Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 48
`Entered: February 10, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LAIRD TECHNOLOGIES, INC.,
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`Petitioner.
`
`v.
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`GRAFTECH INTERNATIONAL HOLDINGS, INC.,
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`Patent Owner.
`____________
`
`Case IPR2014-00023
`Patent 6,482,520
`Case IPR2014-00024
`Patent 6,982,874
`Case IPR2014-00025
`Patent 7,292,441
`____________
`
`Held: December 15, 2014
`____________
`
`
`
`Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and J.
`JOHN LEE, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Monday, December
`15, 2014, commencing at 1:02 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`571-272-7822
`
`
`
`Paper No. 48
`Entered: February 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LAIRD TECHNOLOGIES, INC.,
`
`Petitioner.
`
`v.
`
`GRAFTECH INTERNATIONAL HOLDINGS, INC.,
`
`Patent Owner.
`____________
`
`Case IPR2014-00023
`Patent 6,482,520
`Case IPR2014-00024
`Patent 6,982,874
`Case IPR2014-00025
`Patent 7,292,441
`____________
`
`Held: December 15, 2014
`____________
`
`
`
`Before BRIAN J. McNAMARA, BARRY L. GROSSMAN, and J.
`JOHN LEE, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Monday, December
`15, 2014, commencing at 1:02 p.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`MATTHEW L. CUTLER, ESQUIRE
`DOUGLAS A. ROBINSON, ESQUIRE
`Harness, Dickey & Pierce, P.L.C.
`7700 Bonhomme, Suite 400
`St Louis, Missouri 63105
`
`ERIN M. DUNSTON, ESQUIRE
`Buchanan Ingersoll & Rooney PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`
`
`
`
`
`
`
` 2
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`
`
`
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`
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` P R O C E E D I N G S
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`- - - - -
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`JUDGE McNAMARA: Good afternoon. This is the oral
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`hearing in IPR -- it's a consolidated oral hearing, IPR2014-00023,
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`00024 and 00025, Laird Technologies, Inc. versus GrafTech
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`International Holdings.
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`Could I have counsel for the Petitioner please introduce
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`yourselves.
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`MR. CUTLER: Good afternoon, Your Honors. My name
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`is Matt Cutler on behalf of Petitioner Laird Technologies, Inc. I have
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`with me my colleague from Harness Dickey, Doug Robinson, and also
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`the Director of Intellectual Property from Laird Technologies,
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`Michael Noonan.
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`JUDGE McNAMARA: Thank you.
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`And for the Patent Owner.
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`MS. DUNSTON: Good afternoon, Your Honors. My name
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`is Erin Dunston and I'm here on behalf of the Patent Owner GrafTech
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`International Holdings, Inc. and I have with me here at counsel table,
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`Dr. Travis Bliss and in the gallery we have Mr. Tim Crogh, Assistant
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`General Counsel for IP with GrafTech.
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`JUDGE McNAMARA: Okay. Great. Welcome all to the
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`Patent Trial and Appeal Board. Is everybody ready to proceed?
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`MR. CUTLER: Yes, Your Honor.
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`
`
`
` 3
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
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`JUDGE McNAMARA: Okay. So today we will hear first
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`from the Petitioner. Petitioner has the ultimate burden of proof on the
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`claims at issue as to their unpatentability. After that, we will have
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`heard from the Patent Owner who will argue its opposition to the
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`Petitioner's case and I believe you have a motion to exclude.
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`MS. DUNSTON: Yes.
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`JUDGE McNAMARA: And so we'll hear your argument
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`on the motion to exclude. After that, any time the Petitioner has
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`reserved, Petitioner may use to rebut the Patent Owner's opposition to
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`its case in chief and to oppose the Patent Owner's motion to exclude.
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`And, finally, the Patent Owner may use any time it reserved
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`solely to rebut the Petitioner's opposition to the motion to exclude.
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`Each side will have a total of 60 minutes time that they can speak and
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`we are ready to begin.
