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`EX 1003
`EX 1003
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ASCEND ELEMENTS, INC.,
`Petitioner,
`
`v.
`
`DUESENFELD GMBH,
`Patent Owner.
`_____________
`
`Case No. PGR2025-00037
`
`U.S. Patent No. 12,119,463
`_____________
`
`DECLARATION OF MARC JUZKOW
`
`
`
`
`Ascend Elements EX1003 Page 1
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`

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`TABLE OF CONTENTS
`
`BACKGROUND AND QUALIFICATIONS .............................................. 1
`I.
`II. MATERIALS REVIEWED .......................................................................... 4
`III. LEGAL PRINCIPLES .................................................................................. 6
`A.
`Person Having Ordinary Skill in the Art ............................................... 6
`B.
`Claim Construction ............................................................................... 7
`C.
`Legal Standards for Anticipation .......................................................... 8
`Legal Standards for Obviousness .......................................................... 9
`D.
`Indefiniteness ...................................................................................... 13
`E.
`Analogous Art ..................................................................................... 13
`F.
`IV. RELEVANT ART AND LEVEL OF ORDINARY SKILL ...................... 13
`V.
`CLAIM CONSTRUCTION ....................................................................... 15
`VI. TECHNOLOGY BACKGROUND ........................................................... 16
`A.
`General Principles of Lithium-ion Batteries ....................................... 16
`B.
`Materials Used in Li-Ion Batteries ...................................................... 17
`C.
`Background on Recycling Lithium-ion Batteries ............................... 24
`D.
`Summary of the '463 Patent ................................................................ 27
`VII.
`EFFECTIVE FILING DATE ................................................................. 30
`VIII. OVERVIEW OF THE PRIOR ART ...................................................... 30
`A.
`Tomioka (Japanese Patent Application Publication No. JPH10255861)
`31
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`E.
`
`F.
`
`D.
`
`Hanisch (U.S. Patent Application Publication No. US 2014/0290438
`B.
`33
`A1)
`Yosuke (Japanese Patent Application Publication No.
`C.
`JP2016080284A) ..................................................................................................... 34
`1.
`Motivation to Combine Yosuke with Tomioka or Hanisch ................. 35
`Hayashi (U.S. Patent No. 9,843,077) .................................................. 38
`Motivation to Combine Hayashi with Tomioka or Hanisch ............... 40
`LithoRec (Kwade et al. LithoRec: Recycling Lithium-ion Batteries) . 45
`Motivation to Combine LithoRec with Tomioka or Hanisch ............. 46
`Perry (Perry et al., Perry's Chemical Engineers' Handbook (7th ed.))
`50
`Motivation to Combine Tomioka and Perry or Hanisch and Perry ..... 50
`1.
`SUMMARY OF OPINIONS ....................................................................... 53
`IX.
`GROUNDS OF UNPATENTABILITY ..................................................... 54
`X.
`Ground 1: Claims 1-3, 8, 10-12 Are Disclosed or Rendered Obvious
`A.
`by Tomioka 54
`1.
`Claim 1 ................................................................................................ 54
`2.
`Claim 2: "The method according to claim 1, wherein: the organic
`solvent comprises dimethyl carbonate, or ethyl methylcarbonate, or both;
`and the drying process further continues the drying until the vaporizing
`removes at least 90 percent by weight of the dimethyl carbonate, or ethyl
`methylcarbonate, or both, from the electrolyte. ............................................ 65
`3.
`Claim 3: "The method according to claim 1, further comprising:
`capturing and condensing gases created from the vaporizing of organic
`carbonate in the electrolyte during the drying process. ................................. 66
`4.
`Claim 8: "The method according to claim 1, wherein: comminuting
`the used lithium batteries is performed within a container; and the drying is
`performed within the container." ................................................................... 67
`
`1.
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`1.
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`Claim 10: "The method according to claim 1, wherein comminuting of
`5.
