Takeaway: A prior art document submitted as a printed publication is offered simply as evidence of what it describes, not for proving the truth of the matters addressed in the document, and thus is not hearsay.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that all challenged claims 1-20 of the ’874 patent are unpatentable. The Board also denied Patent Owner’s Motion to Exclude with respect to one exhibit and dismissed the Motion with respect to all other exhibits identified in the Motion. The ’874 patent relates generally to “a heat dissipating and heat shielding system for an electronic device.”

The Board began with claim construction, noting that Petitioner did not assert any specific claim construction, but Patent Owner submitted five phrases for construction. The Board construed each of the five proposed phrases to avoid any ambiguity in their meaning.

The first term “thermal dissipation” was found in the preamble. Patent Owner argued that the term should be construed as “the removal of heat from an electronic component by distributing the component’s heat over an increased area and/or volume and ultimately removing the heat by convection in to the surrounding environment, such as the air.” However, the Board determined that such an interpretation brings in extraneous factors, because “thermal dissipation” is not limited to electronic components, distributing heat over an increased area and/or volume, or removing heat by convection into the surrounding environment. Accordingly, the Board construed the term as “spreading heat from a heat source.”

The second term “thermal shielding” was also in the preamble, and the Board had adopted a construction for the term in its Decision to Institute. However, Patent Owner argued that the construction was incomplete, and proposed that thermal shielding “is protection of a portion of the device other than the heat source itself from heat generated by a heat source.” The Board determined that such a definition incorporated too much of the Specification. Instead, the Board relied on a dictionary definition for guidance in construing the term as “a structure that protects against heat.” The Board disagreed with Patent Owner’s proposed constructions of each of the other three terms for similar reasons.

The Board then went on to analyze Petitioner’s assertion that claims 1, 4, 5, 10, 11, 14, 15, and 20 would have been obvious under 35 U.S.C. § 103 in view of Norley, Tzeng ’520, and Mercuri, and ended up agreeing with Petitioner. Petitioner argued that “based on the disclosures of the cited references, it would have been obvious to a person of ordinary skill in the relevant technology to make design choices to use the known anisotropic properties of CPEG, disclosed in Norley, to channel heat in a preferred direction to manage heat generated by electronic components, as suggested by Tzeng ’520, and to provide effective thermal shielding, as suggested by either Norley or Mercuri.” In contrast, Patent Owner argued that “Noley “in no way relates to thermal sheilds’; that Mercuri only ‘utilizes a CPEG sheet as a heat dissipater’; that Tzeng ’520 ‘provides no motivation to use a CPEG sheet as a thermal shield’; and that Shane ‘fails to remedy the deficiencies of the references.’” Specifically, Patent Owner argued that a thermal dissipater and thermal shield are essentially opposites of one another. Petitioner counters that “because CPEG is highly anisotropic, it acts as both a heat dissipater and a heat shield.” The Board agreed with Petitioner on this issue as well as the other obviousness grounds.

Patent Owner further asserted objective indicia, including industry praise, commercial success, failure of others, and copying. The Board found that Patent Owner had failed to establish a nexus between the objective indicia and the claimed subject matter.

Additionally, the Board assessed Patent Owner’s Motion to Exclude certain exhibits for failure to satisfy the requirements for relevance, authentication, and/or hearsay. The Board dismissed the motion with respect to all exhibits except one, because the Board only relied on that one in its substantive analysis of the merits of the proceeding. The one remaining exhibit was an Affidavit from Christopher Butler stating that Exhibit A (web page from Kapton Website) attached to the Affidavit is a true and correct copy of a printout of the Internet Archive’s records for the Exhibit A document. Patent Owner argued that the exhibit is not relevant because it does not related to CPEG, is not authenticated by a “Laird declarant [who] has personal knowledge of the actual and complete content of the Kapton Website.”; and is hearsay because the author of the content “did not make [the statements] while testifying in this IPR” and because it is “offered by Laird to prove the truth of the assertions in the statements.”

The Board when through each allegation separately. For relevance, the Board explained that “[i]n the context of obviousness, two criteria are helpful in determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In this case, the Board determined that an exhibit related to insulation films was relevant and the mere fact that the exhibit does not specifically relate to CPEG claims does not render it irrelevant. For authentication, the Board stated that the fact that “no [Petitioner] declarant has personal knowledge of the actual and complete content of the Kapton Website,” does not establish it lacks authentication. For hearsay, the Board agreed with Petitioner that documentary evidence is not hearsay if it is not offered to prove the truth of the matter asserted in the document, and that a prior art document submitted as a printed publication is offered simply as evidence of what it describes, not for proving the truth of the matters addressed in the document.

Laird Technologies, Inc. v. Graftech International Holdings, Inc., IPR2014-00024
Paper 46: Final Written Decision
Dated: March 25, 2015
Patent: 6,982,874 B2
Before: Brian J. McNamara, Barry L. Grossman, and J. John Lee
Written by: Grossman