, the void space in the entire inductor is minimized,” which
“minimizes the EMI interference and magnetic leakage, and increases the
inductance per unit volume.” Id. at 2:5–8.
E. Illustrative Claim
Of the challenged claims, claims 1 and 11 are independent. Claim 1 is
reproduced below.
1. An inductor with enhanced inductance comprising:
(a) a magnetic core;
(b) an electrically conducting coil wound about said
magnetic core;
(c) a magnetic resin layer compression-molded to embed
at least a portion of an outer periphery of said electrically
conducting coil;
(d) wherein said magnetic resin layer contains a magnetic
powder dispersed in a polymer resin.
Ex. 1001, 6:24–33.
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F. Evidence
Petitioner submits the following evidence:
Evidence Exhibit No.
Declaration of Robert W. Erickson, Ph.D. (“Erickson
Declaration”)
Ex. 1003
Sergio Franco, ELECTRIC CIRCUITS FUNDAMENTALS
(Emily Barrosse et al. eds., 1995) (“Franco”)
Ex. 1005
Amada, US 6,144,280, issued Nov. 7, 2000 (“Amada”) Ex. 1006
Shafer, US 6,204,744 B1, issued Mar. 20, 2001 (“Shafer”) Ex. 1007
Rittner, US 6,600,403 B1, issued July 29, 2003 (“Rittner”) Ex. 1008
Kaneko, US 5,010,313, issued Apr. 23, 1991 (“Kaneko”) Ex. 1009
Butherus, US 3,953,251, issued Apr. 27, 1976
(“Butherus”)
Ex. 1010
Ohkawa, EP 0265839 A2, published May 4, 1988
(“Ohkawa”)
Ex. 1011
Patent Owner submits the Declaration of Curt R. Raschke, Ph.D.
Ex. 2009 (“Raschke Declaration”).
G. Asserted Grounds
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § References/Basis
1, 3, 4, 7, 9–11, 13,
14, 17, 19, 20 103
1 Franco, Shafer
2, 12 103 Franco, Shafer, Rittner
5, 15 103 Franco, Shafer, Butherus
6, 16 103 Franco, Shafer, Kaneko
8, 18 103 Franco, Shafer, Ohkawa

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
which was enacted on September 16, 2011, made amendments to 35 U.S.C.
§§ 102, 103. AIA § 3(b), (c). Those amendments became effective on
March 16, 2013. Id. at § 3(n). Because the challenged claims of the ’390
patent have an effective filing date before March 16, 2013, any citations
herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
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Claims Challenged 35 U.S.C. § References/Basis
1, 3, 4, 7, 9–11, 13,
14, 17, 19, 202 103
Amada, Shafer
2, 12 103 Amada, Shafer, Rittner
5, 15 103 Amada, Shafer, Butherus
6, 16 103 Amada, Shafer, Kaneko
8, 18 103 Amada, Shafer, Ohkawa
II. ANALYSIS
A. Legal Standards
A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if 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 the
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

2 The Petition and the Decision on Institution inadvertently omitted claims 7
and 17 from the listing of challenged claims for the Amada and Shafer
combination. Pet. 2, 40; Dec. on Inst. 4, 26; Pet. Reply 22 n.8. But the
Petition substantively addresses claims 7 and 17 for the Amanda and Shafer
combination, and the Decision on Institution instituted this inter partes
review on all the asserted grounds in the Petition. Pet. 55; Dec. on Inst. 39.
Patent Owner does not dispute that this inter partes review includes the
asserted ground that claims 7 and 17 would have been obvious over Amada
and Shafer. See PO Resp. 43–59; Tr. 45:10–23.
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level of ordinary skill in the art; and 4) any objective indicia of non-
obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Petitioner argues that “a person of ordinary skill in the art (‘POSITA’)
at the time of the claimed invention (1999) would have had a bachelor’s
degree in electrical engineering or materials science with two years of
experience in designing electronic components.” Pet. 7–8 (citing Ex. 1003
¶¶ 14–17). Patent Owner argues that “[a] hypothetical person of ordinary
skill in the art (‘POSITA’) at the time of the filing of the patent (May 1999)
would have been someone with a Bachelor’s degree in Material Science and
Engineering, or in a related field, as well as about two years of experience
with the fabrication of discrete electrical components.” PO Resp. 8 (citing
Ex. 2009 ¶¶ 16–20). Patent Owner also contends that “[a]dditional graduate
education could substitute for professional experience, while significant
experience in the field might substitute for formal education.” Id. (citing Ex.
2009 ¶¶ 16–20).
Neither party identifies any specific instance in which the differences
between the parties’ respective descriptions of the level of ordinary skill in
the art impacts the analysis or conclusions of either party, or either party’s
declarant, in this case. Tr. 6:26–7:5; 36:3–14. In fact, Patent Owner agrees
with Petitioner’s description. Id. at 36:3–14. Further, our findings and

3 Patent Owner argues that Petitioner “fail[s] to present a proper Graham
analysis by not addressing any differences between the claimed subject
matter and the prior art.” PO Resp. 8. We disagree. As discussed herein,
Petitioner explains in detail the differences between the challenged claims
and each primary prior art reference, as well as how the other prior art
references compensate for those differences. See Sections II.D–II.M.
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conclusions in this case would be the same under either party’s description
of the level of ordinary skill in the art. To the extent necessary, though, we
adopt Petitioner’s description, which is supported by the testimony of
Petitioner’s declarant, Dr. Robert Erickson, and is consistent with the prior
art. Pet. 7–8; Ex. 1003 ¶¶ 14–17.
C. Claim Construction
In an inter partes review proceeding, a claim of a patent is construed
using the same standard used in federal district court, including construing
the claim in accordance with the ordinary and customary meaning of the
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. See Changes to the Claim Construction
Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b), effective Nov. 13, 2018) (now codified at
37 C.F.R. § 42.100(b) (2019)).
1. Enhanced Inductance
Patent Owner proposes construing the term “enhanced inductance” to
mean “the increase in inductance of the inductor described by the ’390
patent in comparison to the same inductor containing the same number of
winding turns, but without the magnetic resin layer embedding the
conducting coil.” PO Resp. 5 (citing Ex. 1001, 3:64–6:22; Ex. 2009 ¶ 31).
Patent Owner argues that “[t]he specification contains tables that describe
the ’390 patent’s ‘Enhancement in Inductance’ in terms of ‘factors of
inductance enhancement’ compared with a baseline ‘Inductance per unit
winding turn.’” Id. Patent Owner also contends that the term “enhanced
inductance” does not include EMI properties because the ’390 patent
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“specifically distinguishes ‘increased inductance’ from ‘reduced EMI effect
and magnetic leaks.’” Id. at 5–6 (citing Ex. 1001, 3:27–31; Ex. 2009 ¶ 32).
Petitioner opposes Patent Owner’s proposed construction. Pet.
Reply 6–7. Petitioner argues that the ’390 patent does not limit the term
“enhanced inductance” to “a single metric.” Id. at 6 (citing Ex. 1001, 1:6–9,
1:50–53, 3:56–62). According to Petitioner, the term “enhanced inductance”
refers to “a number of features, including greater inductance per unit
volume, reduced EMI interference, and reduced magnetic leakage.” Id. at 6–
7 (citing Ex. 1001, code (57), 1:6–14, 1:50–58, 2:37–50, 3:27–31).
The ’390 patent describes an inductor with “improved” inductance
and, more specifically, with “increased inductance per unit volume.”
Ex. 1001, 1:6–9, 1:50–53. Consistent with that description, the parties
appear to agree that the term “enhanced inductance” refers to “increased
inductance per unit volume.” See PO Resp. 5 (“the increase in inductance of
the inductor . . . in comparison to the same inductor containing the same
number of winding turns”); Pet. Reply 6 (“greater inductance per unit
volume”). Thus, based on the specification, we also agree that the term
“enhanced inductance” means “increased inductance per unit volume.”
As discussed above, Patent Owner further asserts that the increased
inductance is relative to “the inductor described by the ’390 patent . . . , but
without the magnetic resin layer embedding the conducting coil.” PO
Resp. 5. To support that portion of its proposed construction, Patent Owner
directs us to tables in the ’390 patent “that describe the ’390 patent’s
‘Enhancement in Inductance.’” Id. (citing Ex. 1001, 3:64–6:22). The tables
in the ’390 patent appear to show the increase in inductance for several
inductors with a magnetic resin layer relative to an inductor without a
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magnetic resin layer. Ex. 1001, 3:56–6:22. The ’390 patent, however,
explains that those tables “are presented herein for purposes of illustration
and description, and are not intended to be exhaustive or to limit the
invention to the precise form disclosed.” Id. at 3:56–62. Thus, we are not
persuaded that the increase in inductance must be relative to the specific
inductor described in the ’390 patent.4
Patent Owner also contends that the term “enhanced inductance” does
not include EMI properties. PO Resp. 5–6. As discussed below, even if we
assume that the term “enhanced inductance” does not include EMI
properties, the asserted prior art nonetheless teaches an inductor with
enhanced inductance. See Sections II.D.2, II.D.3, II.I.2, II.I.3. As a result,
we need not resolve this particular claim construction issue in order to
resolve the parties’ disputes about the asserted grounds of unpatentability.
For the foregoing reasons, we construe the term “enhanced
inductance” to mean “increased inductance per unit volume.”
2. Layer
Patent Owner proposes construing the term “layer” to mean “an
ascertainable thickness, and not a thickness that varies substantially along
the circumference of the outside of the coil.” PO Resp. 7 (citing Ex. 2009
¶ 35). Patent Owner argues that because the ’390 patent describes “the
amount of inductance enhancement” based on the thickness of the magnetic
resin layer, the layer must have “an, at least somewhat, ascertainable
thickness.” Id. at 6–7, 27 (citing Ex. 1001, 3:67, 4:35). Patent Owner also

4 Further, this portion of Patent Owner’s proposed construction does not
appear to be relevant to the parties’ disputes about the asserted grounds of
unpatentability. See Sections II.D.2, II.D.3, II.I.2, II.I.3.
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cites a dictionary definition to support its proposed construction. Id. at 6
(citing Ex. 2002, 1168–1169). Patent Owner argued at the oral hearing that
the term “layer” also requires a “concentric thickness.” Tr. 32:17–33:12,
46:11–47:15.
Petitioner opposes Patent Owner’s proposed construction. Pet. Reply
7. Petitioner argues that Patent Owner’s proposed construction “imports
limitations found nowhere in the ’390 Patent, and injects uncertainty into
otherwise plain language by imposing subjective requirements that the layer
have ‘an ascertainable thickness’ that does not ‘var[y] substantially.’” Id.
(citing Ex. 1033, 33:21–34:11).
As discussed below, even if we assume that the term “layer” requires
an ascertainable thickness that does not vary substantially along the
circumference of the outside of the coil, the asserted prior art nonetheless
teaches such a layer. See Sections II.D.2, II.D.3, II.I.2, II.I.3. As a result,
we need not resolve this particular claim construction issue in order to
resolve the parties’ disputes about the asserted grounds of unpatentability.
As to Patent Owner’s argument that the term “layer” also requires a
concentric thickness, that argument is not timely because it was presented
for the first time at the oral hearing. See PO Resp. 6–7; Tr. 32:17–33:12,
46:11–47:15; Trial Practice Guide Update, 23 (Aug. 2018), available at
https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
actice_Guide.pdf (“During an oral hearing, a party may . . . only present
arguments relied upon in the papers previously submitted.”). Moreover,
although Figures 2 and 3 of the ’390 patent show examples of an inductor
with a concentric magnetic resin layer (see Ex. 1001, Figs. 2, 3), Patent
Owner does not direct us to any portions of the ’390 patent indicating that
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the magnetic resin layer is limited to the concentric shape shown in those
figures (see PO Resp. 6–7; Ex. 2009 ¶¶ 34–35; Tr. 32:17–33:12, 46:11–
47:15). Thus, we are not persuaded that the term “layer” requires a
concentric thickness.
3. Embed
Patent Owner proposes construing the phrase “to embed at least a
portion of an outer periphery of said electrically conducting coil” to mean
“to embed only the outer periphery of said electrically conducting coil.” PO
Resp. 4. Patent Owner argues that its proposed construction is consistent
with Petitioner’s proposed construction of the same phrase in a related
district court action. Id. (citing Ex. 2003). Patent Owner points out that “the
’390 patent discloses both partially enclosing the entire core and completely
enclosing the entire core.” Id. (citing Ex. 1001, 2:64–67).
Petitioner opposes Patent Owner’s proposed construction. Pet. Reply
4–5. Petitioner argues that Patent Owner’s proposed construction “is
inconsistent with the specification, which ‘discloses both partially enclosing
[] and completely enclosing the entire core.’” Id. (citing Dec. on Inst. 8).
Claims 1 and 11 recite “to embed at least a portion of an outer
periphery of said electrically conducting coil.” Ex. 1001, 6:29–31, 6:65–67
(emphasis added). Patent Owner’s proposed construction changes the
phrase “at least a portion of” in claims 1 and 11 to the term “only.” PO
Resp. 4. But other than directing us to Petitioner’s proposed construction in
another proceeding, Patent Owner does not identify any evidence that
supports changing the phrase “at least a portion of” to “only.” See id. In
fact, Patent Owner acknowledges that the ’390 patent describes embedding
the core as well, not only the outer periphery of the coil. Id. (citing Ex.
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1001, 2:64–67, 6:54–56, 8:8–10). Thus, we decline to adopt Patent Owner’s
proposed construction. No further construction of the phrase “to embed at
least a portion of an outer periphery of said electrically conducting coil” is
necessary to resolve the parties’ disputes about the asserted grounds of
unpatentability. See Sections II.D.2, II.D.3, II.I.2, II.I.3.
4. Consolidated
Petitioner proposes construing the term “consolidated” to mean “the
core and the magnetic resin layer coating the coil are the same material and
formed at the same time.” Pet. 7. Petitioner argues that its proposed
construction is supported by the specification of the ’390 patent. Id. (citing
Ex. 1001, 3:44–55). Patent Owner does not oppose Petitioner’s proposed
construction. PO Resp. 5.
The term “consolidated” appears in claim 15, which recites “wherein
said magnetic core is a consolidated magnetic core made of the same or
different magnetic resin as said magnetic resin layer.” Ex. 1001, 7:13–16
(emphasis added). In other words, the claim language expressly states that a
consolidated magnetic core can be made of a different material than the
magnetic resin layer. Id. Thus, because Petitioner’s proposed construction
contradicts the express claim language, we decline to adopt it. No further
construction of the term “consolidated” is necessary to resolve the parties’
disputes about the asserted grounds of unpatentability.5 See Sections II.F.1,
II.K.1.

5 Petitioner alternatively argues in its Reply that the term “consolidated”
means “compression molded.” Pet. Reply 5. We need not address
Petitioner’s alternative construction to resolve the parties’ disputes about the
asserted grounds of unpatentability. See Sections II.F.1, II.K.1.
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D. Ground 1A – Obviousness of Claims 1, 3, 4, 7, 9–11, 13, 14, 17,
19, and 20 over Franco and Shafer
Petitioner argues that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20
would have been obvious over Franco and Shafer. Pet. 1, 8. For the reasons
discussed below, Petitioner has shown by a preponderance of the evidence
that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20 would have been obvious
over Franco and Shafer.
1. Overview of Franco and Shafer
Franco teaches “an inductor [that] consists of a coil of insulated wire
wound around a core.” Ex. 1005, 300. Franco also teaches that “the core is
made of a highly permeable material such as iron or ferrite.” Id. at 301.
Shafer teaches an inductor with “a wire coil having an inner coil end
and an outer coil end.” Ex. 1007, 1:62–63. Shafer also teaches that “a
powdered magnetic material is pressure molded completely around the coil
so as to create an inductor body.” Id. at 1:67–2:2. According to Shafer,
“[t]he magnetic molding material is comprised of a first powdered iron, a
second powdered iron, a filler, a resin, and a lubricant,” with “[t]he first and
second powdered irons hav[ing] differing electrical characteristics that allow
the device to have a high inductance yet low core losses so as to maximize
its efficiency.” Id. at 3:24–29.
2. Claim 1
Claim 1 recites “[a]n inductor with enhanced inductance.”6 Ex. 1001,
6:25. Franco teaches an inductor with a coil of insulated wire wound around

