PTAB

IPR2018-00167

AVX Corp v. Presidio Components Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Integrated Broadband Ceramic Capacitor Array
  • Brief Description: The ’776 patent describes a monolithic capacitor structure integrating a lower-frequency, higher-value capacitor and a higher-frequency, lower-value capacitor within the same dielectric body. The two capacitors are connected in parallel to provide effective wideband performance in a single, cost-effective component.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kuroda - Claims 1-11, 13, and 14 are anticipated by Kuroda under 35 U.S.C. §102.

  • Prior Art Relied Upon: Kuroda (Japanese Unexamined Utility Model Application Publication No. H5-21429).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kuroda discloses every element of the challenged claims. Kuroda teaches a multilayer ceramic capacitor with a "substantially monolithic dielectric body" containing two distinct capacitor portions: a high-capacitance first portion (C1) for low-frequency bands and a low-capacitance second portion (C2) for high-frequency bands. These portions are formed by pluralities of internal conductive plates and are connected in parallel via external electrodes on the body's end faces. Petitioner asserted this structure directly maps to the limitations of independent claim 1 and that further details in Kuroda's figures and description anticipate the dependent claims, including those related to internal plate configurations and the creation of fringe-effect capacitance.

Ground 2: Obviousness over Kuroda and Li - Claims 1-5, 7-9, and 13 are obvious over Kuroda in view of Li.

  • Prior Art Relied Upon: Kuroda (Japanese Unexamined Utility Model Application Publication No. H5-21429) and Li (Application # 2002/0195700).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that to the extent Kuroda was found not to teach an external surface "adapted to be positioned substantially parallel to a major surface of a circuit board," this feature was expressly taught by Li. Li discloses mounting multilayer ceramic capacitors, similar to Kuroda's, vertically such that the external surfaces with terminals are parallel to the circuit board.
    • Motivation to Combine: A POSITA would combine Kuroda and Li to modify the capacitor's footprint on the circuit board, allowing for higher component density, and to reduce inductance by orienting the internal electrode plates perpendicular to the circuit board, thereby improving performance and response time.
    • Expectation of Success: Petitioner argued there was a high expectation of success, as Li explicitly teaches that this mounting orientation for multilayer capacitors yields a fully functional device with several advantages.

Ground 3: Obviousness over Kuroda, Li, and Heron - Claims 6, 10, 11, and 14 are obvious over Kuroda and Li in view of Heron.

  • Prior Art Relied Upon: Kuroda (Japanese Unexamined Utility Model Application Publication No. H5-21429), Li (Application # 2002/0195700), and Heron (Patent 4,931,901).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground builds on the combination of Kuroda and Li and adds Heron to address claims requiring specific fringe-effect capacitance features. Kuroda's embodiment (Fig. 5) shows co-planar electrodes that inherently create some fringe capacitance. Heron was cited for its express teaching that co-planar electrodes can be intentionally spaced to create a desirable and controllable fringe-effect capacitance.
    • Motivation to Combine: A POSITA would be motivated to apply Heron’s teachings to the Kuroda capacitor to achieve a precise, small, and stable capacitance. This is particularly useful for enhancing high-frequency performance in hybrid circuits and creating capacitors with very close tolerances for specific bandwidth applications, which was a well-known design goal.
    • Expectation of Success: Success was predictable because Heron demonstrates a predictably performing device. Petitioner also noted that the Patent Owner had previously acknowledged in a related reexamination that creating fringe-effect capacitance with co-planar electrodes was well-known in the art.

  • Additional Grounds: Petitioner asserted that claim 12 is obvious over Kuroda in combination with Hiroyuki and Herbert, and also over a combination of Kuroda, Li, Hiroyuki, Heron, and Herbert. These grounds relied on similar arguments, using Hiroyuki to teach placing co-planar electrodes on an external surface for easier capacitance adjustment and Herbert for its explicit disclosure of fringe-effect fields between co-planar electrodes on a dielectric surface.

4. Key Claim Construction Positions

  • "substantially monolithic dielectric body" (Claim 1): Petitioner argued for the construction "a sintered or fused dielectric structure that is not wholly homogeneous." This construction was based on the patent's specification and, critically, on the Patent Owner's own prior statements during an ex parte reexamination of the grandparent ’356 patent, distinguishing it from mechanically stacked capacitors.
  • "major surfaces" (Claims 2, 3, 8): Petitioner proposed that "major surface" should be construed as a "significant surface." For the claimed cuboid-shaped capacitor, this would include any of the top, bottom, side, front, or back surfaces that are not the primary external surfaces used for mounting.
  • "located sufficiently close ... to form a ... fringe-effect capacitance" (Claims 6, 10-12, 14): Petitioner argued for the construction "located in such proximity that a fringe-effect capacitance, regardless of magnitude, is generated." This position was asserted to counter any potential argument that a "determinable" or specific magnitude of capacitance is required, pointing to Examiner findings in the grandparent patent's reexamination that the claims only require the presence of such capacitance, not a specific value or effect.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-14 of the ’776 patent as unpatentable.