`the used lithium batteries is configured such that the comminuted material
`includes components of comminuted material, and at least 90% by weight of
`the components of the comminuted material have a sieve size that is not
`more than 50 mm." ........................................................................................ 69
`Claim 11: "The method according to claim 1, wherein receiving the
`6.
`used lithium-ion batteries further includes receiving used lithium-ion
`batteries that further comprise carrier foil and binder that binds active
`material to the carrier foil, and the temperature of the vaporizing pressure-
`temperature being not more than 80° C., lower than a decomposition
`temperature of the binder, and lower than the decomposition temperature of
`the fluorine salt." ........................................................................................... 71
`Claim 12: "The method according to claim 11, further comprising a
`7.
`high temperature drying of the inactivated comminuted material, the high
`temperature drying being configured to decompose binder." ....................... 74
`Ground 2: Claim 4 Is Rendered Obvious by Tomioka in View of
`B.
`75
`Yosuke
`Claim 4: "The method according to claim 1, further comprising:
`1.
`performing the drying within an interior of a drying device; continuous
`monitoring, by a controller, of at least one progress parameter that is
`indicative of a progress of the drying, the at least one progress parameter
`comprising a pressure in the interior of the drying device or a pressure of a
`gas flow out of the interior of the drying device drying process, and not
`terminating the drying process until the progress parameter reaches a pre-
`determined progress parameter threshold value." ......................................... 75
`Ground 3: Claims 5 and 9 Rendered Obvious by Tomioka in View of
`C.
`79
`Hayashi
`Claim 5: "The method according to claim 1, wherein the [the]
`1.
`pressure is not more than 30 hPa for at least 50% of a duration of the drying,
`or the pressure does not exceed 50 hPa during the drying, or both." ............ 79
`Claim 9: "The method according to claim 3 wherein condensing is
`2.
`performed at an ambient pressure, or condensing is performed at a
`temperature within a temperature range that extends from 0° C. to 50° C., or
`both." 82
`
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`Ground 4: Claims 6 and 7 Are Rendered Obvious by Tomioka in View
`D.
`of LithoRec 82
`Claim 6: "The method according to claim 1, further comprising:
`1.
`feeding the comminuted material, through an airlock, into an interior of a
`drying device; and performing the drying within the interior of the drying
`device. ........................................................................................................... 82
`Claim 7: "The method according to claim 6, further comprising:
`2.
`vacuum sucking away of gases created from vaporized organic carbonate
`during the drying process and/or wherein the batteries comprise current
`collector foils having a coating material and movement using the agitator is
`conducted such that at least 50% by weight of the coating material of
`comminuted material is sucked away." ......................................................... 85
`Ground 5: Claims 13 and 14 Are Rendered Obvious by Tomioka in
`E.
`view of Perry ........................................................................................................... 87
`Claim 13: "The method according to claim 1, further comprising:
`1.
`moving by an agitator, over a duration of the drying, a not yet inactivated
`comminuted material among the comminuted material, or a mixture of
`inactivated comminuted material and not yet inactivated comminuted
`material, or both; and supplying, during the drying, a vaporization heat to the
`comminuted material, wherein the supplying includes the agitator supplying
`at least 35% of said vaporization heat." ........................................................ 87
`Claim 14: "The method according to claim 1, further comprising:
`2.
`performing the drying within an interior of a drying device; and agitating, by
`an agitator, the inactivated comminuted material when removing the
`inactivated comminuted material from the drying device." .......................... 91
`Ground 6: Claims 1-3, 5 and 9-12 Are Disclosed or Rendered Obvious
`F.
`by Hanisch in view of Hayashi ................................................................................ 93
`1.
`Claim 1 ................................................................................................ 93
`2.
`Claim 2: "The method according to claim 1, wherein: the organic
`solvent comprises dimethyl carbonate, or ethyl methylcarbonate, or both;
`and the drying process further continues the drying until the vaporizing
`removes at least 90 percent by weight of the dimethyl carbonate, or ethyl
`methylcarbonate, or both, from the electrolyte. .......................................... 101
`
`
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`Claim 3: "The method according to claim 1, further comprising:
`3.
