from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00636.
Ellsworth Quillin, Foley & Lardner LLP, Washington, DC,
argued for appellant. Also represented by Ruben Jose
Rodrigues, Boston, MA; Michael Robert Houston, Richard
Spencer Montei, Chicago, IL.
Gregory F. Ahrens, Wood, Herron & Evans, LLP, Cincinnati,
OH, argued for appellee. Also represented by Brett A. Schatz.
Newman, O'Malley, and Taranto, Circuit Judges.
Taranto, Circuit Judge.
Components, Inc., which manufactures and sells a variety of
ceramic capacitors, owns U.S. Patent No. 6, 661, 639, which
describes and claims single-layer ceramic capacitors with
certain features. Competitor AVX Corporation manufactures and
sells a variety of electronic components, including
capacitors. AVX petitioned the Patent and Trademark Office
(PTO) for an inter partes review (IPR), under 35 U.S.C.
§§ 311-319, of all 21 claims of the ʼ639
patent, asserting several grounds for unpatentability based
on obviousness under 35 U.S.C. § 103. The Patent Trial
and Appeal Board, acting pursuant to delegated authority,
see 37 C.F.R. §§ 42.4, 42.108, instituted
a review of all claims under 35 U.S.C. § 314. In August
2017, the Board issued a final written decision under 35
U.S.C. § 318. Although it held claims 13-16 and 18
unpatentable, the Board held that AVX had failed to establish
unpatent-ability of all other claims, i.e., claims
1-12, 17, and 19-21 (the "upheld claims").
does not appeal the Board's decision as to the
unpatentable claims, but AVX appeals the Board's decision
as to the upheld claims. Presidio responds to AVX on the
merits but also argues that AVX, though it has a statutory
right to appeal, see 35 U.S.C. §§ 141,
319, lacks the standing required by Article III of the
Constitution to appeal the Board's decision. Because we
conclude that AVX lacks standing, we dismiss the appeal and
do not reach the merits of the Board's ruling on the
specification of the ʼ639 patent describes the relevant
features of the claimed capacitors. Each capacitor has a
dielectric layer sandwiched between two "end
blocks," which are made from "composite
material" that is either conductive or covered by a
conductive coating. ʼ639 patent, col. 3, lines 9-23. In
some embodiments described in the specification, and in all
claims in dispute on appeal, each capacitor has a
"buried metallization" in the dielectric layer,
which is connected to the end blocks by at least one
conductive, metal-filled "via." Id., col.
7, lines 46-60. The buried metallization varies the
capacitance of the device. Id., col. 7, lines 60-61.
The dielectric and composite-material layers are laminated
together, cut into chips, and sintered to produce monolithic
capacitors that are structurally sound. Id., col. 3,
lines 2-9. The capacitors are cheap and easy to produce, and
the thin dielectric layers give them high capacitances.
is illustrative for present purposes:
1. A capacitor comprising:
an essentially monolithic structure comprising at least one
composite portion sintered with a ceramic dielectric portion,
a buried metallization in the dielectric portion and at least
one conductive metal-filled via extending from the buried
metallization to the composite portion,
wherein the composite portion includes a ceramic and a
conductive metal, the capacitor further characterized by a
feature selected from the group consisting of:
(a)the composite portion comprises the conductive metal in an
amount sufficient to render the composite portion conductive,
wherein the composite portion provides an electrical lead for
attaching the capacitor to a metallic surface trace on a
printed circuit board; and
(b) a metallization area partially between the composite
portion and the ceramic dielectric portion, and a conductive
metal coating on faces of the composite portion not sintered
to the ceramic dielectric portion, whereby the conductive
metal coating provides an electrical lead for attaching ...