Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`Entered: August 12, 2019
`
`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.
`____________
`
`Case IPR2019-00583
`Patent 6,137,390
`_______________
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 8
`Entered: August 12, 2019
`
`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.
`____________
`
`Case IPR2019-00583
`Patent 6,137,390
`_______________
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2019-00583
`Patent 6,137,390
`
`
`I.
`INTRODUCTION
`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.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`decision to institute may not institute on fewer than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
`After considering the evidence and arguments presented in the Petition and
`Preliminary Response, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that at least one of the
`challenged claims of the ’390 patent is unpatentable. Accordingly, we
`institute an inter partes review as to all the challenged claims of the ’390
`patent on all the grounds of unpatentability set forth in the Petition.
`A.
`Related Proceedings
`The parties indicate that the ’390 patent is the subject of the following
`district court cases: MEC Resources, LLC v. Vishay Americas, Inc., No.
`3:18-cv-2770 (N.D. Tex.); and MEC Resources, LLC v. KEMET Electronics
`Corp., No. 3:18-cv-2771 (N.D. Tex.). Pet. 70; Paper 6, 2.
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`B.
`The ’390 Patent
`The ’390 patent relates to “an improved inductor with improved
`inductance and minimized electromagnetic induction (EMI) interference.”
`Ex. 1001, 1:6–9. Specifically, the ’390 patent explains that the improved
`inductor includes a conventional conducting coil that is compression-molded
`with a layer of a magnetic resin mixture. Id. at 1:59–63, 2:60–64.
`According to the ’390 patent, “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.
`C.
`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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`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`References
`Franco and Shafer
`
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 1–3):
`Reference or Declaration
`Exhibit No.
`Declaration of Robert W. Erickson, Ph.D. (“Erickson
`Ex. 1003
`Declaration”)
`Sergio Franco, ELECTRIC CIRCUITS FUNDAMENTALS (Emily
`Barrosse et al. eds., 1995) (“Franco”)
`Amada et al., U.S. Patent No. 6,144,280 (filed Nov. 10,
`1997, issued Nov. 7, 2000) (“Amada”)
`Shafer et al., U.S. Patent No. 6,204,744 B1 (filed Nov. 3,
`1997, issued Mar. 20, 2001) (“Shafer”)
`Rittner et al., U.S. Patent No. 6,600,403 B1 (filed Dec. 1,
`1995, issued July 29, 2003) (“Rittner”)
`Kaneko et al., U.S. Patent No. 5,010,313 (filed May 30,
`1990, issued Apr. 23, 1991) (“Kaneko”)
`Butherus et al., U.S. Patent No. 3,953,251 (filed Mar. 25,
`1974, issued Apr. 27, 1976) (“Butherus”)
`Ohkawa et al., European Publication No. 0265839 A2 (filed
`Oct. 22, 1987, published May 4, 1988) (“Ohkawa”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 1–2):
`Claims
`Basis
`1, 3, 4, 7, 9–11,
`35 U.S.C. § 103(a)
`13, 14, 17, 19, and
`20
`2 and 12
`5 and 15
`6 and 16
`8 and 18
`1, 3, 4, 9–11, 13,
`14, 19, and 20
`2 and 12
`5 and 15
`6 and 16
`
`Franco, Shafer, and Rittner
`Franco, Shafer, and Butherus
`Franco, Shafer, and Kaneko
`Franco, Shafer, and Ohkawa
`Amada and Shafer
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`4
`
`Amada, Shafer, and Rittner
`Amada, Shafer, and Butherus
`Amada, Shafer, and Kaneko
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`Claims
`8 and 18
`
`References
`Basis
`Amada, Shafer, and Ohkawa
`35 U.S.C. § 103(a)
`II. ANALYSIS
`A.
`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 “one of ordinary skill in the art at the
`time of the priority date would have been someone with a bachelor’s degree
`in materials science with two years of experience in materials technology
`involving the design of electronic components.” Prelim. Resp. 6–7.
