EX 1018
`EX 1018
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`EX 1018
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`Trials@uspto.gov
`571-272-7822
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`Paper 10
`Entered: November 22, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASCEND ELEMENTS, INC.,
`Petitioner,
`v.
`DUESENFELD GMBH,
`Patent Owner.
`
`IPR2024-00948
`Patent 11,050,097 B2
`
`
`
`Before MEREDITH C. PETRAVICK, CHRISTOPHER M. KAISER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
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`INTRODUCTION
`I.
`A. Background and Summary
`Ascend Elements, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1–3, 7–10, 12, 13, and 19 (“the
`challenged claims”) of U.S. Patent No. 11,050,097 B2 (Ex. 1001, “the ’097
`patent”). Duesenfeld GmbH (“Patent Owner”) filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”). With our authorization, Petitioner filed a Reply
`to Patent Owner’s Preliminary Response (Paper 7, “Prelim. Reply”), and
`Patent Owner filed a Preliminary Sur-Reply (Paper 9, “Prelim. Sur-Reply”).
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under [35 U.S.C.] section 311
`and any response filed under [35 U.S.C.] section 313 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) (2018).
`“When instituting inter partes review, the Board will authorize the review to
`proceed on all of the challenged claims and on all grounds of unpatentability
`asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).
`For the reasons set forth below, upon considering the briefing and the
`evidence of record, we determine that the information presented in the
`Petition establishes a reasonable likelihood that Petitioner will prevail with
`respect to at least one of the challenged claims, and we institute inter partes
`review of all the challenged claims based on all the grounds identified in the
`Petition.
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`B. Real Parties-in-Interest
`Petitioner identifies Ascend Elements, Inc. as the real party-in-
`interest. Pet. 60. Patent Owner identifies Duesenfeld GmbH as the real
`party-in-interest. Paper 4, 1.
`C. Related Matters
`The parties identify the following related court proceeding:
`Duesenfeld GmbH v. Ascend Elements, Inc., Case No. 1-23-cv-01194 (D.
`Del.). Pet. 60; Paper 4, 1. In addition, the parties note that the ’097 patent is
`also being challenged concurrently in IPR2024-00887. Pet. 60; Paper 4, 1.
`D. The ’097 Patent
`The ’097 patent is titled “Method for the Treatment of Used Batteries,
`in Particular Rechargeable Batteries, and Battery Processing Installation”
`and issued on June 29, 2021. Ex. 1001, codes (45), (54). It is directed to
`“[a] method . . . for the treatment of used batteries, in particular lithium
`batteries.” Id. at code (57).
`The ’097 patent describes several prior-art methods of processing
`used batteries and discusses the disadvantages of each method. Id. at 1:25–
`50. “The invention [of the ’097 patent] aims to reduce” these disadvantages.
`Id. at 1:54–55. To do so, the ’097 patent describes
`a method for the treatment of used batteries, in particular used
`lithium batteries, such as lithium[-]ion batteries, with the steps
`(a) comminuting the batteries such that comminuted material is
`obtained, (b) inactivating of the comminuted material such that
`an inactive comminuted material is obtained, and (c) filling a
`transport container with the inactive comminuted material.
`Id. at 1:8–15. It also describes
`a battery processing installation for the treatment of used
`batteries, in particular for the treatment of used lithium batteries
`with (a) a comminuting device for comminuting the batteries
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`such that comminuted material is obtained, (b) an inactivation
`device for inactivating the comminuted material and (c) a filling
`device for filling a transport container with the inactivated
`comminuted material.
`Id. at 1:16–23.
`According to the ’097 patent, “the inactivation occurs . . . by way of
`drying the comminuted material.” Id. at 1:57–58. By doing this, “the
`amount of electrolyte that can be obtained from the comminuted material . . .
`is such that an electrochemical reaction is no longer possible, or only to a
`negligibly small extent.” Id. at 1:63–66. “In addition, no flammable or
`explosive gas phase forms above the battery fragments, as the organic
`carbonates of the electrolyte have been removed.” Id. at 1:66–2:2. This
`renders the comminuted material “largely inert,” so that it “can be
`transported safely, especially if it is packed under vacuum.” Id. at 2:2–2:4.
