Takeaway: The granting of an injunction in a related proceeding, without more, does not demonstrate a nexus between the claimed subject matter and the objective evidence of a secondary consideration of industry praise and acceptance.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 7-10 of the ’586 patent are unpatentable, but had not shown by a preponderance of the evidence that claims 1-6, 11, and 12 of the ’586 patent are unpatentable. Petitioner’s Motion to Exclude evidence was granted-in-part, denied-in-part, and dismissed-in-part as moot. Patent Owner’s Motion to Exclude was denied.

The ’586 patent relates to an improved electrode separator for a high-energy rechargeable lithium battery. Petitioner challenged the ’586 patent as follows: (1) claims 1-3, 5, 6, and 11 are allegedly anticipated by Tojo; (2) claims 4, 7-9, 11, and 12 are allegedly obvious over Tojo and Lundquist; and (3) claim 10 is allegedly obvious over Tojo and Kejha.

Patent Owner challenged as too broad the Board’s construction of the limitation, “ceramic composite layer…adapted to at least block dendrite growth and to prevent electronic shorting.” The Board construed this limitation as encompassing “any such layer capable of blocking dendrite growth with any degree of effectiveness.” However, the Board concluded that Patent Owner’s proffered construction of the limitation imported elements of the specification into the claims.

Turning to Petitioner’s anticipation challenge based on Tojo, Patent Owner argued that “dendrites” are softer than the “microparticles” Tojo sought to block, and that the dendrites can vary in size in direction over time and grow through the openings in a separator under the right conditions. Petitioner asserted that even if Tojo does not explicitly disclose the challenged limitation, Tojo’s ceramic composite layer inherently blocks dendrite growth. Based on the expert testimony and supporting documents, the Board concluded that Tojo’s porous ceramic composite layer is not capable of hindering, interrupting, or delaying the passage, progress, or course of dendrite growth, with any degree of effectiveness sufficient to prevent electronic shorting. Thus, Petitioner had not shown by a preponderance of the evidence that Tojo anticipates claims 1, 2, 3, 5, 6, and 11 of the ’586 patent.

Next, the Board addressed Petitioner’s obviousness challenge based on Tojo and Lundquist. Petitioner asserted that Tojo discloses separators and batteries having all of the features required by claims 4, 7-9, 11, and 12 except for the material recited in claims 4, 7, and 12. Petitioner asserted that Lundquist remedies this deficiency and an ordinary artisan would have substituted the polytetrafluorethylene (PTFE) of Lundquist for the resin binder of Tojo. The Board noted that Patent Owner did not challenge Petitioner’s characterization of (1) Tojo teaching all the features of claims 4, 7-9, 11, and 12 except for the matrix materials, and (2) Lundquist’s teachings.

Patent Owner alleged that an ordinary artisan would not have combined Lundquist with Tojo. In particular, Patent Owner alleged that Lundquist teaches away from the use of fluoropolymers such as PTFE as a “binder material.” The Board disagreed with Patent Owner, noting that Tojo does not criticize or discredit use of fluoropolymers. Patent owner alleged that Tojo teaches the compounds in the separators should be hard, whereas PTFE is a soft compound. Petitioner countered that Tojo describes polyolefins as soft materials that were suitable as a binder material. The Board concluded that an ordinary artisan would not have been dissuaded from using Lundquist’s PTFE as the binder material in Tojo’s ceramic composite layer. The Board also was not persuaded by Patent Owner’s argument that one of ordinary skill would not have looked to Lundquist because it is allegedly concerned with a different problem.

The Board stated that objective indicia of nonobviousness must be considered as part of all the evidence, not just when the decision maker remains in doubt after reviewing the art. Patent Owner alleged that its invention had been copied by a competitor, achieved industry acceptance and experienced significant commercial success. Patent Owner relied upon its expert in support of its contentions. Petitioner alleged that Patent Owner’s response improperly incorporates by reference the arguments and claims analysis from Patent Owner’s experts. The Board agreed with Petitioner. Even if there was no procedural issue, the Board afforded no substantial weight to Patent Owner’s evidence of secondary considerations because Patent Owner failed to establish a nexus between the merits of the claimed subject matter and the evidence. Regarding the copying, the Board determined that there was a significant difference between Patent Owner’s claimed subject matter and the allegedly infringing product. The Board stated that the granting of an injunction in a related proceeding does not demonstrate a nexus between the subject matter recited in claims 7-9 and the evidence of industry praise and acceptance.