`capturing and condensing gases created from the vaporizing of organic
`carbonate in the electrolyte during the drying process. ............................... 102
`Claim 5: "The method according to claim 1, wherein the [the]
`4.
`pressure is not more than 30 hPa for at least 50% of a duration of the drying,
`or the pressure does not exceed 50 hPa during the drying, or both." .......... 103
`Claim 9: "The method according to claim 3 wherein condensing is
`5.
`performed at an ambient pressure, or condensing is performed at a
`temperature within a temperature range that extends from 0° C. to 50° C., or
`both." 103
`Claim 10: "The method according to claim 1, wherein comminuting of
`6.
`the used lithium batteries is configured such that the comminuted material
`includes components of comminuted material, and at least 90% by weight of
`the components of the comminuted material have a sieve size that is not
`more than 50 mm." ...................................................................................... 103
`Claim 11: "The method according to claim 1, wherein receiving the
`7.
`used lithium-ion batteries further includes receiving used lithium-ion
`batteries that further comprise carrier foil and binder that binds active
`material to the carrier foil, and the temperature of the vaporizing pressure-
`temperature being not more than 80° C., lower than a decomposition
`temperature of the binder, and lower than the decomposition temperature of
`the fluorine salt." ......................................................................................... 104
`Claim 12: "The method according to claim 11, further comprising a
`8.
`high temperature drying of the inactivated comminuted material, the high
`temperature drying being configured to decompose binder." ..................... 105
`Ground 7: Claim 4 Is Rendered Obvious by Hanisch in view of
`G.
`Hayashi and/or Yosuke .......................................................................................... 106
`Claim 4: "The method according to claim 1, further comprising:
`1.
`performing the drying within an interior of a drying device; continuous
`monitoring, by a controller, of at least one progress parameter that is
`indicative of a progress of the drying, the at least one progress parameter
`comprising a pressure in the interior of the drying device or a pressure of a
`gas flow out of the interior of the drying device drying process, and not
`terminating the drying process until the progress parameter reaches a pre-
`determined progress parameter threshold value." ....................................... 106
`
`
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`Ground 8: Claim 6 Is Rendered Obvious by Hanisch in View of
`H.
`Hayashi and/or in further view of LithoRec .......................................................... 107
`Claim 6: "The method according to claim 1, further comprising:
`1.
`feeding the comminuted material, through an airlock, into an interior of a
`drying device; and performing the drying within the interior of the drying
`device. ......................................................................................................... 107
`Ground 9: Claims 7, 13, 14 Are Rendered Obvious by Hanisch in
`I.
`view of Hayashi and in further view of LithoRec and/or Perry ............................ 107
`Claim 7: "The method according to claim 6, further comprising:
`1.
`vacuum sucking away of gases created from vaporized organic carbonate
`during the drying process and/or wherein the batteries comprise current
`collector foils having a coating material and movement using the agitator is
`conducted such that at least 50% by weight of the coating material of
`comminuted material is sucked away." ....................................................... 107
`Claim 13: "The method according to claim 1, further comprising:
`2.
`moving by an agitator, over a duration of the drying, a not yet inactivated
`comminuted material among the comminuted material, or a mixture of
`inactivated comminuted material and not yet inactivated comminuted
`material, or both; and supplying, during the drying, a vaporization heat to the
`comminuted material, wherein the supplying includes the agitator supplying
`at least 35% of said vaporization heat." ...................................................... 109
`Claim 14: "The method according to claim 1, further comprising:
`3.
`performing the drying within an interior of a drying device; and agitating, by
`an agitator, the inactivated comminuted material when removing the
`inactivated comminuted material from the drying device." ........................ 110
`Ground 10: All Challenged Claims are invalid for indefiniteness .... 110
`All Challenged Claims – "inactivating the comminuted material and
`1.
`obtaining inactivated comminuted material as a result" ............................. 110
`7. "wherein . . . movement using the agitator is conducted such that at
`2.