`E. Illustrative Claims
`Petitioner challenges claims 1–3, 7–10, 12, 13, and 19 of the ’097
`patent. Claims 1 and 12 are independent and illustrative; they are
`reproduced below.
`1. A method for the treatment of used batteries, comprising the
`steps:
`(a) comminuting the batteries such that comminuted material
`is obtained;
`(b) inactivating the comminuted material such that an
`inactivated comminuted material is obtained, wherein the
`inactivating step is performed during or after the
`comminuting step; and
`(c) filling a transport container with the inactivated
`comminuted material;
`wherein the inactivating step is performed by drying the
`comminuted material, and
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`wherein the drying occurs at a maximum pressure of 300 hPa.
`Ex. 1001, 10:45–59.
`12. A battery processing installation for treatment of used
`batteries, comprising:
`(a) a comminution unit configured to comminute the batteries
`such that comminuted material is obtained;
`(b) an inactivation device comprising a drying device
`configured to inactivate the comminuted material,
`wherein the inactivation device is configured to perform
`the inactivating step during or after the comminuting step
`of the comminution unit;
`(c) a filling device configured to fill a transport container with
`the inactivated comminuted material; and
`(d) a vacuum installation connected to the drying device and
`configured to generate a vacuum in the drying device.
`Ex. 1001, 11:48–61.
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`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 3, 22–
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`52):
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`35 U.S.C. §
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`Reference(s)/Basis
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`Claim(s)
`Challenged
`1–3, 7–10, 12,
`Hanisch,1 Dunagan2
`13, 19
`Hanisch, Dunagan, Meador,3 Shin,4
`1–3, 7–10, 12,
`Hayashi5
`13, 19
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Walter van Schalkwijk, Ph.D. (Ex. 1003).
`II. ANALYSIS
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`103
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`103
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`A. Legal Standards
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under
`35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) if in evidence, “secondary considerations” of non-obviousness, such as
`“commercial success, long[-]felt but unsolved needs, failure of others, etc.”
`Id. at 17–18. “While the sequence of these questions might be reordered in
`any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
`(2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly
`emphasized that “it is error to reach a conclusion of obviousness until all
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`1 US 9,780,419 B2, issued Oct. 3, 2017 (Ex. 1004).
`2 US 9,450,277 B2, issued Sept. 20, 2016 (Ex. 1018).
`3 US 5,632,863, issued May 27, 1997 (Ex. 1011).
`4 US 10,396,408 B2, issued Aug. 27, 2019 (Ex. 1010).
`5 US 9,843,077 B2, issued Dec. 12, 2017 (Ex. 1006).
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`those factors are considered,” WBIP, LLC v. Kohler Co., 829 F.3d 1317,
`1328 (Fed. Cir. 2016). Because Patent Owner does not address objective
`evidence of non-obviousness, we focus solely on the first three Graham
`factors.
`B. Level of Ordinary Skill in the Art
`The level of ordinary skill in the pertinent art at the time of the
`invention is a factor in how we construe patent claims. See Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). It is also one of
`the factors we consider when determining whether a patent claim is obvious
`over the prior art. See Graham, 383 U.S. at 17–18.
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case.” Id.
`Petitioner contends that one of ordinary skill in the art “would have
`had at least a master’s degree in chemical engineering, mechanical
`engineering, materials science/engineering, or a related field, and three to
`five years of experience in design and implementation of battery recycling
`processes.” Pet. 15–16. Patent Owner argues to the contrary that a person
`of ordinary skill in the art “would have [had] at least a Bachelor’s degree in
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`electrical engineering, materials science, chemical engineering, or an
`equivalent field, as well as at least 2 to 3 years of academic or industry
`experience in the recycling or processing of lithium-ion batteries.” Prelim.
`Resp. 13. On the present record, neither party argues that the result would
`be any different should we adopt a different definition of a person of
`ordinary skill in the art.