6 For purposes of this Decision, we do not decide whether the preamble is
limiting because we determine the prior art nonetheless teaches “an inductor
with enhanced inductance.” Further, neither party argues that the preamble
is not limiting. See Pet. 13; PO Resp. 26.
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a core. Pet. 13; Ex. 1005, 300, Fig. 7.8. Shafer teaches an inductor with a
coil embedded in a magnetic molding material that increases inductance per
unit volume. Pet. 13, 17; Ex. 1003 ¶¶ 46–47; Ex. 1007, 3:24–29 (“The first
and second powdered irons have differing electrical characteristics that
allow the device to have a high inductance yet low core losses so as to
maximize its efficiency.”); Dec. on Inst. 10. As discussed in more detail
below, it would have been obvious to embed the outer periphery of Franco’s
coil in Shafer’s magnetic molding material by compression molding.
Pet. 10–12, 17; Ex. 1003 ¶¶ 35–41, 64; see Section II.D.9.
Patent Owner responds that the term “enhanced inductance” refers to
“the increase in inductance of the inductor described by the ’390 patent in
comparison to the same inductor containing the same number of winding
turns, but without the magnetic resin layer embedding the conducting coil.”
PO Resp. 26. Patent Owner contends that, therefore, Petitioner’s
“arguments that the Franco-Shafer combination constitutes ‘an improved
inductor’ because it is ‘smaller’ or because it ‘is magnetically self shielding’
are without merit.” Id.
Patent Owner’s argument is not persuasive for several reasons. First,
Patent Owner’s argument is premised on its proposed construction of the
term “enhanced inductance,” but, as discussed above, we adopt only a
portion of that proposed construction. See Section II.C.1. Second, Patent
Owner misinterprets Petitioner’s assertions regarding the prior art.
Petitioner does not assert that the Franco and Shafer combination teaches an
inductor with enhanced inductance simply because it is smaller. See Pet. 13.
Rather, Petitioner asserts that Shafer’s “compression-molded magnetic
powder resin layer increases the inductance per unit volume, which is why
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the inductor can be made smaller.” Id. (emphasis added). Third, as
discussed above, Shafer expressly teaches that its magnetic molding material
increases inductance per unit volume. Pet. 13, 17; Ex. 1003 ¶¶ 46–47; Ex.
1007, 3:24–29 (“The first and second powdered irons have differing
electrical characteristics that allow the device to have a high inductance yet
low core losses so as to maximize its efficiency.”). Patent Owner does not
address that specific teaching. See PO Resp. 26.
Claim 1 recites “a magnetic core.” Ex. 1001, 6:26. Franco teaches an
inductor with a core made of iron or ferrite, both of which are magnetic.
Pet. 13–14; Ex. 1003 ¶¶ 51–53; Ex. 1005, 301. Patent Owner responds that
it would not have been obvious to combine Franco and Shafer (which we
address below in Section II.D.9), but Patent Owner does not dispute that the
Franco and Shafer combination teaches this limitation of claim 1. See PO
Resp. 26–27.
Claim 1 recites “an electrically conducting coil wound about said
magnetic core.” Ex. 1001, 6:27–28. Franco teaches an inductor with a coil
of insulated wire wound around a magnetic core. Pet. 14–15; Ex. 1005, 300,
Fig. 7.8. Patent Owner does not dispute that the Franco and Shafer
combination teaches this limitation of claim 1.
Claim 1 recites “a magnetic resin layer compression-molded to embed
at least a portion of an outer periphery of said electrically conducting coil.”
Ex. 1001, 6:29–31. Shafer teaches a magnetic molding material comprising
magnetic powders and a resin that is compression molded to embed an
electrically conducting coil. Pet. 15–17; Ex. 1003 ¶¶ 60–63; Ex. 1007,
3:24–26, 4:1–6, 5:8–10, Fig. 6. As discussed in more detail below, it would
have been obvious to embed the outer periphery of Franco’s coil in Shafer’s
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magnetic molding material by compression molding. Pet. 10–12, 17; Ex.
1003 ¶¶ 35–41, 64; see Section II.D.9.
Patent Owner responds that the term “layer” requires “an, at least
somewhat, ascertainable thickness.” PO Resp. 27. Patent Owner contends
that Shafer’s Figure 6 depicts “a cubic . . . block of epoxy resin containing a
round coil,” and, thus, does not have an at least somewhat ascertainable
thickness. Id. at 27–28 (citing Ex. 1007, Fig. 6). Patent Owner’s argument
is not persuasive. Patent Owner acknowledges that the ’390 patent does not
expressly describe the thickness of the magnetic resin layer. Id. at 6–7. But
Patent Owner contends that “a POSITA would have understood that the
thickness of the magnetic resin layer was the difference between each
inductor’s total outside diameter and the thickness of the coil, and was
therefore an ascertainable thickness.” Id. at 7 (citing Ex. 1001, 3:67, 4:35;
Ex. 2009 ¶ 35).
By the same rationale, a person of ordinary skill in the art could have
ascertained the thickness of the magnetic molding material in the Franco and
Shafer combination. For example, a person of ordinary skill in the art could
have ascertained the difference between the total outside length of Shafer’s
magnetic molding material and the thickness of its coil.7 See Pet. 15–16; Ex.
1007, Fig. 6. Therefore, even if we apply Patent Owner’s proposed

7 Shafer does not provide particular values for those dimensions or indicate
that its figures are drawn to scale, but Patent Owner’s proposed construction
of the term “layer” does not require a particular numeric value. See PO
Resp. 27. Patent Owner’s proposed construction only requires that the
thickness be at least somewhat ascertainable. Id. We do not see any reason
why a person of ordinary skill in the art would not have been able to
ascertain those dimensions for Shafer’s inductor.
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construction of the term “layer,” the Franco and Shafer combination teaches
a magnetic resin layer.8
Patent Owner also responds that “the core in Shafer is the entire
material in Shafer Figure 6 that surrounds the winding, both down the
middle and around the outside.” PO Resp. 28 (citing Ex. 2010, 10:5–12);
see PO Sur-reply 18. Thus, according to Patent Owner, “Shafer’s magnetic
resin layer cannot ‘embed at least a portion of an outer periphery of said
electrically conducting coil’ because the outer periphery of the coil is
embedded by the inductor core.” PO Resp. 28. Patent Owner’s argument is
not persuasive. First, Patent Owner’s argument appears to be based on its
proposed construction that requires the magnetic resin layer to embed “only”
the outer periphery of the coil. Id. at 4, 28. As discussed above, we decline
to adopt that construction. See Section II.C.3. Second, Patent Owner
acknowledges that Shafer’s magnetic molding material “surrounds . . . the
outside” of the coil, and, thereby, acknowledges that the magnetic molding
material embeds at least the outer periphery of the coil. PO Resp. 28.
Claim 1 recites “wherein said magnetic resin layer contains a
magnetic powder dispersed in a polymer resin.” Ex. 1001, 6:32–33. Shafer
teaches that its magnetic molding material comprises iron powders and a
polyester resin. Pet. 17–18; Ex. 1007, 3:24–47, 6:49–51. The evidence of
record shows that a person of ordinary skill in the art would have known that

8 The thickness of the magnetic resin layer in the Franco and Shafer
combination may vary somewhat because Shafer’s block of magnetic
molding material embeds Franco’s round coil. See Ex. 1005, Fig. 7.8; Ex.
1007, Fig. 6. But Patent Owner does not argue or present evidence
indicating that the thickness of the magnetic resin layer would vary
substantially. See PO Resp. 27–28.
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Shafer’s iron powders are dispersed in the polyester resin, and that Shafer’s
polyester resin is a polymer resin. Pet. 17–18; Ex. 1003 ¶ 69; Ex. 1013, 1;
Ex. 1017, 407; Ex. 1019, 1. Further, Petitioner’s declarant, Dr. Erickson,
and Patent Owner’s declarant, Dr. Curt Raschke, agree that Shafer’s
polyester resin is a polymer resin. Ex. 1033, 144:5–15; Ex. 2010, 7:6–8.
Patent Owner responds that there are deficiencies in Petitioner’s
evidence, and, as a result, there is “no reliable evidence that Shafer’s resin is
a polymer.” PO Resp. 28–29. Patent Owner’s argument is not persuasive.
As discussed above, the parties’ declarants agree that Shafer’s polyester
resin is a polymer resin. Ex. 1033, 144:5–15; Ex. 2010, 7:6–8. We find that
alone to be reliable evidence that Shafer’s polyester resin is a polymer resin.
Nonetheless, we also address Patent Owner’s arguments regarding
Petitioner’s other evidence.
Patent Owner argues that Exhibit 1013 “states that ‘an unsaturated
polyester resin [is] a solid polymer at room temperature,’” whereas Shafer’s
polyester resin “is a liquid at room temperature.” PO Resp. 29 (citing
Ex. 2005); see PO Sur-reply 18. Patent Owner, though, does not explain
specifically why that distinction is relevant. See PO Resp. 29; PO Sur-reply
18. In fact, the evidence of record shows that a polyester resin is a polymer
regardless of whether it is in solid or liquid form. Ex. 1013, 1 (“an
unsaturated polyester resin (a solid polymer at room temperature)”
(emphasis added)); Ex. 1019, 1 (“Specifically, the unsaturated polyester
resin, also known by the English acronym UPR, is an easily printable liquid
polymer which, once cured . . . , keeps the solid shape taken in the mold.”
(emphasis added)).
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Patent Owner argues that Exhibit 1017 indicates that “polymers may
be polyester resins,” but “it does not follow that all polyester resins are also
polymers.” PO Resp. 29. Patent Owner’s argument is not persuasive.
Exhibit 1017 states that “polyester” is “[a] polymer containing ester groups
in the main chain.” Ex. 1017, 407. Exhibit 1017 also states that “[o]ther
important polymers are the linear unsaturated polyester resins, often simply
called polyester resins, which form the basis of traditional glass reinforced
plastics (GRP) products.” Id. (emphasis added). The above portions of
Exhibit 1017 expressly show that a polyester resin is a type of polymer. Id.
Patent Owner argues that Exhibit 1019 “contradicts” Exhibit 1013,
because Exhibit 1019 states that an unsaturated polyester resin is liquid,
whereas Exhibit 1013 states that an unsaturated polyester resin is a solid.
PO Resp. 29. Patent Owner’s argument is not persuasive. As discussed
above, the evidence of record shows that a polyester resin is a polymer
regardless of whether it is in solid or liquid form. Ex. 1013, 1 (“an
unsaturated polyester resin (a solid polymer at room temperature)”
(emphasis added)); Ex. 1019, 1 (“Specifically, the unsaturated polyester
resin, also known by the English acronym UPR, is an easily printable liquid
polymer which, once cured . . . , keeps the solid shape taken in the mold.”
(emphasis added)).
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3. Claim 11
Claim 11 recites “[a] method for making inductors with enhanced
inductance.”9 Ex. 1001, 6:61–62. Franco teaches an inductor with a coil of
insulated wire wound around a core. Pet. 13, 18; Ex. 1005, 300, Fig. 7.8.
Shafer teaches an inductor with a coil embedded in a magnetic molding
material that increases inductance per unit volume. Pet. 13, 17–19; Ex. 1003
¶¶ 46–47, 74–75; Ex. 1007, 3:24–29 (“The first and second powdered irons
have differing electrical characteristics that allow the device to have a high
inductance yet low core losses so as to maximize its efficiency.”); Dec. on
Inst. 10. As discussed in more detail below, it would have been obvious to
embed the outer periphery of Franco’s coil in Shafer’s magnetic molding
material by compression molding. Pet. 10–12, 17, 19; Ex. 1003 ¶¶ 35–41,
64, 76; see Section II.D.9.
Patent Owner refers to its argument regarding the preamble of claim
1. PO Resp. 26, 30. As discussed above, Patent Owner’s argument is not
persuasive. See Section II.D.2.
Claim 11 recites “winding an electrically conducting coil about a
magnetic core.” Ex. 1001, 6:63–64. Franco teaches an inductor with a core
made of iron or ferrite, both of which are magnetic. Pet. 13–14, 20;
Ex. 1003 ¶¶ 51–53; Ex. 1005, 301. Franco also teaches that its inductor has
a coil of insulated wire wound around the magnetic core. Pet. 14–15, 20;

9 For purposes of this Decision, we do not decide whether the preamble is
limiting because we determine the prior art nonetheless teaches “[a] method
for making inductors with enhanced inductance.” Further, neither party
argues that the preamble is not limiting. See Pet. 18; PO Resp. 30.
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Ex. 1005, 300, Fig. 7.8. Patent Owner does not dispute that the Franco and
Shafer combination teaches this limitation of claim 11. See PO Resp. 30.
Claim 11 recites “forming a magnetic resin layer by compression
molding to embed at least a portion of an outer periphery of said electrically
conducting coil.” Ex. 1001, 6:65–67. Shafer teaches a magnetic molding
material comprising magnetic powders and a resin that is compression
molded to embed an electrically conducting coil. Pet. 15–17, 20; Ex. 1003
¶¶ 60–63; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. As discussed in more
detail below, it would have been obvious to embed the outer periphery of
Franco’s coil in Shafer’s magnetic molding material by compression
molding. Pet. 10–12, 17, 20; Ex. 1003 ¶¶ 35–41, 64; see Section II.D.9.
Patent Owner responds that “Shafer does not disclose or suggest a
‘layer,’ but instead a cubic block of material.” PO Resp. 30. Patent
Owner’s argument is not persuasive for the same reasons discussed above
for claim 1. See Section II.D.2.
Claim 11 recites “wherein said magnetic resin matrix contains a
magnetic powder dispersed in a polymer resin.” Ex. 1001, 7:1–2. Shafer
teaches that its magnetic molding material comprises iron powders and a
polyester resin. Pet. 17–18, 20; Ex. 1007, 3:24–47, 6:49–51. The evidence
of record shows that a person of ordinary skill in the art would have known
that Shafer’s iron powders are dispersed in the polyester resin, and that
Shafer’s polyester resin is a polymer resin. Pet. 17–18, 20; Ex. 1003 ¶ 69;
Ex. 1013, 1; Ex. 1017, 407; Ex. 1019, 1. Further, Petitioner’s declarant,
Dr. Erickson, and Patent Owner’s declarant, Dr. Raschke, agree that Shafer’s
polyester resin is a polymer resin. Ex. 1033, 144:5–15; Ex. 2010, 7:6–8.
The evidence of record also shows that a person of ordinary skill the art
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would have known that Shafer’s magnetic molding material is a matrix
material. Pet. 20–21; Ex. 1003 ¶ 82; Ex. 1023, 3:28–31.
Patent Owner responds that Petitioner “do[es] not provide evidence
that Shafer’s magnetic material is a polymer alloy.” PO Resp. 30. Patent
Owner’s argument is not persuasive for the same reasons discussed above
for claim 1. See Section II.D.2.
Patent Owner also responds that Petitioner provides evidence that
“unsaturated polyesters [] are [] matrix material,” but provides “no evidence
that Shafer’s magnetic material is an unsaturated polyester.” PO Resp. 30;
see PO Sur-reply 19. Patent Owner’s argument is not persuasive. The
evidence of record shows that a person of ordinary skill in the art would
have known that “unsaturated polyester resins” are “often simply called
polyester resins.” Pet. Reply 21; Ex. 1017, 407; Ex. 1026 ¶ 8. In other
words, the evidence of record shows that a person of ordinary skill in the art
would have known that Shafer’s polyester resin is an unsaturated polyester
resin. Pet. 20–21; Pet. Reply 21; Ex. 1017, 407; Ex. 1023, 3:28–31;
Ex. 1026 ¶ 8.
Moreover, Petitioner’s declarant, Dr. Erickson, explains that a matrix
material is a material that has particles suspended in a medium. Pet.
Reply 21; Ex. 2010, 5:15–17, 7:12–18. As discussed above, the evidence of
record shows that a person of ordinary skill in the art would have known that
Shafer’s magnetic molding material is a material that has iron powders
dispersed in a polyester resin, i.e., that Shafer’s magnetic molding material is
a matrix material. Pet. 17–18, 20; Ex. 1003 ¶ 69.
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4. Claim 3 and 13
Claim 3 depends from claim 1, and recites “wherein said magnetic
core is a metal or metal oxide magnetic core.” Ex. 1001, 6:38–39. Claim 13
depends from claim 11, and recites a similar limitation. Id. at 7:6–8. Franco
teaches an inductor with a core made of iron, which is a magnetic metal, or
made of ferrite, which is a magnetic metal oxide. Pet. 21; Ex. 1003 ¶¶ 83–
85; Ex. 1005, 301. Patent Owner responds that it would not have been
obvious to combine Franco and Shafer (which we address below in Section
II.D.9), but Patent Owner does not dispute that the Franco and Shafer
combination teaches the limitation of claims 3 and 13. See PO Resp. 31–32.
5. Claims 4 and 14
Claim 4 depends from claim 1, and recites “wherein said magnetic
core is made of a ferromagnetic metal, a metal alloy, a ferrimagnetic metal
oxide, or a mixture thereof.” Ex. 1001, 6:40–42. Claim 14 depends from
claim 11, and recites a similar limitation. Id. at 7:9–12. Franco teaches an
inductor with a core made of iron, which is a ferromagnetic metal, or made
of ferrite, which is a ferrimagnetic metal oxide. Pet. 21–22; Ex. 1003 ¶¶ 86–
87; Ex. 1005, 301. Patent Owner responds that it would not have been
obvious to combine Franco and Shafer (which we address below in Section
II.D.9), but Patent Owner does not dispute that the Franco and Shafer
combination teaches the limitation of claims 4 and 14. See PO Resp. 31–32.
6. Claims 7 and 17
Claim 7 depends from claim 1, and recites “wherein said polymer
resin is a thermosetting polymer.” Ex. 1001, 6:50–51. Claim 17 depends
from claim 11, and recites a similar limitation. Id. at 8:4–5. Shafer teaches
that its magnetic molding material comprises a polyester resin. Pet. 22; Ex.
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1007, 3:24–47. The evidence of record shows that a person of ordinary skill
in the art would have known that Shafer’s polyester resin is a thermosetting
polymer. Pet. 22; Ex. 1003 ¶¶ 89–91; Ex. 1015, 1633; Ex. 1022, 1.
Patent Owner responds that although Petitioner presents evidence that
“[t]he most frequently used thermosetting resin . . . [is] polyester,” “this does
not mean that all polyesters resins are thermosetting resins.” PO Resp. 33
(citing Ex. 2009 ¶¶ 70–71; Ex. 2010, 8:7–8). Patent Owner’s argument is
not persuasive. Even if Patent Owner is correct that not all polyester resins
are thermosetting resins, Patent Owner’s declarant, Dr. Raschke,
acknowledges that Shafer’s polyester resin is a thermosetting resin. Ex.
1033, 120:23–121:6; Tr. 44:19–45:9.
7. Claims 9 and 19
Claim 9 depends from claim 1, and recites “wherein said magnetic
resin layer buries both said magnetic core and said electrically conducting
coil.” Ex. 1001, 6:54–56. Claim 19 depends from claim 11, and recites a
similar limitation. Id. at 8:8–10. Shafer teaches that its magnetic molding
material is compression molded completely around the coil so that the
inductor has no air spaces. Pet. 23–24; Ex. 1007, 1:28–31, 1:54–2:2, 4:1–6,
Fig. 6. As a result, in the Franco and Shafer combination, Shafer’s magnetic
molding material is compression molded completely around the outer
periphery of Franco’s core and coil. Pet. 23; Ex. 1003 ¶ 95. Patent Owner
does not dispute that the Franco and Shafer combination teaches the
limitation of claims 9 and 19.
8. Claims 10 and 20
Claim 10 depends from claim 1, and recites “wherein said magnetic
powder is made of a ferromagnetic metal powder, a metal alloy powder, a
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ferrimagnetic metal oxide powder, or a mixture thereof.” Ex. 1001, 6:57–
60. Claim 20 depends from claim 11, and recites a similar limitation. Id. at
8:11–14. Shafer teaches that its magnetic molding material is made of iron
powders, which are ferromagnetic metal powders. Pet. 24–25; Ex. 1003
¶¶ 99–100; Ex. 1007, 3:24–38. Patent Owner does not dispute that the
Franco and Shafer combination teaches the limitation of claims 10 and 20.
9. Reasons for Combining Franco and Shafer
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Franco and Shafer.
Pet. 10–12 (citing Ex. 1003 ¶¶ 35–41). We agree with and adopt Petitioner’s
reasoning. Specifically, Franco and Shafer relate to the same field of
endeavor as the ’390 patent, namely, inductors. Pet. 8–10; Ex. 1001, 1:6–9;
Ex. 1003 ¶ 36; Ex. 1005, 300; Ex. 1007, 1:25–27. It would have been
obvious to modify Franco to embed the outer periphery of Franco’s coil in
Shafer’s magnetic molding material using compression molding. Pet. 10–
12; Ex. 1003 ¶¶ 35, 40. Doing so would have been obvious because it would
provide Franco’s inductor with the following benefits: 1) magnetic
shielding; 2) physical protection; 3) increased inductance; 4) decreased size
for a given inductance; and 5) reduced manufacturing costs.10 Pet. 10–12;
Ex. 1003 ¶¶ 37–40. Further, combining the cited teachings of Franco and
Shafer would have been within the level of ordinary skill in the art. Pet. 12;
Ex. 1003 ¶ 41.

