AVX Corp 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 discloses 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. The capacitors are connected in parallel to provide effective wideband performance in an integrated, cost-effective structure.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 9-11 under 35 U.S.C. §102(b)

• 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, which discloses a multilayer ceramic capacitor, teaches every limitation of claims 9-11. Independent claim 9 requires a capacitor with a monolithic dielectric body, first and second external contacts, and at least three distinct internal capacitors (two high-frequency/low-value, one low-frequency/high-value) connected in parallel. Petitioner mapped these elements to Kuroda’s "sintered body 12," "external electrodes 15 and 16," and its distinct capacitor portions C1 (high capacitance, low frequency) and C2 (low capacitance, high frequency). Kuroda’s Fig. 6 shows a high-capacitance portion C1 positioned between two low-capacitance portions C2, all within a single body and connected in parallel, allegedly satisfying all limitations of claim 9. For dependent claim 10, Petitioner asserted that Kuroda’s internal electrode plates are substantially perpendicular to the external surfaces where contacts are formed. For dependent claim 11, Petitioner contended that Kuroda’s opposing external surfaces are substantially parallel to each other.

Ground 2: Obviousness of Claims 32-34 under 35 U.S.C. §103

• 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 the combination of Kuroda and Hiroyuki renders claims 32-34 obvious. Kuroda was asserted to disclose most limitations of independent claim 32, including a monolithic capacitor with a three-dimensional dielectric body, internal conductive plates forming a primary capacitance (mapped to Kuroda’s C1 portion), and a "floating" third conductive plate that is not connected to any external contact (mapped to Kuroda’s "non-connected internal electrode 18"). However, claim 32 also requires first and second external conductive plates positioned on an external surface of the body. Petitioner argued that while Kuroda’s corresponding electrodes (17a, 17b) are internal, Hiroyuki explicitly teaches forming similar co-planar electrodes on an external surface of a dielectric body. Therefore, a person of ordinary skill in the art (POSITA) would have found it obvious to modify Kuroda’s internal electrodes to be external, as taught by Hiroyuki. For dependent claims 33 and 34, Petitioner relied on Kuroda’s disclosure of multiple parallel plate layers to teach the claimed "additional conductive plates" and its overlapping plate structures to teach the "substantially coextensive" limitation.
  • Motivation to Combine: A POSITA would combine Kuroda and Hiroyuki to gain known advantages. Hiroyuki taught that placing electrodes on an external surface allows for easy post-manufacturing adjustment of capacitance (e.g., by laser trimming), improves manufacturing processes, simplifies the formation of terminal electrodes, and enhances device reliability by suppressing potential delamination.
  • Expectation of Success: Petitioner asserted a POSITA would have had a reasonable expectation of success because Hiroyuki demonstrated a fully functional capacitor using the external electrode configuration. Hiroyuki also described the manufacturing process for such external electrodes as "a very simple process," indicating the combination would have been straightforward and predictable.

4. Key Claim Construction Positions

• "Substantially Monolithic Dielectric Body" (relevant to claims 9, 32): Petitioner proposed this term be construed as "a sintered or fused dielectric structure that is not wholly homogeneous." This construction, based on the specification and the patent owner's statements during a related reexamination, was argued to be broad enough to encompass prior art structures like Kuroda's "sintered body," which includes embedded metal plates.
• "Second Parallel Surface" (Claim 11): Petitioner argued that because claim 11 recites "the second parallel surface" without a proper antecedent basis in the claims, it should be construed as referring to the "second external surface" recited in parent claim 9. This construction was crucial for Petitioner’s argument that Kuroda’s parallel external surfaces anticipated the claim.
• "Substantially Coextensive" (Claim 34): Petitioner proposed the construction "having a substantially similar spatial scope or boundaries sufficient to create a capacitance therebetween." Lacking a definition in the patent, this construction was based on the dictionary definition of "coextensive" and the functional requirement, inferred from the patent's figures, that the plates must overlap sufficiently to form a capacitor. This broad construction allowed Petitioner to argue that the overlapping plates in Kuroda met the limitation.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 9-11 and 32-34 of the ’829 patent as unpatentable.