`For purposes of this Decision, we adopt Patent Owner’s assessment of
`the level of ordinary skill in the art, as, on the present record, it appears
`consistent with the ’097 patent and the asserted prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Claim Construction
`We apply the same claim construction standard used in the federal
`courts—in other words, the claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C. § 282(b), which is
`articulated in Phillips. See 37 C.F.R. § 42.100(b). Under the Phillips
`standard, the “words of a claim ‘are generally given their ordinary and
`customary meaning,’” which “is the meaning that the term would have to a
`person of ordinary skill in the art in question at the time of the invention, i.e.,
`as of the effective filing date of the patent application.” Phillips, 415 F.3d
`at 1312–13.
`Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to
`mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16
`(quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms
`should be given their plain and ordinary meaning under Philips and do not
`need further construction for the purposes of this Petition.” Id. Patent
`Owner argues that “[n]o claim terms require express construction to
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`determine that the Petition does not establish a reasonable likelihood of
`unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13.
`Based on the present record, we need not expressly construe any claim
`terms at this time.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375
`(Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . .
`that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`D. Asserted Obviousness over Hanisch, Dunagan, and the Knowledge of
`a Person of Ordinary Skill in the Art
`Petitioner argues that claims 1–3, 7–10, 12, 13, and 19 would have
`been obvious over Hanisch alone or in combination with Dunagan and in
`view of the knowledge of a person of ordinary skill in the art. Pet. 22–41.
`Patent Owner disagrees. Prelim. Resp. 15–34. Based on the current record,
`we are not persuaded that Petitioner has established a reasonable likelihood
`of prevailing on this asserted obviousness ground with respect to any
`challenged claim.
`1. Overview of Hanisch
`Hanisch is a U.S. patent titled “Method for Reclaiming Active
`Material from a Galvanic Cell, and an Active Material Separation
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`6 If either party intends to further argue claim construction at trial, including
`the alleged plain and ordinary meaning of a particular term, they should do
`so in a clearly designated section of their briefing so as to expressly identify
`such arguments. See, e.g., 37 C.F.R. § 42.104(b)(3) (content of petition); see
`also Patent Trial and Appeal Board Consolidated Trial Practice Guide, 84
`Fed. Reg. 64,280, at 46, 48–45 (Nov. 2019) (available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated). Claim
`construction arguments should not be relegated to patentability arguments on
`the facts.
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`Installation, Particularly an Active Metal Separation Installation,” that issued
`on October 3, 2017. Ex. 1004, codes (45), (54). It relates to “a method for
`retrieving active material, in particular lithium or lithium compounds, from a
`galvanic cell.” Id. at 1:8–10. The method includes the steps of “(a) crushing
`the cells, in particular under inert gas, so that solid cell fragments are also
`formed, (b) heating the solid cell fragments up to the decomposition
`temperature, which is high enough to make the binder decompose and/or
`evaporate, such that heat treated cell fragments are formed, and (c)
`classifying the heat treated cell fragments.” Id. at 1:12–18. “The heating of
`cell fragments up to the decomposition temperature is preferably carried out
`under inert gas or in a vacuum.” Id. at 4:6–8.
`The method of Hanisch additionally “preferably comprises the step
`that, before heating the cell fragments up to the decomposition temperature,
`the cell fragments are dried at a drying temperature, so that dry cell
`fragments and drying vapours are formed, whereby the drying vapours are at
`least partly condensed.” Id. at 3:65–4:2. Hanisch teaches that “[t]his has the
`advantage that the electrolyte solvent can be retrieved. It is therefore
`advantageous for the drying temperature to be below 100° C., in particular
`below 80° C.” Id. at 4:3–5.
`2. Overview of Dunagan
`Dunagan is a U.S. patent titled “Systems for Recycling Volatile
`Battery Sources,” that was issued on September 20, 2016. Ex. 1018, codes
`(45), (54). It “is directed to systems and methods for the recycling of
`lithium ion batteries or the like.” Id. at code (57). Dunagan’s method “is
`employed to safely and economically recover valuable materials from Li-ion
`or like batteries or power sources.” Id. at 6:10–12. The method includes the
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`step of placing “processed material . . . in super sacks or suitable carrier[s],
`[and] weigh[ing], label[ing] and transport[ing] [it] for end users to reclaim
`the valuable metals and other materials from the recycled materials.” Id.