`least 50% by weight of the coating material of comminuted material is
`sucked away." .............................................................................................. 112
`The method according to claim 1, wherein comminuting of the used
`3.
`lithium batteries is configured such that the comminuted material includes
`
`J.
`
`
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`components of comminuted material, and at least 90% by weight of the
`components of the comminuted material have a sieve size that is not more
`than 50 mm .................................................................................................. 114
`XI. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ......... 114
`XII.
`CONCLUSION ...................................................................................... 115
`
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`I, Marc Juzkow, hereby declare as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`1. My name is Marc Juzkow, and I have been retained on behalf of Ascend
`
`Elements, Inc. to provide my opinions on the patentability of the claims of United
`
`States Patent No. 12,119,463 ("the '463 Patent"). I understand that this declaration
`
`may be submitted to the Patent Trial and Appeal Board at the United States Patent
`
`and Trademark Office as part of a post grant review proceeding related to the '463
`
`Patent. I am being compensated at my customary rate of $400/hour for the time I
`
`spend on this matter. My compensation is not contingent on the content of my
`
`opinions nor the outcome of the post grant review proceeding. I have no direct
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`financial interest in any of the parties or this proceeding.
`
`2.
`
`In formulating my opinions, I have relied on my knowledge, training,
`
`and experience in the relevant field, which I have summarized below. My
`
`curriculum vitae, which includes a more detailed summary of my background,
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`experience, and publications, is attached to this declaration as Appendix A.
`
`3.
`
`I am a Managing Partner of Lithiumion Expert Services, LLC. I am
`
`also Cell Supplier Lead of Joby Aviation, LLC. I am an expert in the field of lithium-
`
`ion cells. I have studied, researched, and practiced in the field of electrochemical
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`cells and packaging for more than 40 years.
`
`
`
`1
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`Ascend Elements EX1003 Page 9
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`
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`4.
`
`I received my Bachelor of Science (BSc) degree in the field of
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`Chemistry from Simon Fraser University in Burnaby, British Columbia in 1985. I
`
`received my Master of Science (MSc) degree in the same field from the same
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`university in 1989.
`
`5.
`
`I began my career as a Research Scientist with Moli Energy Limited in
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`Vancouver, British Columbia in 1985. Initially, my work involved lithium metal
`
`cells. But, by the early 1990's the work I was doing transitioned to developing
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`lithium-ion cells. I worked at Moli Energy between 1985 and 1996. During this
`
`time, I had various titles and leadership positions. I was a research technologist and
`
`scientist, a Manager of Product Evaluation, a Manager of Product Development, and
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`a Manager of Sales & Marketing. While I was at Moli Energy the company became
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`the first North American company to commercialize lithium-ion technology. Among
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`the projects I was involved in was the development, preparation and purification of
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`electrolyte solvents and salts; as well as development and preparation of active
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`materials and assembling lithium cells with these components.
`
`6.
`
`Between 1996 and 2000 I was Director of Sales and Marketing for
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`PolyStor Corporation out of California. During my time at PolyStor, I was involved
`
`with the development of the BB-2590/U lithium-ion battery for the United States
`
`Army.
`
`
`
`2
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`Ascend Elements EX1003 Page 10
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`
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`7.
`
`Between 2000 and 2003, I transitioned into electrochemical double
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`layer capacitor devices. During this time, I was with Cooper Electronic
`
`Technologies, PowerStor Corporation and was involved with development of
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`spirally wound can cells and flat pouch cells.
`
`8.
`
`I have had various high-level roles in companies over the last 20 years.
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`The details of these roles can be found in my attached CV, but I summarize a few of
`
`them here. For instance, between 2007 and 2014 I was Vice President of Research
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`and Development at Leyden Energy. At Leyden we designed and assembled lithium-
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`ion cylindrical and pouch cells. Leyden subcontracted the manufacturing of both
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`polymer pouch and cylindrical cells and over 2 million cells were assembled. I had
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`responsibility for all R&D efforts including the development of novel lithium-ion
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`cells, including the components: electrolyte salt and solvents, cathodes, anodes,
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`separators and current collectors.
