UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`AVX CORPORATION
`Petitioner,
`v.
`
`PRESIDIO COMPONENTS, INC.
`Patent Owner.
`________________
`
`Case IPR2016-00636
`Patent 6,661,639
`
`
`
`DECLARATION OF DR. MICHAEL RANDALL
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 1
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`AVX CORPORATION
`Petitioner,
`v.
`
`PRESIDIO COMPONENTS, INC.
`Patent Owner.
`________________
`
`Case IPR2016-00636
`Patent 6,661,639
`
`
`
`DECLARATION OF DR. MICHAEL RANDALL
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 1
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`
`
`I.
`
`I, Michael Randall, hereby declare as follows:
`
`INTRODUCTION
`
`1. My name is Michael Randall. I have been retained by the Patent
`
`Owner Presidio Components, Inc. (“Presidio” or “Patent Owner”) as a technical
`
`consultant and expert witness in this matter.
`
`2.
`
`I have no financial interest in the outcome of this matter. My
`
`compensation is not dependent upon, and in no way affects the substance of my
`
`statements or opinions in this Declaration. I have no ownership or beneficial
`
`interest in either Presidio or the Petitioner, AVX Corporation (“AVX” or
`
`“Petitioner”).
`
`3.
`
`I submit this declaration in support of Presidio’s Response to
`
`Petitioner’s Petition for Inter Partes Review of U.S. Patent No. 6,661,639 (“the
`
`‘639 patent”). My declaration is based upon my own personal knowledge and
`
`experience.
`
`4.
`
`I am not a patent attorney and I have not independently researched the
`
`law on patent validity. Presidio’s counsel explained certain legal principles to me
`
`that I have relied on in forming my opinions set forth in this declaration.
`
`5.
`
`I am an expert and consultant in Electronic Materials and Processing,
`
`Ceramic Dielectric Materials and Processes, Passive Electronic Components, and
`
`Surface Mount Technology, including with respect to ceramic capacitors.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 2
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`6.
`
`It is my opinion, for the reasons detailed below, that the prior art
`
`references relied upon in connection with the grounds instituted by the Patent Trial
`
`and Appeal Board (“Board”), alone or in combination, do not teach, or disclose, or
`
`provide motivation to a person of ordinary skill in the art to achieve every element
`
`in Claims 1-21 of the ‘639 patent, and therefore do not anticipate and/or render
`
`obvious these claims.
`
`
`II. QUALIFICATIONS
`
`7.
`
`I have been involved in the field of Electronic Materials and
`
`Processing, Ceramic Dielectric Materials and Processes, Passive Electronic
`
`Components, and Surface Mount Technology, for more than 25 years and have
`
`extensive experience in the design and manufacture of ceramic capacitors, as
`
`detailed in my curriculum vitae (attached as Exhibit A).
`
`8.
`
`I earned a Bachelor of Science degree in ceramic engineering from
`
`NYSCC at Alfred University in 1985. I earned a Master of Science and
`
`engineering degree from the University of Florida in 1987. I earned a Ph.D. in
`
`Materials Science and Engineering from the University of Florida in 1993.
`
`9.
`
`From 1992 to 1997, I was employed by AVX Corporation. My
`
`positions at AVX Corporation included Manager of Ceramic Capacitor Research
`
`and Development, during which I was responsible for planning and oversight of
`
`ceramic capacitor and materials development.
`
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`Presidio Ex. 2001, pg. 3
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`10. From 1997 to 1999, I was employed by Ferro Corporation. My
`
`positions at Ferro Corporation included Director of Research and Development,
`
`during which I was responsible for planning, direction, and oversight of division
`
`level research and development, and new product development, including Low
`
`Temperature Cofired Ceramic Systems and Multilayer Materials Systems.
