Trials@uspto.gov
`571-272-7822
`
`
` Paper 29
`
`Entered: September 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
` Paper 29
`
`Entered: September 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318 and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
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`I. INTRODUCTION
`
`In this inter partes review trial, instituted pursuant to 35 U.S.C. § 314,
`
`Petitioner Sumitomo Electric Industries, Ltd. (“SEI”) challenges the
`
`patentability of claims 1–4, 8–13, 16, and 17 of U.S. Patent No. 9,166,243
`
`B2 (Ex. 1001, “the ’243 patent”), owned by United Technologies
`
`Corporation (“UTC”).
`
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
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`arguments raised during trial. For the reasons discussed below, we
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`determine that SEI has not proven, by a preponderance of the evidence, that
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`claims 1–4, 8–13, 16, and 17 of the ’243 patent are unpatentable.
`
`A. Procedural History
`
`On February 23, 2017, SEI requested an inter partes review of claims
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`1–4, 8–13, 16, and 17 of the ’243 patent. Paper 2, “Pet.” UTC filed a Patent
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`Owner Preliminary Response. Paper 6. In a Decision on Institution of Inter
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`Partes Review (Paper 7, “Dec. on Inst.”), we instituted trial as to all
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`challenged claims on the following grounds of unpatentability:
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`2
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`IPR2017-00966
`Patent 9,166,243 B2
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`1. Whether claims 1–4, 8–13, 16, and 17 are unpatentable under
`35 U.S.C. § 103(a),1 as having been obvious over the combined
`disclosures of JP228,2 JP659,3 and JP029;4 and
`
`2. Whether claims 1–4, 8–13, 16, and 17 are unpatentable under
`35 U.S.C. § 103(a), as having been obvious over the combined
`disclosures of JP228, JP659, JP029, and Perry.5
`
`Dec. on Inst. 27.
`
`Following institution, UTC filed a Patent Owner Response (Paper 13,
`
`“PO Resp.”), and SEI filed a Reply (Paper 16, “Pet. Reply”).
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`SEI supported its Petition with the Declaration of Toru Kato.
`
`Ex. 1025. UTC took cross-examination of Dr. Kato via deposition, and filed
`
`the transcript in the record. Ex. 2022. With its Reply, SEI submitted a
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`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`to which the ’243 patent claims priority was filed before that date, our
`citations to Title 35 are to its pre-AIA version.
`
`2 Japan Examined Patent Application Publication S54-19228, published July
`13, 1979 (Ex. 1003). An English translation of Exhibit 1003 was submitted
`as Exhibit 1004; citations to “JP228” herein are to the translation.
`
`3 Japan Unexamined Patent Application Publication H02-148659, published
`June 7, 1990 (Ex. 1005). An English translation of Exhibit 1005 was
`submitted as Exhibit 1006; citations to “JP659” herein are to the translation.
`
`4 Japan Unexamined Patent Application Publication 2006-156029,
`published June 15, 2006 (Ex. 1008). An English translation of Exhibit 1008
`was submitted as Exhibit 1009; citations to “JP029” herein are to the
`translation.
`
`5 U.S. Patent Application Pub. No. 2008/0292938 A1 to Perry et al.,
`published Nov. 27, 2008 (Ex. 1007).
`
`
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`3
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`IPR2017-00966
`Patent 9,166,243 B2
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`Supplemental Declaration of Dr. Kato (Ex. 1058), and also provided a
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`Supplemental Declaration of James Yagaeshi (Ex. 1066).
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`With its Patent Owner Response, UTC submitted the Declaration of
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`Dr. Fikile Brushett. Ex. 2048. SEI took cross-examination testimony of
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`Dr. Brushett via deposition, and submitted the transcript. Ex. 1069.
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`During trial, a dispute arose regarding the English translation of JP228
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`(Ex. 1004), which we address at further length below. In response to a
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`request from UTC, we authorized UTC to file the declaration of David
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`Baldwin (Ex. 2050), which included as Exhibit A a prior declaration by Mr.
`
`Baldwin regarding the translation of JP228. In our Order authorizing the
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`filing, we noted that Exhibit A would be accepted solely for the limited
`
`purpose of establishing Mr. Baldwin’s credibility, not as independent
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`evidence of the proper translation of JP228. Paper 19.