`
`9.
`
`After my time at Leyden Energy, I hired five engineers and assembly
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`technicians, purchased equipment and die sets, and started a contract services
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`company, Iontensity. Our typical customer was either a start-up or a large industrial
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`chemical company that had new lithium-ion cell components but were not skilled in
`
`the art of lithium-ion cell assembly, nor had the equipment required. We also
`
`subcontracted on several U.S. Department of Energy (DOE) contracts, providing cell
`
`design, assembly and testing services. At Iontensity, we assembled and tested coin
`
`
`
`3
`
`Ascend Elements EX1003 Page 11
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`
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`cells and Al foil-polymer laminate packaged lithium-ion cells for our customers who
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`typically provided us with one of the many components that make up a lithium-ion
`
`cell. We were responsible for chemical and mechanical cell design, assembling
`
`electrodes, final cell assembly and testing. During this time, I developed a cell
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`design modeling tool to calculate matching electrode formulations and structures,
`
`adjusting the specific areal capacities of the electrodes to provide high capacity and
`
`specific energy lithium ion cell designs.
`
`10. As I was the leader of a small group of engineers and technicians, it was
`
`important to be hands-on in my role as a team member and for training additional
`
`personnel we hired. I personally mixed cathode and anode slurries, coated electrodes
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`on a 2m long roll-to-roll coater, punched electrodes, assembled coin cells and pouch
`
`cells, and ran performance testing. Following Iontensity, I was the Principal Cell
`
`Specialist at NIO, responsible for the lithium-ion cell technology for this electric
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`vehicle company and Cell Supplier Lead at Joby Aviation, responsible for the
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`lithium-ion cells and cell technology we use in our eVTOL aircraft.
`
`11. All told, I have over four decades of experience with secondary
`
`batteries including lithium metal and lithium-ion secondary batteries.
`
`II. MATERIALS REVIEWED
`12.
`In developing my opinions, I have considered and relied upon the
`
`materials cited herein, including the following materials:
`
`
`
`4
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`Ascend Elements EX1003 Page 12
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`
`
`Exhibit
`1001
`1002
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`
`1019
`
`1020
`1021
`1022
`
`1023
`
`1024
`
`1025
`1026
`
`Description
`U.S. Patent No. 12,119,463 ("'463 Patent")
`Patent Prosecution History for U.S. Patent No. 12,119,463
`Japanese Patent App. Pub. JPH10255861 ("Tomioka")
`Translation of Tomioka
`Certification for translation of Tomioka
`Japanese Patent App. Pub. JP2016080284A ("Yosuke")
`Translation of Yosuke
`Certification for translation of Yosuke
`U.S. Patent No. 9,843,077 ("Hayashi")
`Kwade et al., LithoRec: Recycling lithium-ion batteries,
`published in 2012 by Cuvillier Verlag Göttingen ("LithoRec")
`Translation of LithoRec
`Certification of translation of LithoRec
`U.S. Patent Appl. Pub. No. US 2008/0050295 A1 ("Uchida")
`Perry et al., Perry's Chemical Engineers' Handbook (7th Ed.)
`published in 1997 by McGraw-Hill ("Perry")
`U.S. Patent No. 11,050,097 ("'097 Patent")
`RESERVED
`Ascend Elements Inc. v. Duesenfeld GmbH, IPR2024-00948,
`Paper 10 (Decision Granting Institution of Inter Partes
`Review for U.S. 11,050,097) ("'097 Institution Decision")
`Ascend Elements Inc. v. Duesenfeld GmbH, IPR2024-00948,
`Paper 19 (Patent Owner Response [REDACTED]) ("'097
`POR")
`Declaration of Sylvia Hall-Ellis, Ph.D.
`U.S. Patent App. Pub. No. US 2014/0290438 A1 ("Hanisch")
`Duesenfeld GmbH v. Ascend Elements Inc., 1:23-cv-01194-
`JFM, Stay Order, ECF No. 169 (D. Del. Jan. 17, 2025)
`Han et al., Lithium-ion hopping weakens thermal stability
`of LiPF6 carbonate electrolytes, Cell Reports Physical
`Science 5, 101768 (Jan. 17, 2024).
