Takeaway: Petitioner persuaded a majority of the panel that although its arguments in the Petition were drawn to a claim construction that was not adopted, the Board had overlooked certain arguments that demonstrated a reasonable likelihood claims were anticipated even under the Board’s construction of the claims.

In its Decision, the Board granted-in-part and denied-in-part Petitioner’s Request for Rehearing seeking reconsideration of the Board’s denial of institution. The Request asserted that the Board misapprehended or overlooked certain matters in its decision on institution.

Each challenged claim of the ’553 patent includes the feature of a “laminar delamination gap” defined by an insulator and a washer. In its Decision on Institution, the Board had rejected both Petitioner’s and Patent Owner’s proposed constructions of the term “laminar delamination gap.” Instead, the Board had construed the term to mean “a very thin space between layers of material allowing passage of helium gas to the outer edges of the capacitor,” without giving any guidance as to how thin a space must be to constitute “a very thin space.”

Petitioner had relied on certain figures of Fraley for disclosing the passage of helium gas to the outside edge of the capacitor. In its Decision on Institution, the Board had concluded that “Petitioner and its declarant present no argument or evidence sufficient to persuade us that Fraley’s disclosure that the gaps ‘can be minute in cross-section and not visible to the eye’ pertains to a gap between the insulator and a washer or to any of spaces . . . that Petitioner identifies as a ‘laminar delamination gap.’” On this basis, the Board had declined to institute inter partes review with respect to all challenged claims.

In its Request for Rehearing, Petitioner argued that the Board had overlooked evidence presented in the Petition and declaration testimony that Fraley’s disclosure of “minute” gaps includes the spaces “located between the insulator 122/222 and the washer 124/224.” Specifically, Petitioner argued that “gaps 142 . . . 148 of Fraley define ‘a gas flow passage’” that ‘extends from the upper, inner surface of insulator 122’ and passes through and encompasses space 140 and ‘the gap between insulator 122 and spacer (i.e., washer) 124.’” In reply to Petitioner’s Request, the Board agreed that it had overlooked Petitioner’s argument that the “gas flow passage” traverses the space between insulator 122 and water 124. Accordingly, the Board was persuaded that the evidence presented in the expert testimony and the Petition was sufficient to show that Fraley discloses a “laminar delamination gap.” In accordance with this new position, the Board revised and replaced its previous decision on institution.

Specifically, in reassessing the anticipation grounds, the Board was no longer persuaded by Patent Owner’s arguments because it found that Patent Owner’s evidence and attorney argument do not demonstrate that the space between insulator 122 and water 1244 would be “substantial.” Accordingly, the Board changed its earlier determination and found that Petitioner had demonstrated a reasonable likelihood that claims 1 and 16 of the ’553 patent are anticipated by Fraley.

Claims 2, 7, and 17 include a limitation that an adhesive layer be “formed from a liquid polymer, an adhesive washer, or a thermal plastic adhesive coated material.” Petitioner had argued that the limitation is a product-by-process limitation that does not add structure to the claimed apparatus, and thus claims 2, 7, and 17 only require a “polymer adhesive layer,” which is allegedly disclosed in Fraley. Patent Owner, for its part, argued against the anticipation of claims 2, 7, and 17 on the basis of limitation in claims 1 and 16 to which these claims depend. The Board agreed with Petitioner that the term “formed from a liquid polymer” had no structural or functional distinction from the “adhesive layer” described in Fraley. Thus, the Board found that Petitioner had demonstrated a reasonable likelihood that claims 2, 7, and 17 of the ’553 patent are anticipated by Fraley.

The Board was also persuaded that Petitioner had shown a reasonable likelihood that claims 5, 10, and 20 requiring a washer “formed from a nonconductive polyimide sheet or a thin sheet of alumina” are anticipated by Fraley, for reasons similar to those for claims 2, 7, and 17. Also, the Board found that limitations in claims 6 and 11 are clearly disclosed in Fraley, which Patent Owner did not dispute; thus, the Board also instituted claims 6 and 11 for trial.

With regard to claims 3, 4, 8, 9, 18, and 19, Petitioner had argued that the embodiment depicted in Figures 7 and 9 of Fraley discloses the limitations in those claims. In its Decision on Institution, the Board had concluded that Petitioner did not identify a “laminar delamination gap” in Figures 7 or 9 of Fraley. In its Request for Rehearing, Petitioner did not identify any such arguments or evidence that the Board had overlooked or misapprehended; thus, the Board denied the Request for Rehearing with respect to the anticipation of claims 3, 4, 8, 9, 18, and 19.

Also, Petitioner did not request for rehearing with respect to the decision not to institute trial for claim 12 to which claims 13-15 depend. Thus, the Board was not persuaded that the obviousness grounds asserted for claims 3, 8, 13, and 18 demonstrated a likelihood of success. Accordingly, the Board maintained its denial of institution with regards to claims 3, 4, 8, 9, 12-15, 18, and 19.

Judge Roesel dissented from the grant of rehearing, stating the view that the majority had impermissibly relied upon arguments and evidence that was not presented in the Petition. In this regard, the Petition attempted to show anticipation based upon a construction for “laminar delamination gap” that did not include any requirement for a “very thin” space. The dissent’s view was that in the Request for Rehearing, Petitioner did not argue that the claim construction adopted by the Board was improper, but instead made a new argument that Fraley discloses a “laminar delamination gap” under that construction. Moreover, according to the dissent, although the gaps alleged by Petitioner as being a “laminar delamination gap” are present in Fraley, such gaps were never discussed in the Petition. Accordingly, the dissent argued that the Board could not have overlooked the argument that did not exist prior to the Request for Rehearing. Additionally, the dissent was not persuaded that even if the new argument had been presented in the Petition that it shows an abuse of discretion or error in the Decision denying review, because the dissent was still not convinced that Fraley clearly disclosed the claimed “laminar delamination gap” as that term was construed by the Board.

AVX Corporation v. Greatbatch Ltd., IPR2015-00710

Paper 13:  Decision Granting Petitioner’s Request for Rehearing and InstitutingInter Partes Review

Dated:  January 13, 2016

Patent:  7,327,553 B2

Before:  Michael P. Tierney, Jon B. Tornquist, and Elizabeth M. RoeselWritten by:  Tornquist

Dissent by:  Roesel