`
`UTC filed a Motion to Exclude certain evidence submitted by SEI
`
`with its Reply (Paper 21, “Mot.”), to which SEI filed an Opposition (Paper
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`23, “Mot. Opp.”) and UTC filed a Reply (Paper 25, “Mot. Reply”).
`
`An oral hearing was held on May 10, 2018, and a transcript of the oral
`
`hearing is available in the record. Paper 28 (“Tr.”).
`
`B. The ’243 Patent
`
`The ’243 patent, titled “Flow Battery With Interdigitated Flow Field,”
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`issued October 20, 2015, from U.S. Patent Application No. 13/513,651 (“the
`
`’651 application”), filed on June 4, 2012. Ex. 1001, (54), (45), (21), (86).
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`The ’651 application was a national stage filing of PCT application
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`PCT/US2009/068681, filed December 18, 2009. Id. at (86), (22).
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`4
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`Patent 9,166,243 B2
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`As UTC acknowledges, flow batteries, and specifically redox flow
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`batteries (“RFBs”), have been known for over 40 years. Paper 6, 3. Typical
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`flow batteries use the flow of an electrolyte over an electrode to convert
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`chemical energy stored in the electrolyte into electrical energy. Ex. 1001,
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`1:13–20. Conversely, the electrolyte may be pumped in reverse to convert
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`excess electrical energy into stored chemical energy. Id. As such, the ’243
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`patent states that flow batteries have great potential in renewable resource
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`generation such as wind power, to store energy production that exceeds
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`customer demand. Id. at 1:17–20.
`
`The ’243 patent discloses an RFB having the general structure shown
`
`in Figure 1 of the ’243 patent:
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`5
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`Figure 1 of the ’243 patent depicts flow battery 20 with first liquid-
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`porous electrode 22 and second liquid-porous electrode 24, separated by
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`membrane 26. A first electrolyte liquid flows from first storage tank 32a
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`through first flow field 28 adjacent to first electrode 22, while second
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`electrolyte liquid flows from second storage tank 32b through second flow
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`field 30 adjacent to second electrode 24. Id. at 2:30–67.
`
`The flow fields of the ’243 patent have a particular structure and are
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`known as interdigitated flow fields (“IFFs”). In an IFF, the electrolyte flows
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`through parallel channels in a plate, but the channels are at least partially
`
`blocked, causing the electrolyte to flow out of the channels and permeate the
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`electrode before returning to an adjacent channel. Id. at 3:50–59. According
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`to the ’243 patent, the use of an IFF provides a lower pressure drop in the
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`electrolyte flow than if the liquid merely flows through the channel without
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`entering the electrode. Id. at 3:59–64. Figure 3 of the ’243 patent depicts
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`partially obstructed, interdigitated flow fields:
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`6
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`Patent 9,166,243 B2
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`Figure 3 of the ’243 patent depicts flow field 28 having second
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`channels 36 interdigitated with first channels 34. The first channels have
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`inlets 50 and partially blocked outlets 52, while the second channels have
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`partially blocked inlets 54 and outlets 56. Liquid electrolyte flows into the
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`first channels but is obstructed by the partial blockage, causing flow 38 into
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`the adjacent second channels. Id. at 3:13–64.
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`C. Illustrative Claim
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`
`
`Of the challenged claims, claims 1, 13, and 16 are independent.
`
`Claim 1 is reproduced below:
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`1. A redox flow battery comprising:
`
`a first liquid-porous electrode;
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`a second liquid-porous electrode spaced apart from the first
`liquid-porous electrode;
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`an ion-exchange membrane arranged between the first liquid-
`porous electrode and the second liquid-porous electrode;
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`IPR2017-00966
`Patent 9,166,243 B2
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`first and second flow fields adjacent the respective first liquid-
`porous electrode and second liquid-porous electrode, each of
`the first and second flow fields including first channels
`having at least partially blocked outlets and second channels
`having at least partially blocked inlets, and the second
`channels are interdigitated with the first channels; and
`
`a positive electrolyte storage tank connected in a positive
`recirculation loop with one of the first or second flow fields
`and a negative electrolyte storage tank connected in a
`negative recirculation loop with the other of the first or
`second flow fields.