10 Petitioner also asserts that the Franco and Shafer combination would
minimize air spaces in Franco’s inductor. Pet. 11–12. We do not rely on
that particular reason to combine Franco and Shafer.
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Patent Owner responds that Petitioner fails to explain how and why
Franco and Shafer would have been combined. PO Resp. 9–12. Patent
Owner’s argument is not persuasive. As discussed above, Petitioner
explains how Franco and Shafer would have been combined, namely, by
embedding the outer periphery of Franco’s coil in Shafer’s magnetic
molding material using compression molding. Pet. 10–12; Ex. 1003 ¶¶ 35,
40. Petitioner also explains why it would have been obvious to combine
Franco and Shafer, specifically, because it would provide Franco’s inductor
with the following benefits: 1) magnetic shielding; 2) physical protection; 3)
increased inductance; 4) decreased size for a given inductance; and 5)
reduced manufacturing costs.11 Pet. 10–12; Ex. 1003 ¶¶ 37–40.
a. Patent Owner’s Arguments Regarding How to
Combine Franco and Shafer
Patent Owner responds that Petitioner “simply state[s] that the
proposed combination of Franco and Shafer ‘would have been within the
level of ordinary skill in the art,’” which “should be given no probative
value.” PO Resp. 12–13; see PO Sur-reply 5–8. Patent Owner’s argument
is not persuasive. Shafer teaches that its compression molding process and
magnetic molding material can be used to embed an inductor coil, which
supports Petitioner’s argument that it would have been within the level of
ordinary skill in the art to use Shafer’s compression molding process and
magnetic molding material to embed the outer periphery of Franco’s coil.
Pet. 15–17; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. Further, Petitioner’s
declarant, Dr. Erickson, explains that it would have been within the level of

11 Any one of these identified benefits individually provides a sufficient
reason to combine Franco and Shafer.
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ordinary skill in the art to modify Shafer’s compression molding process to
accommodate the size and shape of Franco’s inductor. Pet. 12; Ex. 1003
¶ 41.
Patent Owner responds that Franco’s core and Shafer’s core are not
interchangeable. PO Resp. 13–14. Specifically, Patent Owner argues that
“Franco discloses the use of a core that is iron or ferrite,” whereas “Shafer is
unequivocal in requiring the use of a magnetic resin core.” Id. at 13 (citing
Pet. 4; Ex. 2009 ¶ 44; Ex. 2010, 11:7, 11:21–22, 11:25–12:2, 22:10–12,
22:15–16). Patent Owner’s argument is not persuasive because it
misinterprets Petitioner’s proposed combination. Petitioner does not
propose interchanging the cores of Franco and Shafer. See Pet. 10–12; Ex.
1003 ¶¶ 35, 40. Rather, in the proposed combination, Franco retains its iron
or ferrite core, and Shafer’s magnetic molding material is compression
molded around the outer periphery of Franco’s coil. Pet. 10–12; Ex. 1003
¶¶ 35, 40. Further, Patent Owner does not identify any portions of Shafer
that criticize, discredit, or otherwise discourage using an iron or ferrite core.
See PO Resp. 13–14; Ex. 2009 ¶ 44.
Patent Owner responds that “[t]he Shafer molding process does not
accommodate [Franco’s] solid core.” PO Resp. 14 (citing Ex. 2009 ¶ 47).
In particular, Patent Owner argues that 1) Shafer’s die “can only
accommodate leads on one side of the platen,” but “Franco uses leads on
opposite ends of the coil”; 2) “the vertical pressure of Shafer’s pressure-
inducing apparatus would distort the shape” of Franco’s horizontal coil; and
3) Franco’s solid core “would hamper the even distribution of the resin
within the coil envelope.” Id. at 14–18 (citing Ex. 2009 ¶¶ 47, 49–50, 54–
55); see PO Sur-reply 8–9 (citing Ex. 1033, 105:15–20; Ex. 2009 ¶ 50).
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Further, Patent Owner alleges that “[t]he modifications that would have been
needed to the teachings of Shafer to accommodate the teachings of Franco
would not have been within the capabilities of one of ordinary skill.” PO
Resp. 16 (citing Ex. 2009 ¶ 50). And, according to Patent Owner,
Petitioner’s declarant, Dr. Erickson, “could not explain how a POSITA
would modify Shafer to accommodate Franco.” Id. at 17 (citing Ex. 2010,
14:19–24).
Patent Owner’s arguments are not persuasive. With respect to the
lead location issue, Shafer’s Figure 6 shows coil 90 with leads 98 and 100 on
opposite sides,12 and Shafer teaches compression molding a magnetic
molding material around the outer periphery of coil 90. Pet. 15–16;
Ex. 1007, 5:1–10, Fig. 6. Thus, contrary to Patent Owner’s argument,
Shafer teaches that its compression molding process can accommodate coils
with different lead locations.
With respect to the coil orientation issue, Shafer’s Figure 6 shows a
coil that is similar to Franco’s coil, with the only apparent difference being
that Shafer’s coil is oriented vertically and Franco’s coil is oriented
horizontally. Pet. 15–16; Ex. 1005, Fig. 7.8; Ex. 1007, Fig. 6. Patent Owner
contends that “rotating the coil of Franco to a vertical orientation would (1)
interfere with Shafer’s compression mechanism (because the core inside the
coil would not compress) and (2) introduce a new problem with the routing
of the core leads.” PO Resp. 15. But Patent Owner does not explain
specifically why rotating Franco’s coil would create those issues. See id.

12 Shafer’s Figures 3 and 5C show leads 16 and 18 on the same side of
platen 71, whereas Figure 6 shows leads 98 and 100 on opposite sides.
Compare Ex. 1007, 3:1–9, Figs. 3, 5C, with id. at 5:1–10, Fig. 6.
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Patent Owner cites to paragraph 50 of the Raschke Declaration to support its
argument, but that paragraph of the Raschke Declaration does not mention
anything about coil orientation. See id. at 16; Ex. 2009 ¶ 50.
With respect to the solid core issue, Shafer teaches compression
molding a magnetic molding material around a solid coil. Pet. 15–16;
Ex. 1007, 4:3–6. Patent Owner contends, though, that compression molding
Shafer’s magnetic molding material around Franco’s solid core would cause
“an uneven distribution of resin, likely accompanied by the introduction of
potential voids.” PO Resp. 15–16 (citing Ex. 2009 ¶ 50); see id. at 31–32
(citing Ex. 2004, 1; Ex. 2009 ¶¶ 68–69), see PO Sur-reply 19–20. But
neither Patent Owner nor its declarant, Dr. Raschke, explain specifically
why Shafer’s compression molding process can accommodate Shafer’s solid
coil, but would cause an uneven resin distribution when used with Franco’s
solid core.13 See PO Resp. 15–16, 31–32; PO Sur-reply 19–20; Ex. 2009
¶¶ 50, 68–69. Further, as Patent Owner acknowledges, the ’390 patent
describes compression molding a magnetic resin layer around a solid core,
but does not mention any issues with uneven distribution of resin or
potential voids. Ex. 1001, 3:12–19; Tr. 38:4–39:3.
For those reasons, we are not persuaded that Schafer’s compression
molding process cannot accommodate Franco’s inductor. Nonetheless, even
if some modifications to Shafer’s compression molding process would have

13 Patent Owner and Dr. Raschke reproduce images that allegedly show
voids created when a compression molding process is used with a solid core.
PO Resp. 32; Ex. 2009 ¶ 68. But neither Patent Owner nor Dr. Raschke
explain, inter alia, how those images were produced or otherwise acquired.
See id. Thus, we give no weight to those images. See 37 C.F.R.
§§ 42.65(a), (b).
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been necessary to accommodate Franco’s inductor, the parties’ declarants
agree that those modifications would have been within the level of ordinary
skill in the art. Ex. 1003 ¶ 41; Ex. 1033, 115:6–13, 116:8–20; Tr. 35:15–22.
Patent Owner responds that “[a]ttempting to combine the teachings of
Franco and Shafer would result in other non-trivial challenges.” PO Resp.
16. Specifically, Patent Owner contends that combining Franco’s
“‘conventional’ core with the use of a magnetic resin material around the
coil introduces ‘the need for a high-temperature sintering process,’ and it
introduces ‘the commonly encountered problems involving molding,
fabrication, coiling, and packaging, etc.’” Id. (citing Ex. 1001, 3:44–55; Ex.
2009 ¶ 51); see PO Sur-reply 9.
Patent Owner’s argument is not persuasive. The ’390 patent describes
an embodiment in which a magnetic resin layer is compression molded
around a conventional magnetic core. Ex. 1001, 2:60–3:19. Patent
Owner’s argument relies on another embodiment in which the conventional
magnetic core is eliminated. PO Resp. 16 (citing Ex. 1001, 3:44–55).
Specifically, Patent Owner cites the following portion of the ’390 patent:
In yet another modification of the process of the present
invention, the magnetic core can be eliminated and the entire
conducting coil is embedded inside a matrix of the magnetic-
resin mixture. This [] embodiment is most advantageous for
manufacturing inductors wherein the required value of
inductance is only moderate. This embodiment eliminates the
need for a high-temperature sintering process, it also eliminates
many of the commonly encountered problems involving
molding, fabrication, coiling, and packaging, etc. This process
involves placing the coil only into the compression mold,
followed by the step of pouring the magnetic resin into the
mold to enclose the coil.
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Ex. 1001, 3:44–55. In other words, the ’390 patent describes two different
embodiments, one that includes a conventional magnetic core but requires
using a sintering process and addressing some common problems, and one
that eliminates the conventional magnetic core but only provides moderate
inductance. Id.
The ’390 patent, however, does not indicate that using a sintering
process or addressing the common problems with a conventional magnetic
core would have been beyond the level of ordinary skill in the art. See id.
Similarly, neither Patent Owner nor its declarant, Dr. Raschke, indicate that
doing so would have been beyond the level of ordinary skill in the art. See
PO Resp. 16; Ex. 2009 ¶ 51. In fact, as discussed above, the parties’
declarants agree that using Shafer’s compression molding process with
Franco’s conventional magnetic core would have been within the level of
ordinary skill in the art. Ex. 1003 ¶ 41; Ex. 1033, 115:6–13, 116:8–20.
Patent Owner responds that “a POSITA would understand that putting
a magnetic resin layer (Shafer) around the outside of a coil having a solid
core (Franco) would not have predictable results as compared with putting a
magnetic resin layer (Shafer) around a coil having a magnetic resin core
(Shafer).” PO Resp. 16 (citing Ex. 2009 ¶ 52); see PO Sur-reply 10 (citing
Ex. 1033, 135:15–19). Patent Owner contends that Petitioner’s declarant,
Dr. Erickson, “agrees that the inductance value resulting from the alleged
combination is not predictable, and instead depends upon other factors,
specifically the reluctance of the added resin layer in relation to the
reluctance of the core.” PO Resp. 17 (citing Ex. 2010, 4:7–5:14).
Patent Owner’s argument is not persuasive. Shafer describes an
inductor with a resin core and teaches that embedding the outer periphery of
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the inductor coil in a magnetic molding material “allow[s] the device to have
a high inductance.” Pet. 11, 13, 16–17; Ex. 1007, 3:24–29, 4:3–6. Amada
describes an inductor with a solid core and teaches that embedding the outer
periphery of the inductor coil in a magnetic coating “increases inductance.”
Pet. 11, 44–45; Ex. 1006, 3:38–42, 5:38–42. Thus, the evidence of record
shows that a person of ordinary skill in the art would have had a reasonable
expectation that embedding the outer periphery of an inductor coil in a
magnetic resin layer would increase its inductance regardless of whether the
core was solid or resin.14 See In re O’Farrell, 853 F.2d 894, 903–04 (Fed.
Cir. 1988) (“Obviousness does not require absolute predictability of success
. . . all that is required is a reasonable expectation of success.”).
Patent Owner responds that “Shafer cannot wrap an electrically
conducting coil around a magnetic core because there is no magnetic core at
the time that the coil is placed into Shafer’s mold.” PO Resp. 18 (citing Ex.
2009 ¶ 54; Ex. 2010, 15:17–16:1). Patent Owner’s argument is not
persuasive because Petitioner does not rely on Shafer to teach an electrically
conducting coil wound around a magnetic core. See Pet. 14–15. As

