AVX Corporation v. Presidio Components, Inc.

1. Case Identification

• Case #: IPR2018-00292
• Patent #: 7,307,829
• Filed: January 10, 2018
• Petitioner(s): AVX Corporation
• Patent Owner(s): Presidio Components, Inc.
• Challenged Claims: 9-11, 32-34

2. Patent Overview

• Title: Integrated Broadband Ceramic Capacitor Array
• Brief Description: The ’829 patent describes a monolithic capacitor structure that integrates a lower-frequency, higher-value capacitor with one or more higher-frequency, lower-value capacitors within a single dielectric body. These distinct capacitor sections are connected in parallel to provide effective wideband performance in a single, integrated component.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kuroda - Claims 9-11 are unpatentable under 35 U.S.C. §102(b) over Kuroda.

• 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 independent claim 9 and its dependent claims 10-11. Kuroda describes a multilayer ceramic capacitor with a "sintered body" (the claimed "substantially monolithic dielectric body") containing both a "high capacitance first capacitor portion C1" (the claimed "lower frequency, higher value third capacitor") and multiple "low capacitance second capacitor portions C2" (the claimed "higher frequency, lower value" first and second capacitors). Petitioner asserted that Kuroda's structure includes these capacitors arranged within the body, connected in parallel to external electrodes, and positioned near opposite ends, directly mapping to the limitations of claim 9. For claim 10, Petitioner contended that Kuroda's figures show the internal electrode plates are substantially perpendicular to the external surfaces where contacts are formed. For claim 11, Petitioner asserted that the external surfaces of Kuroda's device are inherently parallel.

Ground 2: Obviousness over Kuroda and Hiroyuki - Claims 32-34 are obvious over Kuroda in view of Hiroyuki.

• Prior Art Relied Upon: Kuroda (Japanese Unexamined Utility Model Application Publication No. H5-21429) and Hiroyuki (Japanese Unexamined Utility Model Application Publication No. H10-214751).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kuroda teaches most elements of independent claim 32, including a monolithic capacitor with a three-dimensional dielectric body, internal conductive plates forming a primary capacitor, and a floating internal plate creating a secondary capacitance. However, claim 32 also recites first and second external conductive plates positioned on an external surface of the body. While Kuroda discloses co-planar electrodes (17a, 17b) that are internal, Hiroyuki explicitly teaches placing similar co-planar electrodes on an external surface of a dielectric body (laminate 1) to form a capacitor. Petitioner contended the combination of Kuroda's overall architecture with Hiroyuki's external electrode placement renders the claims obvious. Dependent claim 33 (additional internal plates) was argued to be an obvious design choice disclosed by Kuroda's alternative embodiments. Dependent claim 34 (coextensive plates) was argued to be met by the substantial overlap of plates shown in Kuroda, which would be an obvious parameter to adjust for a desired capacitance.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kuroda and Hiroyuki to gain the advantages taught by Hiroyuki. Specifically, placing the co-planar electrodes on an external surface, as taught by Hiroyuki, allows for easy post-manufacturing adjustment of their capacitance (e.g., via laser trimming). This provides greater manufacturing flexibility, easier optical recognition for assembly, and improved device reliability compared to Kuroda's internal-only structure.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Hiroyuki itself demonstrates a fully functional capacitor with external co-planar electrodes and describes its manufacture as a "very simple process," confirming the feasibility of the modification.

4. Key Claim Construction Positions

• "substantially monolithic dielectric body" (Claim 1, relevant to claims 9 and 32): Petitioner proposed this term be construed as "a sintered or fused dielectric structure that is not wholly homogeneous." This construction was based on statements made by the Patent Owner during the reexamination of a grandparent patent, where it distinguished the term from simple mechanical stacking and acknowledged that the inclusion of metal plates or process-related voids makes the body not "wholly homogeneous." This construction allows Kuroda's "sintered body 12" to meet the claim limitation.
• "second parallel surface" (Claim 11): Petitioner argued that the term "second parallel surface" is an antecedent basis error, as no such surface is previously recited. Petitioner contended it should be construed as the "second external surface" recited in independent claim 9, as the patent's figures consistently show the first and second external surfaces as being parallel.
• "substantially coextensive" (Claim 34): Petitioner proposed this term be construed as "having a substantially similar spatial scope or boundaries sufficient to create a capacitance therebetween." Lacking a definition in the specification, this construction was based on the dictionary definition of "coextensive" and the functional requirement in the patent that the overlapping plates must be sufficient to form a capacitor. This broad construction is necessary to argue that the overlapping plates in Kuroda satisfy the limitation.