`Patent Owner contends that Petitioner’s definition of the level of
`ordinary skill in the art is insufficient because “someone with merely a
`bachelor’s degree in electrical engineering . . . generally designs how to
`assemble electronic components into electronic systems -- and does not
`specify how to configure particular materials into electronic components.”
`Id. at 7. On this record, Patent Owner’s argument is not persuasive.
`Petitioner’s definition of the level of ordinary skill in the art includes “two
`years of experience in designing electronic components,” and, thus, is not
`limited to just assembling electronic components into electronic systems.
`Pet. 7–8 (citing Ex. 1003 ¶¶ 14–17).
`Patent Owner also contends that Petitioner’s declarant, Dr. Erickson,
`“does not possess the requisite materials science expertise, and is not able to
`competently testify as to what the hypothetical person of ordinary skill in the
`art would have known and understood at the time of the invention.” Prelim.
`Resp. 8. On this record, Patent Owner’s argument is not persuasive.
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`Dr. Erickson states that “[d]esign of inductors is a regular part of [his]
`research and teaching,” and he has spent “a significant fraction of [his] effort
`on design and optimization of the inductors and transformers of the power-
`electronics projects.” Ex. 1003 ¶ 9.
`At this stage of the proceeding, our findings and conclusions would be
`the same under either party’s definition of the level of ordinary skill in the
`art. To the extent necessary, though, we adopt Petitioner’s definition, which
`is supported by the testimony of Petitioner’s declarant, Dr. Erickson, and is
`consistent with the prior art. Pet. 7–8; Ex. 1003 ¶¶ 14–17.
`B.
`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. 37 C.F.R. § 42.100(b).
`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.” Prelim. Resp. 5. 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. (citing Ex. 1001, 3:64–
`6:22). Petitioner does not propose an express construction for the term
`“enhanced inductance” at this stage of the proceeding. See Pet. 6–7.
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`On this record, we do not adopt Patent Owner’s proposed
`construction. The ’390 patent explains that the tables cited by Patent Owner
`“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.” Ex. 1001, 3:56–62. In fact, the ’390 patent more generally
`describes its invention as an inductor with “improved” or “increased”
`inductance. Id. at 1:6–9, 1:50–53. Therefore, we are not persuaded that the
`term “enhanced inductance” is limited by the portions of the specification
`cited by Patent Owner. No further construction of the term “enhanced
`inductance” is necessary to resolve the parties’ disputes about the asserted
`grounds of unpatentability. See Sections II.D.1.a, II.D.6.a; Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`2.
`“layer”
`Patent Owner proposes construing the term “layer” to mean “one
`thickness, course, or fold laid or lying over or under another.” Prelim.
`Resp. 5–6. Patent Owner cites to a dictionary definition to support its
`proposed construction. Id. at 6 (citing Ex. 2002, 1168–1169). Patent Owner
`also argues that “[t]he layer that is described in the ’390 patent is described
`as having an, at least somewhat ascertainable thickness.” Prelim. Resp. 5.
`Petitioner does not propose an express construction for the term “layer” at
`this stage of the proceeding. See Pet. 6–7.
`On this record, we do not adopt Patent Owner’s proposed
`construction. The ’390 patent describes the thickness of several exemplary
`inductors in terms of each inductor’s total outside diameter, not the diameter
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`of the magnetic resin layer by itself. Ex. 1001, 4:5–6:8. Therefore, we are
`not persuaded that the magnetic resin layer itself must have an ascertainable
`thickness. No further construction of the term “layer” is necessary to resolve
`the parties’ disputes about the asserted grounds of unpatentability. See
`Sections II.D.1.a, II.D.6.a; Vivid Techs., 200 F.3d at 803.
`3.
`“to embed at least a portion of an outer periphery of said
`electrically conducting coil”
`Patent Owner proposes construing the phrase “to embed at least a
`portion of an outer periphery of said electrically conducting coil” to exclude
`“completely covering both the core and the coil.” Prelim. Resp. 4. Patent
`Owner argues that “[t]he specification of the ’390 patent discloses both
`partially enclosing the entire core and completely enclosing the entire core.”
