Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: July 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00010
`Patent 9,326,381 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`I. INTRODUCTION
`AVX Corporation (“Petitioner”) filed a Petition for post-grant review
`of claims 1–19 of U.S. Patent No. 9,326,381 B2 (Ex. 1001, “the
`’381 patent”). Paper 2 (“Pet.”). Samsung Electro-Mechanics Co., Ltd.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 18, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AVX CORPORATION,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRO-MECHANICS CO., LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00010
`Patent 9,326,381 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`I. INTRODUCTION
`AVX Corporation (“Petitioner”) filed a Petition for post-grant review
`of claims 1–19 of U.S. Patent No. 9,326,381 B2 (Ex. 1001, “the
`’381 patent”). Paper 2 (“Pet.”). Samsung Electro-Mechanics Co., Ltd.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`PGR2017-00010
`Patent 9,326,381 B2
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`Under 35 U.S.C. § 324, a post-grant review may not be instituted “unless . . .
`the information presented in the petition . . . would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.” Upon consideration of the Petition and Preliminary
`Response, we determine that the information presented in the Petition
`demonstrates that it is more likely than not that Petitioner would prevail in
`showing that claims 1–4, 6–11, and 13–19 of the ’381 patent are
`unpatentable.
`
`A. Related Matters
`The parties state that there is no matter that would affect, or be
`affected by, a decision in this proceeding. Pet. 1; Paper 4, 1.
`
`B. The ’381 Patent
`The ʼ381 patent is directed to a multilayer ceramic capacitor and a
`board having a multi-layer ceramic capacitor mounted thereon. Ex. 1001,
`1:15–16. Figures 1 and 4 of the ’381 patent are reproduced below.
`
`Figure 1 shows a multilayer ceramic capacitor.
`
`
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`Figure 4 is a cross-sectional view taken along line A-A´ of Figure 1.
`The capacitor depicted in the figures includes active layer A which is
`formed by repeatedly stacking a plurality of first and second internal
`electrodes 121 and 122, having at least one of dielectric layers 111
`interposed therebetween. Id. at 6:9–18. First and second external electrodes
`131 and 132 are formed on the first and second side surfaces 5 and 6 of the
`ceramic body 110. Id. at 6:5–7. Acoustic noise may be reduced by
`controlling (1) the thickness T and the width W of ceramic body 110 to
`satisfy 0.75W≤T≤1.25W, (2) the gap G between the first and second
`external electrodes 131 and 132 to satisfy 30 µm≤G≤0.9W, and (3) the
`average grain size of the dielectric grains 111a present in the single
`dielectric layer in the thickness direction thereof to be 2 or greater. Id. at
`6:24–26, 6:34–36, 7:17–19, Fig. 5.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–19 of the ’381 patent. Claims 1 and 8
`are independent claims. Independent claim 1, reproduced below, is
`illustrative of the claimed subject matter:
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`1. A multilayer ceramic capacitor, comprising:
`
`a ceramic body including dielectric layers and having first and
`second main surfaces opposing each other, first and second side
`surfaces opposing each other, and first and second end surfaces
`opposing each other;
`
`an active layer including a plurality of first and second internal
`electrodes disposed to face each other with at least one of the
`dielectric layers interposed therebetween and alternatively
`exposed to the first or second side surface;
`
`upper and lower cover layers disposed on and below the active
`layer, respectively; and
`
` a first external electrode disposed on the first side surface of
`the ceramic body and electrically connected to the first internal
`electrodes and a second external electrode disposed on the
`second side surface and electrically connected to the second
`internal electrodes;
`
`wherein when a thickness of the ceramic body is defined as T
`and a width thereof is defined as W, 0.75W≤T≤1.25W is
`satisfied,
`
`when a gap between the first and second external electrodes is
`defined as G, 30 µm≤G≤0.9W is satisfied, and
`
`an average number of dielectric grains in a single dielectric
`layer in a thickness direction thereof is 2 or greater.
`
`Id. at 13:36–59.