`
`Ex. 1001, 5:36–54. Claim 13 is a method claim counterpart to the apparatus
`
`of claim 1, comprising the steps of providing the battery of claim 1 and
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`“restricting flow of a liquid electrolyte through the first channels using the at
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`least partially blocked outlets of the first channels to force flow of the liquid
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`electrolyte though the adjacent respective first liquid-porous electrode or
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`second liquid-porous electrode into an adjacent second channel.” Id. at
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`6:38–62. Claim 16 is an apparatus claim largely similar in structure to claim
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`1, but recites that the redox flow battery comprises at least one cell
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`containing the various limitations of claim 1.
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`II. ANALYSIS
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`A. Claim Construction
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`
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`In an inter partes review, we construe claims by applying the broadest
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`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
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`see also In re Cuozzo Speed Techs., LLC, 136 S. Ct. 2131 (2016). Only
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`those terms in controversy need to be construed, however, and only to the
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`extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`8
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`For purposes of our Decision on Institution, SEI asked that we
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`construe the term block, which appears in the independent claims as
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`“partially block[]” and in claim 4 as “fully block” (Pet. 15), and also that we
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`clarify that claim 16’s limitation of “at least one cell including . . . first and
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`second electrolyte storage tanks” means that the tanks are in the battery as a
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`whole, not necessarily within a cell. Id. at 16. We determined that
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`construction of these terms was not necessary to determine whether to
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`institute trial (Dec. on Inst. 8), and neither party returned to these claim
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`terms during the instituted trial.
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`
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`We also declined to construe redox flow battery pursuant to UTC’s
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`request in its Preliminary Response, because we determined that the
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`preambles of the independent claims were not limiting in their scope. Id. at
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`8–9. In its Patent Owner Response, UTC contends that the preambles are
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`indeed limiting, and asks that we construe redox flow battery as follows:
`
`a battery for selectively storing and discharging electric energy,
`in which a cell drives a reversible redox reaction, in which,
`upon charging, the electrical energy supplied causes a chemical
`reduction reaction in one electrolyte and an oxidation reaction
`in the other electrolyte, and upon discharging, the chemical
`energy contained in the electrolyte is released in the reverse
`reactions and electrical energy can be drawn from the
`electrodes.
`
`PO Resp. 18.
`
`We will only construe a claim term appearing in the preamble of a
`
`claim as limiting if it is necessary to “give life, meaning, and vitality” to the
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`claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
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`(Fed. Cir. 1999) (citing Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)).
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`Patent 9,166,243 B2
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`[A] preamble may be limiting if: “it recites essential structure or
`steps”; claims “depend[] on a particular disputed preamble
`phrase for antecedent basis”; the preamble “is essential to
`understand limitations or terms in the claim body”; the preamble
`“recit[es] additional structure or steps underscored as important
`by the specification”; or there was “clear reliance on the
`preamble during prosecution to distinguish the claimed invention
`from the prior art.”
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`Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1228, 1236 (Fed. Cir.
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`2017) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
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`801, 808 (Fed. Cir. 2002)).
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`
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`UTC’s argument is that the preamble—specifically, the recitation of
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`redox flow battery—is limiting because it “breathe[s] life” into the
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`remainder of the claim. PO Resp. 13 (citing Catalina Mktg., 289 F.3d at
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`808). As evidence, UTC cites the prosecution history of the ’243 patent,
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`specifically an amendment wherein storage tanks and recirculation loops
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`were added to the claims as positive recitations, to distinguish over a prior
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`art reference. Id. at 14. UTC argues that this makes clear that the claims are
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`intended to be directed to redox flow batteries, making the preamble
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`limiting.
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`
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`We disagree. As the Federal Circuit has observed, “[a] preamble is
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`not a claim limitation if the claim body ‘defines a structurally complete
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`invention . . . and uses the preamble only to state a purpose or intended use
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`for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v.
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`Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were
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`amended to include storage tanks and recirculation loops actually cuts
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`against UTC’s position, as the claim as amended describes a structurally
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`complete invention and reliance on the preamble for this structure is
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`unnecessary.