`Id. at 3 (citing Ex. 1001, 2:64–67). Patent Owner contends that because
`“[d]ependent claims 9 and 19 require that the magnetic resin layer bury both
`the core and the coil,” “independent claims 1 and 11 must be construed to
`exclude burying both the core and coil.” Prelim. Resp. 3–4. Petitioner does
`not propose an express construction for the phrase “to embed at least a
`portion of an outer periphery of said electrically conducting coil” at this
`stage of the proceeding. See Pet. 6–7.
`On this record, we do not adopt Patent Owner’s proposed
`construction. Patent Owner acknowledges that “[t]he specification of the
`’390 patent discloses both partially enclosing the entire core and completely
`enclosing the entire core.” Prelim. Resp. 3 (citing Ex. 1001, 2:64–67). The
`phrase “at least a portion” in independent claims 1 and 11 indicates that
`those claims were intended to cover both options, i.e., both partially
`enclosing the core and completely enclosing the core. Ex. 1001, 6:30, 6:66.
`Although dependent claims 9 and 19 include narrower language that may
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`require completely enclosing the core (id. at 6:54–56, 8:8–10), those
`dependent claims do not change the broader language in the independent
`claims. Therefore, we are not persuaded that the phrase “to embed at least a
`portion of an outer periphery of said electrically conducting coil” excludes
`completely covering both the core and the coil. 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.1.a,
`II.D.6.a; Vivid Techs., 200 F.3d at 803.
`4.
`“consolidated”
`Petitioner proposes construing the term “consolidated” to mean “the
`core and 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 at this stage of the proceeding. Prelim. Resp. 5.
`On this record, we do not adopt Petitioner’s proposed construction.
`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 magnetic resin than
`the magnetic resin layer. Id. Therefore, we are not persuaded that the term
`“consolidated” requires that the core and magnetic resin layer coating the
`coil are the same material and formed at the same time. No further
`construction of the term “consolidated” is necessary to resolve the parties’
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`disputes about the asserted grounds of unpatentability. See Sections II.D.3,
`II.D.8; Vivid Techs., 200 F.3d at 803.
`C.
`Sufficient Particularity
`Patent Owner argues that Petitioner’s “contentions are conclusory and
`fail to satisfy the requirements of the rules that a petition contain a detailed
`explanation of the significance of the evidence and identify where each
`element of each challenged claim is found in the prior art.” Prelim. Resp. 1–
`2. On this record, Patent Owner’s argument is not persuasive. As explained
`below, Petitioner identifies with particularity where the elements of the
`challenged claims are found in the prior art. See Section II.D.
`D.
`Asserted Grounds of Unpatentability
`1.
`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. For the reasons
`discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 1, 3, 4, 7, 9–11, 13, 14, 17, 19, and 20
`would have been obvious over Franco and Shafer.
`a.
`Claim 1
`Claim 1 recites “[a]n inductor with enhanced inductance.” Ex. 1001,
`6:25. Petitioner presents evidence that Shafer teaches an inductor with
`increased inductance. Pet. 13 (citing Ex. 1003 ¶¶ 46, 47); Pet. 17 (citing
`Ex. 1007, 3:24–45 (“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 responds that the term “enhanced inductance” refers to
`“the increase in inductance of the inductor described by the ’390 patent in
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`comparison to the same inductor containing the same number of winding
`turns, but without the magnetic resin layer embedding the conducting coil.”
`Prelim. Resp. 16. Patent Owner contends that 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. On this record, Patent Owner’s argument is not persuasive because it is
`premised on Patent Owner’s proposed construction of “enhanced
`inductance,” which we do not adopt for the reasons discussed above. See
`Section II.B.1. Further, Patent Owner does not rebut Petitioner’s evidence
`that Shafer teaches an inductor with increased inductance. Pet. 13 (citing
`Ex. 1003 ¶¶ 46, 47); Pet. 17 (citing Ex. 1007, 3:24–45 (“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.”)); see Prelim. Resp. 15–16.