`
`Independent claim 8 is similar to claim 1, except claim 8 recites a
`multilayer ceramic capacitor mounted on a printed circuit board. Id. at
`14:18–50.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–19 are unpatentable based on the
`following grounds (Pet. 5):
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`Reference(s)
`Itamura,1 Jeong,2 and
`Rutt3
`Itamura, Jeong, Rutt, and
`Ahn4
`Itamura, Jeong, Rutt,
`Ahn, and EIA Standard
`Group 39 Capacitors5
`Group 39 Capacitors and
`Ahn
`Group 39 Capacitors,
`Itamura, and AVX
`Catalog
`Group 39 Capacitors and
`Jeong
`Group 39 Capacitors,
`Ahn, and Jeong
`Group 39 Capacitors,
`Ahn, and EIA Standard
`
`Basis
`
`§ 103
`
`§ 103
`
`Challenged Claim(s)
`
`1–7
`
`8–15 and 17–19
`
`§ 103
`§ 102(a)(1)
`§ 103
`
`16
`1–3 and 5–7
`8–15 and 17–19
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`4
`
`5
`
`12
`
`16
`
`II. DISCUSSION
`
`A. Eligibility for Post-Grant Review
`The post-grant review provisions of the Leahy-Smith America Invents
`Act (“AIA”) apply only to patents subject to the first inventor to file
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`
`1 U.S. Patent No. 7,808,770 B2, issued Oct. 5, 2010 (Ex. 1004) (“Itamura”).
`2 U.S. Patent Publication No. 2011/0141655, published June 16, 2011
`(Ex. 1005) (“Jeong”).
`3 U.S. Patent No. 5,134,540, issued July 28, 1992 (Ex. 1006) (“Rutt”).
`4 U.S. Patent Application Publication No. 2012/0152604 A1, filed December
`20, 2011, published June 21, 2012 (Ex. 1007) (“Ahn”).
`5 The Group 39 Capacitors is described as a set of multilayer ceramic
`capacitors purchased on eBay by Petitioner’s witness, Mr. John Galvagni on
`December 20, 2016. Pet. 3.
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`file provisions apply to any application for patent, and to any patent issuing
`thereon, that contains or contained at any time a claim to a claimed invention
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a).
`The instant Petition was filed January 26, 2017. The ’381 patent
`issued on April 26, 2016, from an application filed on April 22, 2014. The
`application that matured into the ’381 patent claims the benefit, under 35
`U.S.C. § 119, of a Korean application, filed June 14, 2013. Petitioner
`contends that the earliest potential effective filing date of the ’381 patent is
`June 14, 2013. Pet. 2. Based on the record before us, the ’381 patent has an
`effective filing date after March 16, 2013. Moreover, Petitioner filed the
`Petition not later than 9 months after the date of the grant of the patent,
`thereby satisfying 35 U.S.C. § 321(c). Lastly, Petitioner certifies that the
`’381 patent is available for post-grant review and also that it is not barred or
`estopped from requesting post-grant review. Pet. 1.
`
`B. Claim Construction
`In a post-grant review, we construe claim terms in an unexpired patent
`according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.200(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
`
` “when a thickness of the ceramic body is defined as T
`and a width thereof is defined as W”
`
`Each of the independent claims 1 and 8 recites “when a thickness of
`the ceramic body is defined as T and a width thereof is defined as W.”
`Petitioner contends that the broadest reasonable interpretation of “when a
`thickness of the ceramic body is defined as T and a width thereof is defined
`as W” is a reference “to the thickness and width of the ceramic body not
`including the external electrodes.” Pet. 12 (citing Ex. 10036 ¶¶ 29–36)
`(emphasis in original). Patent Owner appears to agree. Prelim. Resp. 3–4.
`For purposes of this decision, we agree that the recited width and thickness
`of the ceramic body does not include the external electrodes.
`At this juncture of the proceeding, we determine that it is not
`necessary to provide an express interpretation of any other term of the
`claims.
`
`C. Asserted Obviousness over Itamura, Jeong, and Rutt
`
`Petitioner contends claims 1–7 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Itamura, Jeong, and Rutt. Pet. 18–61. In support of
`its showing, Petitioner relies upon the declaration of John Galvagni. Id.
`(citing Ex. 1003).
`
`Itamura
`Itamura describes an LW-reverse-type monolithic ceramic capacitor
`including external terminal electrodes. Ex. 1004, 1:6–9. In LW-reverse-
`type monolithic ceramic capacitors, the dimension (dimension W) of each
`
`
`6 Ex. 1003 is a Declaration of John Galvagni.
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`end surface in the extending direction of the ceramic layers is greater than
`the dimension (dimension L) of each side surface in the extending direction
`of the ceramic layers, such that a current path of a capacitor main body is
`wide and short, thereby decreasing the ESL (equivalent series inductance).