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`
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`UTC also points to the fact that the Examiner amended the preamble
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`during prosecution, from merely reciting a “flow battery” to a “redox flow
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`battery.” PO Resp. 15. While “clear reliance on the preamble during
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`prosecution to distinguish the claimed invention from the prior art”
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`(Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as
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`limiting, UTC directs us to no evidence here that the Examiner intended the
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`amendment to distinguish the claims from the prior art. Indeed, as UTC
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`acknowledges in its Response, a person of ordinary skill in the art would
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`have understood the ’243 patent to use “‘redox flow battery’ and ‘flow
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`battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as
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`UTC concedes, the Examiner’s amendment merely substituted one synonym
`
`for another, the amendment could not have changed the scope of the claim
`
`or distinguished over the prior art. For these reasons, we conclude that the
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`preamble of the claims is not limiting, and, therefore, we need not construe
`
`the term redox flow battery.
`
`B. UTC’s Motion to Exclude
`
`Before turning to the merits of the parties’ arguments, we first
`
`determine the scope of the record by addressing UTC’s Motion to Exclude.
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`In its Motion, UTC seeks to exclude Exhibit 1066, which is the
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`Supplemental Declaration of James Yagaeshi. Mot. 2. For the following
`
`reasons, we deny the motion.
`
`At the outset, we note that motions to exclude in an inter partes
`
`review are intended to address evidentiary challenges to the admissibility of
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`evidence. Our Rule 42.64 provides that a motion to exclude is necessary to
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`preserve any objection, and refers to those objections as “objections to the
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`admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial
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`Practice Guide further explains that a motion to exclude “must explain why
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`the evidence is not admissible.” See Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-
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`arising evidence or procedural infirmities are not proper for a motion to
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`exclude.
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`For this reason, the objections raised in UTC’s motion to exclude are
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`improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R.
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`§ 42.63(b), which requires a translation of a foreign-language document to
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`be filed with the document. Mot. 5. By UTC’s reasoning, because the
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`Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was
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`not submitted with the foreign-language document, it violates the Board’s
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`rules. Id. As this is clearly a procedural objection to the timing of the
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`evidence, as opposed to its admissibility, we deny the motion to exclude on
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`this basis. In any event, even if it were procedurally proper, we would not
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`exclude the Supplemental Declaration on this basis. The Board’s Rule
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`requires only that the original foreign-language document be accompanied
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`by a translation, and there is no dispute that is what happened here. We see
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`nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its
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`translation at a later date, given sufficient notice and opportunity to respond
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`by the opposing party. Here, we granted UTC the opportunity to submit its
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`own responsive declaration and address the translation issue at the oral
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`hearing, and UTC did so.
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`Second, UTC argues that Exhibit 1066 should be excluded as
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`impermissible new evidence because 35 U.S.C. § 312(a)(3) requires
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`petitioners to provide all evidence supporting the grounds of unpatentability
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`with the petition. Mot 5. Again, this sort of objection is improper in a
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`motion to exclude, but even considered on its merits, we find it
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`unpersuasive. The statute does not prohibit the introduction of evidence by
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`petitioners subsequent to the petition; to the contrary, the Federal Circuit has
`
`stated that “the introduction of new evidence in the course of the trial is to be
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`expected in inter partes review trial proceedings . . . as long as the opposing
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`party is given notice of the evidence and an opportunity to respond to it.”
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`Genzyme Therapeutic Prod. Ltd. P'ship v. Biomarin Pharm. Inc., 825 F.3d
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`1360, 1367 (Fed. Cir. 2016). While new evidence amounting to “changing
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`theories in midstream” during the course of an inter partes review is not
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`permitted, we do not consider the modification to Mr. Yagaeshi’s initial
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`translation to rise to such a level.
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`Third, UTC objects to Exhibit 1066 as an “ambush” that violates our
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`Rule 42.123(b), pertaining to the submission of supplemental information.
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`Mot. 7. According to UTC, SEI should have first sought authorization to
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`file a motion to submit the Supplemental Declaration as supplemental
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`information, and then only submitted the declaration if the motion was
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`granted. Id. Instead, it appears SEI presented UTC with the Supplemental
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`Declaration shortly before SEI’s deposition of Dr. Brushett, and then filed
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`the Supplemental Declaration with its Reply. Id. at 8. Again, this is a
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`procedural objection that should have been raised outside a motion to
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`exclude; indeed, UTC did so in this case, by contacting the Board regarding
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`the Supplemental Declaration and its desire to submit the Declaration of Mr.