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`Would you like me to reserve some time for your rebuttal?
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`MR. CUTLER: Yes, Your Honor. I would like to reserve
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`20 minutes for rebuttal, please.
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`JUDGE McNAMARA: Okay. Great.
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`MR. CUTLER: Your Honor, I do have a hard copy of our
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`Power Point presentation. Would that be of help?
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`JUDGE McNAMARA: That would be fine. Yes, please,
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`approach.
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`Thank you.
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`MR. CUTLER: Thank you, again, Your Honors. It's really
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`amazing where we find ourselves in 2014 with the technology and the
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` 4
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`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`advances in computing and other electronic devices. We started with
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`main frame computers larger than this room that were shrunk down to
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`laptop computers that could fit on our desk and we also have those
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`shrunk down to laptop computers that could fit into our briefcase. Of
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`course, those have now been shrunk to tablets and now smartphones
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`that do more than those mainframe computers that we first started
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`with.
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`But, of course, with those advances have come challenges
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`for the designers of these devices. First, and foremost, there's the
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`issue of heat in these very small devices that can do such powerful
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`things. There are heat-generating components that can both transmit
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`the heat to the exterior surface of the device that causes discomfort for
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`the user and there's also potential for damage of other components
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`within the devices themselves.
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`And this is exactly what the inventor of the '520 patent,
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`which I'll start out with today, realized. What he stated in the
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`background of his invention was that with the development of more
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`and more sophisticated electronic components, including those
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`capable of increasing processing speeds and higher frequencies,
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`having smaller size and more complicated power requirements and
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`exhibiting other technological advances, such as microprocessors and
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`integrated circuits in electronic and electrical components in systems,
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`as well as in other devices, such as high-powered optical devices,
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`relatively extreme temperatures can be generated.
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`
`
` 5
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`
`And the inventor of the '520 patent worked for a company
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`called GrafTech. GrafTech is the heir to Union Carbide and Union
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`Carbide back in 1968 had an inventor named Shane who came up with
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`an incredible little device that was graphite sheets that had the ability
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`to transmit heat in a in-plane direction 20 times or more than the heat
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`gets transmitted in a through-plane direction.
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`And back in 1968 this invention was presented in a patent
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`that is part of this proceeding, Exhibit 1013, and so what Mr. Tzeng,
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`an employee of GrafTech, did is he sat down and he thought about
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`this new problem that was being presented and he said, hey, I'm going
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`to take that Grafoil that we've been selling for all these years and we'll
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`try it out and he filed a patent application.
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`What we see here is Claim 1 as it exists after a couple of
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`reexaminations. In Figure 1 of the '520 patent where we see a -- kind
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`of an ordinary generic electronic component 100 with a surface on the
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`topside there, 100a, in contacting that surface is a graphite sheet 20,
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`which is compressed particles of exfoliated graphite. I'm going to call
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`that CPEG throughout just to kind of shorten things up. You’re going
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`to hear me speak enough as it is.
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`And what CPEG did, again, was disclose back in 1968 and
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`it's in the italicized portion of that text up on there on the screen, slide
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`3, is in the in-plane direction thermal conductivity was 20 times or
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`more than what happens in the through-plane direction.
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`The other claims at issue here in the '520 patent -- there's
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`four more, five total -- Claim Number 2 specifies that the heat source
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` 6
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`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`of Claim 1 is electronic component. Claim 21 talks about how the
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`contact pressure between the sheet and the electronic component is
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`less than 50 psi and Claims 22 and 23 talk about the size of the sheet
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`as compared to an electronic component.
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`As we saw in Figure 1, the size of the sheet is greater than
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`the exterior surface of the electronic component and this allows the
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`sheet to act kind of like a heat sink does with its fins. You have the
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`heat being transmitted in the parallel plane out away from the
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`electronic component and it can be very easily dissipated into the air.