`Id. at 1:62–2:3. Figures 1 and 2 of Itamura, annotated by Petitioner, are
`reproduced below.
`
`
`Figure 1 of Itamura, annotated by Petitioner, illustrates a monolithic
`ceramic capacitor.
`
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`Figure 2 of Itamura, annotated by Petitioner, illustrates a cross-
`sectional view of the monolithic ceramic capacitor taken along line A-A in
`Figure 1.
`As illustrated in Figures 1 and 2 of Itamura, monolithic ceramic
`capacitor 1 includes a capacitor main body 3 including a plurality of
`laminated ceramic layers 2, at least one pair of internal electrodes 4 and 5, a
`first external terminal electrode 6, and a second external electrode 7. Id. at
`5:1–5, Figs. 1, 2. The ceramic layers 2 are preferably made of a dielectric
`ceramic. Id. at 5:9–10. The first internal electrode 4 and second internal
`electrode 5 are alternatively disposed in the laminating direction, with
`ceramic layers 2 therebetween. Id. at 5:48–50, Fig. 2. First internal
`electrode 4 extends to the first end surface 12 of capacitor main body 3 so
`that first internal electrode 4 is electrically connected to the first external
`terminal electrode 6. Id. at 5:40–43, Fig. 3A. Second internal electrode 5
`extends to the second end surface 13 of capacitor main body 3 so that
`internal electrode 5 is electrically connected to the second external terminal
`electrode 7. Id. at 5:44–47, Fig. 3B.
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`Jeong
`Jeong describes a multilayer ceramic capacitor including dielectric
`
`layers and first and second internal electrodes alternately laminated thereon.
`Ex. 1005, Abstract. Figure 2 of Jeong is reproduced below.
`
`
`
`Figure 2 of Jeong shows a cross-sectional view of a multilayer
`
`ceramic capacitor.
`
`As shown above in Figure 2 and described in Jeong, a dielectric layer
`111 of capacitive part 110A may have a thickness of 2 µm or less. Id. ¶ 40,
`Fig. 2. As 25 or more of such dielectric layers 111 are laminated, the
`thickness of the capacitive part 110A may range from 50 µm to 2000 µm.
`Id.
`
`The multilayer ceramic capacitor is manufactured by preparing a
`plurality of ceramic green sheets, which are to be laminated in a capacitance
`part. Id. ¶ 42. The ceramic green sheets are manufactured by mixing first
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`ceramic particles having an average particle size of 0.1 µm to 0.3 µm, a
`binder and a solvent to produce a slurry. Id. The slurry is made into sheets
`having a thickness of a few micrometers using a doctor blade method. Id.
`Rutt
`Rutt is directed to a method of manufacturing a varistor or capacitor.
`
`Ex. 1006, Abstract. Figures 1 and 1A are illustrative and reproduced below.
`
`
`
`Figure 1 of Rutt is a schematic sectional view through a
`capacitor or varistor.
`
`
`Figure 1A of Rutt is a magnified section of the circled component
`
`portion of Figure 1.
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`Figure 1 shows a varistor 10 formed of a monolithic block of ceramic
`
`having upper and lower sealing or encapsulating layers 11, 12 integrally
`formed with a series of ceramic layers 13, 14, and 15. Id. at 3:38–46. The
`varistor includes a pair of electrodes 16 which are joined by a termination
`area 17 and a pair of electrodes 18 joined by termination 19. Id. at 3:47–50.
`
`Figures 1 and 1A show a grain structure of the dielectric layers
`wherein the number of grain boundaries intervening between electrodes 16
`and 18 are essentially equal throughout the entire area of the dielectric
`material. Id. at 4:27–31. The dielectric components are disclosed as
`providing a single grain boundary 23 between the strata defined by grains 24
`and 25. Id. at 4:33–35. Rutt describes that a varistor will be formed with a
`predictable number of strata and hence a predictable number of grain
`boundaries, the number of boundaries sometimes being greater than the
`single grain boundary structure illustrated in Figure 1A. Figure 2 of Rutt is
`reproduced below.
`
`
`Figure 2 of Rutt shows the grain structure of the ceramic monolith.
`
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`Figure 2 shows a ceramic monolith where each layer 30
`was comprised of five strata each stratum being composed
`essentially of a single ceramic grain extending through the
`entire depth of the stratum, the grains of each stratum
`terminating at a boundary defined by the next adjacent stratum.
