throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Date: August 11, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KEMET ELECTRONICS, CORP. and VISHAY AMERICAS, INC.,
`Petitioner,
`
`v.
`
`MEC RESOURCES, LLC,
`Patent Owner.
`____________
`
`IPR2019-00583
`Patent 6,137,390
`_______________
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`ORDER
`Denying Petitioner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`

`

`IPR2019-00583
`Patent 6,137,390
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`KEMET Electronics, Corp. and Vishay Americas, Inc. (collectively,
`“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 1–20 (“the challenged claims”) of U.S. Patent
`No. 6,137,390 (Ex. 1001, “the ’390 patent”). MEC Resources, LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to the
`Petition. We instituted an inter partes review of the challenged claims on
`August 12, 2019. Paper 8 (“Dec. on Inst.”), 39. After institution, Patent
`Owner filed a Response (Paper 15, “PO Resp.”) to the Petition, Petitioner
`filed a Reply (Paper 20, “Pet. Reply”) to the Response, and Patent Owner
`filed a Sur-reply (Paper 21, “PO Sur-reply”) to the Reply. We held an oral
`hearing on May 13, 2020, and a transcript of the hearing is included in the
`record. Paper 30 (“Tr.”).
`For the reasons set forth below, Petitioner has shown by a
`preponderance of the evidence that claims 1–20 of the ’390 patent are
`unpatentable.
`B. Real Parties in Interest
`Petitioner identifies the following real parties in interest: 1) KEMET
`Electronics, Corp.; 2) KEMET Corp.; 3) TOKIN Corp.; 4) Vishay Americas,
`Inc.; 5) Vishay Intertechnology, Inc.; and 6) Vishay Dale Electronics, LLC.
`Pet. 70. Patent Owner identifies itself as the only real party in interest.
`Paper 6, 2.
`C. Related Matters
`The parties indicate that the ’390 patent is the subject of the following
`district court cases: 1) MEC Resources, LLC v. Vishay Americas, Inc., No.
`
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`IPR2019-00583
`Patent 6,137,390
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`3:18-cv-2770 (N.D. Tex.); and 2) MEC Resources, LLC v. KEMET
`Electronics Corp., No. 3:18-cv-2771 (N.D. Tex.). Pet. 70; Paper 6, 2.
`D. The ’390 Patent
`The ’390 patent relates to an inductor “with improved inductance and
`minimized electromagnetic induction (EMI) interference.” Ex. 1001, 1:6–9.
`Specifically, the ’390 patent explains that its improvement involves
`compression molding a conventional inductor coil with a layer of a magnetic
`resin mixture. Id. at 1:59–63, 2:60–64. According to the ’390 patent, “[o]ne
`of the advantages of the method disclosed in the present invention is that the
`inductance of the coil can be controlled by adjusting the magnetic
`permeability of the magnetic-resin mixture, and/or the thickness of the
`magnetic-resin layer.” Id. at 2:1–5. Further, “[b]y using the compression
`molding process, the void space in the entire inductor is minimized,” which
`“minimizes the EMI interference and magnetic leakage, and increases the
`inductance per unit volume.” Id. at 2:5–8.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 11 are independent. Claim 1 is
`
`reproduced below.
`1. An inductor with enhanced inductance comprising:
`(a) a magnetic core;
`(b) an electrically conducting coil wound about said
`magnetic core;
`(c) a magnetic resin layer compression-molded to embed
`at least a portion of an outer periphery of said electrically
`conducting coil;
`(d) wherein said magnetic resin layer contains a magnetic
`powder dispersed in a polymer resin.
`Ex. 1001, 6:24–33.
`
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`
`35 U.S.C. §
`1031
`103
`103
`103
`103
`
`4
`
`Exhibit No.