14 The deposition testimony of Dr. Erickson and Dr. Raschke cited by Patent
Owner does not indicate that the Franco and Shafer combination would not
have predictable results. See Ex. 1033, 134:2–135:19; Ex. 2010, 4:7–5:4.
Rather, the cited testimony of Dr. Erickson simply indicates that adding a
magnetic resin layer to an inductor with a solid core may not result in the
exact same increase in inductance as adding a magnetic resin layer to an
inductor with a resin core. Ex. 2010, 4:7–5:4. And the cited testimony of
Dr. Raschke simply indicates that a person of ordinary skill in the art would
need to perform certain calculations to determine the exact increase in
inductance that results from adding a magnetic resin layer to an inductor.
Ex. 1033, 134:2–135:19.
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discussed above, Franco teaches an inductor with a coil of insulated wire
wound around a magnetic core. Id.; Ex. 1005, 300–301, Fig. 7.8.
b. Patent Owner’s Arguments Regarding Why to
Combine Franco and Shafer
Patent Owner responds that a person of ordinary skill in the art
“would not have been motivated to combine Franco with Shafer” because
“Franco ‘teaches away’ from the invention.” PO Resp. 19 (citing Ex. 1005,
301; Ex. 2009 ¶ 41; Ex. 2011, 540); see PO Sur-reply 2–3 (citing Ex. 2009
¶ 41). Patent Owner argues that “[b]y treating the space surrounding the coil
and core as irrelevant to the inductance value, Franco and other authors not
only provide no motivation to consider adding a surrounding magnetic layer,
but provide motivation not to consider such an enhancement.” PO Resp.
20–21 (citing Ex. 2009 ¶ 41); see PO Sur-reply 2–3 (citing Ex. 2009 ¶ 41).
Patent Owner’s argument is not persuasive.
A reference teaches away “when a person of ordinary skill,
upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken” in the claim.
A reference that “merely expresses a general preference for an
alternative invention but does not criticize, discredit, or
otherwise discourage investigation into” the claimed invention
does not teach away.
Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (quoting
Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)).
In other words, Franco’s alleged silence about the impact of adding material
to the space around an inductor’s core and coil does not teach away from
Petitioner’s proposed combination. See id. Patent Owner does not identify
any portions of Franco that criticize, discredit, or otherwise discourage
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investigation into the impact of adding material to the space around an
inductor’s core and coil. See PO Resp. 19–21; PO Sur-reply 2–3.
Patent Owner responds that “Shafer does not disclose anything about
the impact on the device inductance as to the process of molding the
magnetic mixture around the coil.” PO Resp. 21 (citing Ex. 1007, 1:18–24,
1:32–35, 1:41–42, 1:45–50; Ex. 2009 ¶ 45). According to Patent Owner,
“[b]ecause the impact on inductance of the material surrounding the coil is
never addressed there is no motivation for a POSITA to investigate such an
effect.” Id. at 21. Patent Owner’s argument is not persuasive. As discussed
above, Shafer teaches that its magnetic molding material includes powdered
irons that “allow the device to have a high inductance yet low core losses so
as to maximize its efficiency.” Ex. 1007, 3:24–29; see Pet. 11. 17. Patent
Owner does not address that specific teaching. See PO Resp. 21; Ex. 2009
¶ 45. Further, Shafer alone does not have to provide the reason for
combining Franco and Shafer. See KSR, 550 U.S. at 418 (“Often, it will be
necessary for a court to look to interrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.”). As Petitioner explains, a person of ordinary skill in the
art also would have known from Amada that a magnetic coating, such as
Shafer’s magnetic molding material, increases inductance. Pet. 11; Ex. 1003
¶ 39; Ex. 1006, 5:38–42.
Patent Owner responds that a person of ordinary skill in the art would
not have considered combining Franco and Shafer because “the technique of
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Shafer is only practical for inductors having low inductance values.” PO
Resp. 21–22 (citing Ex. 1001, 3:44–49; Ex. 2009 ¶ 56); see PO Sur-reply 3
(citing Ex. 2009 ¶ 56). Patent Owner’s argument is not persuasive. Patent
Owner does not direct us to any portion of Shafer that indicates its
compression molding process or magnetic molding material are only
practical for inductors having low inductance values. See PO Resp. 21–22;
PO Sur-reply 3; Ex. 2009 ¶ 56. Rather, Patent Owner relies on a portion of
the ’390 patent that describes a particular embodiment with only “moderate”
inductance because the magnetic core is eliminated. Ex. 1001, 3:44–49.
However, as discussed above, Petitioner does not propose eliminating
Franco’s magnetic core. See Pet. 10–12; Ex. 1003 ¶¶ 35, 40. In the
proposed combination, Franco retains its iron or ferrite core, and Shafer’s
magnetic molding material is compression molded around the outer
periphery of Franco’s coil. Pet. 10–12; Ex. 1003 ¶¶ 35, 40.
Patent Owner also responds to each of the benefits that Petitioner
identifies for the Franco and Shafer combination. PO Resp. 22–26. As
discussed above, Petitioner presents evidence that compression molding
Shafer’s magnetic molding material around the outer periphery of Franco’s
coil would provide magnetic shielding for Franco’s inductor. Pet. 11;
Ex. 1003 ¶ 38; Ex. 1007, 1:32–35. Patent Owner responds that magnetic
shielding would not have provided a reason to combine Franco and Shafer
because “magnetic shielding of inductors was generally accomplished using
a metal sheath around the inductor.” PO Resp. 23 (citing Ex. 1009;
Ex. 2009 ¶ 59). Patent Owner also argues that the Franco and Shafer
combination would not “result in less energy loss than Shafer alone.” Id. at
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23–24 (citing Ex. 2009 ¶ 59; Ex. 2010, 22:22–24:5); see PO Sur-reply 15
(citing Ex. 2009 ¶ 59; Ex. 2010, 22:22–24:5).
Patent Owner’s arguments are not persuasive. The evidence of record
shows that compression molding Shafer’s magnetic molding material around
the outer periphery of Franco’s coil would provide magnetic shielding for
Franco’s inductor. Pet. 11; Ex. 1003 ¶ 38; Ex. 1007, 1:32–35. Therefore,
even if alternative methods of magnetic shielding were available, a person of
ordinary skill in the art nonetheless would have had reason to combine
Franco and Shafer to provide magnetic shielding for Franco’s inductor. See
In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes.”). Further, Patent Owner’s argument that
the Franco and Shafer combination would not result in less energy loss for
Shafer’s inductor misinterprets Petitioner’s proposed combination.
Petitioner does not propose using Franco’s teachings to improve Shafer. See
Pet. 11–12; Ex. 1003 ¶¶ 38, 40. Rather, Petitioner asserts that compression
molding Shafer’s magnetic molding material around the outer periphery of
Franco’s coil would improve Franco’s inductor by providing magnetic
shielding. Pet. 11–12; Ex. 1003 ¶¶ 38, 40. Patent Owner does not dispute
that the combination would result in less energy loss for Franco’s inductor.
See PO Resp. 23–24; PO Sur-reply 15.
As discussed above, Petitioner presents evidence that compression
molding Shafer’s magnetic molding material around the outer periphery of
Franco’s coil would provide physical protection for Franco’s inductor.
Pet. 10–11; Ex. 1003 ¶ 37; Ex. 1006, 4:4–6; Ex. 1008, 4:1–5. Patent Owner
responds that physical protection would not have provided a reason to
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combine Franco and Shafer because “physical protection of the inductor
could be realized by simply using a polymer resin (without any magnetic
materials) or similar coating over the inductor solely for environmental
protection.” PO Resp. 24 (citing Ex. 2009 ¶ 60; Ex. 2010, 35:2–9); see PO
Sur-reply 15–16.
Patent Owner’s argument is not persuasive. The evidence of record
shows that compression molding Shafer’s magnetic molding material around
the outer periphery of Franco’s coil would provide physical protection for
Franco’s inductor. Pet. 10–11; Ex. 1003 ¶ 37; Ex. 1006, 4:4–6; Ex. 1008,
4:1–5. Therefore, even if alternative methods of protection were available, a
person of ordinary skill in the art would have had a reason to combine
Franco and Shafer to provide physical protection for Franco’s inductor. See
Mouttet, 686 F.3d at 1334.
As discussed above, Petitioner presents evidence that compression
molding Shafer’s magnetic molding material around the outer periphery of
Franco’s coil would increase its inductance, decrease its size for a given
inductance, and reduce its manufacturing cost. Pet. 11–12; Ex. 1003 ¶¶ 38–
40; Ex. 1006, 5:38–42; Ex. 1007, 1:25–27, 1:36–49, 3:24–29. Patent Owner
responds that “the core of Franco introduced into the apparatus of Shafer
would not necessarily increase inductance.” PO Resp. 24 (citing Ex. 2009 ¶
61; Ex. 2010, 22:17–21); see PO Sur-reply16–17 (citing Ex. 2009 ¶ 61; Ex.
2010, 22:17–21). Patent Owner argues that “there is no reason why the size
of the inductor would decrease when Franco’s coil was used in Shafer’s
apparatus.” PO Resp. 24 (citing Ex. 2009 ¶ 62). Patent Owner also argues
that “there is no reason why the manufacturing cost would decrease when
Franco’s coil was used in Shafer’s apparatus.” Id. at 25 (citing Ex. 2009
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¶ 63). Lastly, Patent Owner contends that Petitioner “cite[s] only to the
conclusory testimony of its expert” to support the above reasons to combine
Franco and Shafer. PO Sur-reply 17.
Patent Owner’s arguments are not persuasive because Patent Owner
misinterprets Petitioner’s proposed combination. Each of Patent Owner’s
arguments is based on the premise that incorporating Franco’s core and/or
coil into Shafer’s inductor would not improve Shafer’s inductor. See PO
Resp. 24–25. But Petitioner does not propose incorporating Franco’s core or
coil into Shafer’s inductor. See Pet. 10–12; Ex. 1003 ¶¶ 35, 40. Rather, as
explained above, Petitioner proposes adding Shafer’s magnetic molding
material to the outer periphery of Franco’s coil. Pet. 10–12; Ex. 1003 ¶¶ 35,
40. Patent Owner does not dispute that adding a magnetic material to the
outer periphery of Franco’s inductor would improve Franco’s inductor by
increasing its inductance, decreasing its size for a given inductance, and
reducing its manufacturing cost. See PO Resp. 24–25; PO Sur-reply 17.
Further, the evidence cited by Petitioner to support its reasons for combining
Franco and Shafer is not conclusory. Both Petitioner and its declarant,
Dr. Erickson, identify portions of Shafer and Amada that support their
reasoning. Pet. 11–12 (citing Ex. 1006, 5:38–42; Ex. 1007, 1:22–49);
Ex. 1003 ¶¶ 38–40 (citing Ex. 1006, 5:38–42; Ex. 1007, 1:22–49).
Patent Owner responds that “Franco discloses the use of a core that is
iron or ferrite.” PO Resp. 25 (citing Ex. 2009 ¶ 64). According to Patent
Owner, “Shafer is incompatible with, and teaches away from, the use of
ferrite material because the combination ‘results in an inductor which
saturates at a much lower level’ than Shafer’s invention.” Id. at 25, 31
(citing Ex. 2004, 2; Ex. 2009 ¶ 67); see PO Sur-reply 20–21 (citing
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Ex. 2004, 2; Ex. 2009 ¶ 67). Patent Owner further argues that “even
considering the use of an iron powder contained in a resin base is very much
different from using solid iron . . . [a]nd Franco discloses only a solid core –
not the use of powder.” PO Resp. 25 (citing Ex. 2009 ¶ 64).
Patent Owner’s arguments are not persuasive. First, Patent Owner
does not direct us to any portion of Shafer that indicates its inductor would
not work with a ferrite material or otherwise teaches away from using a
ferrite material. See PO Resp. 25, 31; PO Sur-reply 20–21; Ex. 2009 ¶¶ 64,
67. Patent Owner only directs us to a declaration submitted during
prosecution of Shafer that describes certain advantages of using an iron
material. Ex. 2004, 2. Second, even if we assume that Shafer teaches away
from using a ferrite material, Petitioner does not propose incorporating
Franco’s ferrite core into Shafer’s inductor. See Pet. 10–12; Ex. 1003 ¶¶ 35,
40. As discussed above, Petitioner proposes compression molding Shafer’s
magnetic molding material around the outer periphery of Franco’s coil.
Pet. 10–12; Ex. 1003 ¶¶ 35, 40. Third, Franco also teaches an iron core, not
just a ferrite core. Pet. 13–14; Ex. 1005, 301.
Patent Owner responds that “[t]he asserted ‘order’ of the proffered
combination of references is not relevant” because “[t]he question is whether
a POSITA would have been motivated to combine the references.” PO Sur-
reply 12 (emphasis omitted). Patent Owner’s argument is not persuasive.
As discussed above, the evidence of record shows that compression molding
Shafer’s magnetic molding material around the outer periphery of Franco’s
coil would provide several benefits to Franco’s inductor. Pet. 10–12; Ex.
1003 ¶¶ 35–40. Even if Patent Owner is correct that incorporating Franco’s
core and/or coil into Shafer would not improve Shafer’s inductor, we see no
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reason why that would deter a person of ordinary skill in the art from
incorporating Shafer’s compression molding process and magnetic molding
material into Franco as proposed by Petitioner.
10. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20 would have
been obvious over Franco and Shafer.
E. Ground 1B - Obviousness of Claims 2 and 12 over Franco,
Shafer, and Rittner
Petitioner argues that claims 2 and 12 would have been obvious over
Franco, Shafer, and Rittner. Pet. 2, 25. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 2 and
12 would have been obvious over Franco, Shafer, and Rittner.
1. Claims 2 and 12
Claim 2 depends from claim 1, and recites “wherein said magnetic
resin layer has a thickness determined matching a predetermined inductance
of said inductor.” Ex. 1001, 6:35–37. Claim 12 depends from claim 11, and
recites a similar limitation. Id. at 7:3–5. Rittner teaches setting the
inductance value of an inductor by adjusting the thickness of a covering
paste that includes a ferromagnetic material. Pet. 28–29; Ex. 1008, code
(57), 1:10–22, 2:20–48, 5:10–6:5. Patent Owner responds that it would not
have been obvious to combine Franco, Shafer, and Rittner (which we
address below in Section II.E.2), but Patent Owner does not dispute that the
combination of Franco, Shafer, and Rittner teaches the limitation of claims 2
and 12. See PO Resp. 37.
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2. Reasons for Combining Franco, Shafer, and Rittner
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Franco, Shafer, and
Rittner. Pet. 26–28 (citing Ex. 1003 ¶¶ 104–107). We agree with and adopt
Petitioner’s reasoning. Specifically, Rittner relates to the same field of
endeavor as the ’390 patent, namely, inductors. Pet. 26; Ex. 1001, 1:6–9;
Ex. 1003 ¶ 104; Ex. 1008, 1:6–9. It would have been obvious to adjust the
thickness of the magnetic molding material in the Franco and Shafer
combination in order to set a required inductance value, as taught by Rittner.
Pet. 26–27; Ex. 1003 ¶ 105. Doing so would have been obvious because it
would benefit manufacturers by allowing them to supply inductors with
different inductance values for different applications. Pet. 26–27; Ex. 1003
¶ 105; Ex. 1008, 1:48–53. Further, combining Rittner’s teachings with
Franco and Shafer would have been nothing more than using Rittner’s
teachings to improve the Franco and Shafer combination in the same way.
Pet. 27; Ex. 1003 ¶ 106; see KSR, 550 U.S. at 417 (“[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
Patent Owner responds that Petitioner “advance[s] no meaningful
motivation to combine Franco, Shafer, and Rittner” and, “[t]hus, there are no
rational underpinnings for Petitioner[’s] attempt to paste the proffered
references together.” PO Resp. 33–34. Patent Owner’s argument is not
persuasive. As discussed above, we find that Petitioner’s evidence shows
that it would have been obvious to combine Rittner with Franco and Shafer
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because 1) it would benefit manufacturers by allowing them to supply
inductors with different inductance values for different applications; and 2)
it would have been nothing more than using Rittner’s technique to improve a
similar inductor in the same way. Pet. 26–27; Ex. 1003 ¶¶ 105–106; Ex.
1008, 1:48–53.
Patent Owner responds that Franco and Shafer relate to conventional
(or discrete) inductors, whereas Rittner relates to planar (or spiral)
conductors. PO Resp. 33–34. Patent Owner contends that it would not have
been obvious to combine Rittner with Franco and Shafer because “the
magnetic fields are significantly different as [] between discrete and spiral
inductors.” Id. at 34–35 (citing Ex. 2006, 1:21–41, 1:55–58, 2:24–39;
Ex. 2009 ¶¶ 73, 78). Patent Owner further contends that “[i]n a conventional
inductor, it was known that the use of a ferromagnetic core increases
inductance value,” but “for spiral inductors, the inductance value is adjusted
‘such that the pattern width of all of the portions of one or more coil patterns
. . . is made wider or narrower.’” Id. at 35–36 (citing Ex. 2006, 1:29–34; Ex.
2007 ¶ 4; Ex. 2008, 12; Ex. 2009 ¶¶ 74–75). According to Patent Owner,
“[t]here is no evidence in the prior art of record that inductance values can
be set or controlled for wire-wound inductors by varying the amount of resin
shield surrounding a wire wound inductor.” Id. at 36 (citing Ex. 2009 ¶ 77);
see PO Sur-reply 19.
Patent Owner’s argument is not persuasive. The evidence of record
shows that embedding the outer periphery of a conventional inductor in a
magnetic material increases its inductance. Pet. 11, 13, 17; Ex. 1003 ¶ 39;
Ex. 1006, 5:38–42; Ex. 1007, 3:24–29. The evidence of record similarly
shows that embedding the outer periphery of a planar inductor in a magnetic
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material increases its inductance. Pet. 25–26; Ex. 1008, 2:38–41. In other
words, the evidence of record shows that a magnetic coating has a similar
impact on inductance for both conventional and planar inductors. As a
result, a person of ordinary skill in the art would have reasonably expected
that Rittner’s teaching about adjusting the thickness of a magnetic coating to
set an inductance value also would apply to both conventional and planar
inductors. Pet. 26; Ex. 1003 ¶ 103; see O’Farrell, 853 F.2d at 903–04.
Further, although Patent Owner identifies several differences between
conventional and planar inductors, Patent Owner does not explain why those
differences would prevent Rittner’s specific teaching about adjusting the
thickness of a magnetic coating from applying to a conventional inductor.
See PO Resp. 33–36; PO Sur-reply 19; Ex. 2009 ¶¶ 72–79; Tr. 42:10–20.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 2 and 12 would have been obvious over Franco,
Shafer, and Rittner.
F. Ground 1C - Obviousness of Claims 5 and 15 over Franco,
Shafer, and Butherus
Petitioner argues that claims 5 and 15 would have been obvious over
Franco, Shafer, and Butherus. Pet. 2, 29. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 5 and
15 would have been obvious over Franco, Shafer, and Butherus.
1. Claims 5 and 15
Claim 5 depends from claim 1, and recites “wherein said magnetic
core is a compression molded magnetic core made of the same or different
magnetic resin as said magnetic resin layer.” Ex. 1001, 6:43–46. Claim 15
depends from claim 11, and recites a similar limitation. Id. at 7:13–16.
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Butherus teaches forming a magnetic core by compressing particles of an
iron powder and a thermoplastic or thermosetting resin. Pet. 32; Ex. 1010,
1:17–20, 2:32–39, 3:32–39, 6:34–36.
Patent Owner responds that under Petitioner’s proposed construction
of the term “consolidated,” claim 15 requires that the magnetic core and the
magnetic resin layer “be formed at the same time.” PO Resp. 39. Patent
Owner argues that Butherus teaches “a core that is separate from the resin
material surrounding the outside of the coil,” and, thus, the core and the
resin material were not formed at the same time. Id. (citing Ex. 1010, 3:32–
35). Patent Owner’s argument is not persuasive because it is premised on
Petitioner’s proposed construction of the term “consolidated,” which we do
not adopt for the reasons discussed above. See Section II.C.4.
2. Reasons for Combining Franco, Shafer, and Butherus
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Franco, Shafer, and
Butherus. Pet. 30–31 (citing Ex. 1003 ¶¶ 115–118). We agree with and
adopt Petitioner’s reasoning. Specifically, Butherus relates to the same field
of endeavor as the ’390 patent, namely, inductors. Pet. 30; Ex. 1001, 1:6–9;
Ex. 1003 ¶ 115; Ex. 1010, 2:13–15. It would have been obvious to use
Butherus’s compression molded magnetic resin core in the Franco and
Shafer combination because it would allow a manufacturer to set certain
inductor parameters and would lower energy loss. Pet. 30–31; Ex. 1003 ¶¶
117–118; Ex. 1010, 2:32–35, 2:41–45. In addition, combining Butherus
with Franco and Shafer would have been nothing more than using
Butherus’s compression molded magnetic resin core to improve the Franco
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and Shafer combination in the same way. Pet. 31; Ex. 1003 ¶ 118; see KSR,
550 U.S. at 417.
Patent Owner responds that Petitioner “advance[s] no meaningful
motivation to combine Franco, Shafer and Butherus,” and, “[t]hus, there are
no rational underpinnings for Petitioner[’s] attempt to paste the proffered
references together.” PO Resp. 37–38. Patent Owner’s argument is not
persuasive. As discussed above, Petitioner’s evidence shows that it would
have been obvious to combine Butherus with Franco and Shafer because 1)
it would allow a manufacturer to set certain inductor parameters; 2) it would
lower energy loss; and 3) it would have been nothing more than using
Butherus’s compression molded magnetic resin core to improve the Franco
and Shafer combination in the same way. Pet. 30–31; Ex. 1003 ¶¶ 117–118;
Ex. 1010, 2:32–35, 2:41–45.
Patent Owner responds that because “Franco requires a solid iron or
ferrite core” and “Butherus discloses only a magnetic resin core,” “[a]
POSITA would . . . not attempt to combine Franco and Butherus, as the two
are mutually exclusive approaches.” PO Resp. 38. Patent Owner’s
argument is not persuasive. Franco teaches that “[w]hen a high inductance
value is needed, the core is made of a highly permeable material such as iron
or ferrite.” Ex. 1005, 301 (emphasis added). But Patent Owner does not
direct us to any portion of Franco that requires a solid iron or ferrite core.
See PO Resp. 38. Nor does Patent Owner direct us to any portion of Franco
that criticizes, discredits, or otherwise discourages use of a resin core. See
id. Thus, we are not persuaded that Franco teaches away from Butherus’s
resin core.
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Patent Owner responds that “Shafer discloses only a ‘unitized’
inductor in which the outside enclosure and inner core are molded as a single
integral unitized body,” whereas Butherus “describes . . . a core that is
separate from the resin material surrounding the outside of the coil.” PO
Resp. 38 (citing Ex. 1007, 4:41–44; Ex. 1010, 3:32–35). Thus, according to
Patent Owner, a person of ordinary skill in the art would not combine Shafer
and Butherus because “(1) the approaches teach away from one another, (2)
a POSITA would not have a reasonable expectation of success in attempting
to combine the two, and (3) the Petition does not explain how a POSITA
would go about combining the two.” Id. at 38–39.
Patent Owner’s arguments are not persuasive. First, even if we
assume that Shafer only teaches an inductor with an integral body, Patent
Owner does not identify any portion of Shafer that criticizes, discredits, or
otherwise discourages use of a core that is separate from the resin material
around the outside of the coil. See id. at 38–39. Thus, we are not persuaded
that Shafer teaches away from Butherus’s approach. See Meiresonne, 849
F.3d at 1382. Second, as discussed above, in the Franco and Shafer
combination, Franco’s core is separate from Shafer’s magnetic molding
material that embeds the outer periphery of the coil. Pet. 10–12; Ex. 1003 ¶¶
35, 40. Thus, Butherus’s teaching of a separate core is compatible with the
Franco and Shafer combination.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 5 and 15 would have been obvious over Franco,
Shafer, and Butherus.
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G. Ground 1D - Obviousness of Claims 6 and 16 over Franco,
Shafer, and Kaneko
Petitioner argues that claims 6 and 16 would have been obvious over
Franco, Shafer, and Kaneko. Pet. 2, 33. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 6 and
16 would have been obvious over Franco, Shafer, and Kaneko.
1. Claims 6 and 16
Claim 6 depends from claim 1, and recites that the inductor “further
comprises a metal magnetic sheath outside of said magnetic resin layer.”
Ex. 1001, 6:47–49. Claim 16 depends from claim 11, and recites a similar
limitation. Id. at 8:1–3. Kaneko teaches an inductor with a metal magnetic
sleeve enclosing a coil. Pet. 35–36; Ex. 1003 ¶ 130; Ex. 1009, 2:20–34, 4:5–
9. Patent Owner responds that it would not have been obvious to combine
Franco, Shafer, and Kaneko (which we address below in Section II.G.2), but
Patent Owner does not dispute that the combination of Franco, Shafer, and
Kaneko teaches the limitation of claims 6 and 16. See PO Resp. 41.
2. Reasons for Combining Franco, Shafer, and Kaneko
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Franco, Shafer, and
Kaneko. Pet. 33–35 (citing Ex. 1003 ¶¶ 124–126). We agree with and adopt
Petitioner’s reasoning. Specifically, Kaneko relates to the same field of
endeavor as the ’390 patent, namely, inductors. Pet. 33–34; Ex. 1001, 1:6–
9; Ex. 1003 ¶ 124; Ex. 1009, 1:28–30, 1:50–53. It would have been obvious
to use Kaneko’s metal magnetic sleeve to surround the inductor of the
Franco and Shafer combination. Pet. 34; Ex. 1003 ¶ 125. Doing so would
have been obvious because it would further confine magnetic leakage flux
and further increase inductance. Pet. 34; Ex. 1003 ¶ 125. Adding Kaneko’s
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metal magnetic sleeve to the inductor of the Franco and Shafer combination
also would permit the inductance to be adjusted to meet tight manufacturing
tolerances. Pet. 34; Ex. 1003 ¶ 126; Ex. 1009, 1:43–58. Further, combining
Kaneko’s magnetic sleeve with Franco and Shafer would have been nothing
more than combining known prior art elements according to known methods
to yield predictable results. Pet. 35; Ex. 1003 ¶ 127; see KSR, 550 U.S. at
416 (“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Patent Owner responds that Petitioner “advance[s] no meaningful
motivation to combine Franco, Shafer, and Kaneko.” PO Resp. 40. Patent
Owner’s argument is not persuasive. As discussed above, Petitioner’s
evidence shows that it would have been obvious to combine Kaneko’s metal
magnetic sleeve with Franco and Shafer because 1) it would further confine
magnetic leakage; 2) it would further increase inductance; 3) it would permit
the inductance to be adjusted to meet tight manufacturing tolerances; and 4)
it would have been nothing more than combining known prior art elements
according to known methods to yield predictable results. Pet. 34–35; Ex.
1003 ¶¶ 125–127; Ex. 1009, 1:43–58.
Patent Owner responds that that “[t]here would have been no reason
to combine Shafer and Kaneko since Shafer claims that the inductance value
of his invention is already optimized and there would be no need to adjust
it.” PO Resp. 40 (citing Ex. 2009 ¶ 81). Patent Owner’s argument is not
persuasive. Neither Patent Owner nor its declarant, Dr. Raschke, identify
any portion of Shafer that states there is no need to adjust the inductance
value of its inductor. See PO Resp. 40; Ex. 2009 ¶ 81. Further, Petitioner
does not propose adding Kaneko’s metal magnetic sleeve to Shafer’s
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inductor. See Pet. 34; Ex. 1003 ¶ 125. Rather, Petitioner proposes using
Kaneko’s metal magnetic sleeve to surround the inductor of the Franco and
Shafer combination, which includes Franco’s core and coil. Pet. 34; Ex.
1003 ¶ 125. Patent Owner does not argue or identify evidence indicating
that the inductor of the Franco and Shafer combination would not need any
adjustment. See PO Resp. 40; Ex. 2009 ¶ 81.
Patent Owner responds that “Shafer already ‘provides a self shielding
capability’ because it ‘includes a magnetic material completely surrounding
the coil,’” and, thus, “the shield effects of Shafer and Kaneko are
redundant.” Pet. 40–41 (citing Ex. 1007, 1:34–35; Ex. 1009, 1:8–9;
Ex. 2009 ¶¶ 82–84). Patent Owner’s argument is not persuasive. Even if we
assume that the Franco and Shafer combination includes some magnetic
shielding from Shafer’s magnetic molding material, the evidence of record
shows that Kaneko’s metal magnetic sleeve would “further improve on the
confinement of magnetic leakage flux and thereby reduce EMI.” Pet. 34;
Ex. 1003 ¶ 125 (emphasis added).
Patent Owner also responds that Kaneko’s “use of a ‘filling adhesive’
between the coil and the sleeve core . . . is incompatible with Shafer,
because Shafer ‘includes a magnetic material completely surrounding the
coil.’” PO Resp. 41 (citing Ex. 1007, 1:30–31; Ex. 1009, 2:30–32; Ex. 2009
¶ 85). Patent Owner’s argument is not persuasive. Although Kaneko
teaches adhering its magnetic sleeve over a coil, the evidence of record
shows that Kaneko’s magnetic sleeve could also be used over Shafer’s
magnetic molding material. Pet. 36; Ex. 1003 ¶ 131. Further, Patent Owner
does not provide any specific reason why a person of ordinary skill in the art
would not reasonably expect Kaneko’s magnetic sleeve to work over
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Shafer’s magnetic molding material. See PO Resp. 41; Ex. 2009 ¶ 85;
O’Farrell, 853 F.2d at 903–04.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 6 and 16 would have been obvious over Franco,
Shafer, and Kaneko.
H. Ground 1E - Obviousness of Claims 8 and 18 over Franco,
Shafer, and Ohkawa
Petitioner argues that claims 8 and 18 would have been obvious over
Franco, Shafer, and Ohkawa. Pet. 2, 36. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 8 and
18 would have been obvious over Franco, Shafer, and Ohkawa.
1. Claims 8 and 18
Claim 8 depends from claim 1, and recites “wherein said polymer
resin is a thermoplastic polymer.” Ex. 1001, 6:52–53. Claim 18 depends
from claim 11, and recites a similar limitation. Id. at 8:6–7. Ohkawa
teaches using a thermoplastic resin for compression molding of electrical
devices. Pet. 36–37, 39; Ex. 1003 ¶¶ 134–135, 140–141; Ex. 1011, 2:18–22,
3:1–26. Patent Owner responds that it would not have been obvious to
combine Franco, Shafer, and Ohkawa (which we address below in Section
II.H.2), but Patent Owner does not dispute that the combination of Franco,
Shafer, and Ohkawa teaches the limitation of claims 8 and 18. See PO Resp.
42.
2. Reasons for Combining Franco, Shafer, and Ohkawa
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Franco, Shafer, and
Ohkawa. Pet. 36–38 (citing Ex. 1003 ¶¶ 133–138). We agree with and
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adopt Petitioner’s reasoning. Specifically, Ohkawa relates to the same field
of endeavor as the ’390 patent, namely, inductors. Pet. 37; Ex. 1001, 1:6–9;
Ex. 1003 ¶¶ 134, 136; Ex. 1011, 8:5–12. Ohkawa also is reasonably
pertinent to a particular problem with which the inventors of the ’390 patent
were involved, namely, providing electromagnetic shielding for an
electronic device. Pet. 37–38; Ex. 1001, 1:50–58; Ex. 1003 ¶¶ 134, 137;
Ex. 1011, 8:5–12; Dec. on Inst. 25–26. It would have been obvious to use
Ohkawa’s thermoplastic resin in the magnetic molding material that embeds
the outer periphery of the coil in the Franco and Shafer combination. Pet.
38; Ex. 1003 ¶ 137. Doing so would have been obvious because Ohkawa’s
thermoplastic resin provides several benefits, including 1) good moldability;
2) high mechanical properties and dimensional stability; and 3) suitability
for secondary machining. Pet. 38; Ex. 1003 ¶ 137; Ex. 1011, 3:1–9.
Patent Owner responds that “any connection [between Ohkawa and]
electronic components generally, let alone inductors specifically, is
tenuous.” PO Resp. 42 (citing Ex. 1011, 8:6–12). Patent Owner’s argument
is not persuasive. Ohkawa teaches that its molding composition has
applications in the “structural and functional parts in electric and electronic
instruments.” Ex. 1011, 8:5–8. And Petitioner’s declarant, Dr. Erickson,
explains that a person of ordinary skill in the art “would have understood
that ‘functional parts in electric and electronic instruments’ includes discrete
electric components, such as inductors.” Ex. 1003 ¶ 134. Further, as
discussed above, Ohkawa also is analogous art because it is reasonably
pertinent to a particular problem with which the inventors of the ’390 patent
were involved, namely, providing electromagnetic shielding for an
electronic device. Pet. 37–38; Ex. 1001, 1:50–58; Ex. 1003 ¶¶ 134, 137; Ex.
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1011, 8:5–12 (“shielding materials for electro-magnetic waves”); Dec. on
Inst. 25–26.
Patent Owner responds that Petitioner “advance[s] no meaningful
motivation to combine Franco, Shafer, and [Ohkawa],” and, “[t]hus, there
are no rational underpinnings for Petitioner[’s] attempt to paste the proffered
references together.” PO Resp. 42. According to Patent Owner, Petitioner
“point[s] to no advantages of using the Ohkawa material instead of the
Shafer material in the Shafer invention,” and “[t]here is no evidence that the
Shafer material was deficient in any way.” Id. Patent Owner’s argument is
not persuasive. As discussed above, Ohkawa’s thermoplastic resin provides
several benefits, including 1) good moldability; 2) high mechanical
properties and dimensional stability; and 3) suitability for secondary
machining. Pet. 38; Ex. 1003 ¶ 137; Ex. 1011, 3:1–9.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 8 and 18 would have been obvious over Franco,
Shafer, and Ohkawa.
I. Ground 2A – Obviousness of Claims 1, 3, 4, 7, 9–11, 13, 14, 17,
19, and 20 over Amada and Shafer
Petitioner argues that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20
would have been obvious over Amada and Shafer. Pet. 2, 40, 55. For the
reasons discussed below, Petitioner has shown by a preponderance of the
evidence that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20 would have been
obvious over Amada and Shafer.
1. Overview of Amada
Amada teaches an inductor with a magnetic bobbin that includes a
core and flanges. Ex. 1006, 3:38–42. Amada teaches that its inductor
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includes an electrically conducting coil wound around the magnetic core. Id.
at 3:51–59. Amada also teaches that a coating comprising a magnetic
powder and an epoxy resin is formed on the entire circumference of the coil.
Id. at 4:4–6, 5:38–42, Figs. 1(A), 1(B).
2. Claim 1
Claim 1 recites “[a]n inductor with enhanced inductance.”15 Ex. 1001,
6:25. Amada teaches an inductor with a coil embedded in a magnetic
coating that increases inductance per unit volume. Pet. 44–45; Ex. 1003
¶¶ 155–156; Ex. 1006, 1:53–62, 5:38–42. Shafer teaches an inductor with a
coil embedded in a magnetic molding material that increases inductance per
unit volume. Pet. 13, 17, 45; Ex. 1003 ¶¶ 157–158; Ex. 1007, 3:24–29
(“The first and second powdered irons have differing electrical
characteristics that allow the device to have a high inductance yet low core
losses so as to maximize its efficiency.”); Dec. on Inst. 10.
Patent Owner responds that the term “enhanced inductance” refers to
“the increase in inductance of the inductor described by the ’390 patent in
comparison to the same inductor containing the same number of winding
turns, but without the magnetic resin layer embedding the conducting coil.”
PO Resp. 54. Patent Owner contends that Petitioner “state[s] that a
magnetic resin coating is used by Amada to improve the productivity of a
wire wound electronic component,” but “the cited portion of Amada does