`Claim 1 recites “a magnetic core.” Ex. 1001, 6:26. Petitioner
`presents sufficient evidence that Franco teaches an inductor with a core
`made of iron or ferrite, both of which are magnetic. Pet. 13–14 (citing
`Ex. 1003 ¶¶ 51–53; Ex. 1005, 301). At this stage of the proceeding, Patent
`Owner does not dispute that the combination of Franco and Shafer teaches
`this limitation of claim 1. See Prelim. Resp. 16.
`Claim 1 recites “an electrically conducting coil wound about said
`magnetic core.” Ex. 1001, 6:27–28. Petitioner presents sufficient evidence
`that Franco teaches an inductor with a coil of insulated wire wound around
`the magnetic core. Pet. 14–15 (citing Ex. 1005, 300, Fig. 7.8). At this stage
`of the proceeding, Patent Owner does not dispute that the combination of
`Franco and Shafer teaches this limitation of claim 1.
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`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. Petitioner presents evidence that Shafer teaches a
`magnetic molding material comprising a magnetic powder and a resin that is
`compressed and molded around the coil. Pet. 15–17 (citing Ex. 1007, 1:29–
`30, 3:24–26, 4:1–5, 5:8–10, Fig. 6).
`Patent Owner responds that the term “layer” requires “an, at least
`somewhat, ascertainable thickness.” Prelim. Resp. 17. Patent Owner
`contends that Shafer’s Figure 6 depicts “a cubic . . . block of epoxy resin
`containing a round coil,” and, thus, does not teach a layer with an
`ascertainable thickness. Id. at 17–18. On this record, Patent Owner’s
`argument is not persuasive because it is premised on Patent Owner’s
`proposed construction of the term “layer,” which we do not adopt for the
`reasons discussed above. See Section II.B.2. Further, to the extent Patent
`Owner’s argument relies on Shafer’s Figure 6, we note that Shafer’s
`depiction of its magnetic molding material in Figure 6 appears similar to the
`’390 patent’s depiction of its magnetic resin layer in Figure 1. Compare
`Ex. 1007, Fig. 6, with Ex. 1001, Fig. 1.
`Patent Owner also responds that the phrase “to embed at least a
`portion of an outer periphery of said electrically conducting coil” requires
`that “the magnetic resin layer (1) NOT embed the inner portion of the
`electrically conducting coil and (2) NOT bury the core.” Prelim. Resp. 18.
`Patent Owner contends that “the resin layer in Shafer (1) DOES embed the
`inner portion of the electrically conducting coil and (2) DOES bury the
`core.” Id. On this record, Patent Owner’s argument is not persuasive
`because it is premised on Patent Owner’s proposed construction of the
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`phrase “to embed at least a portion of an outer periphery of said electrically
`conducting coil,” which we do not adopt for the reasons discussed above.
`See Section II.B.3.
`Claim 1 recites “wherein said magnetic resin layer contains a
`magnetic powder dispersed in a polymer resin.” Ex. 1001, 6:32–33.
`Petitioner presents evidence that Shafer’s magnetic molding material
`comprises an iron powder and a polyester resin. Pet. 17 (citing Ex. 1007,
`3:24–45, 6:50–51). Petitioner also presents evidence that a person of
`ordinary skill in the art would have known that the iron powder is dispersed
`in the polyester resin and that the polyester resin is a polymer resin. Pet. 17–
`18 (citing Ex. 1003 ¶¶ 68, 69; Ex. 1012; Ex. 1013; Ex. 1014; Ex. 1017, 407;
`Ex. 1019, 1).