`Ex. 1003
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`
`Ex. 1011
`
`F. Evidence
`Petitioner submits the following evidence:
`Evidence
`Declaration of Robert W. Erickson, Ph.D. (“Erickson
`Declaration”)
`Sergio Franco, ELECTRIC CIRCUITS FUNDAMENTALS
`(Emily Barrosse et al. eds., 1995) (“Franco”)
`Amada, US 6,144,280, issued Nov. 7, 2000 (“Amada”)
`Shafer, US 6,204,744 B1, issued Mar. 20, 2001 (“Shafer”)
`Rittner, US 6,600,403 B1, issued July 29, 2003 (“Rittner”)
`Kaneko, US 5,010,313, issued Apr. 23, 1991 (“Kaneko”)
`Butherus, US 3,953,251, issued Apr. 27, 1976
`(“Butherus”)
`Ohkawa, EP 0265839 A2, published May 4, 1988
`(“Ohkawa”)
`Patent Owner submits the Declaration of Curt R. Raschke, Ph.D.
`
`Ex. 2009 (“Raschke Declaration”).
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 3, 4, 7, 9–11, 13,
`14, 17, 19, 20
`2, 12
`5, 15
`6, 16
`8, 18
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective on
`March 16, 2013. Id. at § 3(n). Because the challenged claims of the ’390
`patent have an effective filing date before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
`
`References/Basis
`Franco, Shafer
`Franco, Shafer, Rittner
`Franco, Shafer, Butherus
`Franco, Shafer, Kaneko
`Franco, Shafer, Ohkawa
`
`

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`IPR2019-00583
`Patent 6,137,390
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`
`Claims Challenged
`1, 3, 4, 7, 9–11, 13,
`14, 17, 19, 202
`2, 12
`5, 15
`6, 16
`8, 18
`
`References/Basis
`Amada, Shafer
`
`35 U.S.C. §
`103
`Amada, Shafer, Rittner
`103
`Amada, Shafer, Butherus
`103
`Amada, Shafer, Kaneko
`103
`Amada, Shafer, Ohkawa
`103
`II. ANALYSIS
`
`A. Legal Standards
`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 person having ordinary skill in the art to which the
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including 1) the scope and content of the prior art; 2)
`any differences between the claimed subject matter and the prior art; 3) the
`
`
`2 The Petition and the Decision on Institution inadvertently omitted claims 7
`and 17 from the listing of challenged claims for the Amada and Shafer
`combination. Pet. 2, 40; Dec. on Inst. 4, 26; Pet. Reply 22 n.8. But the
`Petition substantively addresses claims 7 and 17 for the Amanda and Shafer
`combination, and the Decision on Institution instituted this inter partes
`review on all the asserted grounds in the Petition. Pet. 55; Dec. on Inst. 39.
`Patent Owner does not dispute that this inter partes review includes the
`asserted ground that claims 7 and 17 would have been obvious over Amada
`and Shafer. See PO Resp. 43–59; Tr. 45:10–23.
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`level of ordinary skill in the art; and 4) any objective indicia of non-
`obviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`Petitioner argues that “a person of ordinary skill in the art (‘POSITA’)
`at the time of the claimed invention (1999) would have had a bachelor’s
`degree in electrical engineering or materials science with two years of
`experience in designing electronic components.” Pet. 7–8 (citing Ex. 1003
`¶¶ 14–17). Patent Owner argues that “[a] hypothetical person of ordinary
`skill in the art (‘POSITA’) at the time of the filing of the patent (May 1999)
`would have been someone with a Bachelor’s degree in Material Science and
`Engineering, or in a related field, as well as about two years of experience
`with the fabrication of discrete electrical components.” PO Resp. 8 (citing
`Ex. 2009 ¶¶ 16–20). Patent Owner also contends that “[a]dditional graduate
`education could substitute for professional experience, while significant
`experience in the field might substitute for formal education.” Id. (citing Ex.
`2009 ¶¶ 16–20).
