Takeaway: Modifying 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 its Final Written Decision, the Board found all challenged claims of the ‘627 patent unpatentable as obvious under 35 U.S.C. § 103. The ‘627 patent “discloses an internally grounded feedthrough filter capacitor assembly used to prevent the passage of externally generated electromagnetic interference (‘EMI’) into an electronic device, such as a cardiac pacemaker.”

The Board did not construe any claim terms, and concluded, with respect to the level of ordinary skill in the art, that “a person of ordinary skill in the art would have a degree in electrical engineering, chemistry, or physics, or a related field, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.” In a footnote, the Board addressed Patent Owner’s assertion that the level of ordinary skill in the art should be higher, noting that “in general, a lower level of skill in the art favors a determination of nonobviousness, while a higher level of skill favors a finding of obviousness.”

The Board then addressed alleged obviousness of claims 1, 2, 4, 9, 11, 13-17, 20, 23, 25, and 26 in view of Stevenson and Hazzard. Stevenson “discloses feedthrough capacitors for use in implantable medical devices, such as heart pacemakers.” Hazard “is an AVX Corporation [i.e., Petitioner] publication directed to EMI suppression using multilayer ceramic discoidal arrays.” Petitioner contended that “Stevenson discloses every limitation of independent claims 1, 11, and 25, except ‘a ground lead conductively coupled to the conductive ferrule’ or ‘substrate.’” Petitioner further contended, however, “that it would have been obvious to modify the feedthrough capacitor assembly of Stevenson to replace the peripheral ground point G2 with Hazzard’s internal ground lead” because “the combination would allow for ‘redundant feedthrough ground leads for internal circuits’ and would eliminate ‘the need for creating exterior metallizations on the filter capacitor.’” Patent Owner, on the other hand, argued that “there would have been no motivation to modify Stevenson in view of Hazzard because ‘[n]o filter designer would intentionally design an EMI filter that lowers attenuation of an EMI filter over its intended filtering range.’”

The Board credited Petitioner’s experts and concluded that “Hazzard discloses internally grounding a feedthrough capacitor by replacing a peripheral ground with a grounded pin.” The Board also found sufficient motivation to combine, noting 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 contrast, “Patent Owner does not explain persuasively why these asserted reasons to combine the references are unreasonable or incorrect.”

The Board then addressed secondary consideration of nonobviousness. Patent Owner argued “that sales of Greatbatch item number 2670-F011-001 of $185,172, $714,742, $1,571,152 in 2011, 2012, and 2013, respectively, is ‘strong evidence of commercial success.’” However, “[w]ithout an indication that the reported sales volume represents a substantial quantity in the market, Patent Owner’s evidence of the number of units sold provides only a very weak showing of commercial success.” See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Moreover, Patent Owner’s mere noting of the level of sales and assertion “that this item falls within the scope of claim 1 of the ‘627 patent” is “not sufficient to establish a nexus between the reported sales and the ‘unique characteristics of the claimed invention.’” Also, the Board did not credit Patent Owner’s evidence of “beneficial results addressing a problem with prior art devices” because Patent Owner “provides no proof that the lack of field failures was a direct result of the internal grounding of the feedthrough capacitors, as opposed to other mechanical or structural characteristics of the devices disclosed in the Stevenson and Brendel paper.” The Board was thus not persuaded that commercial success and lack of field failures overcomes Petitioner’s evidence of obviousness.

The Board next addressed alleged obviousness of claims 6, 7, 18, and 19 over Stevenson, Hazzard, and Colburn. Petitioner argued that (1) “Colburn discloses the ‘nail-head lead’ of claims 6, 7, 18, and 19, and one of ordinary skill in the art would have sought to use this nail-head lead in the device of Stevenson and Hazzard because such leads were known to provide a “secure, reliable, and/or high quality connection”; and (2) “that use of Colburn’s nail-head lead in place of the Stevenson’s ground pin would comprise a simple substitution of one known element for another known element, yielding a predictable result.” Patent Owner did not address Colburn and the Board determined that Petitioner had established obviousness of the challenged claims.

The Board next addressed Patent Owner’s motions to exclude. Patent Owner moved to exclude the testimony of Mr. Galvagni because he is not a person of ordinary skill in the art. The Board was not persuaded, stating that “a declarant’s expertise and experience need not match perfectly the experience and education of a person of ordinary skill in the art to provide testimony.” SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1373 (Fed. Cir. 2010). Instead, the declarant must “have sufficient ‘knowledge, skill, experience, training, [and] education’ of such specialized nature to assist the trier of fact to understand the evidence.” Id. (quoting Fed. R. Evid. 702). Here, the Board concluded “that an adequate relationship exists between Mr. Galvagni’s education and work experience and the claimed invention.” Patent Owner also moved to “exclude the testimony of Mr. Prymak directed to the meaning of the term ‘also’ in Hazzard, because Patent Owner alleges his testimony is based on a mistaken belief that ‘various dictionary definitions’ define ‘also’ to mean ‘in place of.’” However, the Board found this assertion “goes to the weight to be given Mr. Prymak’s testimony, not its admissibility.” “Moreover, Mr. Prymak was one of the authors of Hazzard and is qualified to speak to what one of ordinary skill in the art would understand Hazzard to disclose, regardless of any alleged ‘mistaken belief’ that the dictionary definition of ‘also’ could mean ‘in place of.’”

Finally, the Board addressed Patent Owner’s unopposed motion to seal. The Board was persuaded “that good cause exists to grant the motion to seal and to enter the default Protective Order.” The Board further explained the procedure to be followed in the case:

The sealed documents will remain under seal pending the outcome of any appeal taken from this Final Written Decision. At the conclusion of any appeal proceeding, or if no appeal is taken, the documents will be made public. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760–61 (Aug. 14, 2012). Either party may, however, file a motion to expunge the sealed documents from the record pursuant to 37 C.F.R. § 42.56. Any such motion will be decided after the conclusion of any appeal proceeding or the expiration of the time period for appeal.

In sum, claims 1, 2, 4, 6, 7, 9, 11, 13-20, 23, 25, and 26 of the ’627 patent were held to be unpatentable.

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

Paper 57: Final Written Decision

Dated: October 21, 2015

Patents: 5,905,627

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

Written by: Tornquist

Related proceedings: Greatbatch LTD v. AVX Corp., No. 13-723-LPS (D. Del.)