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`We see here in the background of the invention of the '520
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`patent, in talking about metal to metal type heats sinks and thermal
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`interface materials, what the inventor says is that, indeed, pressure is
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`well in excess of 50 pounds per square inch are often needed with
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`such metal to metal connections, but with respect to the GrafTech --
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`I'm sorry, the Grafoil, the CPEG, pressures less than 50 psi are usually
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`all that are needed. So that's the background of the '520 patent
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`relating to Claim 21.
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`With respect to Claim 22 and 23, what we do is we have an
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`explanation that providing a greater surface area from which the heat
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`can be dissipated is this fin aspect of things. Making it larger allows
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`the greater surface area from which the heat can be dissipated. And
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`down towards the bottom, it talks about, well, preferably it's two times
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`or even more preferably four times as big.
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`There's nothing magical about two times or four times. It's
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`about all you have about it. There's no criticality about this variable
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` 7
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`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
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`that's cited in the '520 patent and none has been provided in this case
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`by Patent Owner. It's really common sense. The bigger the fin, the
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`more dissipation we're going to have.
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`Now, that idea by Dr. Tzeng, employee of GrafTech, was a
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`good one, but the problem is that idea was thought of three and a half
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`years earlier by Mr. Inoue, an employee of Matsushita in Japan. We
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`see a pattern here of similarities between what's disclosed in Inoue
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`and what's disclosed in the '520 patent.
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`On August 8, 1996, about three years earlier than the
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`February 25, 2000 filing date of the '520 patent, Mr. Inoue was at
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`Matsushita in Japan. He saw the same exact problem in the art or
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`need in the art that Dr. Tzeng filed. He said that there's a strong
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`demand that was recently created for miniaturization and increase in
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`speed of semiconductor devices in response to a need for increased
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`accuracy and improved functionality of medical devices, decreased
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`size and reduced weight of electronic devices, such as personal
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`computers and cellular phones.
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`Now, Mr. Inoue in Japan didn't have Grafoil on the shelves
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`of his office at Matsushita. He had other types of graphite that
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`Matsushita sold. So he took those graphite sheets and he tried them
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`out in his invention.
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`And what you see from Figure 2 of the Inoue patent is
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`something very similar to Figure 1 of the '520. You've got an
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`electronic component 3, this time specified as a semiconductor, and
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` 8
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`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`you have graphite sheet 4 that is attached to the upper surface of the
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`semiconductor and acts as a fin to dissipate the heat.
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`In fact, we can compare these -- this figure to Claim 1 and
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`we end up with the same thing we had with respect to the '520 patent
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`with one exception. Inoue shows the heat management system, the
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`idea of taking heat away from someplace you don't want it and
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`sending it to where you do want it, to where you can dissipate it.
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`It also discloses the anisotropic ratio of more than 20 to 1.
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`In fact, working example 10 of the Inoue patent shows a 35 to 1 ratio
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`of in-plane connectivity versus through-plane connectivity. The only
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`thing that's not disclosed in Inoue is a specific type of graphite that is
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`disclosed or claimed here in Claim 1, which is to say CPEG. It does
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`not disclose CPEG.
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`JUDGE GROSSMAN: Mr. Cutler?
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`MR. CUTLER: Yes.
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`JUDGE GROSSMAN: How does what's disclosed in Inoue
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`differ from what's disclosed in Shane, Exhibit 1013, in this case?
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`MR. CUTLER: Okay. Shane discloses CPEG, just like the
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`'520 patent, just like the Mercuri patent, just like the Grafoil Manual,
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`just like Norley disclosed. All of the prior art discloses CPEG,
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`including Shane.
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`Inoue does not disclose CPEG at all. Matsushita sold
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`different types of graphite, synthetic graphite, talked about -- there's
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`four different types of graphite shown here on the board that Patent
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`Owner points out are taught as examples of the carbonaceous sheet
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` 9
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`
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`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
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`that are disclosed, but there's a specific process by which the national
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`graphite is exfoliated in the Shane patent and that particular type of
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`graphite simply is not set forth in the Inoue document.