`Neither party identifies any specific instance in which the differences
`between the parties’ respective descriptions of the level of ordinary skill in
`the art impacts the analysis or conclusions of either party, or either party’s
`declarant, in this case. Tr. 6:26–7:5; 36:3–14. In fact, Patent Owner agrees
`with Petitioner’s description. Id. at 36:3–14. Further, our findings and
`
`
`3 Patent Owner argues that Petitioner “fail[s] to present a proper Graham
`analysis by not addressing any differences between the claimed subject
`matter and the prior art.” PO Resp. 8. We disagree. As discussed herein,
`Petitioner explains in detail the differences between the challenged claims
`and each primary prior art reference, as well as how the other prior art
`references compensate for those differences. See Sections II.D–II.M.
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`conclusions in this case would be the same under either party’s description
`of the level of ordinary skill in the art. To the extent necessary, though, we
`adopt Petitioner’s description, which is supported by the testimony of
`Petitioner’s declarant, Dr. Robert Erickson, and is consistent with the prior
`art. Pet. 7–8; Ex. 1003 ¶¶ 14–17.
`C. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in federal district court, including construing
`the claim in accordance with the ordinary and customary meaning of the
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. See Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,358 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b), effective Nov. 13, 2018) (now codified at
`37 C.F.R. § 42.100(b) (2019)).
`1. Enhanced Inductance
`Patent Owner proposes construing the term “enhanced inductance” to
`mean “the increase in inductance of the inductor described by the ’390
`patent in comparison to the same inductor containing the same number of
`winding turns, but without the magnetic resin layer embedding the
`conducting coil.” PO Resp. 5 (citing Ex. 1001, 3:64–6:22; Ex. 2009 ¶ 31).
`Patent Owner argues that “[t]he specification contains tables that describe
`the ’390 patent’s ‘Enhancement in Inductance’ in terms of ‘factors of
`inductance enhancement’ compared with a baseline ‘Inductance per unit
`winding turn.’” Id. Patent Owner also contends that the term “enhanced
`inductance” does not include EMI properties because the ’390 patent
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`“specifically distinguishes ‘increased inductance’ from ‘reduced EMI effect
`and magnetic leaks.’” Id. at 5–6 (citing Ex. 1001, 3:27–31; Ex. 2009 ¶ 32).
`Petitioner opposes Patent Owner’s proposed construction. Pet.
`Reply 6–7. Petitioner argues that the ’390 patent does not limit the term
`“enhanced inductance” to “a single metric.” Id. at 6 (citing Ex. 1001, 1:6–9,
`1:50–53, 3:56–62). According to Petitioner, the term “enhanced inductance”
`refers to “a number of features, including greater inductance per unit
`volume, reduced EMI interference, and reduced magnetic leakage.” Id. at 6–
`7 (citing Ex. 1001, code (57), 1:6–14, 1:50–58, 2:37–50, 3:27–31).
`The ’390 patent describes an inductor with “improved” inductance
`and, more specifically, with “increased inductance per unit volume.”
`Ex. 1001, 1:6–9, 1:50–53. Consistent with that description, the parties
`appear to agree that the term “enhanced inductance” refers to “increased
`inductance per unit volume.” See PO Resp. 5 (“the increase in inductance of
`the inductor . . . in comparison to the same inductor containing the same
`number of winding turns”); Pet. Reply 6 (“greater inductance per unit
`volume”). Thus, based on the specification, we also agree that the term
`“enhanced inductance” means “increased inductance per unit volume.”