15 For purposes of this Decision, we do not decide whether the preamble is
limiting because we determine the prior art nonetheless teaches “an inductor
with enhanced inductance.” Further, neither party argues that the preamble
is not limiting. See Pet. 44–45; PO Resp. 54–55.
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not support Petitioner[’s] assertion.” Id. at 54–55 (citing Pet. 44; Ex. 1006,
1:53–63).
Patent Owner’s argument is not persuasive. First, Patent Owner’s
argument is premised on its proposed construction of the term “enhanced
inductance,” but, as discussed above, we adopt only a portion of that
proposed construction. See Section II.C.1. Second, Amada teaches that its
magnetic coating “increases inductance and thereby allows the number of
turns of the coil . . . to be reduced.” Ex. 1006, 5:38–42. Patent Owner does
not address that specific teaching of Amada. See PO Resp. 54–55.
Claim 1 recites “a magnetic core.” Ex. 1001, 6:26. Amada teaches an
inductor with a magnetic bobbin that comprises a core and flanges. Pet. 45–
46; Ex. 1006, 3:38–42.
Patent Owner responds that Amada only “describes that the flanges of
the bobbin are magnetic – note the core.” PO Resp. 55 (citing Ex. 1006,
3:38–43, 4:15–17, 5:1–2). Patent Owner’s argument is not persuasive.
Amada teaches the following:
Referring to FIG. 1, (A) and (B), a specific configuration of a
chip inductor is shown and includes a magnetic bobbin 1. The
bobbin 1 has a core 1a having a circular cross-section and
rectangular flanges 1b formed at both ends of the core 1a.
Ex. 1006, 3:38–42 (bolding omitted). The first sentence above indicates that
the entire bobbin is magnetic, and the second sentence indicates that the
magnetic bobbin includes a core and flanges. Id. In other words, Amada
teaches that the entire bobbin, including the core, is magnetic. Id.
Claim 1 recites “an electrically conducting coil wound about said
magnetic core.” Ex. 1001, 6:27–28. Amada teaches an inductor with an
electrically conducting coil wound around a magnetic core. Pet. 46; Ex.
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1006, 3:51–59. Patent Owner does not dispute that the Amada and Shafer
combination teaches this limitation of claim 1.
Claim 1 recites “a magnetic resin layer compression-molded to embed
at least a portion of an outer periphery of said electrically conducting coil.”
Ex. 1001, 6:29–31. Amada teaches a coating comprising a magnetic powder
and an epoxy resin that is formed on the entire circumference of an
electrically conducting coil. Pet. 46–47; Ex. 1003 ¶¶ 167–168; Ex. 1006,
4:4–6, 5:38–42, Figs. 1(A), 1(B), 4(A). Shafer teaches a magnetic molding
material comprising magnetic powders and a resin that is compression
molded to embed an electrically conducting coil. Pet. 47–49; Ex. 1003
¶¶ 169–172; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. As discussed in more
detail below, it would have been obvious to embed the outer periphery of
Amada’s coil in either Amada’s magnetic coating or Shafer’s magnetic
molding material using Shafer’s compression molding. Pet. 41–44;
Ex. 1003 ¶¶ 146, 149, 151; see Section II.I.9.
Patent Owner responds that “the core in Shafer is the entire material in
Shafer Figure 6 that surrounds the winding, both down the middle and
around the outside.” PO Resp. 56 (citing Ex. 2010, 10:5–12); see PO Sur-
reply 18. Thus, according to Patent Owner, “Shafer’s magnetic resin layer
cannot ‘embed at least a portion of an outer periphery of said electrically
conducting coil’ because the outer periphery of the coil is embedded by the
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inductor core.”16 PO Resp. 56. Patent Owner’s argument is not persuasive.
First, Patent Owner’s argument appears to be based on its proposed
construction that requires the magnetic resin layer to embed “only” the outer
periphery of the coil. Id. at 4, 56. As discussed above, we decline to adopt
that construction. See Section II.C.3. Second, Amada teaches that its
magnetic coating is formed on the outer periphery of the inductor coil. Pet.
46–47; Ex. 1003 ¶¶ 167–168; Ex. 1006, 4:4–6, 5:38–42, Figs. 1(A), 1(B),
4(A). Patent Owner does not address that specific teaching of Amada. See
PO Resp. 56. Third, Patent Owner acknowledges that Shafer’s magnetic
molding material “surrounds . . . the outside” of the coil, and, thereby,
acknowledges that the magnetic molding material embeds the outer
periphery of the coil. Id.
Claim 1 recites “wherein said magnetic resin layer contains a
magnetic powder dispersed in a polymer resin.” Ex. 1001, 6:32–33. Amada
teaches that its magnetic coating contains a magnetic powder and an epoxy
resin. Pet. 49; Ex. 1003 ¶ 176; Ex. 1006, 5:38–40. The evidence of record
shows that a person of ordinary skill in the art would have known that
Amada’s magnetic powder is dispersed in the epoxy resin, and that Amada’s
epoxy resin is a polymer resin. Pet. 49–50; Ex. 1001, 1:65–67; Ex. 1003 ¶¶
176–177. Shafer teaches that its magnetic molding material comprises iron
powders and a polyester resin. Pet. 17–18, 50; Ex. 1007, 3:24–47, 6:49–51.

