Takeaway: A teaching in the prior art that an asserted combination would result in a decrease in performance is not necessarily a teaching away that would result in a finding of nonobviousness.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1, 2, 4, 6, 7, 9, 11, 13-20, 23, 25, and 26 of the ’627 patent unpatentable. Patent Owner argued that “(1) the Board misapprehended the definition of a person of ordinary skill in the art and, because of this misapprehension, the Board improperly credited Mr. Galvagni’s testimony related to issues of electrical design; (2) the Board erred as a matter of law in interpreting the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), and (3) the Board overlooked Patent Owner’s argument that the prior art, as well as commercial requirements for implantable medical devices, taught away from the proposed combination of references.”

In a request for rehearing, “the dissatisfied party ‘must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or reply.’”

Regarding the definition of a person of ordinary skill in the art, the Board noted that in its Final Decision, it had considered Patent Owner’s arguments and rejected its “identification of one of ordinary skill in the art as too narrow.” The Board further stated that Patent Owner had misconstrued the Board’s findings, noting that it did not conclude “that knowledge of structural design could substitute for electrical design expertise.” The Board had considered in its Final Decision the testimony of Mr. Galvagni, taking into account his “relative lack of experience in electrical design.”

Patent Owner also asserted that the Board improperly relied upon Mr. Galvagni’s testimony in support of its construction of the term “edge ground.” The Board was not persuaded, noting that the Board relied upon other additional evidence in its construction.

Patent Owner contended that the testimony of Mr. Prymak “should not be credited because he could not identify a real-world example of a capacitor array for a human implantable device that solely used an internal ground in lieu of perimeter metallization.” The Board stated that Patent Owner did not explain how the lack of real-world example would undermine testimony related to what “one of ordinary skill in the art would understand from the Hazzard reference.” Thus, the Board was not persuaded that it “erred in crediting Mr. Galvagni’s testimony relating to the Hazzard reference or in concluding that the term ‘an edge ground’ in Hazzard refers to ‘the normal method of using perimeter metallization around the edge or periphery of the capacitor.’”

Regarding the Board’s interpretation of KSR, Patent Owner took issue with the Board’s statement that “[m]odifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid.” In particular, Patent Owner asserted that “change that results in a known loss in performance that others sought to avoid cannot provide legal motivation for that change” and that when elements “work together in an unexpected and fruitful manner they are nonobvious.”

However, the Board noted that it did not rely upon this statement as legal motivation, but rather relied on evidence provided by Petitioner that one of skill in the art would have the requisite motivation. Moreover, the Board noted that Patent Owner did not establish nonobviousness because it did not show “that any surprising result was obtained in the feedthrough capacitors of the ’627 patent, much less a surprising result commensurate in scope with the claimed invention.”

Regarding the alleged teaching away, the Board indicated that it had considered the arguments and found them unpersuasive. In particular, even though the prior art indicated some “decrease in performance” in the asserted combination, the Board was not persuaded that the decrease would teach away from the combination of references. Moreover, the Board was not persuaded by Patent Owner’s arguments that Petitioner’s declarant, Mr. Prymak, admitted that the asserted combination would result in an undesirable increase in size or decrease in capacitance.

Accordingly, the Board denied Patent Owner’s Rehearing Request.

AVX Corp. v. Greatbatch, Ltd., IPR2014-00697

Paper 60: Decision on Request for Rehearing

Dated: January 11, 2016

Patent: 5,905,627

Before: Jeremy M. Plenzler, Jon B. Tornquist, and Beth Z. Shaw