`As discussed above, Patent Owner further asserts that the increased
`inductance is relative to “the inductor described by the ’390 patent . . . , but
`without the magnetic resin layer embedding the conducting coil.” PO
`Resp. 5. To support that portion of its proposed construction, Patent Owner
`directs us to tables in the ’390 patent “that describe the ’390 patent’s
`‘Enhancement in Inductance.’” Id. (citing Ex. 1001, 3:64–6:22). The tables
`in the ’390 patent appear to show the increase in inductance for several
`inductors with a magnetic resin layer relative to an inductor without a
`
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`magnetic resin layer. Ex. 1001, 3:56–6:22. The ’390 patent, however,
`explains that those tables “are presented herein for purposes of illustration
`and description, and are not intended to be exhaustive or to limit the
`invention to the precise form disclosed.” Id. at 3:56–62. Thus, we are not
`persuaded that the increase in inductance must be relative to the specific
`inductor described in the ’390 patent.4
`Patent Owner also contends that the term “enhanced inductance” does
`not include EMI properties. PO Resp. 5–6. As discussed below, even if we
`assume that the term “enhanced inductance” does not include EMI
`properties, the asserted prior art nonetheless teaches an inductor with
`enhanced inductance. See Sections II.D.2, II.D.3, II.I.2, II.I.3. As a result,
`we need not resolve this particular claim construction issue in order to
`resolve the parties’ disputes about the asserted grounds of unpatentability.
`For the foregoing reasons, we construe the term “enhanced
`inductance” to mean “increased inductance per unit volume.”
`2. Layer
`Patent Owner proposes construing the term “layer” to mean “an
`ascertainable thickness, and not a thickness that varies substantially along
`the circumference of the outside of the coil.” PO Resp. 7 (citing Ex. 2009
`¶ 35). Patent Owner argues that because the ’390 patent describes “the
`amount of inductance enhancement” based on the thickness of the magnetic
`resin layer, the layer must have “an, at least somewhat, ascertainable
`thickness.” Id. at 6–7, 27 (citing Ex. 1001, 3:67, 4:35). Patent Owner also
`
`
`4 Further, this portion of Patent Owner’s proposed construction does not
`appear to be relevant to the parties’ disputes about the asserted grounds of
`unpatentability. See Sections II.D.2, II.D.3, II.I.2, II.I.3.
`
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`cites a dictionary definition to support its proposed construction. Id. at 6
`(citing Ex. 2002, 1168–1169). Patent Owner argued at the oral hearing that
`the term “layer” also requires a “concentric thickness.” Tr. 32:17–33:12,
`46:11–47:15.
`Petitioner opposes Patent Owner’s proposed construction. Pet. Reply
`7. Petitioner argues that Patent Owner’s proposed construction “imports
`limitations found nowhere in the ’390 Patent, and injects uncertainty into
`otherwise plain language by imposing subjective requirements that the layer
`have ‘an ascertainable thickness’ that does not ‘var[y] substantially.’” Id.
`(citing Ex. 1033, 33:21–34:11).
`As discussed below, even if we assume that the term “layer” requires
`an ascertainable thickness that does not vary substantially along the
`circumference of the outside of the coil, the asserted prior art nonetheless
`teaches such a layer. See Sections II.D.2, II.D.3, II.I.2, II.I.3. As a result,
`we need not resolve this particular claim construction issue in order to
`resolve the parties’ disputes about the asserted grounds of unpatentability.
`As to Patent Owner’s argument that the term “layer” also requires a
`concentric thickness, that argument is not timely because it was presented
`for the first time at the oral hearing. See PO Resp. 6–7; Tr. 32:17–33:12,
`46:11–47:15; Trial Practice Guide Update, 23 (Aug. 2018), available at
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`actice_Guide.pdf (“During an oral hearing, a party may . . . only present
`arguments relied upon in the papers previously submitted.”). Moreover,
`although Figures 2 and 3 of the ’390 patent show examples of an inductor
`with a concentric magnetic resin layer (see Ex. 1001, Figs. 2, 3), Patent
`Owner does not direct us to any portions of the ’390 patent indicating that
`
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`the magnetic resin layer is limited to the concentric shape shown in those
`figures (see PO Resp. 6–7; Ex. 2009 ¶¶ 34–35; Tr. 32:17–33:12, 46:11–
`47:15). Thus, we are not persuaded that the term “layer” requires a
`concentric thickness.