`
`11. From 1999 to 2008, I was employed by Kemet Electronics. My
`
`positions at Kemet Electronics included Director of Ceramic Technology, during
`
`which I was responsible for the direction of teams providing technology solutions
`
`for multilayer ceramic capacitor development needs. My positions at Kemet also
`
`included Director of Ceramic Technical Marketing and New Business
`
`Development, during which I was responsible for identification and management
`
`of ceramic capacitor technical marketing, including multilayer ceramic capacitors
`
`and associated lines. My positions at Kemet also included Director of Advanced
`
`Ceramic Technology, during which I was responsible for inventions and new
`
`product development for advanced ceramic products, including various capacitor
`
`types, which resulted in several inventions.
`
`12. Since 2003, I have been an independent consultant with Almegacy
`
`LLC in electronic device and material projects, including electronic component
`
`selection and sourcing for capacitors. I have served as an expert witness in the
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 4
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`subject area of capacitors on several occasions, including before the Board and the
`
`International Trade Commission.
`
`
`III. MATERIALS CONSIDERED AND PREPARED
`
`13.
`
`In forming the opinions expressed below, I considered the ‘639 patent,
`
`as well as the prior art references and related documentation discussed herein. I
`
`have also relied upon my education, background, and experience.
`
`
`IV. DESCRIPTION OF RELEVANT TECHNOLOGY IN THE
`RELEVANT TIME PERIOD
`
`
`
`14. Based on my review of the materials involved in this dispute, it is my
`
`opinion that the relevant field for purposes of the ‘639 patent is surface mounted
`
`ceramic capacitors. By reference to the subject matter of the ‘639 patent, the
`
`relevant field is surface mounted ceramic capacitors. Surface mount technology is
`
`sometimes referred to as SMT.
`
`15. For example, the Background of the Invention repeatedly references
`
`ceramic capacitors (Ex. 1001, at 1:10-34), discusses how they are mounted to the
`
`surface of a pc board (Id. at 1:20-25; 2:6-14), and then states that “[i]t is desirable
`
`to provide a single layer capacitor that is surface mountable” (Id. at 2:33-37) and
`
`that “[t]here is a need to provide a surface mountable single layer ceramic
`
`capacitor” (Id. at 2:64-67). In addition, the Summary of the Invention repeatedly
`
`references ceramic capacitors (Id. at 1:11, 1:17, 1:22-23, 1:53, 2:65, 3:2-9) and that
`
`
`
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`Presidio Ex. 2001, pg. 5
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`the invention is to be surface mounted (Id. at 3:17-30). In addition, the Brief
`
`Description of the Drawings repeatedly references figures that are surface mounted
`
`capacitors of the present invention. Id. at 3:52-67. In addition, all of the claims of
`
`the ‘639 patent are directed to a ceramic capacitor. Id. at 11:13-16, 11:65-12:2,
`
`12:48-50, 14:1-4. Therefore, the embodiments, function, and structure of the
`
`inventions claimed in the ‘639 patent are surface mounted ceramic capacitors.
`
`16.
`
`I have been asked to focus my determinations of what would or would
`
`not have been obvious to one of ordinary skill in the art during a specific
`
`timeframe, which I understand to be the time prior to July 2, 2002, which is the
`
`filing date of the application from which the ‘639 patent issued. My opinions are
`
`not affected if the time period in consideration is adjusted by several years, either
`
`earlier or later.
`
`17. My conclusions below are based on how one of ordinary skill in the
`
`art (a “POSITA”) would have understood the various references that qualify as
`
`prior art and what a POSITA would have found obvious during the relevant period.
`
`18. As described above, I have extensive experience in the design and
`
`manufacture of ceramic capacitors, including surface mounted ceramic capacitors,
`
`and further including the materials used to manufacture ceramic capacitors. I also
`
`have extensive experience in the manufacturing processes involved when
`
`capacitors are made. Based on my experience, I have a good understanding of the
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 6
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`relevant field in the relevant time frame, and an understanding of a POSITA, and
`
`what a POSITA would have known.
