Takeaway:  Objective indicia “must be tied to the novel elements of the claim at issue” and must “be reasonably commensurate with the scope of the claims.”

In its Final Written Decision, the Board found that claims 7-11 of the ‘586 patent were demonstrated by a preponderance of the evidence to be unpatentable. Also, the Board granted-in-part, denied-in-part, and dismissed-in-part as moot, Petitioner’s Motion to Exclude. Patent Owner’s Motion to Exclude was denied, as well.

Petitioner had requested inter partes review of all twelve claims of the ‘586 patent. The Board only instituted trial as to claims 7-11 based on an obviousness ground under 35 § 103(a)in view of Tsukamoto, Lundquist, and Tojo. The ‘586 patent relates to “ an improved electrode separator for a high-energy rechargeable lithium battery.”

Petitioner had alleged that Tsukamoto and Lundquist, in combination, taught each of the limitations recited in claim 7 except with the possible exception of the use of the recited polyolefinic microporous layer in the separator of Tsukamoto. As for this limitation, Petitioner asserted that “[Tojo] provides the necessary teaching and motivation to use its polyolefinic microporous layer in the separator of [Tsukamoto], in view of [Lundquist.]” Patent Owner, in response, contended that Petitioner had not shown motivation to combine these references, and that “the supporting testimony of Petitioner’s expert witness, Dr. Arnold, is conclusory and unfounded.” The Board ended up agreeing with Petitioner as to each of these points.

As for secondary considerations, the Board concluded that “Patent Owner does not discuss with any specificity the information or arguments presented in the two declarations by Dr. White, the accompanying claim charts, or the accompanying declaration by Mr. Ramadass.” This led the Board to agree with Petitioner “Patent Owner’s Response improperly incorporates by reference the arguments and claims analysis from both of Dr. White’s declarations, as well as the declaration by Mr. Ramadass.” The Board also was persuaded that “the evidence of secondary considerations is not entitled to substantial weight, because Patent Owner has not established a sufficient nexus between the merits of the claimed subject matter and that evidence[,]” and that “the evidence of secondary considerations is not reasonably commensurate in scope with the claimed subject matter.”

Petitioner had sought to exclude certain testimony of Dr. White as being the result of “improper coaching.” The Board denied this request, finding that this issue goes to “[Dr. White’s] credibility and to the ultimate weight to be accorded to the disputed testimony.” Petitioner likewise sought to exclude certain exhibits “as irrelevant under FRE 401 and 402 because Patent Owner did not rely on these documents with any particularity[.,]” The Board agreed with this position, and thus excluded these exhibits, because Patent Owner had not explained where it had cited such exhibits. Petitioner had also attempted to have the declaration of Mr. Ramadass excluded (because, for example, Mr. Ramadass did not agree to appear at a deposition), but because the disputed testimony in the Ramadass Declaration only related to claims not addressed in the Board’s Decision, the Board dismissed the motion to exclude the Ramadass Declaration as moot. Patent Owner’s motion to exclude the testimony of Dr. Arnold was denied because, for example, the Board was not persuaded that Dr. Arnold fails to qualify as an expert in the relevant art.

SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00680
Paper 57: Final Written Decision
Dated: September 25, 2015
Patent: 6,432,586 B1
Before: Francisco C. Prats, Donna M. Praiss, and Christopher L. Crumbley
Written by: Prats
Related Proceedings: IPR2014-00679; IPR2014-00524; IPR2014-00692; IPR2013-00637; IPR2015-01511; Celgard, LLC v. SK Innovation Co., Ltd., Case No. 3:13-cv-00254 (W.D.N.C.); Celgard, LLC v. LG Chem, Ltd., Case No. 3:13-cv-00043 (W.D.N.C.); and Celgard, LLC v. Sumitomo Chemical Co., Ltd., Case No. 3:13-cv-00122 (W.D.N.C.)