PTAB

IPR2018-00167

AVX Corporation v. Presidio Components, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Integrated Broadband Ceramic Capacitor Array
  • Brief Description: The ’776 patent is directed to a monolithic capacitor structure that integrates a lower frequency, higher value capacitor and a higher frequency, lower value capacitor within a single sintered dielectric body. This configuration purports to provide effective wideband performance in an integrated, cost-effective structure.

3. Grounds for Unpatentability

Ground 1: Anticipation by 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 asserted that Kuroda discloses every limitation of the challenged claims. Independent claim 1’s requirements for a monolithic body with two integrated capacitors are allegedly met by Kuroda’s disclosure of a multilayer capacitor having a “high capacitance first capacitor portion C1” and a “low capacitance second capacitor portion C2” within a single “sintered body 12.” Petitioner mapped Kuroda's internal electrodes, external electrodes, and dielectric body to the corresponding elements of claim 1. The various dependent claims were also argued to be fully disclosed, including limitations related to floating plates and 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 No. H5-21429) and Li (Application # 2002/0195700).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground asserted that to the extent Kuroda fails to teach the limitation of "the first external surface adapted to be positioned substantially parallel to a major surface of a circuit board," Li expressly teaches this feature. Li discloses mounting multilayer capacitors with their external termination surfaces parallel to a circuit board.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Kuroda with Li's mounting orientation to reduce the capacitor's footprint on the circuit board, allowing for denser component placement. This orientation also arranges the internal electrode plates perpendicular to the circuit board, which was known to reduce inductance and thereby improve the capacitor's high-frequency performance and response time.
    • Expectation of Success (for §103 grounds): Li explicitly teaches that this mounting configuration results in a fully functional capacitor with several advantages, providing a POSITA with a strong expectation of success.

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 No. H5-21429), Li (Application # 2002/0195700), and Heron (Patent 4,931,901).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Kuroda and Li by adding Heron to explicitly teach creating a desirable fringe-effect capacitance between coplanar electrodes. While Petitioner argued Kuroda inherently discloses this, Heron was added to show it was a known design choice. Heron teaches that the fringe capacitance between coplanar electrodes can be selectively varied by changing the gap between them to create capacitors with precise, close-tolerance values.
    • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to modify the coplanar electrodes in the Kuroda/Li combination according to Heron’s teachings to achieve a precise, desired amount of fringe-effect capacitance. This was a known technique for enhancing high-frequency performance and creating capacitors suitable for specific bandwidth-sensitive applications.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because Heron itself demonstrates a predictably performing device. Furthermore, Petitioner noted that the Patent Owner had previously acknowledged in a related case that creating fringe-effect capacitance with coplanar electrodes was a well-known technique.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Hiroyuki (Japanese Unexamined Utility Model Application No. H10-214751) and Herbert (a 1985 article from Ceramic Bulletin). These grounds primarily argued for modifying Kuroda to place coplanar electrodes on an external surface to enable post-assembly capacitance adjustment via laser trimming (per Hiroyuki) and to create an advantageous fringe-effect capacitance (per Herbert).

4. Key Claim Construction Positions

  • "Substantially monolithic dielectric body": Petitioner argued this term should be construed as "a sintered or fused dielectric structure that is not wholly homogeneous." This construction, based on the patent and the Patent Owner's prior statements during reexamination of a grandparent patent, was used to distinguish the claimed invention from mechanically stacked capacitors while encompassing a single body with embedded, fused conductive plates.
  • "Major Surfaces": Petitioner proposed construing this term as a "significant surface" based on its plain and ordinary meaning and the cuboid shapes depicted in the patent. This construction was key to arguing that the prior art met limitations requiring perpendicular orientation between "major surfaces" and external surfaces, as any of the top, bottom, front, or side faces of the prior art's cuboid capacitor could be considered a "major surface."
  • "Located Sufficiently Close ... to Form a ... Fringe-Effect Capacitance": Petitioner argued that under the broadest reasonable interpretation (BRI) standard applicable in inter partes reviews, this phrase requires only that a fringe-effect capacitance is generated, regardless of its magnitude or determinability. This was positioned against a more limiting construction from a district court case involving a grandparent patent, with Petitioner arguing the patent’s text does not support such a limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • Inherent Nature of Fringe-Effect Capacitance: A central technical contention was that fringe-effect capacitance is an inherent physical phenomenon that is "always present" between the ends of any coplanar or adjacent conductors. Supported by expert testimony and an admission from one of the named inventors, this argument was used to assert that prior art references like Kuroda necessarily met fringe-effect limitations even if the references did not explicitly use that term or describe the effect, as the depicted physical structures would inevitably produce it.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-14 of Patent 7,075,776 as unpatentable.