`Patent Owner responds that although Petitioner presents evidence that
`“polymers may be polyester resins, it does not follow that all polyester resins
`are also polymers.” Prelim. Resp. 19. On this record, Patent Owner’s
`argument is not persuasive. As discussed above, Petitioner presents
`evidence that a person of ordinary skill in the art would have known that
`Shafer’s polyester resin is a polymer resin. Pet. 17–18 (citing Ex. 1003
`¶¶ 68, 69; Ex. 1012; Ex. 1013; Ex. 1014; Ex. 1017, 407; Ex. 1019, 1). On
`the other hand, Patent Owner does not identify specific evidence to support
`its argument that not all polyester resins are polymers. See Prelim Resp. 19.
`Thus, at this stage of the proceeding, Petitioner’s evidence is sufficient to
`show a reasonable likelihood of prevailing.
`b.
`Claim 11
`Claim 11 is independent and recites limitations similar to claim 1.
`Ex. 1001, 6:60–7:2. Petitioner presents evidence that the combination of
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`Franco and Shafer teaches the limitations of claim 11. Pet. 18–21. We
`address below the limitations of claim 11 for which Patent Owner presents
`specific arguments.
`Claim 11 recites “winding an electrically conducting coil about a
`magnetic core.” Ex. 1001, 6:63–64. Petitioner presents evidence that
`Franco teaches an inductor with a coil of insulated wire wound around the
`magnetic core. Pet. 14–15, 20 (citing Ex. 1005, 300, Fig. 7.8).
`Patent Owner responds that “Shafer cannot wrap an electrically
`conducting coil around a magnetic core because there is no magnetic core at
`the time that the coil is placed into Shafer’s mold.” Prelim. Resp. 21. On
`this record, Patent Owner’s argument is not persuasive. Petitioner relies on
`Franco, not Shafer, to teach this limitation of claim 11. Pet. 14–15, 20
`(citing Ex. 1005, 300, Fig. 7.8).
`Claim 11 recites “wherein said magnetic resin matrix contains a
`magnetic powder dispersed in a polymer resin.” Ex. 1001, 7:1–2. Petitioner
`presents evidence that Shafer’s magnetic molding material includes a
`polyester resin, and, thus, is a matrix. Pet. 20–21 (citing Ex. 1023, 3:27–41).
`Patent Owner responds that Petitioner’s evidence indicates “that
`‘unsaturated polyesters [] are [] matrix material,’” but Petitioner “provide[s]
`no evidence that Shafer’s magnetic material is an unsaturated polyester.”
`Prelim. Resp. 21–22. On this record, Patent Owner’s argument is not
`persuasive. As discussed above, Petitioner presents evidence that Shafer’s
`magnetic molding material comprises a polyester resin (Pet. 17 (citing
`Ex. 1007, 3:24–45, 6:50–51)), and that an unsaturated polyester is a matrix
`material (Pet. 20–21 (citing Ex. 1023, 3:27–41)). At this stage of the
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`proceeding, Petitioner’s evidence is sufficient to show a reasonable
`likelihood of prevailing.
`c.
`Claims 3, 4, 13 and 14
`Claims 3, 4, 13, and 14 depend from claim 1 or claim 11. Ex. 1001,
`6:38–42, 7:6–12. Petitioner presents sufficient evidence that the
`combination of Franco and Shafer teaches the limitations of claims 3, 4, 13,
`and 14. Pet. 21–22. Patent Owner responds that it would not have been
`obvious to combine Franco and Shafer, but otherwise does not dispute that
`the combination of Franco and Shafer teaches the limitations of claims 3, 4,
`13, and 14. Prelim. Resp. 22–23. As discussed below, on this record, Patent
`Owner’s arguments regarding Petitioner’s rationale for combining Franco
`and Shafer are not persuasive. See Section II.D.1.g.
`d.
`Claims 7 and 17
`Claim 7 depends from claim 1, and recites “wherein said polymer
`resin is a thermosetting polymer.” Ex. 1001, 6:50–51. Claim 17 depends
`from claim 11, and recites “wherein said polymer is a thermosetting
`polymer.” Id. at 8:4–5. As discussed above, Petitioner presents evidence
`that Shafer’s magnetic molding material comprises a polyester resin. Pet. 17
`(citing Ex. 1007, 3:24–45, 6:50–51). Petitioner also presents evidence that
`polyester is a thermosetting polymer. Pet. 22 (citing Ex. 1003 ¶¶ 89–91; Ex.