`3. Embed
`Patent Owner proposes construing the phrase “to embed at least a
`portion of an outer periphery of said electrically conducting coil” to mean
`“to embed only the outer periphery of said electrically conducting coil.” PO
`Resp. 4. Patent Owner argues that its proposed construction is consistent
`with Petitioner’s proposed construction of the same phrase in a related
`district court action. Id. (citing Ex. 2003). Patent Owner points out that “the
`’390 patent discloses both partially enclosing the entire core and completely
`enclosing the entire core.” Id. (citing Ex. 1001, 2:64–67).
`Petitioner opposes Patent Owner’s proposed construction. Pet. Reply
`4–5. Petitioner argues that Patent Owner’s proposed construction “is
`inconsistent with the specification, which ‘discloses both partially enclosing
`[] and completely enclosing the entire core.’” Id. (citing Dec. on Inst. 8).
`Claims 1 and 11 recite “to embed at least a portion of an outer
`periphery of said electrically conducting coil.” Ex. 1001, 6:29–31, 6:65–67
`(emphasis added). Patent Owner’s proposed construction changes the
`phrase “at least a portion of” in claims 1 and 11 to the term “only.” PO
`Resp. 4. But other than directing us to Petitioner’s proposed construction in
`another proceeding, Patent Owner does not identify any evidence that
`supports changing the phrase “at least a portion of” to “only.” See id. In
`fact, Patent Owner acknowledges that the ’390 patent describes embedding
`the core as well, not only the outer periphery of the coil. Id. (citing Ex.
`
`11
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`1001, 2:64–67, 6:54–56, 8:8–10). Thus, we decline to adopt Patent Owner’s
`proposed construction. No further construction of the phrase “to embed at
`least a portion of an outer periphery of said electrically conducting coil” is
`necessary to resolve the parties’ disputes about the asserted grounds of
`unpatentability. See Sections II.D.2, II.D.3, II.I.2, II.I.3.
`4. Consolidated
`Petitioner proposes construing the term “consolidated” to mean “the
`core and the magnetic resin layer coating the coil are the same material and
`formed at the same time.” Pet. 7. Petitioner argues that its proposed
`construction is supported by the specification of the ’390 patent. Id. (citing
`Ex. 1001, 3:44–55). Patent Owner does not oppose Petitioner’s proposed
`construction. PO Resp. 5.
`The term “consolidated” appears in claim 15, which recites “wherein
`said magnetic core is a consolidated magnetic core made of the same or
`different magnetic resin as said magnetic resin layer.” Ex. 1001, 7:13–16
`(emphasis added). In other words, the claim language expressly states that a
`consolidated magnetic core can be made of a different material than the
`magnetic resin layer. Id. Thus, because Petitioner’s proposed construction
`contradicts the express claim language, we decline to adopt it. No further
`construction of the term “consolidated” is necessary to resolve the parties’
`disputes about the asserted grounds of unpatentability.5 See Sections II.F.1,
`II.K.1.
`
`
`5 Petitioner alternatively argues in its Reply that the term “consolidated”
`means “compression molded.” Pet. Reply 5. We need not address
`Petitioner’s alternative construction to resolve the parties’ disputes about the
`asserted grounds of unpatentability. See Sections II.F.1, II.K.1.
`
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`
`D. Ground 1A – Obviousness of Claims 1, 3, 4, 7, 9–11, 13, 14, 17,
`19, and 20 over Franco and Shafer
`Petitioner argues that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20
`would have been obvious over Franco and Shafer. Pet. 1, 8. For the reasons
`discussed below, Petitioner has shown by a preponderance of the evidence
`that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20 would have been obvious
`over Franco and Shafer.
`1. Overview of Franco and Shafer
`Franco teaches “an inductor [that] consists of a coil of insulated wire
`wound around a core.” Ex. 1005, 300. Franco also teaches that “the core is
`made of a highly permeable material such as iron or ferrite.” Id. at 301.