Thus, the Board concluded that petitioner had established by a preponderance of the evidence that claims 7-9 of the ’586 patent are unpatentable. Claims 4, 11, and 12 depend on claim 1. The Board determined, based on its analysis of claim 1, that Petitioner had not demonstrated that claims 4, 11, and 12 are taught or obvious over the combination of Tojo and Lundquist.

Regarding the obviousness of claim 10 over Tojo and Kejha, Petitioner alleged that Kejha discloses a matrix material composed of polyvinylidene fluoride (PVDF), polyethylene oxide (PEO), or a combination thereof and that use of these materials is a simple substitution of one known material for another to obtain predictable results. Patent Owner argued for the existence of secondary considerations, as above, and argued against the combination of Tojo and Kejha. As above, these arguments were not persuasive. The Board agreed with Petitioner and stated that Tojo has an expansive teaching regarding its matrix material and that Patent Owner had failed to establish a nexus between the objective indicia and the subject matter recited in the claims. Thus, the Board concluded that Petitioner had shown that claim 10 is unpatentable

Petitioner moved to exclude Patent Owner’s expert testimony because it was allegedly the result of improper coaching. Patent Owner stated that the expert was not coached, but instructed not to answer questions involving privileged subject matter. The Board agreed with Patent Owner and denied Petitioner’s Motion to Exclude.

Petitioner moved to exclude two exhibits as irrelevant because Patent Owner did not rely upon them during the proceeding. Patent Owner alleged that the exhibits provide background regarding the knowledge of the ordinary artisan. The Board disagreed with Patent Owner and granted Petitioner’s Motion to Exclude.

Petitioner moved to exclude the declaration from another one of Patent Owner’s experts because, according to Petitioner, this expert did not have any firsthand knowledge regarding the properties of polymers to which he testified. Patent Owner alleged that Federal Rules of Evidence (FRE) rule 602 does not apply to its expert. The Board agreed with Patent Owner and denied Petitioner’s motion.

Petitioner moved to exclude as hearsay under FRE 801 and 802 various exhibits proffered by Patent Owner as evidence of commercial success. Patent Owner alleged that under FRE 703 it is proper for its expert to rely on otherwise impermissible evidence in forming his opinion and that Petitioner has not identified any prejudice in admitting the disputed exhibits. The Board agreed with Patent Owner and concluded that the exhibits have substantial probative value. Thus, the Board denied Petitioner’s Motion to Exclude.

Petitioner moved to exclude the declaration of Patent Owner’s third expert, alleging that it is prejudicial because the expert failed to agree to appear at a deposition. The Board noted that the expert’s testimony is not relevant given the above discussion. Thus, it dismissed the motion as moot.

Petitioner moved to exclude under FRE 602 certain paragraphs of Patent Owner’s fourth expert because the declaration does not adduce any evidence that the expert had any firsthand knowledge of the matters asserted in those portions of the declaration. Patent Owner pointed out that the expert explicitly stated that he has personal knowledge of the matters. The Board agreed with Patent Owner and denied the Motion to Exclude.

Patent Owner moved to exclude the testimony of Petitioner’s expert under FRE 402 and 702. The Board stated that any potential deficiencies in the experts’ understanding of the legal concepts of unpatentability do not warrant exclusion of the testimony for its value concerning technical issues. Thus, the Board denied Patent Owner’s Motion to Exclude.

Lastly, Patent Owner moved to exclude the translation of Tojo because it differs from a translation in a copending challenge to the claims of the ’586 patent. The Board noted that Patent Owner has not shown any clear or specific evidence suggesting that the translation presented in the instant proceeding is inaccurate. The Board denied Patent Owner’s Motion to Exclude.

SK INNOVATION CO., LTD. v. CELGARD, LLC, IPR2014-00679

Paper 58: Final Written Decision

Dated: September 25, 2015

Patent 6,432,586

Before: Francisco C. Prats, Donna M. Praiss, and Chrisopher L. Crumbley

Written by: Prats

Related proceedings: SK Innov. Co.. Ltd. v. Celgard, LLC, Case IPR2014-00680, Paper 2 (May 9, 2014); Celgard, LLC v. SK Innovation Co., Ltd., Case No. 3:13-cv-00254; Celgard, LLC v. LG Chem, Ltd., Case No. 3:13-cv-00043; and Celgard, LLC v. Sumitomo Chemical Co., Ltd., Case No. 3:13-cv-00122; IPR2014-00524; IPR2014-00692; IPR2015-01511