`Grain size is shown to be substantially constant, the structure of
`each layer including four grain boundaries between the void
`areas 32, 33.
`Id. at 6:12–21.
`
`Discussion
`
`Petitioner asserts that Itamura in view of Jeong and Rutt render
`obvious claims 1–7. Pet. 12–48. We begin our analysis with claim 1.
`Petitioner relies on Itamura to meet every claim 1 requirement except for “an
`average number of dielectric grains in a single dielectric layer in a thickness
`direction thereof is 2 or greater.” Petitioner relies on Jeong and Rutt in the
`alternative for satisfying “an average number of dielectric grains in a single
`dielectric layer in a thickness direction thereof is 2 or greater.” Id. at 34–39.
`Patent Owner argues that neither Jeong nor Rutt teaches or suggests “an
`average number of dielectric grains in a single dielectric layer in a thickness
`direction thereof is 2 or greater.” Prelim. Resp. 5–13. Patent Owner also
`argues that the Petition should be denied because Petitioner presented Rutt to
`the Office in a third party submission. Id. at 13.
`The present record supports the contention that Itamura describes a
`multilayer ceramic capacitor with a ceramic body including dielectric layers
`with the surfaces as claimed. Pet. 12–17; Ex. 1004, 5:1–12, Figs. 1, 2;
`Ex. 1003 ¶ 43. The present record also supports the contention that Itamura
`describes an active layer (illustrated above in annotated Figure 2), including
`a plurality of first and second internal electrodes 4 and 5 exposed to face
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`each other with at least one dielectric layer 2 interposed therebetween and
`alternately exposed to the first or second surface. Pet. 17–19; Ex. 1004, 5:1–
`50, Fig. 2, 3, 3B; Ex. 1003 ¶ 43 (pages 26–29). The present record
`additionally supports the contention that Itamura describes upper and lower
`cover layers (portion of dielectric material above and below the annotated
`active layer of Figure 2). Pet. 19; Ex. 1004, Fig. 2; Ex. 1003 ¶ 43 (page 29).
`There is further support in the present record for the contention that
`Itamura describes “when a thickness of the ceramic body is defined as T and
`a width thereof is defined as W, 0.75W≤T≤1.25W is satisfied” as claimed.
`See, e.g., Pet. 21–26; Ex. 1004, Abstract, 5:1–8, 5:25–34, 7:62–65, Figs. 1,
`2; Ex. 1003 ¶ 43 (pages 31–36). The present record supports the contention
`that Itamura describes “when a gap between the first and second external
`electrodes is defined as G, 30 µm≤G≤0.9W is satisfied” by demonstrating
`that the gap between the two electrodes 6 and 7 (Fig. 1) is within a range
`between 0.3–0.4 mm, which range is greater than 30 µm and less than 0.9W.
`Pet. 32–34; Ex. 1004, 7:35–67, Figs. 1, 4; Ex. 1003 ¶ 43 (pages 31–36, 41–
`43).
`At this juncture of the proceeding, Patent Owner does not dispute that
`any of the above addressed requirements of claim 1 are met by Itamura.
`Patent Owner’s arguments are directed to the claim 1 phrase of “an average
`number of dielectric grains in a single dielectric layer in a thickness
`direction thereof is 2 or greater.” Prelim. Resp. 5–13. For this requirement,
`Petitioner relies on Jeong or, in the alternative, on Rutt, as describing this
`feature. Pet. 34–36. While we agree with Patent Owner that Petitioner fails
`to show sufficiently how Jeong describes “an average number of dielectric
`grains in a single dielectric layer in a thickness direction thereof is 2 or
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`greater,” we disagree with Patent Owner that the Petitioner fails to
`demonstrate sufficiently for purposes of this decision that Rutt describes this
`feature.
`In particular, Petitioner asserts with respect to Jeong that:
`For example, Jeong discloses multilayer ceramic capacitors
`having respective dielectric layers with a thickness of 2 μm and
`that those dielectric layers are made of ceramic particles having
`a size of 0.1 μm to 0.3 μm. (Ex.1003 at pg. 44; Ex.1005 at
`Abstract, ¶¶ [0029], [0040].) A dielectric layer having a
`thickness of 2 μm and a ceramic particle size of 0.3 µm will
`have, in a thickness direction, an average of at least six
`dielectric grains. (Id.) When those grains have an average
`particle size of 0.1 μm, a dielectric layer having a thickness of 2
`µm will have, in a thickness direction, an average of at least
`twenty dielectric grains. (Id.).