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`In fact, our expert, Mr. Bagot, testified -- he was a
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`long-time employee of Union Carbide. He testified that in Japan at
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`the time of the Inoue invention, CPEG was only known in the
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`automotive industry. That's just wasn't something that was available
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`in the electronics industry. Again, I think you have a difference
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`between what was in reality available to Mr. Inoue versus what was
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`available to Dr. Tzeng from a reality perspective, not a hypothetical
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`person of ordinary skill in the art, but I'll get to that in a second.
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`JUDGE McNAMARA: Before you do, are there any other
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`differences between Shane and Inoue?
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`MR. CUTLER: Well, yeah. Shane doesn't disclose the
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`semiconductor 3 that I'm showing up on the screen here, slide 9.
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`Shane only talks about a way to manufacture CPEG and then it also
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`talks about some uses for CPEG, but really Shane only talks about the
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`carbon sheet 4, not the composite heat management system that's
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`disclosed in Inoue.
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`JUDGE GROSSMAN: What is that composite heat system
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`other than the sheet, you put it over your semiconductor and --
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`MR. CUTLER: That's right. Yeah, looking at Claim 1 --
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`and what we're trying to do is kind of compare it to Claim 1. And
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`what Claim 1 says is a thermal management system comprising a heat
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` 10
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`
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`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`source having an external surface and an anisotropic flexible sheet.
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`That's the system of Claim 1.
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`Now, there's some explanation of details about that sheet
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`that's further on Claim 1, make it a 20 to 1 ratio, make the size bigger,
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`make sure it's in operative contact with the heat source, but really
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`there's two parts in Claim 1 to the heat management system, the heat
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`source and the sheet touching the heat source.
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`What's disclosed here in Patent Owner's response is that at
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`paragraph 14 of the Inoue reference, a number of carbonaceous sheets
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`that can be used are disclosed. Here's the quote, this paragraph --
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`they're talking about paragraph 14 -- teaches one of ordinary skill in
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`the art that the carbonaceous sheet of Inoue can be one of four things
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`and list them all, a couple of pressed sheets, including one of press
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`bonding natural, crystalline graphite particles and a couple of sheets
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`of thermally-treated graphite particles.
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`Now, CPEG is not disclosed, but GrafTech goes on a very
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`detailed explanation and argument that categories 1 and 2 from this
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`list are "not feasible." First of all, it's very important to understand
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`that the not feasible language is from their brief, not from Inoue in any
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`way, shape or form.
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`In fact, Inoue discloses that these -- all these types can be
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`used. In fact, I think there's an admission in that lead-in to this list
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`that all of them can be used. Some are more preferred than others, but
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`this is largely a red herring. CPEG is not disclosed. Whether
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`category number 2, a pressed sheet, obtained by press bonding natural
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`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`crystalline and graphite particles, whether that's not feasible or not is
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`irrelevant, because that's not CPEG. There's no dispute that that's not
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`CPEG.
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`So they said that these things are not feasible, but, again,
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`that's a -- that's not true. CPEG is not number 2. I guess maybe it's a
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`-- I was trying to think of why they've gone down this road. I mean, it
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`does sound like natural graphite and pressed is in there. Maybe they
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`were trying to create some confusion about what is not feasible and
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`what is feasible, but that's why I want to make absolutely clear here in
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`this hearing that category number 2 is not CPEG, they don't claim that
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`it is and so the fact -- even if the Board buys their argument that
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`category 2 is taught to be not feasible anyway, that has no bearing on
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`this case. It's not CPEG.
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`But I do want to point out just briefly that --
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`JUDGE GROSSMAN: Mr. Cutler, just to make sure I
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`understand, of those four categories -- are any of those four categories
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`CPEG?
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`MR. CUTLER: No. If it was CPEG, then Inoue would be a
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`102 reference. If CPEG were disclosed, it has everything but the
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`CPEG and it would be a 102 reference. So none of those are CPEG to
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`answer your question.