`1015; Ex. 1022).
`Patent Owner responds that Petitioner’s evidence indicates “that ‘[t]he
`most frequently used thermosetting resin . . . [is] polyester,’” but “this does
`not mean that all polyester resins are thermosetting resins.” Prelim.
`Resp. 24. On this record, Patent Owner’s argument is not persuasive. As
`discussed above, Petitioner presents evidence that Shafer’s magnetic
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`molding material comprises a polyester resin (Pet. 17 (citing Ex. 1007, 3:24–
`45, 6:50–51)), and that polyester is frequently used as a thermosetting
`polymer (Pet. 22 (citing Ex. 1003 ¶¶ 89–91; Ex. 1015; Ex. 1022)). At this
`stage of the proceeding, Petitioner’s evidence is sufficient to show a
`reasonable likelihood of prevailing.
`e.
`Claims 9 and 19
`Claim 9 depends from claim 1, and recites “wherein said magnetic
`resin layer buries both said magnetic core and said electrically conducting
`coil.” Ex. 1001, 6:54–56. Claim 19 depends from claim 11, and recites
`“wherein said magnetic resin layer is formed to bury both said magnetic core
`and said electrically conducting coil.” Id. at 8:8–10. Petitioner presents
`evidence that Shafer’s magnetic molding material is compressed and molded
`completely around the coil so that the inductor has no air spaces. Pet. 23
`(citing Ex. 1007, 1:29–31, 1:54–2:2, 4:1–5, Fig. 6). Petitioner explains that
`“[i]n the combination, Shafer’s compression-molded magnetic resin layer . .
`. would bury both Franco’s electrically conducting coil . . . and the magnetic
`core.” Pet. 23–24 (citing Ex. 1003 ¶¶ 93–96).
`Patent Owner responds that “in Shafer, the magnetic resin material
`does not bury the magnetic core – the magnetic resin material is the core.”
`Prelim. Resp. 24. On this record, Patent Owner’s argument is not
`persuasive. Patent Owner addresses Shafer individually, not the
`combination of Franco and Shafer. See In re Keller, 642 F.2d 413, 426
`(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
`individually where, as here, the rejections are based on combinations of
`references.”). As discussed above, Petitioner explains that “[i]n the
`combination, Shafer’s compression-molded magnetic resin layer . . . would
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`bury both Franco’s electrically conducting coil . . . and the magnetic core.”
`Pet. 23–24 (citing Ex. 1003 ¶¶ 93–96).
`f.
`Claims 10 and 20
`Claim 10 depends from claim 1, and recites “wherein said magnetic
`powder is made of a ferromagnetic metal powder, a metal alloy powder, a
`ferrimagnetic metal oxide powder, or a mixture thereof.” Ex. 1001, 6:57–
`60. Claim 20 depends from claim 11, and recites “wherein said magnetic
`powder is made of a ferromagnetic metal powder, a metal alloy powder, a
`ferrimagnetic metal oxide powder, or a mixture thereof.” Id. at 8:11–14.
`Petitioner presents evidence that Shafer’s magnetic molding material is
`made of an iron powder, which is a ferromagnetic metal powder. Pet. 24–25
`(citing Ex. 1003 ¶¶ 99, 100; Ex. 1007, 3:24–37; Ex. 1012; Ex. 1014, 279).