`Shafer teaches an inductor with “a wire coil having an inner coil end
`and an outer coil end.” Ex. 1007, 1:62–63. Shafer also teaches that “a
`powdered magnetic material is pressure molded completely around the coil
`so as to create an inductor body.” Id. at 1:67–2:2. According to Shafer,
`“[t]he magnetic molding material is comprised of a first powdered iron, a
`second powdered iron, a filler, a resin, and a lubricant,” with “[t]he first and
`second powdered irons hav[ing] differing electrical characteristics that allow
`the device to have a high inductance yet low core losses so as to maximize
`its efficiency.” Id. at 3:24–29.
`2. Claim 1
`Claim 1 recites “[a]n inductor with enhanced inductance.”6 Ex. 1001,
`6:25. Franco teaches an inductor with a coil of insulated wire wound around
`
`
`6 For purposes of this Decision, we do not decide whether the preamble is
`limiting because we determine the prior art nonetheless teaches “an inductor
`with enhanced inductance.” Further, neither party argues that the preamble
`is not limiting. See Pet. 13; PO Resp. 26.
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`a core. Pet. 13; Ex. 1005, 300, Fig. 7.8. Shafer teaches an inductor with a
`coil embedded in a magnetic molding material that increases inductance per
`unit volume. Pet. 13, 17; Ex. 1003 ¶¶ 46–47; Ex. 1007, 3:24–29 (“The first
`and second powdered irons have differing electrical characteristics that
`allow the device to have a high inductance yet low core losses so as to
`maximize its efficiency.”); Dec. on Inst. 10. As discussed in more detail
`below, it would have been obvious to embed the outer periphery of Franco’s
`coil in Shafer’s magnetic molding material by compression molding.
`Pet. 10–12, 17; Ex. 1003 ¶¶ 35–41, 64; see Section II.D.9.
`Patent Owner responds that the term “enhanced inductance” refers to
`“the increase in inductance of the inductor described by the ’390 patent in
`comparison to the same inductor containing the same number of winding
`turns, but without the magnetic resin layer embedding the conducting coil.”
`PO Resp. 26. Patent Owner contends that, therefore, Petitioner’s
`“arguments that the Franco-Shafer combination constitutes ‘an improved
`inductor’ because it is ‘smaller’ or because it ‘is magnetically self shielding’
`are without merit.” Id.
`Patent Owner’s argument is not persuasive for several reasons. First,
`Patent Owner’s argument is premised on its proposed construction of the
`term “enhanced inductance,” but, as discussed above, we adopt only a
`portion of that proposed construction. See Section II.C.1. Second, Patent
`Owner misinterprets Petitioner’s assertions regarding the prior art.
`Petitioner does not assert that the Franco and Shafer combination teaches an
`inductor with enhanced inductance simply because it is smaller. See Pet. 13.
`Rather, Petitioner asserts that Shafer’s “compression-molded magnetic
`powder resin layer increases the inductance per unit volume, which is why
`
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`the inductor can be made smaller.” Id. (emphasis added). Third, as
`discussed above, Shafer expressly teaches that its magnetic molding material
`increases inductance per unit volume. Pet. 13, 17; Ex. 1003 ¶¶ 46–47; Ex.
`1007, 3:24–29 (“The first and second powdered irons have differing
`electrical characteristics that allow the device to have a high inductance yet
`low core losses so as to maximize its efficiency.”). Patent Owner does not
`address that specific teaching. See PO Resp. 26.
`
`Claim 1 recites “a magnetic core.” Ex. 1001, 6:26. Franco teaches an
`inductor with a core made of iron or ferrite, both of which are magnetic.
`Pet. 13–14; Ex. 1003 ¶¶ 51–53; Ex. 1005, 301. Patent Owner responds that
`it would not have been obvious to combine Franco and Shafer (which we
`address below in Section II.D.9), but Patent Owner does not dispute that the
`Franco and Shafer combination teaches this limitation of claim 1. See PO
`Resp. 26–27.