`at 6:33–37.
`3. Analysis of Claim 1
`a) Disputed Limitation: “Wherein the Inactivating
`Step is Performed by Drying the Comminuted Material”
`Claim 1 recites “wherein the inactivating step is performed by drying
`the comminuted material.” Ex. 1001, 10:56–57. Petitioner contends that
`Hanisch teaches or suggests this limitation. Pet. 29–30 (citing Pet. 24–27).
`Patent Owner disagrees. Prelim. Resp. 18–28.
`Although neither party requests construction of the claim term
`“inactivating,” the parties’ disagreement on this limitation stems mostly
`from a disagreement regarding how much solvent must be removed from the
`comminuted material to constitute inactivation of that material. Id. at 19–20
`(arguing that inactivation requires drying until “the accumulated content of
`organic carbonates from the electrolyte that are volatile at 80° C. falls short
`of 3% by volume in the atmosphere above the comminuted material”); id.
`at 23 (arguing that inactivation and drying require that “electrolyte solvent
`[be] recoverable by condensation”); Pet. 25 (arguing that inactivation
`requires “evaporat[ing] the electrolyte and solvent from the comminuted
`material” “such that an electrochemical reaction is no longer possible, or
`only to a negligibly small extent”).
`On the present record, the definition that Patent Owner proposes for
`inactivation, requiring that the comminuted material be dried until “the
`accumulated content of organic carbonates from the electrolyte that are
`volatile at 80° C. falls short of 3% by volume in the atmosphere above the
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`comminuted material,” is not correct. Prelim. Resp. 19–20 (quoting
`Ex. 1001, 4:33–36). The ’097 patent provides this benchmark for drying,
`but it states that achieving this benchmark is merely “preferabl[e],” not
`required. Ex. 1001, 4:33–36; see Ex. 1001, 4:28–32 (stating that achieving a
`similar, but not identical, benchmark “is beneficial”). Petitioner’s proposed
`definition falls closer to the mark. The ’097 patent describes drying as
`“mean[ing] the removal of at least one solvent in the conducting salt.” Id.
`at 2:24–25. Regarding the degree of solvent removal, the ’097 patent states
`that “the drying is executed such that dimethyl carbonate and/or ethyl methyl
`carbonate is removed,” and that the drying results in “an electrochemical
`reaction [being] no longer possible, or only to a negligibly small extent.” Id.
`at 1:63–66, 2:25–27.
`Similarly, on the present record, we disagree with Patent Owner’s
`argument that the ’097 patent defines inactivation or drying in such a way as
`to require that “the electrolyte solvent [be] recoverable by condensation.”
`Prelim. Resp. 23 (citing Ex. 1001, 5:11–22). The cited portion of the ’097
`patent describes “a preferred embodiment,” which is not necessarily an
`aspect of the claimed invention. Ex. 1001, 5:11–22.
`Thus, on the present record, we take inactivating to require the
`removal of sufficient amounts of dimethyl carbonate and/or ethyl methyl
`carbonate from the comminuted material to make an electrochemical
`reaction either no longer possible or only possible to a negligibly small
`extent. We encourage the parties to further develop the record on this
`question at trial.
`Petitioner argues that Hanisch discloses inactivating the comminuted
`material by drying in two of its process steps. First, Petitioner argues that
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`Hanisch teaches this limitation by teaching low-temperature drying.
`Pet. 29–30 (citing Pet. 25–26). In particular, Petitioner argues that Hanisch
`teaches this by disclosing “pre-dryer 28 [that] comprises a circulation pump
`32 and a condenser 34 for condensing electrolyte, which can be removed via
`the pipe 36.” Id. at 26 (quoting Ex. 1004, 5:54–63). Petitioner also argues
`that Hanisch “claims this limitation in dependent claim 5,” which includes
`“the steps of: drying the solid cell fragments at a drying temperature to form
`dry cell fragments and drying vapours and at least partly condensing the
`drying vapours to retrieve electrolyte solvents.” Id. (quoting Ex. 1004, 8:3–
`10). On the present record, we do not find this argument persuasive.
