AVX Corp v. Greatbatch Inc

1. Case Identification

• Case #: IPR2014-01361
• Patent #: 6,687,117
• Filed: August 21, 2014
• Petitioner(s): AVX Corporation
• Patent Owner(s): Greatbatch, Ltd.
• Challenged Claims: 1-43

2. Patent Overview

• Title: Electrolyte for Capacitors
• Brief Description: The ’117 patent relates to an electrolyte for high-voltage wet tantalum or aluminum capacitors. The disclosed technology centers on an electrolyte composition containing water, an organic acid, and an ammonium salt of that organic acid.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Shah - Claims 1-3, 5, 7-10, 12-13, 18, 21-22, 24-25, 28-31, 33, 35, 37-38, and 40-41 are anticipated by, or in the alternative obvious over, Shah.

• Prior Art Relied Upon: Shah (EP0989572 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Shah expressly disclosed every limitation of the challenged claims. Independent claim 1 requires an electrolyte consisting essentially of water, an organic acid, and an ammonium salt of the organic acid. Petitioner asserted that Shah’s Example 1 described an electrolyte containing water (49.41%), acetic acid (an organic acid, 15.28%), and ammonium acetate (an ammonium salt of the organic acid, 15.55%). For independent claim 8, which adds an organic solvent, Shah’s example included ethylene glycol. For independent claim 18, directed to a capacitor, Shah taught using this electrolyte with a tantalum anode and a ruthenium-oxide cathode. For independent claim 33, a method of providing the electrolyte, Shah’s description of forming the electrolyte met all recited steps. Petitioner mapped the specific weight percentages, chemical formulas, and solvent types recited in the dependent claims directly to disclosures in Shah.

Ground 2: Obviousness over Shah in view of Clark - Claims 4, 6, 16-17, 19-20, 34, and 36 are obvious over Shah in view of Clark.

• Prior Art Relied Upon: Shah (EP0989572 A2) and Clark (Patent 2,089,687).
• Core Argument for this Ground:
  • Prior Art Mapping: Shah provided the foundational electrolyte composition. The challenged dependent claims required specific organic acids (e.g., isobutyric, propionic, valeric acid) and their corresponding ammonium salts, which were not explicitly listed in Shah. Petitioner argued Clark taught electrolytes containing an ammonium salt and a water-soluble aliphatic acid, and expressly stated that acids like "butyric acid may be substituted for acetic acid."
  • Motivation to Combine: A POSITA would combine these references because Clark explicitly taught that acids like propionic and butyric acid were known equivalents for the acetic acid used in Shah’s ammonium salt electrolyte. The modification would be a simple substitution of one known element for another to obtain predictable results.
  • Expectation of Success: A POSITA would have an expectation of success because Clark taught that these substitute acids function in the same manner within the same type of electrolyte system disclosed by Shah.

Ground 3: Obviousness over Shah in view of Shiono - Claims 11, 14-15, 23, 26-27, 39, and 42-43 are obvious over Shah in view of Shiono.

• Prior Art Relied Upon: Shah (EP0989572 A2) and Shiono (Patent 5,870,275).
• Core Argument for this Ground:
  • Prior Art Mapping: Shah again provided the base electrolyte. The challenged dependent claims specified types of organic solvents not explicitly named in Shah, such as specific glycol ethers (claim 11), nitriles (claim 14), and carbonates (claim 15). Petitioner argued Shiono disclosed an electrolyte for a capacitor that listed these exact types of solvents—including ethylene glycol monomethyl ether, acetonitrile, and propylene carbonate—as suitable for use.
  • Motivation to Combine: A POSITA would combine the references because Shiono demonstrated that the claimed solvent types were well-known substitutes for the solvents disclosed in Shah (e.g., ethylene glycol, formamide). The combination represented a mere substitution of one known, functionally equivalent component for another.
  • Expectation of Success: A POSITA would expect success because Shiono taught using these solvents for the same purpose (as an organic solvent in an electrolytic capacitor) as the solvents in Shah, indicating they would perform predictably in Shah’s system.

Ground 4: Obviousness over Shah in view of Fresia, Komatsu, or Liu - Claim 32 is obvious over Shah in view of Fresia, Komatsu, WO ’338, or Liu.

• Prior Art Relied Upon: Shah (EP0989572 A2), Fresia (Patent 4,476,517), Komatsu (Patent 6,285,543), WO ’338, and Liu (Patent 5,507,966).

• Core Argument for this Ground:

  • Prior Art Mapping: Shah taught all elements of claim 18, from which claim 32 depends, except for the addition of a specific nitroaromatic compound. Petitioner argued that Fresia, Komatsu, and the other references taught adding such compounds to similar ammonium salt-based electrolytes. For example, Fresia taught adding p-nitrobenzoic acid (4-nitrobenzoic acid) to an electrolyte to prevent gassing and raise the formation voltage.
  • Motivation to Combine: A POSITA would combine the teachings because Fresia and Komatsu explicitly taught that adding a nitroaromatic compound was a known technique to improve the performance of an electrolyte like that in Shah. A POSITA would be motivated to incorporate this known performance-enhancing agent into Shah’s capacitor system to achieve the same benefits.
  • Expectation of Success: The expectation of success was high, as the secondary references demonstrated the known utility and predictable effect of adding nitroaromatic compounds to the very type of electrolyte system disclosed by Shah.

• Additional Grounds: Petitioner asserted that claims 1-2, 5, 7-10, 12, 18, 21-22, 24, 28-29, 31, 33, 35, 37-38, and 40 were also anticipated or rendered obvious by Jenny (Patent 2,749,487), which disclosed a tantalum capacitor with an electrolyte containing water, formic acid, ammonium hydroxide (forming an ammonium salt in situ), and ethylene glycol.

4. Key Claim Construction Positions

• Preamble Terms ("For a Capacitor," etc.): Petitioner argued that preamble phrases in claims 1 and 8 stating an intended use (e.g., "For an Electrochemical Energy Storage Device") were not limitations on the claims, as the claim body recited a complete invention.
• "Consisting Essentially Of": Petitioner asserted this phrase should be construed to cover the specified components (water, organic acid, ammonium salt) and any other components that do not materially affect the basic and novel characteristics of the electrolyte, noting the specification allows for components like an organic solvent or phosphoric acid.
• "Ammonium Salt of the Organic Acid": Petitioner proposed this term encompasses any ammonium salt, including those formed in situ by adding ammonium hydroxide to the organic acid, consistent with the patent’s specification.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date of Claim 32: Petitioner contended that claim 32, which recites a nitroaromatic compound, was not entitled to the priority date of the provisional application. Petitioner argued the provisional application failed to provide written description support under 35 U.S.C. §112 for any nitroaromatic compound. Therefore, the effective filing date for claim 32 was the actual filing date of the non-provisional application (January 30, 2003), making Komatsu (published September 4, 2001) available as prior art.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-43 of the ’117 patent as unpatentable.