`
`Claim 1 recites “an electrically conducting coil wound about said
`magnetic core.” Ex. 1001, 6:27–28. Franco teaches an inductor with a coil
`of insulated wire wound around a magnetic core. Pet. 14–15; Ex. 1005, 300,
`Fig. 7.8. Patent Owner does not dispute that the Franco and Shafer
`combination teaches this limitation of claim 1.
`
`Claim 1 recites “a magnetic resin layer compression-molded to embed
`at least a portion of an outer periphery of said electrically conducting coil.”
`Ex. 1001, 6:29–31. Shafer teaches a magnetic molding material comprising
`magnetic powders and a resin that is compression molded to embed an
`electrically conducting coil. Pet. 15–17; Ex. 1003 ¶¶ 60–63; Ex. 1007,
`3:24–26, 4:1–6, 5:8–10, Fig. 6. As discussed in more detail below, it would
`have been obvious to embed the outer periphery of Franco’s coil in Shafer’s
`
`15
`
`

`

`IPR2019-00583
`Patent 6,137,390
`
`magnetic molding material by compression molding. Pet. 10–12, 17; Ex.
`1003 ¶¶ 35–41, 64; see Section II.D.9.
`
`Patent Owner responds that the term “layer” requires “an, at least
`somewhat, ascertainable thickness.” PO Resp. 27. Patent Owner contends
`that Shafer’s Figure 6 depicts “a cubic . . . block of epoxy resin containing a
`round coil,” and, thus, does not have an at least somewhat ascertainable
`thickness. Id. at 27–28 (citing Ex. 1007, Fig. 6). Patent Owner’s argument
`is not persuasive. Patent Owner acknowledges that the ’390 patent does not
`expressly describe the thickness of the magnetic resin layer. Id. at 6–7. But
`Patent Owner contends that “a POSITA would have understood that the
`thickness of the magnetic resin layer was the difference between each
`inductor’s total outside diameter and the thickness of the coil, and was
`therefore an ascertainable thickness.” Id. at 7 (citing Ex. 1001, 3:67, 4:35;
`Ex. 2009 ¶ 35).
`By the same rationale, a person of ordinary skill in the art could have
`ascertained the thickness of the magnetic molding material in the Franco and
`Shafer combination. For example, a person of ordinary skill in the art could
`have ascertained the difference between the total outside length of Shafer’s
`magnetic molding material and the thickness of its coil.7 See Pet. 15–16; Ex.
`1007, Fig. 6. Therefore, even if we apply Patent Owner’s proposed
`
`
`7 Shafer does not provide particular values for those dimensions or indicate
`that its figures are drawn to scale, but Patent Owner’s proposed construction
`of the term “layer” does not require a particular numeric value. See PO
`Resp. 27. Patent Owner’s proposed construction only requires that the
`thickness be at least somewhat ascertainable. Id. We do not see any reason
`why a person of ordinary skill in the art would not have been able to
`ascertain those dimensions for Shafer’s inductor.
`
`16
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`

`IPR2019-00583
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`
`construction of the term “layer,” the Franco and Shafer combination teaches
`a magnetic resin layer.8
`Patent Owner also responds that “the core in Shafer is the entire
`material in Shafer Figure 6 that surrounds the winding, both down the
`middle and around the outside.” PO Resp. 28 (citing Ex. 2010, 10:5–12);
`see PO Sur-reply 18. Thus, according to Patent Owner, “Shafer’s magnetic
`resin layer cannot ‘embed at least a portion of an outer periphery of said
`electrically conducting coil’ because the outer periphery of the coil is
`embedded by the inductor core.” PO Resp. 28. Patent Owner’s argument is
`not persuasive. First, Patent Owner’s argument appears to be based on its
`proposed construction that requires the magnetic resin layer to embed “only”
`the outer periphery of the coil. Id. at 4, 28. As discussed above, we decline
`to adopt that construction. See Section II.C.3. Second, Patent Owner
`acknowledges that Shafer’s magnetic molding material “surrounds . . . the
`outside” of the coil, and, thereby, acknowledges that the magnetic molding
`material embeds at least the outer periphery of the coil. PO Resp. 28.