`Although Hanisch teaches the removal of some volatile electrolyte through
`heating and condensing the resulting vapor in its low-temperature drying
`process, Petitioner does not direct us to evidence that tends to show that
`Hanisch’s low-temperature drying removes sufficient vapor to make
`electrochemical reactions impossible or only possible to a negligibly small
`extent. Ex. 1004, 5:54–63, 8:3–10.
`Petitioner also argues that Hanisch teaches this limitation by
`disclosing a high-temperature drying process. Pet. 29–30 (citing Pet. 26–
`27). In particular, Petitioner directs us to Hanisch’s disclosure of “[a]n
`oven . . . in which there is a decomposition temperature Tz between 400 and
`600° C. The binder, for example polyvinylidene fluoride (PVDF), thus
`decomposes.” Id. at 27 (quoting Ex. 1004, 6:8–11). According to
`Petitioner, a person of ordinary skill in the art “would understand that the
`temperatures cited would cause the evaporation of the organic solvents from
`the electrolyte.” Id. (citing Ex. 1003 ¶ 103). Patent Owner argues that the
`high temperatures in Hanisch’s decomposition oven would cause the
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`solvents to decompose rather than to evaporate. Prelim. Resp. 23 (citing
`Ex. 1003 ¶ 108; Ex. 2001 ¶ 79). According to Patent Owner, inactivating
`the comminuted material by drying requires the ability to recover the
`evaporated solvents, so destroying those solvents via decomposition is not
`sufficient. Id. at 23–25 (citing Ex. 1001, 2:23–27, 5:11–22; Ex. 2001 ¶¶ 80–
`83; Ex. 2009, A1536).
`On the present record, we agree with Patent Owner that Hanisch’s
`high-temperature decomposition oven would cause the solvents to
`decompose rather than to evaporate. Patent Owner’s declarant, Vani
`Dantam, opines that, at the temperatures of Hanisch’s decomposition oven,
`“the electrolyte and solvents will—like the binder—decompose into other,
`distinct compounds,” and “volatile electrolyte solvents such as [dimethyl
`carbonate] and [ethyl methyl carbonate], in the presence of LiPF6, would
`rapidly decompose into gases including carbon dioxide, ethane,
`fluoroethane, and dimethyl ether.” Ex. 2001 ¶ 81. According to Dantam,
`this decomposition of the solvents would be so complete that “no electrolyte
`solvents would remain for collection and reuse,” because “the solvents
`would rapidly decompose into non-electrolyte gases.” Id. ¶ 83. The end
`result would be that “the electrolyte solvent would be destroyed by pyrolysis
`and none would remain.” Id.
`On the other hand, we do not agree with Patent Owner that
`inactivation or drying in the ’097 patent requires the recovery of or ability to
`recover the solvents that are removed from the comminuted material.
`Instead, as discussed above, we take inactivating to require the removal of
`sufficient amounts of dimethyl carbonate and/or ethyl methyl carbonate from
`the comminuted material to make an electrochemical reaction either no
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`longer possible or only possible to a negligibly small extent. Given that
`Hanisch’s decomposition oven would destroy the electrolyte solvent such
`that “none would remain,” we determine that Petitioner has shown
`sufficiently that Hanisch teaches removing enough solvent in its
`decomposition oven to make an electrochemical reaction either no longer
`possible or only possible to a negligibly small extent.
`b) Disputed Limitation: “Wherein the Drying Occurs
`at a Maximum Pressure of 300 hPa”
`Claim 1 recites “wherein the drying occurs at a maximum pressure of
`300 hPa.” Ex. 1001, 10:58–59. Petitioner contends that Hanisch teaches or
`suggests this limitation. Pet. 30–32. Patent Owner disagrees. Prelim.
`Resp. 28–31.
`Petitioner first argues that Hanisch teaches “the heating up takes place
`under inert gas or in a vacuum,” and a person of ordinary skill in the art
`“would have understood that the pressure of a ‘vacuum’ is below 300 hPa.”