16 Patent Owner does not dispute that the Amada and Shafer combination
teaches a layer. See PO Resp. 55–56. Nonetheless, we note that, like the
’390 patent and Shafer, a person of ordinary skill in the art could have
ascertained the thickness of Amada’s magnetic coating by taking the
difference between the total outside length of Amada’s magnetic coating and
the thickness of its coil. See Pet. 46–47; Ex. 1006, Figs. 1(B), 1(C), 4(A).
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The evidence of record shows that a person of ordinary skill in the art would
have known that Shafer’s iron powders are dispersed in the polyester resin,
and that Shafer’s polyester resin is a polymer resin. Pet. 17–18, 50; Ex.
1003 ¶¶ 179–180; Ex. 1013, 1; Ex. 1017, 407; Ex. 1019, 1; Ex. 1033, 144:5–
15; Ex. 2010, 7:6–8. Patent Owner does not dispute that the Amada and
Shafer combination teaches this limitation of claim 1.
3. Claim 11
Claim 11 recites “[a] method for making inductors with enhanced
inductance.”17 Ex. 1001, 6:61–62. Amada teaches an inductor with a coil
embedded in a magnetic coating that increases inductance per unit volume.
Pet. 44–45, 51; Ex. 1003 ¶¶ 155–156, 183; Ex. 1006, 1:53–62, 5:38–42.
Shafer teaches an inductor with a coil embedded in a magnetic molding
material that increases inductance per unit volume. Pet. 13, 17, 45, 51–52;
Ex. 1003 ¶¶ 157–158, 184; Ex. 1007, 3:24–29 (“The first and second
powdered irons have differing electrical characteristics that allow the device
to have a high inductance yet low core losses so as to maximize its
efficiency.”); Dec on Inst. 10.
Patent Owner responds that Petitioner’s “argument that Shafer
discloses ‘an improved inductor’ because it is ‘smaller’ is without merit.”
PO Resp. 56–57. Patent Owner’s argument is not persuasive. As discussed
above, Amada teaches that its magnetic coating “increases inductance and
thereby allows the number of turns of the coil . . . to be reduced.” Ex. 1006,

17 For purposes of this Decision, we do not decide whether the preamble is
limiting because we determine the prior art nonetheless teaches “[a] method
for making inductors with enhanced inductance.” Further, neither party
argues that the preamble is not limiting. See Pet. 51–52; PO Resp. 56–57.
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5:38–42. Patent Owner does not address that specific teaching of Amada.
See PO Resp. 56–57. Further, Patent Owner misinterprets Petitioner’s
assertions regarding Shafer. Petitioner does not assert that Shafer teaches an
inductor with enhanced inductance simply because it is smaller. See Pet. 45,
51. Rather, Petitioner asserts that Shafer’s “compression-molded magnetic
powder resin layer increases the inductance per unit volume, which is why
the inductor can be made smaller.” Id. (emphasis added).
Claim 11 recites “winding an electrically conducting coil about a
magnetic core.” Ex. 1001, 6:63–64. Amada teaches an inductor with an
electrically conducting coil wound around a magnetic core. Pet. 45–46, 52;
Ex. 1006, 3:38–42, 3:51–59.
Patent Owner responds that “the core in Shafer is the entire material in
Shafer Figure 6 that surrounds the winding, both down the middle and
around the outside.” PO Resp. 57 (citing Ex. 2010, 10:5–12). Thus,
according to Patent Owner, “in the hypothetical combination of Amada and
Shafer, the coil is within the core, instead of being wound about the core.”
Id. Further, Patent Owner contends that “in the alternative, Shafer cannot
wrap an electrically conducting coil around a magnetic core because there is
no magnetic core at the time that the coil is placed into Shafer’s mold.” Id.
(citing Ex. 1007, Fig. 4). Patent Owner’s argument is not persuasive
because it only addresses Shafer, not Amada. See id. As discussed above,
Amada teaches an inductor with an electrically conducting coil wound
around a magnetic core. Pet. 45–46, 52; Ex. 1006, 3:38–42, 3:51–59. Patent
Owner does not address that specific teaching of Amada. See PO Resp. 57.
Claim 11 recites “forming a magnetic resin layer by compression
molding to embed at least a portion of an outer periphery of said electrically
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conducting coil.” Ex. 1001, 6:65–67. Amada teaches a coating comprising
a magnetic powder and an epoxy resin that is formed on the entire
circumference of an electrically conducting coil. Pet. 46–47, 53; Ex. 1003
¶¶ 167–168, 190; Ex. 1006, 4:4–6, 5:38–42, Figs. 1(A), 1(B), 4(A). Shafer
teaches a magnetic molding material comprising magnetic powders and a
resin that is compression molded to embed an electrically conducting coil.
Pet. 47–49, 53; Ex. 1003 ¶¶ 169–172, 190; Ex. 1007, 3:24–26, 4:1–6, 5:8–
10, Fig. 6. As discussed in more detail below, it would have been obvious to
embed the outer periphery of Amada’s coil in either Amada’s magnetic
coating or Shafer’s magnetic molding material using Shafer’s compression
molding. Pet. 41–44; Ex. 1003 ¶¶ 146, 149, 151; see Section II.I.9. Patent
Owner responds that it would not have been obvious to combine Amada and
Shafer (which we address below in Section II.I.9), but Patent Owner does
not dispute that the Amada and Shafer combination teaches this limitation of
claim 11. See PO Resp. 57–58.
Claim 11 recites “wherein said magnetic resin matrix contains a
magnetic powder dispersed in a polymer resin.” Ex. 1001, 7:1–2. Amada
teaches that its magnetic coating contains a magnetic powder and an epoxy
resin. Pet. 49, 53; Ex. 1003 ¶ 176; Ex. 1006, 5:38–40. The evidence of
record shows that a person of ordinary skill in the art would have known that
1) Amada’s magnetic powder is dispersed in the epoxy resin; 2) Amada’s
epoxy resin is a polymer resin; and 3) Amada’s magnetic coating is a matrix.
Pet. 49–50, 53; Ex. 1001, 1:65–67; Ex. 1003 ¶¶ 176–177, 191; Ex. 1023,
3:38–41. Shafer teaches that its magnetic molding material comprises iron
powders and a polyester resin. Pet. 17–18, 50, 53; Ex. 1007, 3:24–47, 6:49–
51. The evidence of record shows that a person of ordinary skill in the art
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would have known that 1) Shafer’s iron powders are dispersed in the
polyester resin; 2) Shafer’s polyester resin is a polymer resin; and 3)
Shafer’s magnetic molding material is a matrix material. Pet. 17–18, 50, 53;
Ex. 1003 ¶¶ 179–180, 191; Ex. 1013, 1; Ex. 1017, 407; Ex. 1019, 1;
Ex. 1023, 3:28–31; Ex. 1033, 144:5–15; Ex. 2010, 7:6–8. Patent Owner
does not dispute that the Amada and Shafer combination teaches this
limitation of claim 11.
4. Claim 3 and 13
Claim 3 depends from claim 1, and recites “wherein said magnetic
core is a metal or metal oxide magnetic core.” Ex. 1001, 6:38–39. Claim 13
depends from claim 11, and recites a similar limitation. Id. at 7:6–8. Amada
teaches an inductor with a magnetic core made of ferrite, which is a metal
oxide. Pet. 45–46, 53–54; Ex. 1003 ¶ 192; Ex. 1006, 3:38–42, 14:1–3.
Patent Owner responds that Amada teaches a bobbin with “flanges
[that] are made of ferrite,” but “there is no indication that Amada’s core is
metal or a magnetic metal oxide.” PO Resp. 58 (citing Ex. 1006, 3:38–43,
4:15–17, 5:1–2). Patent Owner’s argument is not persuasive. As discussed
above, Amada teaches that the entire bobbin, including the core, is magnetic.
Ex. 1006, 3:38–42; see Section II.I.2. Amada further teaches that “the
bobbin having the flanges at its ends may be formed by baking, e.g., ferrite
or alumina.” Ex. 1006, 14:1–3 (emphases added). Thus, Amada teaches
that the entire bobbin, including the core, may be formed of ferrite. Id.
5. Claims 4 and 14
Claim 4 depends from claim 1, and recites “wherein said magnetic
core is made of a ferromagnetic metal, a metal alloy, a ferrimagnetic metal
oxide, or a mixture thereof.” Ex. 1001, 6:40–42. Claim 14 depends from
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claim 11, and recites a similar limitation. Id. at 7:9–12. Amada teaches an
inductor with a magnetic core made of ferrite, which is a ferrimagnetic metal
oxide. Pet. 45–46, 54–55; Ex. 1003 ¶ 193; Ex. 1006, 3:38–42, 14:1–3.
Patent Owner responds that it would not have been obvious to combine
Amada and Shafer (which we address below in Section II.I.9), but Patent
Owner does not dispute that the Amada and Shafer combination teaches the
limitation of claims 4 and 14. See PO Resp. 58–59.
6. Claims 7 and 17
Claim 7 depends from claim 1, and recites “wherein said polymer
resin is a thermosetting polymer.” Ex. 1001, 6:50–51. Claim 17 depends
from claim 11, and recites a similar limitation. Id. at 8:4–5. Amada teaches
a magnetic coating that contains a magnetic powder and an epoxy resin. Pet.
49, 55; Ex. 1003 ¶ 176; Ex. 1006, 5:38–40. The evidence of record shows
that a person of ordinary skill in the art would have known that Amada’s
epoxy resin is a thermosetting polymer. Pet. 55; Ex. 1001, 1:65–67;
Ex. 1003 ¶ 195; Ex. 1022, 1. Shafer teaches that its magnetic molding
material comprises a polyester resin. Pet. 22, 55; Ex. 1007, 3:24–47. The
evidence of record shows that a person of ordinary skill in the art would
have known that Shafer’s polyester resin is a thermosetting polymer. Pet.
22, 55; Ex. 1003 ¶¶ 89–91, 196; Ex. 1015, 1633; Ex. 1022, 1; Ex. 1033,
120:23–121:6; Tr. 44:19–45:9. Patent Owner does not dispute that the
Amada and Shafer combination teaches the limitation of claims 7 and 17.
7. Claims 9 and 19
Claim 9 depends from claim 1, and recites “wherein said magnetic
resin layer buries both said magnetic core and said electrically conducting
coil.” Ex. 1001, 6:54–56. Claim 19 depends from claim 11, and recites a
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similar limitation. Id. at 8:8–10. Amada teaches that its magnetic coating
buries the core and coil. Pet. 56–57; Ex. 1003 ¶¶ 199–201; Ex. 1006, Figs.
1(A), 17(B). Shafer teaches that its magnetic molding material is
compression molded completely around the coil so that the inductor has no
air spaces. Pet. 23–24, 57; Ex. 1003 ¶ 95; Ex. 1007, 1:28–31, 1:54–2:2, 4:1–
6, Fig. 6.
Patent Owner responds that, in Amada, “[t]he flanges ‘bury’ the end
portions of the core,” and, “[t]hus, the magnetic resin layer cannot bury the
entire core.” PO Resp. 59 (citing Ex. 1006, 3:38–42, 4:15–17, 5:1–2).
Patent Owner’s argument is not persuasive. Amada’s Figure 1(A) and
Figure 17(B) show that its magnetic coating covers any exposed portions of
the core and coil. Pet. 56–57; Ex. 1003 ¶¶ 199–202; Ex. 1006, Figs. 1(A),
17(B); Dec. on Inst. 30. Patent Owner does not dispute that specific
teaching of Amada, nor does Patent Owner provide a specific construction
of the term “bury” that requires more than what Amada teaches. See PO
Resp. 59.
Patent Owner also responds that Petitioner’s “citation to Amada
Figure 17(B) is misleading.” Id. Specifically, Patent Owner argues that
“[e]lements 358 and 362 shown on Figure 17(B) are not the ‘epoxy resin or
similar resin, e.g., ferrite powder’ disclosed at Amada 5:37–39,” because
“[t]hat disclosure of coating 6 applied to Amada embodiments 1–4.” Id.
(citing Ex. 1006, 5:26, 9:12). According to Patent Owner, “[i]ntervening
references to a coating over the coils include the use of paint.” Id. (citing
Ex. 1006, 8:65). Patent Owner’s argument is not persuasive. Amada
describes the embodiment of Figure 17(B) as including “a coating or armor.”
Ex. 1006, 9:5–10. As discussed above, Amada teaches that a coating or
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armor may contain a magnetic powder and an epoxy resin. Id. at 4:4–6, 5:7–
10; 5:38–42. Even if Patent Owner is correct that Amada’s coating may also
be a paint, we do not see any portion of Amada that limits the Figure 17(B)
embodiment to just a paint coating. See id. at 9:5–23.
8. Claims 10 and 20
Claim 10 depends from claim 1, and recites “wherein said magnetic
powder is made of a ferromagnetic metal powder, a metal alloy powder, a
ferrimagnetic metal oxide powder, or a mixture thereof.” Ex. 1001, 6:57–
60. Claim 20 depends from claim 11, and recites a similar limitation. Id. at
8:11–14. Amada teaches that its magnetic coating is made of ferrite powder,
which is a ferrimagnetic metal oxide powder. Pet. 58; Ex. 1003 ¶ 205;
Ex. 1006, 5:38–42. Shafer teaches that its magnetic molding material is
made of iron powders, which are ferromagnetic metal powders. Pet. 58; Ex.
1003 ¶ 206; Ex. 1007, 3:24–26. Patent Owner does not dispute that the
Amada and Shafer combination teaches the limitation of claims 10 and 20.
9. Reasons for Combining Amada and Shafer
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Amada and Shafer.
Pet. 41–44 (citing Ex. 1003 ¶¶ 147–153). We agree with and adopt
Petitioner’s reasoning. Specifically, Amada and Shafer relate to the same
field of endeavor as the ’390 patent, namely, inductors. Pet. 40–41;
Ex. 1001, 1:6–9; Ex. 1003 ¶ 148; Ex. 1006, 3:38–40; Ex. 1007, 1:25–27. It
would have been obvious to embed the outer periphery of Amada’s coil in
Amada’s magnetic coating using Shafer’s compression molding. Pet. 41–
42; Ex. 1003 ¶ 149. Doing so would have been obvious because it would
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provide Amada’s inductor with a uniform magnetic coating.18 Pet. 41–42;
Ex. 1003 ¶ 149. Alternatively, it would have been obvious to embed the
outer periphery of Amada’s coil in Shafer’s magnetic molding material
using Shafer’s compression molding. Pet. 42–43; Ex. 1003 ¶ 151. Doing so
would have been obvious because Shafer’s magnetic molding material
(which is made with iron powder) exhibits higher saturation flux density
than Amada’s magnetic coating (which is made with ferrite), and, thus,
would make Amada’s inductor capable of higher currents. Pet. 42–43;
Ex. 1003 ¶ 151. Further, combining the cited teachings of Amada and
Shafer would have been within the level of ordinary skill in the art. Pet. 43–
44; Ex. 1003 ¶ 152.
Patent Owner responds that Petitioner fails to explain how and why
Amada and Shafer would have been combined. PO Resp. 43–44. Patent
Owner’s argument is not persuasive. As discussed above, Petitioner
explains how Amada and Shafer would have been combined, namely, by
embedding the outer periphery of Amada’s coil in either Amada’s magnetic
coating or Shafer’s magnetic molding material using Shafer’s compression
molding. Pet. 41–44; Ex. 1003 ¶¶ 146, 149, 151. Petitioner also explains
why it would have been obvious to combine Amada and Shafer.
Specifically, Shafer’s compression molding process would provide Amada’s
inductor with a uniform magnetic coating, and Shafer’s magnetic molding
material would make Amada’s inductor capable of higher currents. Pet. 41–
43; Ex. 1003 ¶¶ 149, 151.

18 Petitioner also asserts that the Amada and Shafer combination would
minimize air spaces in Amada’s inductor. Pet. 42. We do not rely on that
particular reason to combine Amada and Shafer.
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a. Patent Owner’s Arguments Regarding How to
Combine Amada and Shafer
Patent Owner responds that Petitioner “simply state[s] that the
proposed combination of Amada and Shafer ‘would have been within the
level of ordinary skill in the art,’” which “should be given no probative
value.” PO Resp. 44; see PO Sur-reply 5–8. Patent Owner’s argument is
not persuasive. Shafer teaches that its compression molding process and
magnetic molding material can be used to embed an inductor coil, which
supports Petitioner’s argument that it would have been within the level of
ordinary skill in the art to use Shafer’s compression molding process and/or
magnetic molding material to embed the outer periphery of Amada’s coil.
Pet. 15–17, 47–48; Ex. 1007, 3:24–26, 4:1–6, 5:8–10, Fig. 6. Further,
Petitioner’s declarant, Dr. Erickson, explains that it would have been within
the level of ordinary skill in the art to modify Shafer’s compression molding
process to accommodate the size and shape of Amada’s inductor. Pet. 43–
44; Ex. 1003 ¶ 152.
Patent Owner responds that Amada’s core and Shafer’s core are not
interchangeable. PO Resp. 44–45. Specifically, Patent Owner argues that
“Amada discloses the use of a solid metal core,” whereas “Shafer is
unequivocal in requiring the use of a magnetic resin core.” Id. (citing
Ex. 2009 ¶ 89; Ex. 2010, 14:13–14). Patent Owner’s argument is not
persuasive because it misinterprets Petitioner’s proposed combination.
Petitioner does not propose interchanging the cores of Amada and Shafer.
See Pet. 41–44; Ex. 1003 ¶¶ 149, 151. Rather, in the proposed combination,
Amada retains its solid core, and either Amada’s magnetic coating or
Shafer’s magnetic molding material is compression molded around the outer
periphery of Amada’s coil. Pet. 41–44; Ex. 1003 ¶¶ 149, 151. Further,
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Patent Owner does not identify any portions of Shafer that criticize,
discredit, or otherwise discourage using a solid metal core. See PO Resp.
44–45; Ex. 2009 ¶ 89.
Patent Owner responds that “[t]he Shafer molding process does not
accommodate [Amada’s] solid core.” PO Resp. 45 (citing Ex. 2009 ¶ 91).
In particular, Patent Owner argues that 1) Shafer’s die “can only
accommodate leads on one side of the platen,” but “Amada uses leads on
opposite ends of the coil”; 2) “the vertical pressure of Shafer’s pressure-
inducing apparatus would distort the shape” of Amada’s horizontal coil; 3)
Amada’s solid core “would hamper the even distribution of the resin within
the coil envelope”; and 4) Amada’s “bobbin design of the core . . . is not
compatible with” Shafer’s compression molding machine. Id. at 45–47
(citing Ex. 2009 ¶¶ 95–96); see PO Sur-reply 8–9 (citing Ex. 1033, 105:15–
20; Ex. 2009 ¶ 50). Further, Patent Owner alleges that “the modifications
that would have been needed to the teachings of Shafer to accommodate the
teachings of Amada would not have been within the capabilities of a
POSITA.” PO Resp. 49 (citing Ex. 2009 ¶ 97). And, according to Patent
Owner, Petitioner’s declarant, Dr. Erickson, “did not know why a POSITA
would modify Shafer to accommodate Amada.” Id. at 48 (citing Ex. 2010,
14:19–24).
Patent Owner’s arguments are not persuasive. With respect to the
lead location issue, Shafer’s Figure 6 shows coil 90 with leads 98 and 100 on
opposite sides,19 and Shafer teaches compression molding a magnetic