`
`
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`19.
`
`I have been informed by counsel of the legal standards used to
`
`determine the level of ordinary skill in the art. I understand that prior art
`
`references can provide evidence of the level of ordinary skill in the art and that
`
`factors that may be considered in determining this level of skill can include the
`
`educational level of the inventors and active workers in the field, the type of
`
`problems encountered in the art, the prior art solutions to those problems, the
`
`rapidity with which innovations are made, and the sophistication of the technology.
`
`20.
`
`It is my opinion that those of ordinary skill in the art during the
`
`relevant time period would have had a Masters Degree in Materials Science and
`
`Engineering or analogous degree, and at least two years of industry experience
`
`with ceramic capacitor manufacturing. I understand that in a previous lawsuit
`
`between Presidio and ATC (a subsidiary of Petitioner) also involving capacitors,
`
`ATC’s technical expert relied upon a person of ordinary skill in the art with a
`
`similar level of skill. I also understand that in previous Inter Partes Review
`
`proceedings between Presidio and ATC also involving capacitors, ATC’s technical
`
`expert relied upon a person of ordinary skill in the art with a similar level of skill.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 7
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`21. Based on this definition, I am a person of at least ordinary skill in the
`
`art. I am familiar with the abilities of one of ordinary skill in the art.
`
`
`VI. BACKGROUND OF THE TECHNOLOGY
`
`22.
`
`It is well known in the ceramic capacitor industry (and was well
`
`known years prior to July 2, 2002) that there are several general tenets or “drivers”
`
`that successful circuit designers follow in the electronics industry as applied to
`
`surface mounted passive electronic components, including ceramic capacitors. A
`
`person skilled in the art in the field of ceramic capacitors understands that these
`
`tenets are important in achieving a successful capacitor product that meets the
`
`needs of customers and users of capacitors. These drivers are:
`
`a. Cheaper
`i. Use the lowest cost devices that deliver required functionality
`ii. Simpler devices and designs enable lower cost and less design risk
`iii. Use ubiquitous, commodity devices where possible to take
`advantage of competition and efficiencies of scale
`iv. Use standard surface mount technology where possible to avoid
`additional assembly risks and costs
`b. Better
`i. More functionality in the same package size
`ii. Increased reliability
`iii. Increased quality and consistency within each batch and from
`batch to batch
`c. Faster
`i. Higher frequency designs enable more functionality in less space
`ii. Smaller, more closely spaced components enable more
`functionality in less space
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 8
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`23. With regard to ceramic capacitors, surface mount multilayer ceramic
`
`capacitors (MLCCs) emerged in the 1980s and in the 1990s gained preeminence
`
`over other types of ceramic and other capacitors because competition between
`
`manufacturers was fierce, and the economies of scale in that sector of the ceramic
`
`capacitor industry enabled cost reductions and quality improvements. Such
`
`capacitors also addressed each of the electronics industry drivers discussed above
`
`to an extent not addressed in other sectors of the capacitor industry. As a result, by
`
`2003 the ceramic capacitor industry had grown to the extent that it accounted for
`
`nearly 85% of all capacitor unit shipments worldwide as indicated below.1
`
`2003: 632 Billion Ceramic Capacitor Shipments, 84.5% of Total Capacitor
`Shipments
`2004: 725 Billion Ceramic Capacitor Shipments
`
`
`
`
`1 Passive Electronic Components: World Market Outlook: 2008-2013. Paumanok Publications,
`Inc., p. 42, 2008. (Ex. 2002).
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 9
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`Further, almost all of the ceramic capacitor units shipped were MLCCs as
`
`the volume of MLCC shipments in 2004 is the same as the amount of all ceramic
`
`capacitor shipments in 2004, as indicated below in comparison to the chart above:2
`
`
`
`
`2Base Metal Electrode: Multilayered Ceramic Chip Capacitors World Markets: 2005-2010.