`Id. at 30 (quoting Ex. 1004, 3:6–8; citing Ex. 1003 ¶ 110). On the present
`record, we agree with Petitioner that Hanisch teaches operating both its pre-
`dryer and its decomposition oven at a vacuum. Ex. 1004, 3:6–8, 4:6–8. We
`are not persuaded, however, on the present record, that Petitioner has shown
`sufficiently that a person of ordinary skill in the art “would have understood
`that the pressure of a ‘vacuum’ is below 300 hPa.” Pet. 30. As support for
`this contention, Petitioner cites the declaration of Dr. van Schalkwijk, who
`testifies that “[a] POSITA would have understood that the pressure of a
`‘vacuum’ is below 300 hPa.” Ex. 1003 ¶ 110. Dr. van Schalkwijk does not
`provide any support for this testimony. Id.
`Petitioner next argues that, “[t]o the extent that Hanisch does not
`explicitly disclose this claim limitation, it would have been obvious in view
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`of the common knowledge of a POSITA . . . that using pressures at or below
`300hP[a] when drying the comminuted material would be desirable.”
`Pet. 31 (citing Ex. 1003 ¶¶ 68–70, 113–116). Again, the cited testimony of
`Dr. van Schalkwijk does not cite any support for the witness’s opinion that
`“a POSITA, in view of the common knowledge in the field before the
`effective filing date, would have understood that using pressures at or below
`300hP[a] when drying the comminuted material would be desirable.”
`Ex. 1003 ¶ 113; see Ex. 1003 ¶¶ 68–70, 114–116. Dr. van Schalkwijk
`provides some reasoning to support the opinion that a person of ordinary
`skill in the art “would . . . conclude that use of reduced pressure when drying
`comminuted material would be desirable” and the opinion that the chosen
`pressure would be “under lower ambient pressure,” but no support for the
`choice of the maximum of 300 hPa recited in claim 1. Id. ¶¶ 114–115.
`Conclusion Regarding Claim 1
`c)
`Based on the current record, we determine that Petitioner has not
`shown a reasonable likelihood that it will prevail in demonstrating that
`claim 1 is unpatentable as obvious over Hanisch alone or in combination
`with Dunagan and in view of the knowledge of a person of ordinary skill in
`the art.
`4. Claims 2, 3, and 7–10
`As discussed above, Petitioner does not show a reasonable likelihood
`that it will prevail in demonstrating that claim 1 would have been obvious
`over Hanisch alone or in combination with Dunagan and in view of the
`knowledge of a person of ordinary skill in the art. Petitioner relies on its
`arguments with respect to claim 1 in arguing for the obviousness of claims 2,
`3, and 7–10, all of which depend from claim 1. Pet. 32–38. Accordingly,
`
`16
`
`Ascend Elements EX1018 Page 16
`
`
`
`IPR2024-00948
`Patent 11,050,097 B2
`
`Petitioner does not show a reasonable likelihood that it will prevail in
`demonstrating that claims 2, 3, and 7–10 would have been obvious over
`Hanisch alone or in combination with Dunagan and in view of the
`knowledge of a person of ordinary skill in the art.
`5. Analysis of Claim 12
`a) Disputed Limitation: “Inactivation Device
`Comprising a Drying Device Configured to Inactivate the
`Comminuted Material”
`Claim 12 recites “an inactivation device comprising a drying device
`configured to inactivate the comminuted material.” Ex. 1001, 11:52–53.
`Petitioner argues that Hanisch teaches this limitation. Pet. 38 (citing
`Pet. 24–27, 29–30). Patent Owner disagrees. Prelim. Resp. 31–32 (citing
`Prelim. Resp. 18–28). Both parties rely on their arguments with respect to
`the “wherein the inactivating step is performed by drying the comminuted
`material” limitation of claim 1. As discussed above, we determine that
`Petitioner has shown sufficiently that Hanisch’s decomposition oven teaches
`that limitation of claim 1. Based on the parties’ reliance on their claim 1
`arguments with respect to the “inactivation device comprising a drying
`device configured to inactivate the comminuted material” limitation of
`claim 12, we determine that Petitioner has shown sufficiently that Hanisch’s
`decomposition oven is “an inactivation device comprising a drying device
`configured to inactivate the comminuted material.”