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`Baldwin. See Paper 19. Having submitted the Declaration and addressed
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`the translation issue at oral hearing, we consider any potential prejudice to
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`UTC caused by the alleged “ambush” to have been minimized. Even if
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`proper for a motion to exclude, we would deny UTC’s objection on this
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`basis.
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`For these reasons, we deny UTC’s motion to exclude Exhibit 1066.
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`C. Obviousness over JP228, JP659, and JP029
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`
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`SEI contends that claims 1–4, 8–13, 16, and 17 are unpatentable under
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`35 U.S.C. § 103(a), as they would have been obvious over the combined
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`disclosures of JP228, JP659, and JP029. Pet. 31–39. An obviousness
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`inquiry involves four underlying determinations: the scope and content of
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`the prior art; the differences between the prior art and the claims at issue; the
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`level of ordinary skill; and any objective indicia of nonobviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In cases where “all claim
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`limitations are found in a number of prior art references,” a party
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`challenging a claim as obvious must show “that a skilled artisan would have
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`been motivated to combine the teachings of the prior art references to
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`achieve the claimed invention, and that the skilled artisan would have had a
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`reasonable expectation of success in doing so.” Pfizer, Inc. v. Apotex, Inc.,
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`480 F.3d 1348, 1361 (Fed. Cir. 2007). While the reason to combine need
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`not be explicitly stated in the prior art, the challenger must “articulate[]
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–20 (2007).
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`1. The Level of Skill
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`The parties are generally in agreement as to the level of ordinary skill
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`in the art, though both also state that there is no need for the Board to set
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`forth a level of skill. PO Resp. 12; Pet. Reply 7. As the dispute between the
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`parties turns on a determination of whether a person of ordinary skill in the
`
`art would have had reason to combine the references, we believe a finding as
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`to the level of ordinary skill would be helpful to our analysis.
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`The parties’ proposed recitations of the level of skill are as follows:
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`Petitioner SEI’s Proposal
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`Patent Owner UTC’s Proposal
`
`A person with a degree in
`chemistry, physics, chemical
`engineering, electrical engineering
`or mechanical engineering, who
`also has at least one year of
`education or experience in flow cell
`structure design. Pet. Reply 8
`
`A person that has 1) a bachelor’s
`degree in chemistry or chemical
`engineering and 2) and at least two
`years’ experience designing RFB
`systems, testing RFB systems, or a
`combination of designing and
`testing RFB systems so as to obtain
`functional knowledge of RFB
`system structure and operation. PO
`Resp. 12 (citing Ex. 2048 ¶ 45).
`
`
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`
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`SEI contends that the person of ordinary skill should not be limited to
`
`only a degree in chemistry or chemical engineering, because the claimed
`
`features of the flow batteries are not directed to chemistry. Pet. Reply 7.
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`We agree, and adopt SEI’s definition of the relevant educational
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`background. While the parties differ as to the number of years of experience
`
`in working with flow batteries, we do not consider the difference (one versus
`
`two years) to be significant. We find that a person of ordinary skill in the art
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`at the time of invention would be a person with a degree in chemistry,
`
`physics, chemical engineering, electrical engineering, or mechanical
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`engineering, who has at least one year of experience designing or testing
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`flow batteries so as to obtain functional knowledge of their structure and
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`operation. We have reviewed the level of skill reflected in the prior art and
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`consider it consistent with this definition. See Okajima v. Bourdeau, 261
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`F.3d 1350, 1355 (Fed. Cir. 2001).
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`2. JP228
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`SEI refers to JP228 as its “principal reference,” and asserts that it
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`discloses “flow type electrolytic cells” with IFFs, as claimed. Pet. 21.
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`JP228 generally discusses flow type electrolytic cells with porous electrodes
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`having a plurality of inflow and outflow paths for the electrolytic solution.