19 Shafer’s Figures 3 and 5C show leads 16 and 18 on the same side of
platen 71, whereas Figure 6 shows leads 98 and 100 on opposite sides.
Compare Ex. 1007, 3:1–9, Figs. 3, 5C, with id. at 5:1–10, Fig. 6.
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molding material around the outer periphery of coil 90. Pet. 47–48; Ex.
1007, 5:1–10, Fig. 6. Thus, contrary to Patent Owner’s argument, Shafer
teaches that its compression molding process can accommodate coils with
different lead locations.
With respect to the coil orientation issue, Shafer’s Figure 6 shows a
coil that is similar to Amada’s coil, with the only apparent difference being
that Shafer’s coil is oriented vertically and Amada’s coil is oriented
horizontally. Pet. 46–48; Ex. 1006, Fig. 1(C); Ex. 1007, Fig. 6. Patent
Owner contends that “rotating the coil of Amada such that it was vertical
would (1) interfere with Shafer’s compression mechanism (because the core
inside the coil would not compress) and (2) introduce a problem with the
routing of the core leads.” PO Resp. 46. But Patent Owner does not explain
specifically why rotating Amada’s coil would create those issues. See id.
Patent Owner cites to paragraph 96 of the Raschke Declaration to support its
argument (id.), but that paragraph of the Raschke Declaration does not
mention anything about coil orientation (see Ex. 2009 ¶ 96).
With respect to the solid core issue, Shafer teaches compression
molding a magnetic molding material around a solid coil. Pet. 47–48;
Ex. 1007, 4:3–6. Patent Owner contends, though, that compression molding
Shafer’s magnetic molding material around Amada’s solid core would cause
“an uneven distribution of resin, likely accompanied by the introduction of
potential voids.” PO Resp. 46–47 (citing Ex. 2009 ¶ 96); see id. at 58–59;
see PO Sur-reply 19–20. But neither Patent Owner nor its declarant,
Dr. Raschke, explain specifically why Shafer’s compression molding
process can accommodate Shafer’s solid coil, but would cause an uneven
resin distribution when used with Amada’s solid core. See PO Resp. 46–47,
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58–59; PO Sur-reply 19–20; Ex. 2009 ¶ 96. Further, as Patent Owner
acknowledges, the ’390 patent describes compression molding a magnetic
resin layer around a solid core, but does not mention any issues with uneven
distribution of resin or potential voids. Ex. 1001, 3:12–19; Tr. 38:4–39:3.
With respect to the bobbin issue, Patent Owner simply states that
“[o]ne of the most glaring issues with Amada is the bobbin design of the
core, which is not compatible with the pressure molding machine 68 of
Shafer.” PO Resp. 47 (citing Ex. 1006, Fig. 27). But neither Patent Owner
nor its declarant, Dr. Raschke, explain specifically why Shafer’s
compression molding process cannot accommodate Amada’s bobbin. See
PO Resp. 47; Ex. 2009 ¶ 96.
For those reasons, we are not persuaded that Schafer’s compression
molding process cannot accommodate Amada’s inductor. Nonetheless, even
if some modifications to Shafer’s compression molding process would have
been necessary to accommodate Amada’s inductor, the parties’ declarants
agree that those modifications would have been within the level of ordinary
skill in the art. Ex. 1003 ¶ 152; Ex. 1033, 115:6–13, 116:8–20; Tr. 35:15–
22.
Patent Owner responds that “[a]ttempting to combine the teachings of
Amada and Shafer would result in a number of other non-trivial challenges.”
PO Resp. 47. Specifically, Patent Owner contends that combining Amada’s
“‘conventional’ core with the use of a magnetic resin material around the
coil introduces ‘the need for a high-temperature sintering process,’ and it
introduces ‘the commonly encountered problems involving molding,
fabrication, coiling, and packaging, etc.’” Id. (citing Ex. 1001, 3:44–55; Ex.
2009 ¶ 98); see PO Sur-reply 9.
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Patent Owner’s argument is not persuasive. The ’390 patent describes
an embodiment in which a magnetic resin layer is compression molded
around a conventional magnetic core. Ex. 1001, 2:60–3:19. Patent Owner’s
argument relies on another embodiment in which the conventional magnetic
core is eliminated. PO Resp. 47 (citing Ex. 1001, 3:44–55). Specifically,
Patent Owner cites the following portion of the ’390 patent:
In yet another modification of the process of the present
invention, the magnetic core can be eliminated and the entire
conducting coil is embedded inside a matrix of the magnetic-
resin mixture. This [] embodiment is most advantageous for
manufacturing inductors wherein the required value of
inductance is only moderate. This embodiment eliminates the
need for a high-temperature sintering process, it also eliminates
many of the commonly encountered problems involving
molding, fabrication, coiling, and packaging, etc. This process
involves placing the coil only into the compression mold,
followed by the step of pouring the magnetic resin into the
mold to enclose the coil.
Ex. 1001, 3:44–55. In other words, the ’390 patent describes two different
embodiments, one that includes a conventional magnetic core but requires
using a sintering process and addressing some common problems, and one
that eliminates the conventional magnetic core but only provides moderate
inductance. Id.
The ’390 patent, however, does not indicate that using a sintering
process or addressing the common problems with a conventional magnetic
core would have been beyond the level of ordinary skill in the art. See id.
Similarly, neither Patent Owner nor its declarant, Dr. Raschke, indicate that
doing so would have been beyond the level of ordinary skill in the art. See
PO Resp. 47; Ex. 2009 ¶ 98. In fact, as discussed above, the parties’
declarants agree that using Shafer’s compression molding process with
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Amada’s conventional magnetic core would have been within the level of
ordinary skill in the art. Ex. 1003 ¶ 152; Ex. 1033, 115:6–13, 116:8–20.
Patent Owner responds that “[a] POSITA would understand that
putting a magnetic resin layer (Shafer) around the outside of a coil having a
solid core (Amada) would not have predictable results as compared with
putting a magnetic resin layer (Shafer) around a coil having a magnetic resin
core (Shafer).” PO Resp. 48 (citing Ex. 2009 ¶¶ 52, 99); see id. at 53 (citing
Ex. 2009 ¶ 109); see PO Sur-reply 10 (citing Ex. 1033, 135:15–19). Patent
Owner contends that Petitioner’s declarant, Dr. Erickson, “agrees, in that the
results depend upon other factors, specifically the reluctance of the added
resin layer in relation to the reluctance of the core.” PO Resp. 48 (citing
Ex. 2010, 4:7–5:14).
Patent Owner’s argument is not persuasive. Shafer describes an
inductor with a resin core and teaches that embedding the outer periphery of
the inductor coil in a magnetic molding material “allow[s] the device to have
a high inductance.” Pet. 11, 13, 16–17, 47–48; Ex. 1007, 3:24–29, 4:3–6.
Amada describes an inductor with a solid core and teaches that embedding
the outer periphery of the inductor coil in a magnetic resin coating
“increases inductance.” Pet. 11, 44–45; Ex. 1006, 3:38–42, 5:38–42. Thus,
the evidence of record shows that a person of ordinary skill in the art would
have had a reasonable expectation that embedding the outer periphery of an
inductor coil in a magnetic resin layer would increase its inductance
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regardless of whether the core was solid or resin.20 See O’Farrell, 853 F.2d
at 903–04 (Fed. Cir. 1988).
Patent Owner responds that “Shafer cannot wrap an electrically
conducting coil around a magnetic core because there is no magnetic core at
the time that the coil is placed into Shafer’s mold.” PO Resp. 49 (citing Ex.
1007, Fig. 4; Ex. 2010, 15:17–16:1). Patent Owner’s argument is not
persuasive because Petitioner does not rely on Shafer to teach an electrically
conducting coil wound around a magnetic core. See Pet. 46. As discussed
above, Amada teaches an inductor with an electrically conducting coil
wound around a magnetic core. Id.; Ex. 1006, 3:51–59.
b. Patent Owner’s Arguments Regarding Why to
Combine Amada and Shafer
Patent Owner responds that “[s]ince neither Amada, Shafer or Franco
even mention using surrounding magnetic layers to increase the inductance
of a wound coil inductor, a POSITA would not conclude the adding
magnetic material to Amada’s armor coating would improve the coil
inductor in any way.” PO Resp. 50 (citing Ex. 2009 ¶ 87). Patent Owner
also argues that “Shafer does not disclose or suggest anything about the

20 The deposition testimony of Dr. Erickson and Dr. Raschke cited by Patent
Owner does not indicate that the Amada and Shafer combination would not
have predictable results. See Ex. 1033, 134:2–135:19; Ex. 2010, 4:7–5:4.
Rather, the cited testimony of Dr. Erickson simply indicates that adding a
magnetic resin layer to an inductor with a solid core may not result in the
exact same increase in inductance as adding a magnetic resin layer to an
inductor with a resin core. Ex. 2010, 4:7–5:4. And the cited testimony of
Dr. Raschke simply indicates that a person of ordinary skill in the art would
need to perform certain calculations to determine the exact increase in
inductance that results from adding a magnetic resin layer to an inductor.
Ex. 1033, 134:2–135:19.
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impact on the device inductance as to the process of molding the magnetic
mixture around the coil.” Id. (citing Ex. 1007, 1:18–24, 1:32–35, 1:41–42,
1:45–50; Ex. 2009 ¶ 45). According to Patent Owner, “[b]ecause the impact
on inductance of the material surrounding the coil is never addressed there is
no motivation for a POSITA to investigate such an effect.” Id. at 51.
Patent Owner’s argument is not persuasive. Both Amada and Shafer
teach that embedding the outer periphery of an inductor coil in a magnetic
resin material increases inductance. Specifically, Shafer teaches that its
magnetic molding material includes powdered irons that “allow the device to
have a high inductance yet low core losses so as to maximize its efficiency.”
Ex. 1007, 3:24–29; see Pet. 11, 13 17, 45. Amada teaches that its magnetic
coating includes a ferrite powder that “increases inductance.” Ex. 1006,
5:38–42; see Pet. 44–45.
Patent Owner responds that a person of ordinary skill in the art would
not have considered combining Amada and Shafer because “the technique of
Shafer is only practical for inductors having low inductance values.” PO
Resp. 51–52 (citing Ex. 1001, 3:44–49; Ex. 2009 ¶ 103); see PO Sur-reply 3
(citing Ex. 2009 ¶ 56). Patent Owner’s argument is not persuasive. Patent
Owner does not direct us to any portion of Shafer that indicates its
compression molding process or magnetic molding material are only
practical for inductors having low inductance values. See PO Resp. 51–52;
PO Sur-reply 3; Ex. 2009 ¶¶ 56, 103. Rather, Patent Owner relies on a
portion of the ’390 patent that describes a particular embodiment with only
“moderate” inductance because the magnetic core is eliminated. Ex. 1001,
3:44–49. However, Petitioner does not propose eliminating Amada’s
magnetic core. See Pet. 41–44; Ex. 1003 ¶¶ 149, 151. In the proposed
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combination, Amada retains its magnetic core, and either Amada’s magnetic
coating or Shafer’s magnetic molding material is compression molded
around the outer periphery of Amada’s coil. Pet. 41–44; Ex. 1003 ¶¶ 149,
151.
Patent Owner responds that a person of ordinary skill in the art
“would not have anticipated a benefit” from the Amada and Shafer
combination.21 PO Resp. 52–54. Patent Owner’s argument is not
persuasive. As discussed above, Petitioner presents evidence that it would
have been obvious to embed the outer periphery of Amada’s coil in Amada’s
magnetic coating using Shafer’s compression molding because it would
provide Amada’s inductor with a uniform magnetic coating. Pet. 41–42; Ex.
1003 ¶ 149. Patent Owner does dispute that the Amada and Shafer
combination would provide Amada’s inductor with a uniform magnetic
coating. See PO Resp. 52–54.
As also discussed above, Petitioner presents evidence that it would
have been obvious to embed the outer periphery of Amada’s coil in Shafer’s
magnetic molding material using Shafer’s compression molding because
Shafer’s magnetic molding material (which is made with iron powder)
exhibits higher saturation flux density than Amada’s magnetic coating
(which is made with ferrite), and, thus, would make Amada’s inductor
capable of higher currents. Pet. 42–43; Ex. 1003 ¶ 151. Patent Owner
contends that “Shafer’s magnetic powder resin material would not