`b) Disputed Limitation: “Vacuum Installation
`Connected to the Drying Device and Configured to
`Generate a Vacuum in the Drying Device”
`Claim 12 recites “a vacuum installation connected to the drying
`device and configured to generate a vacuum in the drying device.”
`Ex. 1001, 11:59–61. Petitioner argues that Hanisch teaches this limitation.
`
`17
`
`Ascend Elements EX1018 Page 17
`
`
`
`IPR2024-00948
`Patent 11,050,097 B2
`
`Pet. 39–40 (citing Pet. 30–32). Patent Owner disagrees. Prelim. Resp. 32–
`33. On the present record, we are not persuaded that Petitioner has shown
`sufficiently that Hanisch teaches or suggests this limitation.
`We begin by noting that the vacuum installation of this limitation
`must be “connected to the drying device,” which is the device “configured to
`inactivate the comminuted material.” Ex. 1001, 11:48–61. As discussed
`above, Petitioner shows sufficiently on the present record that Hanisch’s
`decomposition oven is such a drying device, but Petitioner does not show
`sufficiently that Hanisch’s pre-dryer is. Thus, to show a reasonable
`likelihood of prevailing as to this limitation, Petitioner must show that
`Hanisch teaches or suggests a vacuum installation connected to the
`decomposition oven.
`Petitioner argues that Hanisch teaches that “heating up takes place
`under inert gas or vacuum,” and that a person of ordinary skill in the art
`“would have understood from this disclosure that a vacuum installation
`connected to the drying device of Hanisch would be needed to allow heating
`up to occur under a vacuum.” Pet. 39 (citing Ex. 1003 ¶ 135; Ex. 1004, 3:6–
`8, 4:6–8). On the present record, we agree that Hanisch teaches operating its
`decomposition oven under a vacuum. Ex. 1004, 4:6–8 (“[t]he heating of cell
`fragments up to the decomposition temperature is preferably carried out . . .
`in a vacuum”). But the cited testimony of Dr. van Schalkwijk does not
`support Petitioner’s argument that a person of ordinary skill in the art
`“would have understood from this disclosure that a vacuum installation
`connected to the drying device of Hanisch would be needed to allow heating
`up to occur under a vacuum.” Pet. 39 (citing Ex. 1003 ¶ 135). Dr. van
`Schalkwijk testifies that Hanisch’s disclosure “would lead a POSITA to
`
`18
`
`Ascend Elements EX1018 Page 18
`
`
`
`IPR2024-00948
`Patent 11,050,097 B2
`
`conclude that Hanisch discloses generating a vacuum in the drying device,”
`but there is no testimony regarding the need for a vacuum installation to
`generate the vacuum. Ex. 1003 ¶ 135. Petitioner also cites the testimony of
`Dr. van Schalkwijk that a person of ordinary skill in the art “would have
`understood the circulation pump and condenser of Hanisch to be a ‘vacuum
`installation.’” Pet. 39–40 (citing Ex. 1003 ¶¶ 136–137). But the circulation
`pump and condenser that Petitioner and Dr. van Schalkwijk refer to are
`attached to Hanisch’s pre-dryer, not to Hanisch’s decomposition oven.
`Pet. 39–40; Ex. 1004, 5:59–61, Fig. 1; Ex. 1003 ¶¶ 136–137. Thus,
`Petitioner shows sufficiently that Hanisch teaches or suggests a vacuum
`installation attached to Hanisch’s pre-dryer, but not, as Petitioner must show,
`that Hanisch teaches or suggests a vacuum installation attached to Hanisch’s
`decomposition oven.
`Conclusion Regarding Claim 12
`a)
`Based on the current record, we determine that Petitioner has not
`shown a reasonable likelihood that it will prevail in demonstrating that
`claim 12 is unpatentable as obvious over Hanisch alone or in combination
`with Dunagan and in view of the knowledge of a person of ordinary skill in
`the art.
`6. Claims 13 and 19
`As discussed above, Petitioner does not show a reasonable likelihood
`that it will prevail in demonstrating that claims 1 and 12 would have been
`obvious over Hanisch alone or in combination with Dunagan and in view of
`the knowl
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