`
`Pet. 35.
`
`From the above passage, Petitioner appears to equate Jeong’s
`“ceramic particles” with the claimed “dielectric grains” with no explanation
`as to why Jeong’s ceramic particles are the same as, and thus meet, the
`claimed “dielectric grains” limitation. For instance, the portions of Jeong on
`which Petitioner relies describe the ceramic particles as a material that is
`used during the manufacturing process in making the dielectric layers.
`Jeong describes that the multilayer ceramic capacitor is manufactured by
`preparing a plurality of ceramic green sheets, which are to be laminated in a
`capacitance part. Ex. 1005 ¶ 42. The ceramic green sheets are
`manufactured by mixing first ceramic particles having an average particle
`size of 0.1 µm to 0.3 µm, a binder, and a solvent to produce a slurry. Id.
`The slurry is made into sheets having a thickness of a few micrometers using
`a doctor blade method. Id.
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`Petitioner, however, provides no explanation as to why Jeong’s
`ceramic particles are the same as the claimed dielectric grains. We note
`that the ’381 patent describes “ceramic particles” and “dielectric grains”
`separately, not interchangeably. For instance, the ’381 patent describes that
`the “average particle size of the ceramic powder used to form the dielectric
`layers 111 is not particularly limited and may be controlled, for example, to
`be 400 nm or less.” Ex. 1001, 5:4–6. In other instances, however, the
`’381 patent describes dielectric grains of the resultant manufactured
`dielectric layers to be 50 nm to 500 nm. Id. at 7:30–31. Although the range
`of the sizes of ceramic particles overlaps the range of the sizes of dielectric
`grains, the ranges are not the same, leading a person of ordinary skill in the
`art to have understood ceramic particles to be different from the resultant
`dielectric grains. Moreover, Rutt distinguishes ceramic particles from
`dielectric grains by claiming, for example, “sintering temperatures
`sufficiently high to fuse said ceramic particles into grains.” Ex. 1006,
`11:14–16. Petitioner had an opportunity to explain the disclosures of the
`involved patent and Rutt, which seemingly differentiate between ceramic
`particles and dielectric grains, but did not do so. For these reasons,
`Petitioner has failed to show that Jeong’s ceramic particles meet the
`dielectric grain limitation.
`In addition, even if Petitioner had shown that the dielectric grains are
`the same as ceramic particles, which it has not, Petitioner has failed to show
`sufficiently that Jeong describes an average number of dielectric grains in a
`single layer in a thickness direction is 2 or greater. Petitioner argues that
`based on the sizes of the ceramic particles and the thickness of the dielectric
`layer in Jeong, there will be between six and twenty dielectric grains.
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`Pet. 35. Petitioner fails to direct us to supporting evidence that explains how
`or why Jeong’s “ceramic particles,” even assuming them to be equivalent to
`dielectric grains, necessarily line up such that there are an average of two or
`greater grains in the thickness of the dielectric layer as required by claim 1.
`For example, Petitioner has not adequately established that Jeong Figure 2
`(reproduced above) teaches or suggests an average number of dielectric
`grains of two or greater in a single layer in a thickness direction. Jeong
`Figure 2 (reproduced above) appears to show, in magnified layer 110a,
`elements (grains, particles, etc.) that are not on average two along the
`thickness of the layer. Rather, to us, they appear to be on average less than
`two per thickness. For all of these reasons, Petitioner has failed to show that
`it is more likely than not that it would prevail in showing that claim 1 and
`claims 2–7 that depend from claim 1 would have been obvious over Itamura
`and Jeong.
`Petitioner, however, alternatively relies on Rutt for the requirement
`that “an average number of dielectric grains in a single dielectric layer in a
`thickness direction thereof is 2 or greater.” Pet. 34–36. In particular,
`Petitioner relies on the description in Figure 1 of Rutt as showing an average
`number of 2 dielectric grains between respective electrodes 16 and 18. Id. at
`35. Petitioner also asserts that Figure 2 of Rutt depicts an average number of
`five dielectric grains between areas 32 and 33 (in which internal electrodes
`are formed). Id.