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`Ex. 1004, 2. The cell is for “continuously performing electrolysis” by
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`causing an electrolyte in which a substance to be electrolyzed is dissolved to
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`flow over the electrodes. Id. JP228 refers to several uses of such flow type
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`electrolytic cells, such as “organic synthesis, heavy-metal recovery, fuel
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`cells, electroanalysis, [and] electrodialysis.” Id. The invention modifies
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`traditional parallel flow electrolytic cells—in which the electrolyte flows
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`along the surface of the electrode—by using flow channels to manage flow
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`of the electrolyte over the electrode surface. Id. at 2, 4. Figure 5 of JP228
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`illustrates such channels:
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`16
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`Figure 5(b) of JP228 depicts pressing plates 16 having grooves 18 and
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`20, and inflow and outflow holes 17 and 19. Id. at 5. The grooves thus
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`define “two groups of branches” such that “electrolyte flows evenly over the
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`entire surface of the porous electrodes 3 and 4.” Id. at 5–6. According to
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`SEI, these channels define a “plurality of interdigitated inflow paths and
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`outflow paths,” and the ends of channels 18 and 20 are fully blocked. Pet.
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`23.
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`a. The Translation Dispute
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`During trial, a dispute arose between the parties as to the correct
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`translation of a portion of JP228. The original translation submitted by
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`Petitioner, in describing an experiment to study the current distribution in
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`JP228’s cell, states that “the current value A was read when the potential
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`17
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`became -0.4V (versus saturated calomel electrode).” Ex. 1004, 4:13–14.6 In
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`its Response, UTC argued that this potential of -0.4V leads to the cell having
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`an overpotential of 930 mV, implying that the exemplary cell of JP228 is not
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`a flow battery. PO Resp. 28–29.
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`Following UTC’s response, SEI submitted a Supplemental
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`Declaration from its translator Mr. Yagaeshi, in which he testifies that the
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`character preceding “0.4V” in JP228 appears to be a dash, not a minus sign,
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`and provides examples of other places in the translation where the dash was
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`translated as a hyphen. Ex. 1066 ¶¶ 9–12. Mr. Yagaeshi then states that
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`“the dash preceding 0.4 appears to be a typographical error” (id. ¶ 13),
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`although it is unclear whether he is contending that the dash in the original
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`document is an error, or if his translation was in error. Mr. Yagaeshi also
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`points out other places in JP228 in which a plus or minus sign was used in
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`the figures, where they are placed within circles. Id. at 4.
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`With our authorization, UTC submitted a responsive declaration from
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`David Baldwin, a translator with 22 years of experience in Japanese-English
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`translation. Ex. 2050 ¶ 4. Mr. Baldwin testifies that the Japanese character
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`preceding the disputed dash or minus sign is a “grammar particle,” which
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`means that grammatically, a dash or hyphen would not make sense in the
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`sentence and that the character can only be interpreted as a minus sign. Id.
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`¶ 13. Mr. Baldwin argues that Mr. Yagaeshi’s interpretation of the symbol
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`as a dash would lead to the translation “when the potential became – 0.4 V,”
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`
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`6 The original Japanese passage appears on page 2 of Exhibit 1003, at line
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`19:
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`18
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`.
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`which is not grammatically correct. Id. ¶ 16. Mr. Baldwin also testifies that
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`he believes Mr. Yagaeshi’s reference to the positive and negative signs
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`placed in circles in the figures is in error, because the machine used in 1976
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`to create the figures was “likely very different” than the typewriter used for
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`the text of JP228. Id. ¶ 18.
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`UTC submitted a prior translation of JP228 by Mr. Baldwin. Ex.
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`2050, Exhibit A. Mr. Baldwin testifies that this translation was produced in
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`or around November 2016, prior to seeing Mr. Yagaeshi’s translation and
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`before the filing of SEI’s Petition. Id. ¶ 19. Because of the late timing of
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`this submission, we do not consider it proper to rely on the prior translation
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`itself as independent evidence of the proper translation of JP228 (see Paper
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`19), but the fact that Mr. Baldwin’s testimony in this inter partes review is
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`consistent with his prior, pre-dispute translation is evidence that his
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`testimony has not changed in view of Mr. Yagaeshi’s translation or the
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`parties’ arguments in this inter partes review.
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`On this record, we determine that Mr. Baldwin’s translation of the
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`character as a minus sign, which is consistent with Mr. Yagaeshi’s original
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`translation, makes more grammatical sense in the context of the sentence.