`Paumanok Publications, Inc., p. 40, 2005. (Ex. 2003).
`
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 10
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
` Thus, almost all of the ceramic capacitor units sold are MLCCs. Much less
`
`than 1% of the ceramic capacitor units produced are other than MLCCs (i.e.,
`
`single layer capacitors (SLCs), buried layer capacitors (BLCs), etc.) since, for
`
`most applications, MLCCs offer superior performance with regard to the above-
`
`mentioned drivers in comparison to SLCs and BLCs, etc.
`
` Another driver for the relative ubiquity of MLCCs is price or price per unit
`
`capacitance. The average selling price (“ASP”) of ceramic capacitors is much
`
`less (i.e., ~1/6th or less) than the price for other types of capacitors, as indicated
`
`in the charts below. Additionally, MLCCs are much less expensive than SLCs
`
`and BLCs from a cost per picofarad (pF) basis, as illustrated in the charts
`
`below.3
`
`
`
`
`
`
`3 Passive Electronic Components: World Market Outlook: 2008-2013. Paumanok Publications,
`Inc., p. 44, 2008. (Ex. 2004); Ex. 2005.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 11
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`Part Number
`GH0358821MA6N
`GB015Z101MA6N
`08051K150JBTTR
`12101K470JBTTR
`06035A101JAT2A
`06031C102JAT2A
`04025A150JAT2A
`04025A470JAT2A
`
`MFG.
`AVX
`AVX
`AVX
`AVX
`AVX
`AVX
`AVX
`AVX
`
`Supplier
`Digikey
`Digikey
`Digikey
`Digikey
`Digikey
`Digikey
`Digikey
`Digikey
`
`Type Dielectric
`SLC
`X7R
`SLC
`X7R
`BLC
`C0H
`BLC
`C0H
`MLCC
`C0G
`MLCC
`X7R
`MLCC
`C0G
`MLCC
`C0G
`
`Capacitance
`Value (pF)
`820
`100
`15
`47
`100
`1000
`15
`47
`
`Tolerance
`(+/‐%)
`20
`+80/‐20
`5
`5
`5
`5
`5
`5
`
`Voltage
`Rating (V)
`50
`50
`100
`100
`100
`100
`50
`50
`
`Qty
`Case Size
`1000+
`0.035" x 0.035"
`2000+
`0.015" x 0.015"
`3000+
`0.079" x 0.050"
`3000+
`0.126" x 0.098"
`4000+
`0.063" x 0.032"
`4000+
`0.063" x 0.032"
`0.039" x 0.020" 10000+
`0.039" x 0.020" 10000+
`
`Price (Ea)
`
`1.86300$
`
`1.10700$
`
`0.34800$
`
`0.93150$
`
`0.00483$
`
`0.04860$
`
`0.02000$
`
`0.02000$
`
`Cost per pF
`
`0.0022720$
`
`0.0110700$
`
`0.0232000$
`
`0.0198191$
`
`0.0000483$
`
`0.0000486$
`
`0.0013333$
`
`0.0004255$
`
`Digikey Pricing 11/9/16
`
`
`
`
`
`From a cost per pF basis, SLCs are ~8X to ~50X more expensive than
`
`MLCCs, and BLCs are ~17X to ~400X more expensive than MLCCs.
`
`24. Therefore, MLCC manufacturing occurs on a scale that far exceeds
`
`that of SLCs and BLCs. This enables lower cost, higher quality, better
`
`repeatability, and improved performance than SLCs and BLCs, and POSITAs and
`
`the electronics design community heavily favor MLCCs over SLCs and BLCs.
`
`25. MLCCs are also simpler to mount to a circuit, as standard surface
`
`mount technology may be used and wire bonding or other special requirements are
`
`not necessary.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 12
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`26. Therefore, a POSITA needs a compelling reason to overcome all of
`
`the advantages of MLCCs when selecting an SLC for his or her circuit.