`Contrary to Petitioner’s contentions, Patent Owner argues that Rutt
`describes multiple dielectric layers between internal electrodes, with each
`layer containing only a single ceramic grain. Prelim. Resp. 11–13. We
`disagree with Patent Owner’s characterization of Rutt. In particular, Patent
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`Owner equates each of Rutt’s disclosed stratum (of the five strata) as a
`single dielectric layer.7 Id. But Rutt describes the composite of the five
`strata seen in Figure 2 (30A, 30B, 30C, 30D, 30E) of Rutt as “a layer 30.”
`Ex. 1006, 6:12–21 (emphasis added). Furthermore, Rutt describes the
`resultant layer as a dielectric layer. See, e.g., id. at 10:60–68, 12:1–9.
`Based on the record before us, a person having ordinary skill in the art
`would have understood Rutt’s described five strata to be one dielectric layer
`as Rutt describes. Moreover, there is nothing in claim 1 itself that limits or
`specifies how the dielectric layer is formed, such that it would exclude the
`five strata shown in Rutt that forms Rutt’s single dielectric layer. For these
`reasons, we are not persuaded, at this juncture of the proceeding that Rutt
`fails to disclose a single dielectric layer with an average number of dielectric
`grains in a thickness direction thereof that is 2 or greater.
`Lastly, we determine the present record supports Petitioner’s
`conclusion that it would have been obvious to modify Itamura with Rutt.
`Pet. 36–39; Ex. 1003, 45–47. For example, the Petition explains that it
`would have been obvious at the time of the invention to include a larger
`number of dielectric grains in a thickness direction of Itamura’s dielectric
`layer in order to increase the breakdown voltage and reliability of the
`resultant capacitor. Id. at 36 (citing Ex. 1006, 1:58–2:7). Based on the
`record before us, Petitioner has articulated reasoning with rational
`
`
`7 Rutt describes, with respect to Figure 2, reproduced above, that each layer
`30 “was comprised of five strata each stratum being composed essentially of
`a single ceramic grain extending throughout the entire depth of the
`stratum . . . .” Ex. 1006, 6:15–17.
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`underpinnings on why a person of ordinary skill in the art at the time of the
`invention would have combined Itamura and Rutt.
`We also have reviewed the Petition with respect to claims 2–7. Claim
`5 depends from claim 1 and recites “wherein an average grain size of the
`dielectric grains is 50 nm to 500 nm.” Petitioner relies solely on Jeong to
`meet this limitation, particularly the same description from Jeong that it
`relied on to meet the dielectric grain limitation of claim 1. Pet. 45–46 (citing
`Ex. 1003, 54–55). As explained above, Petitioner fails to show that Jeong’s
`“ceramic particles” are equivalent to the claimed “dielectric grains.” For
`similar reasons, we are not persuaded that Petitioner has sufficiently
`accounted for the recited features of claim 5.
`Petitioner relies on Itamura alone to meet claims 3, 4, 6, and 7. Pet.
`41–44 and 46–48. We have reviewed the Petition with respect to claims 3,
`4, 6, and 7, and are persuaded, at this juncture of the proceeding, that
`Petitioner has established that it is more likely than not that Petitioner would
`prevail in its challenge to claims 3, 4, 6, and 7 on this ground.
`Claim 2 depends from claim 1 and recites “the lower cover layer has a
`thickness of 10 µm to 100 µm.” The present record supports Petitioner’s
`contentions that Jeong describes a lower cover layer (e.g., protective layer
`110B) that has a thickness of 10 µm to 100 µm. Pet. 39; Ex. 1005 ¶ 40. The
`present record also supports Petitioner’s conclusion that it would have been
`obvious to modify Itamura with Jeong. Pet. 39. For example, Petitioner
`explains that it would have been obvious at the time of the invention to use a
`cover layer having a thickness of 10 µm to 100 µm because doing so would
`result in a layer having a large number of dielectric grains and grain
`boundaries which will create a high breakdown voltage and increase
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`reliability of the capacitor, and also would increase the structural integrity of
`the capacitor. Id. at 39–40. Based on the record before us, Petitioner has
`articulated reasoning with rational underpinnings on why a person of
`ordinary skill in the art at the time of the invention would have combined
`Jeong with the combination of Itamura and Rutt.8 Petitioner has established
`that it is more likely than not that Petitioner would prevail in its challenge to
`claim 2 on this ground.