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`We take note of the fact that SEI only changed its position on the
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`translation—and asked Mr. Yagaeshi to correct his prior translation—once
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`UTC made arguments based on the original translation that might be
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`detrimental to SEI’s case. While it is conceivable that SEI only became
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`aware of the alleged error once UTC called attention to it in the Response,
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`we consider it fair to hold SEI to its original interpretation, especially given
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`that that original interpretation is in agreement with Mr. Baldwin’s
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`19
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`translation, which has remained consistent since at least 2016. For these
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`reasons, we will interpret the disputed passage of JP228 to read “the
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`potential was negative 0.4V.”
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`b. Whether JP228 Discloses Redox Flow Batteries
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`The parties also dispute the disclosure of JP228, in particular whether
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`its discussion of “flow type electrolytic cells” would be understood by the
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`person of ordinary skill to include RFBs. As summarized above, JP228’s
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`“Detailed Description of the Invention” begins as follows:
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`The present invention relates to a flow type electrolytic
`cell for continuously performing electrolysis by causing an
`electrolyte, in which a substance to be electrolyzed is dissolved,
`to flow, wherein the electrolytic current can be increased by
`selecting a flow path in the electrolytic cell that averages the
`current distribution inside the electrolytic cell.
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`Flow type electrolytic cells are widely used for organic
`synthesis, heavy-metal recovery, fuel cells, electroanalysis,
`electrodialysis, etc.
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`Ex. 1004, 2:6–11. Notably, in its list of uses for flow type electrolytic cells,
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`JP228 does not mention RFBs, or flow batteries at all.
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`Dr. Kato testifies that the disclosure of “flow-type electrolytic cells”
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`in JP228 would be understood by a person of ordinary skill in the art to
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`include redox flow batteries. Ex. 1025 ¶ 206. Dr. Kato notes that the list of
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`types of flow-type electrolytic cells in JP228 includes both embodiments
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`where current is applied to cause a chemical reaction (e.g., organic
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`synthesis), as well as one wherein a chemical reaction produces electric
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`current (fuel cells). Ex. 1025 ¶ 208. From this, Dr. Kato concludes that
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`“flow-type electrolytic cells” is used broadly in JP228 and would include
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`20
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`RFBs. Id. Dr. Kato also states that JP228 describes the structure of its cell
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`using terms that are consistent with an RFB. Id. ¶ 213. With respect to the
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`example cell recited in JP228 (Ex. 1004, 4:3–5:14), Dr. Kato testifies that it
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`would be understood to be an RFB, because it uses ferrous sulfate and ferric
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`sulfate as electrolytes. Ex. 1025 ¶¶ 211–212.
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`In response, UTC provides the testimony of Dr. Brushett, who
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`disagrees that a person of ordinary skill would have understood JP228 to
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`pertain to RFBs. Ex. 2048 ¶¶ 61–86. While Dr. Brushett acknowledges that
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`JP228 lists as examples of “flow type electrolytic cells” both cells for
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`producing a chemical reaction (energy consumption) as well as cells for
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`energy generation (id. ¶ 63), he argues that all the cells listed in JP228 are
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`what he calls “one-way cells” because their reactions are intended to be run
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`in only one direction. Id. ¶¶ 34–36. According to Dr. Brushett, JP228 is
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`entirely silent as to what he calls “two-way cells” such as RFBs, which are
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`designed to run their electrochemical reactions reversibly. Id. ¶¶ 37–38, 65
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`(“[T]he disclosure of some types of one-way cells using electricity, and
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`different types of one-way cells producing electricity, does not amount to a
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`disclosure of cells that both use and produce electricity . . . .”).
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`Dr. Brushett also disagrees with Dr. Kato’s additional reasons for
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`concluding that the cells of JP228 encompass RFBs. The structural aspects
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`of the JP228 cells, such as flow plates and membranes, are not particular to
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`RFBs but are also present in one-way electrochemical cells. Id. ¶¶ 68–74.
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`And Dr. Brushett testifies that the use of ferrous sulfate and ferric sulfate as
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`electrolytes in JP228’s example cell does not signify that the cell is an RFB,
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`because these electrolytes may also find use in other types of electrolytic
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`cells. Id. ¶ 80 (citing Ex. 2019, 1:1–22 (heavy metal recovery), Ex. 2036,
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`Abstract (m
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