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`JUDGE GROSSMAN: And at the time Inoue did his
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`invention, even though it was in a different context, technological
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`context, Shane was 30 years old at that point.
`
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`
`
`
` 12
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`
`MR. CUTLER: Shane was absolutely 30 years old at that
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`point, that's right, yep.
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`So what CPEG -- what Inoue does say about this category 2
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`is that high thermal conductivity was difficult because of the presence
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`of impurities. Well, CPEG doesn't have those impurities, first of all,
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`so CPEG would solve this problem that Inoue identified with respect
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`to the category 1 and category 2 materials. But in any event, Inoue
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`goes on to say that these things can be used. All the categories of
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`graphite shown in Inoue could have been used.
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`And, again, let me get back to that theory versus reality.
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`The reality of it is, is Inoue worked for Matsushita, pulled what's off
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`the shelf at Matsushita and put it in his patent application, just as Dr.
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`Tzeng worked for GrafTech, pulled off the shelf what was available to
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`him, the Grafoil technology.
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`In the hypothetical obviousness analysis that we're here
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`today to become a part of, the person of ordinary skill in the art is not
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`limited to the realities of that particular situation you find yourself in.
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`The person of ordinary skill in the art is sitting at a desk with all the
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`art on the wall and they can pick and choose what makes sense.
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`And what makes sense in the context of the '520 patent is
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`when Inoue shows graph -- using graphite sheets that have an
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`anisotropic ratio, but there are impurities in one of the types of natural
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`graphite that makes it inflexible, why wouldn't one of ordinary skill in
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`the art go grab Grafoil? It's taught to be flexible. It's taught to have
`
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` 13
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`the same type of anisotropic properties. It's a straightforward
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`combination.
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`JUDGE GROSSMAN: Inoue -- is it your position Inoue is
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`anisotropic?
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`MR. CUTLER: Inoue is absolutely anisotropic. I'm going
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`to flip back very quickly to this, just to make sure Your Honor is
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`familiar with this particular example. And I'm not finding it very
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`quickly, but I'm going to fast forward here. I'm going to get to it and
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`I'm going to point it out to you, but it's working example number 10
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`and it is paragraph number 45 of Inoue that shows an anisotropic ratio
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`for one of the types of graphite that it employs.
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`JUDGE GROSSMAN: Is Inoue compressed?
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`MR. CUTLER: Inoue has press bonded. It's press bonded,
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`but it's not the exfoliated graphite that helps remove all the impurities.
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`JUDGE GROSSMAN: Do we separate compressed from
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`exfoliated or is that one -- or you treat compressed exfoliated particles
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`or are they compressed particles and exfoliated particles and can we
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`separate those two?
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`MR. CUTLER: First, you exfoliate and then you compress.
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`JUDGE GROSSMAN: Okay. Is Inoue compressed?
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`MR. CUTLER: Inoue is -- it doesn't use the word
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`"compressed," but I think it could be equivalent that they are pressed,
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`press bonded, that's right.
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`JUDGE GROSSMAN: But it's your position -- you're
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`acknowledging that Inoue is not exfoliated.
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`
`
` 14
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`
`MR. CUTLER: Correct. Yes, that's correct. We are not
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`arguing that there's a 102 reference here.
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`So as mentioned, the easy substitute for the person of
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`ordinary skill in the hypothetical obviousness analysis is to go over to
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`the wall, find the Grafoil Manual or find Shane. We chose the Grafoil
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`Manual. And the 28 to 1 ratio that's disclosed in the Grafoil Manual
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`makes this an easy combination.
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`Then with regard to Claim 21, we cited to the Thermagon
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`Paper. The Thermagon Paper deals with issues in the electronic
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`systems. In today's electronic systems, the use of excessive pressure
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`can create stresses detrimental to the function of a system. It goes on
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`to say that any pressure over 50 psi would be considered detrimental.