`Nitta et al., Li-ion battery materials: present and future, 18
`Materials Today 252 (June 2015)
`Solef® PVDF Typical Properties, Solvay Brochure
`Lu et al., Thermal behavior and decomposition kinetics of six
`electrolyte salts by thermal analysis, 156 J. Power Sources
`555 (2006)
`
`
`
`5
`
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`
`
`Exhibit
`1027
`
`1028
`1029
`
`Description
`Yang et al., Thermal stability of LiPF6 salt and Li-ion battery
`electrolytes containing LiPF6, 161 J. Power Sources 573
`(2006)
`U.S. Patent No. 5,691,077
`URT Umwelt und Recyclingtechnik GmbH v. Duesenfeld
`GmbH, IPR2024-00887, Paper 18 (Patent Owner Response
`[REDACTED])
`
`
`III. LEGAL PRINCIPLES
`13.
`I am not an attorney, and I do not expect to offer any opinions regarding
`
`the law or legal principles in this proceeding. I have been given certain instructions
`
`regarding the law and have been asked to apply those instructions in rendering my
`
`opinions. I have done so. I outline those legal principles below.
`
`A.
`14.
`
`Person Having Ordinary Skill in the Art
`I understand that patents and publications are to be understood from the
`
`perspective of a POSITA. I further understand that the words of the claims are to be
`
`understood from the perspective of a POSITA. Finally, I understand that the
`
`questions of anticipation and obviousness of a patent claim are evaluated from the
`
`understanding of the POSITA.
`
`15.
`
`I understand and have been informed that the factors I should consider
`
`in determining the ordinary level of skill in the art include: the levels of education
`
`and experience of persons working in the field; the types of problems encountered
`
`in the field; and the sophistication of the technology.
`
`
`
`6
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`16.
`
`I understand that a POSITA is not a specific real individual, but rather
`
`a hypothetical individual having the qualities reflected by the factors above. This
`
`hypothetical person has knowledge of all prior art in the relevant field as if it were
`
`arranged on a workshop wall and takes from each reference what it would teach to
`
`a person having the skills of a POSITA.
`
`B. Claim Construction
`17.
`I understand that in an inter partes review, claim terms are to be given
`
`their ordinary and customary meaning as understood by a POSITA in the context of
`
`the entire disclosure at the time of the invention. I understand that one must be
`
`careful not to read a specific embodiment appearing in the written description into
`
`the claim if the claim language is broader than the embodiment. I further understand
`
`that any special definition for a claim term must be set forth with reasonable clarity,
`
`deliberateness, and precision. I also understand that a patentee may provide
`
`definitions of claim terms within the specification that may differ from the plain and
`
`ordinary meaning of those terms, and that this is often referred to as "lexicography."
`
`18. Unless I explicitly state that I applied a specific claim construction in
`
`performing my analysis, I am applying the ordinary and customary meaning of claim
`
`terms as they would have been understood by the POSITA based on the specification
`
`of the patent unless otherwise noted. I understand that this standard is the same as
`
`that used in United States district courts, in which claim terms are given their
`
`
`
`7
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`
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`ordinary and customary meaning as would be understood by a POSITA at the time
`
`of the invention and have taken into consideration the language of the claims, the
`
`specification, and the prosecution history of record.
`
`C. Legal Standards for Anticipation
`19.
`I understand that for a claim to be anticipated under §102, every
`
`limitation or feature of the claimed invention must be found in a single prior art
`
`reference, either expressly or inherently. The reference must also enable a person of
`
`ordinary skill in the art to make and use the subject matter claimed.
`
`20.
`
`I understand that a claim element is inherently present in a prior art
`
`reference if the element is "necessarily present” in the device, structure, or method
`
`described in the reference. I understand that inherent anticipation does not require
`
`that a PHOSITA would have recognized the inherent disclosure at some specific
`
`point in time.