`
`27. Further, SLCs offer no evident advantage over MLCCs at low and
`
`intermediate frequencies. Therefore, a POSITA would understand that they are not
`
`selected for these applications.
`
`28. However, as discussed below, SLCs do offer significant advantages in
`
`terms of inductance, ESR, and impedance, at frequencies above ~100 MHz. For
`
`these reasons, there is no incentive for a POSITA to select an SLC or BLC unless it
`
`has superior high frequency performance compared to MLCCs.
`
`29.
`
`In certain high frequency applications where suitable surface mount
`
`equipment is available and the design budget allows, SLCs having low inductance
`
`and low ESR are preferable over MLCCs. SLCs are typically used at high
`
`frequencies (i.e., ~100 MHz to 80 GHz and above) as illustrated below.4
`
`
`
`
`4 Dielectric Laboratories Single – Layer and Broadband Blocking Capacitors, p. 3. (Ex. 2006).
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 13
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`Frequency
`
`Source: Dielectric Laboratories Single‐Layer and Broadband Blocking Capacitors, p. 3.
`http://www.knowlescapacitors.com/dilabs/en/gn/resources/product‐brochures#SLC
`
`
`
`
`
`30. SLCs exhibit superior high frequency performance over MLCCs. For
`
`example, the equivalent series inductance (ESL) of an SLC is on the order of ~35
`
`pico Henries (pH)5 while the ESL of a typical MLCC is on the order of ~870-1200
`
`pH.6 Thus, the ESL of an SLC is on the order of a factor of ~1/25th that of an
`
`MLCC, or less. The lower inductance results in an increase in self-resonance
`
`frequency by way of the relationship:
`
`1
`
`Fr 2
`
`
`
`
`LC
`
`where:
` Fr is self-resonance frequency (SRF) in Hertz (Hz)
`
` L is equivalent series inductance (ESL) in Henry (H)
`
` C is capacitance in Farads (F)
`
`
`5 D. A. Weston, Electromagnetic Compatibility Principals and Applications, Marcel Dekker Inc.,
`NY, p 184, 2001. (Ex. 2007).
`6 J. Cain, “Parasitic Inductance of Multilayer Ceramic Capacitors,” AVX Technical Brochure,
`Table 1, p 3. http://www.avx.com/docs/techinfo/CeramicCapacitors/parasitc.pdf. (Ex. 2008).
`
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`Presidio Ex. 2001, pg. 14
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`
`
`Thus, if capacitance remains unchanged while inductance is reduced a factor of
`
`25X, the resonance frequency will increase by a factor of (25)1/2 or 5X. This
`
`would be highly valuable to a POSITA interested in designing a circuit that will
`
`operate at frequencies below resonance of the capacitor. Use of an SLC having
`
`1/25th the inductance would increase the upper end of the useful frequency range of
`
`the circuit by 5 fold simply by using an SLC instead of an MLCC in the circuit, all
`
`other things remaining equal.
`
`31. Another factor important in the selection of an SLC for use at high
`
`frequencies is equivalent series resistance (ESR). Due to the relatively simple
`
`charge and discharge path of an SLC, the ESR tends to be lower than the ESR of
`
`other ceramic capacitors, such as MLCCs and other types of buried layer
`
`capacitors, which have more complex and tortuous charge and discharge paths.