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`Our expert at paragraph 36, Mr. Bagot, testifies that one of
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`ordinary skill in the art absolutely knew without being told that
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`excessive pressures on electronic components are detrimental to their
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`life span. We brought in Thermagon just as a confirmation fact that a
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`paper dealing with these types of issues understood that 50 psi or
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`more is too much pressure and it's -- there's an argument by GrafTech
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`about the admissibility of this particular document, which we'll
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`address later, but the bottom line, GrafTech doesn't argue that this
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`element is missing from Claim 22. They just argue -- make a
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`combination argument that one of skill in the art wouldn't have
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`combined these things.
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`Moving on to Claims 22 and 23, these are the claims as you
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`recall that deal with the size of the sheet, two times and four times.
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` 15
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`Again, we see a pattern. What was disclosed in Inoue three and a half
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`years earlier was just copied or repeated -- not copied, but repeated by
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`Tzeng three and a half years later.
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`What is stated here at paragraph 31 of the Inoue reference is
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`that with this configuration the carbonaceous sheet 4 itself acts as a
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`heat dissipating fin and the heat is dissipated from both the heat sink
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`and the carbonaceous sheet. As a result, a better cooling effect is
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`attained.
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`Skimming down, furthermore, in the present embodiment
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`the length of this carbonaceous sheet was increased, but the same
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`effect can be obtained at the surface area if the carbonaceous sheet is
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`made larger than the carbonaceous sheet of the semiconductor
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`element, and the carbonaceous sheet serves as a heat dissipating fin.
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`This whole concept of making it bigger was known in Inoue three and
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`a half years before Tzeng. And the size, two times or four times, it's
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`just common sense to make it bigger, to make it a better heat
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`dissipator.
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`So all the elements are there. The question that's raised by
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`GrafTech in defense is whether one of skill in the art would have
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`known to combine these elements and, more particularly, they argue
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`that one of skill in the art would have -- the prior art would have
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`taught away from the combination of this art.
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`And what does teaching away really mean, though? That's
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`the key question. Teaching away we cite Federal Circuit case law in
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`our reply brief. Teaching away means discouraging that person of
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` 16
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`ordinary skill in the art to travel down the path or leading a person of
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`ordinary skill in the art down a different path than what's shown here
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`or showing that the combination is operable. None of those have been
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`shown here.
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`JUDGE GROSSMAN: But when you're talking about all
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`these elements and the combination, the only thing missing in Inoue
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`from -- I understood from your outline is exfoliated.
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`MR. CUTLER: That's exactly correct. Now, I will say,
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`though --
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`JUDGE McNAMARA: Let me ask a quick question.
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`MR. CUTLER: Sure.
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`JUDGE McNAMARA: Because there is in part of the
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`teaching away argument in the Patent Owner response, there's a
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`discussion about the value of the in-plane thermal conductivity and
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`the through-plane thermal conductivity. How do you respond to that?
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`They talk about both of them not being within the range than one
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`would be -- that one would think to use Grafoil, for example.
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`MR. CUTLER: Actually there's two things that they
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`mention. One is that CPEG is not disclosed in Inoue. That's the first
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`argument of teaching away. The second one I'm going to get to is the
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`one you -- maybe more in line with what you're asking, but I think it
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`might be a little different.
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`23
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`With respect to that argument, if that's what you're getting
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`24
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`at, you know, just because a reference is silent about a particular
`
`
`
`
`
` 17
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`element can't be a reason that it teaches away. That turns this into a
`
`pseudoanticipation argument.
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`Let's envision the logical end of that argument. You have a
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`claim that has four elements. If a reference has three of those four
`
`elements but not the fourth, their argument states that that prior art
`
`reference, it only discloses three can never be used. Because it was
`
`silent about the fourth one, it teaches away from the combination with
`
`anything else. That's what they're saying with respect to Inoue.
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`Because it's silent about CPEG, it teaches away from one of skill in
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`the art using the Grafoil Manual to combine it.