`
`21.
`
`I have been informed that it may be appropriate in certain circumstances
`
`to look at multiple references when considering the question of whether a claim is
`
`anticipated. Additional references may inform an anticipation evaluation: (1) to
`
`prove that the primary reference has an enabling disclosure, (2) to explain the
`
`meaning of a term used in the primary reference, or (3) to show that a characteristic
`
`not expressly called out in a reference is inherent.
`
`
`
`8
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`D. Legal Standards for Obviousness
`22.
`I understand that a claim may be invalid under §103(a) if the subject
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`matter described by the claim as a whole would have been obvious to a hypothetical
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`person of ordinary skill in the art in view of a prior art reference, or in view of a
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`combination of references at the time the claimed invention was made. Therefore, I
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`understand that obviousness is determined from the perspective of a hypothetical
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`person of ordinary skill in the art, and that the asserted claims of the patent should
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`be read from the point of view of such a person at the time the claimed invention
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`was made. I further understand that a hypothetical person of ordinary skill in the art
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`is assumed to know and to have all relevant prior art in the field of endeavor covered
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`by the patent in suit and all analogous prior art. I understand that the standard for
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`obviousness in a post grant review proceeding is by a preponderance of the evidence,
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`meaning that a fact must be more likely true than not true.
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`23.
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`I also understand that an analysis of whether a claimed invention would
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`have been obvious should be considered in light of the scope and content of the prior
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`art, the differences (if any) between the prior art and the claimed invention, and the
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`level of ordinary skill in the pertinent art involved. I understand as well that a prior
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`art reference should be viewed as a whole. I understand that in considering whether
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`an invention for a claimed combination would have been obvious, I may assess
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`whether there are apparent reasons to combine known elements in the prior art in the
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`manner claimed in view of interrelated teachings of multiple prior art references, the
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`effects of demands known to the design community or present in the marketplace,
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`and/or the background knowledge possessed by a person of ordinary skill in the art.
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`I also understand that other principles may be relied on in evaluating whether a
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`claimed invention would have been obvious, and that these principles include the
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`following:
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`• A combination of familiar elements according to known methods is likely to
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`be obvious when it does no more than yield predictable results;
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`• When a device or technology is available in one field of endeavor, design
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`incentives and other market forces can prompt variations of it, either in the
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`same field or in a different one, so that if a person of ordinary skill in the art
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`can implement a predictable variation, the variation is likely obvious;
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`• If a technique has been used to improve one device, and a person of ordinary
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`skill in the art would have recognized that it would improve similar devices
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`in the same way, using the technique is obvious unless its actual application
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`is beyond his or her skill;
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`• An explicit or implicit teaching, suggestion, or motivation to combine two
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`prior art references to form the claimed combination may demonstrate
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`obviousness, but proof of obviousness does not depend on or require showing
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`a teaching, suggestion, or motivation to combine;
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`• Market demand, rather than scientific literature, can drive design trends and
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`may show obviousness;
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`• In determining whether the subject matter of a patent claim would have been
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`obvious, I understand that it is not a relevant matter what reasons or
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`motivations caused the inventor to take a particular action or to include
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`particular components;
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`• One of the ways in which a patent’s subject can be shown to be obvious is by
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`noting that there existed at the time of invention a known problem for which
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`there was an obvious solution encompassed by the patent’s claims;
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`• Any need or problem known in the field of endeavor at the time of invention
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`and addressed by the patent can provide a reason for combining the elements
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`in the manner claimed;
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`24.
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`"Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a POSITA will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle;
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`25. A POSITA is also a person of ordinary creativity, and is not an
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`automaton;
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`26. A patent claim can be proved obvious by showing that the claimed
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`combination of elements was "obvious to try,” particularly when there is a design
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`need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions such that a POSITA would have had good reason to
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`pursue the known options within his or her technical grasp; and one should be
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`cautious of using hindsight in evaluating whether a claimed invention would have
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`been obvious.
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`27.
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`I understand that, in making a determination as