`
`Claim 1 recites “wherein said magnetic resin layer contains a
`magnetic powder dispersed in a polymer resin.” Ex. 1001, 6:32–33. Shafer
`teaches that its magnetic molding material comprises iron powders and a
`polyester resin. Pet. 17–18; Ex. 1007, 3:24–47, 6:49–51. The evidence of
`record shows that a person of ordinary skill in the art would have known that
`
`
`8 The thickness of the magnetic resin layer in the Franco and Shafer
`combination may vary somewhat because Shafer’s block of magnetic
`molding material embeds Franco’s round coil. See Ex. 1005, Fig. 7.8; Ex.
`1007, Fig. 6. But Patent Owner does not argue or present evidence
`indicating that the thickness of the magnetic resin layer would vary
`substantially. See PO Resp. 27–28.
`
`17
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`

`IPR2019-00583
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`
`Shafer’s iron powders are dispersed in the polyester resin, and that Shafer’s
`polyester resin is a polymer resin. Pet. 17–18; Ex. 1003 ¶ 69; Ex. 1013, 1;
`Ex. 1017, 407; Ex. 1019, 1. Further, Petitioner’s declarant, Dr. Erickson,
`and Patent Owner’s declarant, Dr. Curt Raschke, agree that Shafer’s
`polyester resin is a polymer resin. Ex. 1033, 144:5–15; Ex. 2010, 7:6–8.
`Patent Owner responds that there are deficiencies in Petitioner’s
`evidence, and, as a result, there is “no reliable evidence that Shafer’s resin is
`a polymer.” PO Resp. 28–29. Patent Owner’s argument is not persuasive.
`As discussed above, the parties’ declarants agree that Shafer’s polyester
`resin is a polymer resin. Ex. 1033, 144:5–15; Ex. 2010, 7:6–8. We find that
`alone to be reliable evidence that Shafer’s polyester resin is a polymer resin.
`Nonetheless, we also address Patent Owner’s arguments regarding
`Petitioner’s other evidence.
`Patent Owner argues that Exhibit 1013 “states that ‘an unsaturated
`polyester resin [is] a solid polymer at room temperature,’” whereas Shafer’s
`polyester resin “is a liquid at room temperature.” PO Resp. 29 (citing
`Ex. 2005); see PO Sur-reply 18. Patent Owner, though, does not explain
`specifically why that distinction is relevant. See PO Resp. 29; PO Sur-reply
`18. In fact, the evidence of record shows that a polyester resin is a polymer
`regardless of whether it is in solid or liquid form. Ex. 1013, 1 (“an
`unsaturated polyester resin (a solid polymer at room temperature)”
`(emphasis added)); Ex. 1019, 1 (“Specifically, the unsaturated polyester
`resin, also known by the English acronym UPR, is an easily printable liquid
`polymer which, once cured . . . , keeps the solid shape taken in the mold.”
`(emphasis added)).
`
`18
`
`

`

`IPR2019-00583
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`
`
`Patent Owner argues that Exhibit 1017 indicates that “polymers may
`be polyester resins,” but “it does not follow that all polyester resins are also
`polymers.” PO Resp. 29. Patent Owner’s argument is not persuasive.
`Exhibit 1017 states that “polyester” is “[a] polymer containing ester groups
`in the main chain.” Ex. 1017, 407. Exhibit 1017 also states that “[o]ther
`important polymers are the linear unsaturated polyester resins, often simply
`called polyester resins, which form the basis of traditional glass reinforced
`plastics (GRP) products.” Id. (emphasis added). The above portions of
`Exhibit 1017 expressly show that a polyester resin is a type of polymer. Id.
`Patent Owner argues that Exhibit 1019 “contradicts” Exhibit 1013,
`because Exhibit 1019 states that an unsa

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