`Patent Owner responds that “[t]he phrase ‘is made of’ means that the
`magnetic powder is one or more of the listed items” or otherwise the phrase
`“‘or a mixture thereof’ would be superfluous.” Prelim. Resp. 26. Patent
`Owner contends that because Shafer’s magnetic molding material also
`contains a filler, it “does not meet the claim limitation.” Id. On this record,
`Patent Owner’s argument is not persuasive. The ’390 patent explains that
`the claimed magnetic resin layer “contains a magnetic powder dispersed in a
`polymer resin.” Ex. 1001, 3:12–15. In other words, the claimed magnetic
`resin layer contains a magnetic powder and another material. Id. Similarly,
`Shafer’s magnetic molding material contains a magnetic iron powder and
`other materials, such as a filler, a resin, and a lubricant. Ex. 1007, 3:24–37.
`g.
`Reason to Combine
`Petitioner argues that a person of ordinary skill in the art would have
`had reason to combine the teachings of Franco and Shafer. Pet. 10–12
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`(citing Ex. 1003 ¶¶ 35–41). Specifically, Petitioner contends that it would
`have been obvious “to embed the inductor coil of Franco in a magnetic
`powder resin layer by compression-molding, as Shafer teaches.” Pet. 11.
`Petitioner presents evidence that “doing so would provide the known
`benefits of: (1) minimizing air space in the inductor, (2) providing magnetic
`shielding, (3) providing physical protection, (4) increasing inductance, (5)
`decreasing the size of an inductor for a given inductance, and (6) reducing
`manufacturing costs.” Id. at 11–12 (citing Ex. 1003 ¶¶ 37–40). Petitioner
`also presents evidence that “to the extent any modification of the teachings
`of Shafer would have been needed to accommodate the teachings of Franco,
`such modifications would have been within the level of ordinary skill in the
`art.” Pet. 12 (citing Ex. 1003 ¶ 41).
`Patent Owner responds that Petitioner “advance[s] no meaningful
`motivation to combine Franco with Shafer.” Prelim. Resp. 14. On this
`record, Patent Owner’s argument is not persuasive. As discussed above,
`Petitioner presents evidence of at least six benefits that would have
`motivated a person of ordinary skill in the art to combine the teachings of
`Franco and Shafer. Pet. 11–12 (citing Ex. 1003 ¶¶ 37–40).
`Patent Owner responds that “[a]ttempting to combine the teachings of
`Franco and Shafer would result in a number of non-trivial challenges.”
`Prelim. Resp. 14. In particular, Patent Owner points out that, according to
`the ’390 patent, “[c]ombining a ‘conventional’ core with the use of a
`magnetic resin material around the coil introduces ‘the need for a high-
`temperature sintering process,’ and it introduces ‘the commonly encountered
`problems involving molding, fabrication, coiling, and packaging, etc.’” Id.
`(citing Ex. 1001, 3:44–55). On this record, Patent Owner’s argument is not
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`persuasive. The ’390 patent indicates that using an inductor with a magnetic
`core presents certain manufacturing challenges. Ex. 1001, 3:44–55. But, as
`discussed above, Petitioner presents evidence that the proposed combination
`of Franco and Shafer “would have been within the level of ordinary skill in
`the art.” Pet. 12 (citing Ex. 1003 ¶ 41). On the other hand, Patent Owner
`does not identify specific evidence indicating that the identified
`manufacturing challenges would have been beyond the level of ordinary
`skill in the art. See Prelim. Resp. 14.
`Patent Owner responds that Franco teaches an inductor with “a core
`that is iron or ferrite,” and Shafer teaches “a ‘unitized’ inductor using a
`resin-based core.” Prelim. Resp. 14–15 (citing Pet. 4; Ex. 1007, 4:41–44;
`Ex. 2004). Patent Owner contends that, as a result, “Shafer is incompatible
`with Franco.” Prelim. Resp. 15. On this record, Patent Owner’s argument is
`not persuasive. Shafer teaches that the magnetic molding material used to
`form the core of its inductor includes an iron powder. Ex. 1007, 3:24–29.
`Thus, contrary to Patent Owner’s argument, Shafer’s core is not just a resin.
`At this stage of the proceeding, we see no reason why Shafer’s core is
`incompatible with Franco.
`h.
`Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`li
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