`
`Larry A. Liebowitz, inventor of U.S. Patent No. 6,690,572 (Ex. 1004), noted in the
`
`patent prosecution history that: “However, there is a disadvantage in connecting to
`
`an electrode by way of a via in that electrical series resistance (ESR) is introduced
`
`that adversely affects performance of a circuit capacitor at higher frequencies of
`
`operation.” (Ex. 2009 at p. 113/198). Increased ESR results in reduced quality
`
`factor (Q), which is a figure of merit for capacitors used at high frequencies,
`
`through the relation:
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 15
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`
`
`XQ
`C
`
`ESR
`
`
`
`1
`fC
`2
`
`
`ESR
`
`
`
`where:
` Q is Quality Factor (dimensionless)
`
` XC is capacitive reactance = (1/(2πfC)) in ohms (Ω)
`
`f is frequency in Hertz (H)
`
`
` C is capacitance in Farad (F)
`
` ESR is equivalent series resistance in Ohms (Ω)
`
`
`
`32. Similarly, increased ESR results in a generally undesirable increase in
`
`dissipation factor (DF), since Q = 1/DF, through the relation:
`
`
`
`ESR
`
`fC
`2
`
`
`
`XE
`
`SR
`
`C
`
`DF
`
`
`
` where:
`
`
`
`
`
`
`
`
`
`
`
`
`
`DF is Dissipation Factor (dimensionless)
`XC is capacitive reactance = (1/(2πfC)) in ohms (Ω)
`f is frequency in Hertz (H)
`C is capacitance in Farad (F)
`ESR is equivalent series resistance in Ohms (Ω)
`
`33.
`
`Increased ESR and increased ESL each also result in increased
`
`impedance at high frequencies through the relation:
`
`Z
`
`
`
`ESR
`
`2
`
`
`
`(
`
`X
`
`L X
`
`
`C
`
`2
`
`)
`
`
`
`
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 16
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`
`
`where:
` Z is impedance in Ohms (Ω)
`
` ESR is equivalent series resistance in Ohms (Ω)
`
` XL is inductive reactance = 2πfL in Ohms (Ω)
`
` XC is capacitive reactance = (1/(2πfC)) in ohms (Ω)
`
`f is frequency in Hertz (H)
`
`
` L is inductance in Henries (H)
`
` C is capacitance in Farad (F)
`
`
`
`Increased impedance may also be undesirable to a POSITA.
`
`34. Based on the above, a POSITA understands that SLCs are generally
`
`superior to MLCCs and other buried layer ceramic capacitors for use at high
`
`frequencies. Liebowitz was careful to point this fact out in U.S. Patent No.
`
`6,690,572 by differentiating true SLCs from MLCCs and other buried layer
`
`capacitors. (Ex. 1004, at 1:54-67, 2:6-10).
`
`35.
`
`It was and is also well known to a POSITA that the leading drawback
`
`of true SLC capacitors is that they are comprised of only one ceramic layer, and
`
`that they rely on that ceramic dielectric layer to achieve a level of physical or
`
`mechanical robustness to enable handling and surface mount processing (e.g.,
`
`placement on the circuit board, mounting of the SLC to the circuit board, wire
`
`bonding of the SLC to the circuit, etc.) without damage to the SLC during
`
`processing. This results in the requirement that the single ceramic dielectric layer
`
`in an SLC be at least ~0.005” in thickness or more.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 17
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`36. However, this thickness must be balanced with the ability of the SLC
`
`to generate capacitance. It is generally desirable for a capacitor system to have
`
`high capacitance, or high capacitance per unit volume in order to enable circuit
`
`miniaturization. Capacitance is inversely proportional to dielectric thickness in
`
`accordance with the relation:
`
`C
`
`
`
`'
`
`0
`t
`
`
`
`A
`
`
`
` where:
`
`C is capacitance in Farad (F)
`
`ε0 is the dielectric permittivity of free space 8.854x10-12
`Farads/meter (F/m)
`
`ε’ is the dielectric permittivity of the material between the two
`electrodes of the SLC (dimensionless)
`
` A
`
` is overlap area of the two electrodes of the SLC in square
`meters (m2)
`
` t
`
` is the thickness of the dielectric layer of the SLC in meters
`(m),
`
`Therefore, a POSITA has to balance the competing factors of minimizing dielectric
`
`thickness (in order to maximize capacitance) with increasing dielectric thickness
`
`(to achieve physical robustness) without compromising the desired qualities of low
`
`ESR and low ESL.