`Lastly, we address Patent Owner’s argument that Rutt was considered
`during prosecution of the application that issued as the ’381 patent by an
`examiner who determined the claims to be patentable over Rutt. Patent
`Owner argues that we should exercise discretion under 35 U.S.C. § 325(d) to
`not institute review based on Rutt. Prelim. Resp. 13–14. The statutory
`language of 35 U.S.C. § 325(d) does not require rejection of a petition
`simply because certain art was considered previously by the Office. See 35
`U.S.C. § 325(d). Here, Petitioner presents different arguments and evidence
`that were not before the Examiner during ex parte prosecution of the
`application that issued as the ’381 patent. Where new arguments are
`presented, shedding a different light on the Rutt reference in combination
`with Itamura, we decline to deny the petition under 35 U.S.C. § 325(d).
`Based on the record before us, at this juncture of the proceeding, we
`determine the information presented shows that it is more likely than not that
`Petitioner would prevail in establishing that claims 1, 3, 4, 6, and 7 would
`have been obvious over Itamura and Rutt, and claim 2 would have been
`obvious over Itamura, Rutt, and Jeong.
`
`8 Although not clearly articulated in the Petition, we understand Petitioner to
`implicitly argue for this combination as a basis for challenging claim 2.
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`D. Asserted Obviousness over Itamura, Jeong, Rutt, and Ahn
`
`Petitioner contends claims 8–15 and 17–19 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Itamura, Jeong, Rutt, and Ahn. Pet. 48–
`61. In support of its showing, Petitioner relies upon the declaration of John
`Galvagni. Id. (citing Ex. 1003).
`
`Ahn
`Ahn describes a multi-layered ceramic capacitor mounted on a circuit
`board. Ex. 1007 ¶ 4. Ahn Figures 1 and 3 are reproduced below.
`
`
`Figure 1 is a cross-sectional view showing a multi-layered ceramic
`
`capacitor mounted on a circuit board.
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`Figure 3 shows a circuit board having a land pattern.
`Ahn describes a circuit board 20 with a multi-layered ceramic
`
`capacitor 10 (dielectric sheet 11 having internal electrodes 12) formed
`thereon. Id. ¶ 59. External terminal electrodes 14a and 14b connect to
`internal electrodes 12. Id. Lands 21 and 22 (figure 3) are formed on the
`circuit board 20 which conductively connects to electrodes 14a and 14b. Id.
`¶¶ 59, 73.
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`
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`Figure 5 shows a circuit board with land pattern.
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`Figure 5 of Ahn shows lands 21a, 21b, 22a, and 22b of circuit board
`
`20. The lands can be formed in plural number by being separated to
`correspond to each edge portion of the external terminal electrodes 14a and
`14b of capacitor 10 of Figure 1 in order to reduce soldering amount. Id.
`¶ 77.
`
`Discussion
`
`Independent claim 8 is similar to claim 1, except claim 8 recites a
`multilayer ceramic capacitor mounted on a printed circuit board. Ex. 1001,
`14:18–50. Petitioner relies on Ahn to meet the “mounted on a printed circuit
`board” requirements, but relies on Itamura, Jeong, and Rutt to meet the
`remainder requirements of claims 8–15 and 17–19 as it did above with
`respect to claims 1–7.
`The present record supports the contention that Ahn describes a
`printed circuit board having two or more electrode pads formed thereon, and
`a multilayer ceramic capacitor mounted on the printed circuit board.
`Pet. 49–51; Ex. 1007 ¶¶ 59, 64, 71–79, Figs. 1, 3–6, 13A, 13B. The present
`record further supports the contention that Ahn describes a solder connecting
`the electrode pads and the multilayer ceramic capacitor. Pet. 51; Ex. 1007
`¶¶ 59, 63–66, 70, Figs. 1, 3; Ex. 1003 ¶ 45. For the remaining elements of
`claim 8, Petitioner relies on its previous discussion with respect to claim 1.
`Pet. 52–54. For reasons provided above, Petitioner has not shown
`sufficiently that Jeong meets the requirement that “an average number of
`dielectric grains in a single dielectric layer in a thickness direction thereof is
`2 or greater,” but has sufficiently demonstrated, at this point of the
`proceeding, that Rutt meets this requirement. Lastly, the present record
`supports Petitioner’s conclusion that it would have been obvious to combine
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`Itamura, Rutt, and Ahn. Pet. 54–55. For example,
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