21 Patent Owner disputes whether a person of ordinary skill in the art would
have combined Amada and Shafer in order to provide physical protection for
the inductor. PO Resp. 52–53. But Petitioner does not rely on physical
protection as a reason for combining Amada and Shafer. See Pet. 41–44;
Ex. 1003 ¶¶ 149, 151.
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necessarily exhibit greater flux density than Amada’s magnetic material
(made with ferrite).” PO Resp. 53 (citing Ex. 2009 ¶ 107). According to
Patent Owner, “the results of any comparison between the two materials
would not be predictable” and “would need to be determined through
extensive experimentation.” Id. (citing Ex. 2009 ¶ 107).
Patent Owner’s argument is not persuasive. Petitioner and its
declarant, Dr. Erickson, identify documentary evidence showing that an
inductor made with an iron material exhibits higher saturation flux density
than an inductor made with a ferrite material. Pet. 42–43; Pet. Reply 17;
Ex. 1003 ¶ 151; Ex. 1007, 1:45–49, 6:33–34; Ex. 1032, 17 (“Ferrite cores
are ceramic materials having low saturation flux density.”); 41 (“Laminated
iron alloy cores exhibit the highest [saturation flux density] . . . while ferrite
cores exhibit . . . the lowest [saturation flex density].”). On the other hand,
Patent Owner and its declarant, Dr. Raschke, do not identify any
documentary evidence indicating that the result of using Shafer’s magnetic
molding material would be unpredictable and require undue
experimentation. See PO Resp. 53; PO Sur-reply 16–17; Ex. 2009 ¶ 107.
Patent Owner responds that “Amada discloses the use of a solid ferrite
core.” PO Resp. 53 (citing Ex. 2009 ¶ 110). According to Patent Owner,
“Shafer actually explains that the use of ferrite as the powdered material
does not work with Shafer’s invention because the combination ‘results in an
inductor which saturates at a much lower level’ than Shafer’s invention.” Id.
at 53, 58 (citing Ex. 2004, 2; Ex. 2009 ¶¶ 67, 110); see PO Sur-reply 20–21
(citing Ex. 2004, 2; Ex. 2009 ¶ 67). Patent Owner further argues that “even
considering the use of an iron powder contained in a resin base is very much
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different from using solid iron” and “Amada discloses only a solid core – not
the use of a powder.” PO Resp. 53–54 (citing Ex. 2004, 2; Ex. 2009 ¶ 110).
Patent Owner’s arguments are not persuasive. First, Patent Owner
does not direct us to any portion of Shafer that indicates its inductor would
not work with a ferrite material or otherwise teaches away from using a
ferrite material. See PO Resp. 53–54, 59; PO Sur-reply 20–21; Ex. 2009 ¶¶
67, 110. Patent Owner only directs us to a declaration submitted during
prosecution of Shafer that describes certain advantages of using an iron
material. Ex. 2004, 2. Second, even if we assume that Shafer teaches away
from using a ferrite material, Petitioner does not propose incorporating
Amada’s ferrite core into Shafer’s inductor. See Pet. 41–44; Ex. 1003 ¶¶
146, 149, 151, As discussed above, Petitioner proposes embedding the outer
periphery of Amada’s coil in either Amada’s magnetic coating or Shafer’s
magnetic molding material using Shafer’s compression molding. Pet. 41–
44; Ex. 1003 ¶¶ 146, 149, 151.
Patent Owner responds that “[t]he asserted ‘order’ of the proffered
combination of references is not relevant” because “[t]he question is whether
a POSITA would have been motivated to combine the references.” PO Sur-
reply 12 (emphasis omitted). Patent Owner’s argument is not persuasive.
As discussed above, the evidence of record shows that the Amada and
Shafer combination would improve Amada’s inductor. Pet. 41–44; Ex. 1003
¶¶ 149, 151. Even if Patent Owner is correct that incorporating Amada’s
core and/or coil into Shafer would not improve Shafer’s inductor, we see no
reason why that would deter a person of ordinary skill in the art from
incorporating Shafer’s compression molding process and/or magnetic
molding material into Amada as proposed by Petitioner.
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10. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20 would have
been obvious over Amada and Shafer.
J. Ground 2B - Obviousness of Claims 2 and 12 over Amada,
Shafer, and Rittner
Petitioner argues that claims 2 and 12 would have been obvious over
Amada, Shafer, and Rittner. Pet. 2, 58. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 2 and
12 would have been obvious over Amada, Shafer, and Rittner.
1. Claims 2 and 12
Claim 2 depends from claim 1, and recites “wherein said magnetic
resin layer has a thickness determined matching a predetermined inductance
of said inductor.” Ex. 1001, 6:35–37. Claim 12 depends from claim 11, and
recites a similar limitation. Id. at 7:3–5. Rittner teaches setting the
inductance value of an inductor by adjusting the thickness of a covering
paste that includes a ferromagnetic material. Pet. 28–29, 61; Ex. 1003
¶¶ 103, 215 Ex. 1008, code (57), 1:10–22, 2:20–48, 5:10–6:5.
Patent Owner responds that “because Amada is a rectangular device, a
POSITA would not identify any sort of a consistent thickness of the resin
layer in Amada because Amada is a rectangular block placed over a
cylindrical coil.” PO Resp. 60. Patent Owner’s argument is not persuasive.
Amada’s Figure 1(B) shows that the thickness of coating 6 varies somewhat
along the circumference of coil 4 because coating 6 is rectangular and coil 4
is round. Ex. 1006, Fig. 1(B). But Patent Owner acknowledges that the
thickness of the claimed magnetic resin layer may vary somewhat, just not
substantially. PO Resp. 7 (“the term ‘layer’ . . . refers to an ascertainable
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thickness, and not a thickness that varies substantially along the
circumference of the outside of the coil.” (emphasis added)). Patent Owner
does not provide a specific explanation or identify specific evidence
indicating that the thickness of Amada’s coating varies substantially such
that it would prevent a person of ordinary skill in the art from setting the
thickness to match a required inductance, as taught by Rittner. See id. at 60.
2. Reasons for Combining Amada, Shafer, and Rittner
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Amada, Shafer,
and Rittner. Pet. 59–60 (citing Ex. 1003 ¶¶ 208–213). We agree with and
adopt Petitioner’s reasoning. Specifically, Rittner relates to the same field of
endeavor as the ’390 patent, namely, inductors. Pet. 59; Ex. 1001, 1:6–9;
Ex. 1003 ¶ 209; Ex. 1008, 1:6–9. It would have been obvious to adjust the
thickness of the magnetic coating or molding material in the Amada and
Shafer combination in order to set a required inductance value, as taught by
Rittner. Pet. 59; Ex. 1003 ¶ 211. Doing so would have been obvious
because it would benefit manufacturers by allowing them to supply
inductors with different inductance values for different applications. Pet.
59–60; Ex. 1003 ¶ 211; Ex. 1008, 1:48–53. Further, combining Rittner’s
teachings with Amada and Shafer would have been nothing more than using
Rittner’s teachings to improve the Amada and Shafer combination in the
same way. Pet. 60; Ex. 1003 ¶ 212; see KSR, 550 U.S. at 417 (“[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
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Patent Owner refers to its arguments regarding the Franco, Shafer, and
Rittner combination. PO Resp. 60. As discussed above, Patent Owner’s
arguments are not persuasive. See Section II.E.2.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 2 and 12 would have been obvious over Amada,
Shafer, and Rittner.
K. Ground 2C - Obviousness of Claims 5 and 15 over Amada,
Shafer, and Butherus
Petitioner argues that claims 5 and 15 would have been obvious over
Amada, Shafer, and Butherus. Pet. 2, 62. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 5 and
15 would have been obvious over Amada, Shafer, and Butherus.
1. Claims 5 and 15
Claim 5 depends from claim 1, and recites “wherein said magnetic
core is a compression molded magnetic core made of the same or different
magnetic resin as said magnetic resin layer.” Ex. 1001, 6:43–46. Claim 15
depends from claim 11, and recites a similar limitation. Id. at 7:13–16.
Butherus teaches forming a magnetic core by compressing particles of an
iron powder and a thermoplastic or thermosetting resin. Pet. 32, 64;
Ex. 1010, 1:17–20, 2:32–39, 3:32–39, 6:34–36.
Patent Owner refers to its arguments regarding the Franco, Shafer, and
Butherus combination. PO Resp. 62. As discussed above, Patent Owner’s
arguments are not persuasive. See Section II.F.1.
2. Reasons for Combining Amada, Shafer, and Butherus
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Amada, Shafer,
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and Butherus. Pet. 62–63 (citing Ex. 1003 ¶¶ 220–223). We agree with and
adopt Petitioner’s reasoning. Specifically, Butherus relates to the same field
of endeavor as the ’390 patent, namely, inductors. Pet. 62; Ex. 1001, 1:6–9;
Ex. 1003 ¶ 220; Ex. 1010, 2:13–15. It would have been obvious to use
Butherus’s compression molded magnetic resin core in the Amada and
Shafer combination because it would allow a manufacturer to set certain
inductor parameters and would lower energy loss. Pet. 62–63; Ex. 1003 ¶¶
222–223; Ex. 1010, 2:32–35, 2:41–45. In addition, combining Butherus
with Amada and Shafer would have been nothing more than using
Butherus’s compression molded magnetic resin core to improve the Amada
and Shafer combination in the same way. Pet. 63; Ex. 1003 ¶ 223; see KSR,
550 U.S. at 417.
Patent Owner refers to its arguments regarding the Franco, Shafer, and
Butherus combination. PO Resp. 61. As discussed above, Patent Owner’s
arguments are not persuasive. See Section II.F.2.
Patent Owner also responds that because the Amada and Shafer
combination “require[s] some type of solid iron or ferrite (not resin) core”
and Butherus “discloses only a magnetic resin core,” “[a] POSITA would . .
. not attempt to combine Amada and Butherus, as the two are mutually
exclusive approaches.” PO Resp. 61. Patent Owner’s argument is not
persuasive. Patent Owner does not direct us to any portion of Amada or
Shafer that criticizes, discredits, or otherwise discourages use of a resin core.
See id. Thus, we are not persuaded that Amada or Shafer teaches away from
Butherus’s resin core.
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3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 5 and 15 would have been obvious over Amada,
Shafer, and Butherus.
L. Ground 2D - Obviousness of Claims 6 and 16 over Amada,
Shafer, and Kaneko
Petitioner argues that claims 6 and 16 would have been obvious over
Amada, Shafer, and Kaneko. Pet. 2, 64. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 6 and
16 would have been obvious over Amada, Shafer, and Kaneko.
1. Claims 6 and 16
Claim 6 depends from claim 1, and recites that the inductor “further
comprises a metal magnetic sheath outside of said magnetic resin layer.”
Ex. 1001, 6:47–49. Claim 16 depends from claim 11, and recites a similar
limitation. Id. at 8:1–3. Kaneko teaches an inductor with a metal magnetic
sleeve enclosing a coil. Pet. 35–36, 66–67; Ex. 1003 ¶¶ 130, 235–236; Ex.
1009, 2:20–34, 4:5–9. Patent Owner responds that it would not have been
obvious to combine Amada, Shafer, and Kaneko (which we address below in
Section II.L.2), but Patent Owner does not dispute that the combination of
Amada, Shafer, and Kaneko teaches the limitation of claims 6 and 16. See
PO Resp. 62.
2. Reasons for Combining Amada, Shafer, and Kaneko
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Amada, Shafer,
and Kaneko. Pet. 65–66 (citing Ex. 1003 ¶¶ 229–231). We agree with and
adopt Petitioner’s reasoning. Specifically, Kaneko relates to the same field
of endeavor as the ’390 patent, namely, inductors. Pet. 65; Ex. 1001, 1:6–9;
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Ex. 1003 ¶ 229; Ex. 1009, 1:28–30, 1:50–53. It would have been obvious to
use Kaneko’s metal magnetic sleeve to surround the inductor of the Amada
and Shafer combination. Pet. 65; Ex. 1003 ¶ 230. Doing so would have
been obvious because it would further confine magnetic leakage flux and
further increase inductance. Pet. 65; Ex. 1003 ¶ 230. Adding Kaneko’s
metal magnetic sleeve to the inductor of the Amada and Shafer combination
also would permit the inductance to be adjusted to meet tight manufacturing
tolerances. Pet. 65–66; Ex. 1003 ¶ 231; Ex. 1009, 1:43–58. Further,
combining Kaneko’s magnetic sleeve with Amada and Shafer would have
been nothing more than combining known prior art elements according to
known methods to yield predictable results. Pet. 66; Ex. 1003 ¶ 231; see
KSR, 550 U.S. at 416 (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”).
Patent Owner refers to its arguments regarding the Franco, Shafer, and
Butherus combination. PO Resp. 62. As discussed above, Patent Owner’s
arguments are not persuasive. See Section II.G.2.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 6 and 16 would have been obvious over Amada,
Shafer, and Kaneko.
M. Ground 2E - Obviousness of Claims 8 and 18 over Amada,
Shafer, and Ohkawa
Petitioner argues that claims 8 and 18 would have been obvious over
Amada, Shafer, and Ohkawa. Pet. 2, 67. For the reasons discussed below,
Petitioner has shown by a preponderance of the evidence that claims 8 and
18 would have been obvious over Amada, Shafer, and Ohkawa.
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1. Claims 8 and 18
Claim 8 depends from claim 1, and recites “wherein said polymer is a
thermoplastic polymer.” Ex. 1001, 6:52–53. Claim 18 depends from claim
11, and recites a similar limitation. Id. at 8:6–7. Ohkawa teaches using a
thermoplastic resin for compression molding of electrical devices. Pet. 36–
37, 39, 69; Ex. 1003 ¶¶ 134–135, 140–141, 244; Ex. 1011, 2:18–22, 3:1–26.
Patent Owner responds that it would not have been obvious to combine
Amada, Shafer, and Ohkawa (which we address below in Section II.M.2),
but Patent Owner does not dispute that the combination of Amada, Shafer,
and Ohkawa teaches the limitation of claims 8 and 18. See PO Resp. 63.
2. Reasons for Combining Amada, Shafer, and Ohkawa
Petitioner presents evidence that a person of ordinary skill in the art
would have had reason to combine the cited teachings of Amada, Shafer,
and Ohkawa. Pet. 67–69 (citing Ex. 1003 ¶¶ 240–242). We agree with and
adopt Petitioner’s reasoning. Specifically, Ohkawa relates to the same field
of endeavor as the ’390 patent, namely, inductors. Pet. 37, 67; Ex. 1001,
1:6–9; Ex. 1003 ¶¶ 134, 136, 240; Ex. 1011, 8:5–12. Ohkawa also is
reasonably pertinent to a particular problem with which the inventors of the
’390 patent were involved, namely, providing electromagnetic shielding for
an electronic device. Pet. 37–38, 67–68; Ex. 1001, 1:50–58; Ex. 1003
¶¶ 134, 137, 241; Ex. 1011, 8:5–12; Dec. on Inst. 37–38. It would have been
obvious to use Ohkawa’s thermoplastic resin in the magnetic coating or
magnetic molding material that embeds the outer periphery of the coil in the
Amada and Shafer combination. Pet. 68; Ex. 1003 ¶ 241. Doing so would
have been obvious because Ohkawa’s thermoplastic resin provides several
benefits, including 1) good moldability; 2) high mechanical properties and
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dimensional stability; and 3) suitability for secondary machining. Pet. 68;
Ex. 1003 ¶ 241; Ex. 1011, 3:1–9.
Patent Owner refers to its arguments regarding the Franco, Shafer, and
Butherus combination. PO Resp. 63. As discussed above, Patent Owner’s
arguments are not persuasive. See Section II.H.2.
3. Summary
For the foregoing reasons, Petitioner has shown by a preponderance of
the evidence that claims 8 and 18 would have been obvious over Amada,
Shafer, and Ohkawa.
N. Constitutionality
Patent Owner argues that Administrative Patent Judges (“APJs”) “are
principal officers” who “must be appointed by the President and confirmed
by the Senate,” but “because they are not, the current structure of the Board
violates the Appointments Clause.” PO Resp. 63–64. We decline to
consider Patent Owner’s constitutional challenge as the Federal Circuit
addressed this issue in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320,
1325 (Fed. Cir. 2019).
Patent Owner argues that “[i]t is also unconstitutional to retroactively
apply inter partes review to the ’390 Patent, which was filed in 1999 and
issued in 2000, prior to the enactment of the AIA.” PO Resp. 64. We
decline to consider Patent Owner’s constitutional challenge as the Federal
Circuit addressed this issue in Celgene Corp. v. Peter, 931 F.3d 1342, 1362–
63 (Fed. Cir. 2019).
O. Petitioner’s Motion to Exclude
Petitioner filed a Motion to Exclude (Paper 24, “Pet. Mot. Excl.”),
Patent Owner filed an Opposition (Paper 26, “PO Opp. Excl.”) to the
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Motion, and Petitioner filed a Reply (Paper 27, “Pet. Reply Excl.”) to the
Opposition. We have considered the parties’ arguments, and, for the reasons
discussed below, Petitioner’s Motion to Exclude is denied.
1. Exhibits 2001 and 2002
Exhibits 2001 and 2002 are excerpts from an Encarta World English
Dictionary. Petitioner argues that Exhibits 2001 and 2002 should be
excluded under Fed. R. Evid. 901, as lacking authentication. Pet. Mot.
Excl. 2. Specifically, Petitioner contends that “[b]oth documents indicate
only that they were ‘First published in 1999’ by Bloomsbury Publishing
Plc,” which “is insufficient as a matter of law to establish the authenticity of
the documents.” Id. at 2–3.
The proponent of an item of evidence must produce evidence
sufficient to support a finding that the item is what the proponent claims it is.
Fed. R. Evid. 901. Here, Exhibits 2001 and 2002 indicate that they are
excerpts from an Encarta World English Dictionary. Ex. 2001; Ex. 2002.
Petitioner does not provide any specific reason for us to believe that Exhibits
2001 and 2002 are not what they purport to be. See Pet. Mot. Excl. 2–3.
Absent a persuasive explanation, Petitioner’s Motion to Exclude is denied
with respect to Exhibits 2001 and 2002.
2. Exhibit 2005
Exhibit 2005 is a product datasheet for a powder coating known as
Interpon 700. Petitioner argues that Exhibit 2005 should be excluded under
Fed. R. Evid. 401, 402, 403, 801, 802, and 901, as irrelevant, prejudicial,
inadmissible hearsay, and lacking authentication. Pet. Mot. Excl. 3–5.
Specifically, Petitioner contends that Exhibit 2005 1) is irrelevant because
“[w]hat was written in Exhibit 2005 in 2011 . . . does not make any fact
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relating to 1999 or earlier, more or less probable”; 2) “constitutes
inadmissible hearsay without an exception to support its admissibility”; and
3) lacks authentication because “there is no specific proof that . . . the exhibit
is a true and correct copy of the document.” Id. at 4–5.
Petitioner’s argument regarding the relevance of Exhibit 2005 raises a
question of sufficiency of proof, not admissibility. Further, as discussed
above, we considered Exhibit 2005 in connection with Patent Owner’s
arguments in the Response, but we do not find Patent Owner’s arguments
that rely on Exhibit 2005 to be persuasive. See Section II.D.2. As a result,
Petitioner does not suffer any prejudice by our admission of Exhibit 2005.
Petitioner does not explain specifically why the statements in Exhibit
2005 are inadmissible hearsay. See Pet. Mot. Excl. 4. Further, hearsay is
limited to a statement that a party offers in evidence to prove the truth of the
matter asserted in the statement. Fed. R. Evid. 801. Patent Owner offers,
and we consider, Exhibit 2005 as evidence of the effect that the statements
in Exhibit 2005 would have had on a person of ordinary skill in the art
considering the prior art combinations proposed by Petitioner in this case.
See Section II.D.2. Thus, the statements in Exhibit 2005 are not hearsay
because they are not offered as evidence of the truth of the matter asserted.
The proponent of an item of evidence must produce evidence
sufficient to support a finding that the item is what the proponent claims it is.
Fed. R. Evid. 901. Here, Exhibit 2005 indicates that it is a product datasheet
for a powder coating known as Interpon 700. Ex. 2005. Petitioner does not
provide any specific reason for us to believe that Exhibit 2005 is not what it
purports to be. See Pet. Mot. Excl. 4.
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Therefore, Petitioner’s Motion to Exclude is denied with respect to
Exhibit 2005.
3. Exhibit 2008
Exhibit 2008 is a document entitled “The Different Types of Inductors
and Their Affecting Factors” that is available at http://www.elprocus.com.
Petitioner argues that Exhibit 2008 should be excluded under Fed. R. Evid.
401, 402, 403, 801, 802, and 901, as irrelevant, prejudicial, inadmissible
hearsay, and lacking authentication. Pet. Mot. Excl. 5–6. Specifically,
Petitioner contends that Exhibit 2008 1) is irrelevant because it “almost
certainly postdates the Shafer references (dated 1997) and thus is not within
the prior art”; 2) “constitutes inadmissible hearsay without an exception to
support its admissibility”; and 3) lacks authentication because there is no
evidence that it is a true and correct copy. Id.
Petitioner’s argument regarding the relevance of Exhibit 2005 raises a
question of sufficiency of proof, not admissibility. Further, as discussed
above, we considered Exhibit 2008 in connection with Patent Owner’s
arguments in the Response, but we do not find Patent Owner’s arguments
that rely on Exhibit 2008 to be persuasive. See Section II.E.2. As a result,
Petitioner does not suffer any prejudice by our admission of Exhibit 2008.
Petitioner does not explain specifically why the statements in Exhibit
2008 are inadmissible hearsay. See Pet. Mot. Excl. 6. Further, hearsay is
limited to a statement that a party offers in evidence to prove the truth of the
matter asserted in the statement. Fed. R. Evid. 801. Patent Owner offers,
and we consider, Exhibit 2008 as evidence of the effect that the statements
in Exhibit 2008 would have had on a person of ordinary skill in the art
considering the prior art combinations proposed by Petitioner in this case.
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See Section II.E.2. Thus, the statements in Exhibit 2008 are not hearsay
because they are not offered as evidence of the truth of the matter asserted.
The proponent of an item of evidence must produce evidence
sufficient to support a finding that the item is what the proponent claims it is.
Fed. R. Evid. 901. Here, Exhibit 2008 indicates that it is a document entitled
“The Different Types of Inductors and Their Affecting Factors” that is
available at http://www.elprocus.com. Ex. 2008. Petitioner does not
provide any specific reason for us to believe that Exhibit 2008 is not what it
purports to be. See Pet. Mot. Excl. 5–6.
4. Exhibit 2009
Exhibit 2009 is the Raschke Declaration. Petitioner argues that
Exhibit 2009 should be excluded under Fed. R. Evid. 401, 402, 403, 702,
703, as irrelevant, prejudicial, and unreliable. Pet. Mot. Excl. 6–10.
Specifically, Petitioner argues that the Raschke Declaration 1) contains
“[n]umerous statements” that “are conclusory and/or unsupported by
additional evidence”; 2) “implicate[s] Dr. Raschke’s understanding of
United States patent law and patent examination practice with respect to a
person of ordinary skill in the art (POSITA), a subject on which he is not an
expert”; and 3) contains statements that “are vague, conclusory, and
generally unhelpful in analyzing the prior art or why a person of ordinary
skill in the art would not have been motivated to combine the references.”
Id. Petitioner’s arguments raise a question of the weight that should be
given to Dr. Raschke’s testimony, not admissibility. Therefore, Petitioner’s
Motion to Exclude is denied with respect to Exhibit 2009.
5. Summary
For the foregoing reasons, Petitioner’s Motion to Exclude is denied.
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III. CONCLUSION22
Petitioner has shown by a preponderance of the evidence that claims
1–20 of the ’390 patent are unpatentable.
IV. ORDER
It is hereby
ORDERED that claims 1–20 of the ’390 patent are shown
unpatentable;
FURTHER ORDERED that Petitioner’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.
In summary:
Claims

35
U.S.C. §
References/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1, 3, 4, 7,
9–11, 13,
14, 17,
19, 20
103 Franco, Shafer 1, 3, 4, 7, 9–
11, 13, 14, 17,
19, 20

2, 12 103 Franco, Shafer,
Rittner
2, 12

22 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).
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Claims

35
U.S.C. §
References/Basis Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
5, 15 103 Franco, Shafer,
Butherus
5, 15
6, 16 103 Franco, Shafer,
Kaneko
6, 16
8, 18 103 Franco, Shafer,
Ohkawa
8, 18
1, 3, 4, 7,
9–11, 13,
14, 17,
19, 20
103 Amada, Shafer 1, 3, 4, 7, 9–
11, 13, 14, 17,
19, 20

2, 12 103 Amada, Shafer,
Rittner
2, 12
5, 15 103 Amada, Shafer,
Butherus
5, 15
6, 16 103 Amada, Shafer,
Kaneko
6, 16
8, 18 103 Amada, Shafer,
Ohkawa
8, 18
Overall
Outcome
1–20

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FOR PETITIONER:

Ricardo Bonilla
P. Weston Musselman, Jr.
Michael R. Ellis
FISH & RICHARDSON P.C.
rbonilla@fr.com
musselman@fr.com
ellis@fr.com

FOR PATENT OWNER:

Robert D. Katz
KATZ PLLC
rkatz@katzfirm.com

Lewis E. Hudnell, III
HUDNELL LAW GROUP P.C.
lewis@hudnelllaw.com