`
`37. Otherwise stated, the ceramic layer must be thin enough to produce
`
`enough capacitance, yet thick enough to enable suitable mechanical properties,
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 18
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`while maintaining a very low ESL and low ESR which enable the superior high
`
`frequency properties of a true SLC. Additionally, a POSITA would employ a
`
`simple, low cost design for the SLC. As described in more detail below, a
`
`POSITA would therefore avoid the use of vias and buried metallizations in the
`
`device, for numerous reasons.
`
`38. Therefore, a POSITA would understand there is a need for a simple
`
`capacitor device that exhibits the ESL and ESR advantages of a true SLC for high
`
`frequency performance, combined with a need for increased capacitance value per
`
`unit volume.
`
`39. Recognizing this, Liebowitz disclosed a new type of SLC in U.S.
`
`Patent No. 6,690,572 (Ex. 1004) that utilizes relatively thick composite electrodes,
`
`combined with a very thin single dielectric layer. This provides physical and
`
`mechanical robustness to the resulting SLC, while allowing reduction in dielectric
`
`thickness, so as to enable increased capacitance per unit volume.
`
`40. Liebowitz was careful to define his invention as a “true SLC” (Id. at
`
`1:54-67, 2:6-10), noting that other purported SLCs have vias and buried
`
`metallizations (such as those disclosed in Devoe (Ex. 1005)). Such capacitors are
`
`inferior to “true SLCs” due at least to an undesirable increase in ESL and ESR
`
`resulting from the vias and buried metallizations (Ex. 1004, at 1:54-67, 2:6-10; Ex.
`
`2009 at p. 113/198).
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 19
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`
`VII. BACKGROUND OF ANALYSIS
`
` A. Claim Construction
`
`41.
`
`I have been informed by counsel that claim terms in an Inter Partes
`
`Review proceeding are to be given their broadest reasonable interpretation
`
`consistent with how a POSITA in the relevant art at the time of the invention
`
`would understand the claim language in view of the specification.
`
`42.
`
`I have been informed that the Board rejected several of Petitioner’s
`
`proposed constructions for certain claim terms. In rejecting Petitioner’s proposed
`
`constructions for certain claim terms, I understand that the Board has defined the
`
`claim term “essentially monolithic structure” as “an essentially solid structure of
`
`materials that are sintered together” and that has “internal metallizations that create
`
`a partial boundary or seam within the structure, but because the metallizations do
`
`not cover the entire area of the dielectric layer, the ceramic materials sinter
`
`together around the edges of the metallization.”
`
`B.
`
`43.
`
`Legal Issues
`
`I have been informed that Petitioner must demonstrate unpatentability
`
`by a preponderance of the evidence, which is a lower (easier) standard than the
`
`clear and convincing evidence standard employed in district court litigation. I have
`
`not assumed that the ‘639 patent is valid.
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 20
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`44.
`
`I have been informed that claims are anticipated when each and every
`
`element of the claim is found in a single prior art reference.
`
`45.
`
`I have been informed that, even if every element of a claim is not
`
`found explicitly or inherently in a single prior art reference, the claim may still be
`
`unpatentable if the differences between the claimed elements and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a POSITA. That is, the invention may be obvious to a
`
`POSITA when seen in light of one or more references. I have been informed that a
`
`patent claim is obvious when it is only a combination of old and known elements,
`
`with no change in their respective functions, and that these familiar elements are
`
`combined according to known methods to obtain predictable results. I have been
`
`informed that the following four factors are considered when determining whether
`
`a patent claim is obvious: (1) the scope and content of the prior art; (2) the
`
`differences between the prior art and the claim; (3) the level of ordinary skill in the
`
`art; and (4) secondary considerations tending to prove obviousness or
`
`nonobviousness.
`
`46.