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`JUDGE McNAMARA: I'm not sure I read it quite like that
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`and maybe I'm reading in the wrong place, but I guess I'm looking, for
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`example, in the arguments that are on the Patent Owner response in
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`the '023 case, for example, at maybe pages 36, 37, and 38, where
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`they're talking about the thermal conductivity, but in one section of
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`the argument I think they're talking about the in-plane thermal
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`conductivity and in another section of the argument they talk about
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`the through-plane thermal conductivity and they say you're dissuaded
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`from using Grafoil is the product they're talking about there, and
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`you're dissuaded by that, because the thermal conductivities are not in
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`the same range.
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`I think as I understand the basis of the argument, it's that
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`Grafoil doesn't meet the threshold for in-plane thermal conductivity
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`and I guess it's the similar argument for through-plane conductivity.
`
`
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`
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` 18
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`So you wouldn't be motivated to look at that particular product to put
`
`it into Inoue, so --
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`MR. CUTLER: I gotcha.
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`JUDGE McNAMARA: And that's I think where I need
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`your clarification or your view on that anyway.
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`MR. CUTLER: Absolutely. It's interesting that you're
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`confused about whether it's in-plane or through-plane or where that
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`number came from. Because guess what, it is confusing because it's a
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`made-up number. The number that they use is a 500 watts per meter
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`Kelvin number. Okay.
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`JUDGE McNAMARA: Right.
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`MR. CUTLER: And the very important thing to realize is
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`that that's a completely made-up number. It's not in Inoue at all.
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`In Inoue -- Inoue talks about -- and it's shown here. It talks
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`about thermal conductivity of 1.5 to 2.5 times higher than copper.
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`What type of thermal conductivity are we talking about? It's a great
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`question, because it's not clear. And what they did is they picked a
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`very advantageous number for themselves and let explain to you why.
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`First of all, I do want to point out before I get there is that
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`throughout it's talked about a mandated thermal -- threshold thermal
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`conductivity, a requisite in-plane thermal conductivity, a thermal
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`conductivity that is essential. These are words that they use. These
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`are not words that are raised in Inoue in any way, place or form.
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`All Inoue does in paragraph 6 and 8 is say that it has -- the
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`carbon of Inoue is one and a half to two and a half times that of
`
`
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`
`
` 19
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`copper, and then it picks -- and the way that it calculates the 500 is it
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`goes and finds some value for copper. It's an isotropic material,
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`copper, of course, so it likely was in a textbook and they pulled it out
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`and they multiplied out and they come up with 500 watts per meter
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`Kelvin. Okay?
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`Well, here's the problem with that, first of all, one of skill in
`
`the art wouldn't look to the magnitude of a thermal conductivity.
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`Claim 1 up here shows in italicized letters what it was that got this
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`claim across the line in reexamination. It's a 20 to 1 anisotropic ratio.
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`That's what they did.
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`One of skill in the art wouldn't look to how big is the
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`thermal conductivity. It's looking to -- we're at heat management
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`here. We're talking about anisotropy. We need the anisotropic
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`number and Inoue teaches it at paragraph 45 right there. I was
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`looking for that earlier, Your Honor, Judge Grossman, and here's
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`where it is. It's in paragraph 45. It teaches a 35 to 1 ratio.
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`One of skill in the art would be taught toward Grafoil,
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`because you have -- they both have this anisotropic ratio. That's
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`19
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`number one. Number two, again, Inoue never uses those assertive
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`words "mandated," "requisite," "essential," because what is thermal
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`conductivity?
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`Inoue only states that it's one and a half to two and a half
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`times copper, but what if weight is considered? Throughout the '520
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`24
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`patent we talk about what does the weight -- how advantageous
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`25
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`graphite is as compared to prior art metals as thermal management
`
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`
`
` 20
`
`
`
`Cases IPR2014-00023; IPR2014-00024; and IPR2014-00025
`Patents 6,482,520; 6,982,874; and 7,292,441
`
`tools, because they're so much lighter. And '520 p
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