`
`I have also been informed that the courts have established a collection
`
`of secondary factors of nonobviousness, which include: unexpected, surprising, or
`
`unusual results; prior art that teaches away from the alleged invention;
`
`substantially superior results; synergistic results; long-standing need; commercial
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 21
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`success; and copying by others. I have also been informed that there must be a
`
`connection, or nexus, between these secondary factors and the scope of the claim
`
`language to relate to nonobviousness.
`
`47.
`
`I have also been informed that some examples of rationales that may
`
`support a conclusion of obviousness include:
`
`a.
`
`Combining prior art elements according to known methods to
`
`yield predictable results;
`
`b.
`
`Simply substituting one known element for another to obtain
`
`predictable results;
`
`c.
`
`Using known techniques to improve similar devices (or
`
`product) in the same way (e.g., obvious design choices);
`
`d.
`
`Applying a known technique to a known device (or product)
`
`ready for improvement to yield predictable results;
`
`e.
`
`Choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success—in other words, whether
`
`something is “obvious to try”;
`
`f.
`
`Using work in one field of endeavor to prompt variations of that
`
`work for use in either the same field or a different one based on design incentives
`
`or other market forces if the variations are predictable to one of ordinary skill in
`
`the art; and
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 22
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`g.
`
`Arriving at a claimed invention as a result of some teaching,
`
`suggestion or motivation in the prior art that would have led one of ordinary skill
`
`to modify the prior art reference or combine prior art reference teachings.
`
`48.
`
`I have also been informed that other rationales to support a conclusion
`
`of obviousness may be relied upon, for instance, that common sense (where
`
`substantiated) may be a reason to combine or modify prior art to achieve the
`
`claimed invention.
`
`49.
`
`I have also been informed that a reference that teaches away from the
`
`invention is a factor that supports a conclusion of non-obviousness. I have been
`
`informed that a reference may be said to teach away when a POSITA, upon
`
`reading the reference, would be discouraged from following the path set out in the
`
`reference, or would be led in a direction divergent from the path that was taken by
`
`the applicant. I have also been informed that a reference may be said to teach
`
`away when it suggests that the developments flowing from its disclosure are
`
`unlikely to produce the objective of the patented invention. However, just because
`
`there are differences between prior art references is insufficient to show a teaching
`
`away.
`
`
`
`C. Claims of the ‘639 Patent
`
`50.
`
`Independent Claim 1 of the ‘639 patent recites the following elements:
`
`1. A capacitor comprising:
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 23
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`an essentially monolithic structure comprising at least one composite
`
`portion sintered with a ceramic dielectric portion,
`
`a buried metallization in the dielectric portion and at least one
`
`conductive metal-filled via extending from the buried metallization to the
`
`composite portion,
`
`wherein the composite portion includes a ceramic and a conductive
`
`metal, the capacitor further characterized by a feature selected from the group
`
`consisting of:
`
`(a) the composite portion comprises the conductive metal in an
`
`amount sufficient to render the composite portion conductive, wherein the
`
`composite portion provides an electrical lead for attaching the capacitor to a
`
`metallic surface trace on a printed circuit board; and
`
`(b) a metallization area partially between the composite portion and
`
`the ceramic dielectric portion, and a conductive metal coating on faces of the
`
`composite portion not sintered to the ceramic dielectric portion, whereby the
`
`conductive metal coating provides an electrical lead for attaching the capacitor to a
`
`metallic surface trace on a printed circuit board.
`
`51. Thus, independent Claim 1, and dependant Claims 2-7, each require,
`
`among other things, “a buried metallization in the dielectric portion and at least
`
`one conductive metal-filled via extending from the buried metallization to the
`
`Presidio Components, Inc. (IPR ‘639)
`
`
`
`
`
`
`
`Presidio Ex. 2001, pg. 24
`AVX v. Presidio, Case No. IPR2016-00636
`
`
`
`comp
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