PRESIDIO COMPONENTS, INC. v. AVX CORP.

PRESIDIO COMPONENTS, INC. v. AVX CORP., Appeals Nos. 2019-2181 and 2019-2182 (Fed. Cir. September 23, 2020). Before O’Malley, Bryson, and Reyna. Appealed from PTAB.  (Nonobviousness)

Background:

Presidio owned a patent directed to capacitor structures with monolithic bodies containing several capacitors.  AVX filed a petition for IPR, arguing that the independent claim of the patent was unpatentable as obvious.  The claim limitation most at issue recited that at least one of two external surfaces along which conductors of the capacitor lie is “adapted to be positioned substantially parallel to a major surface of a circuit board.”

The PTAB did not specifically determine whether “adapted to be” in this context should be interpreted as “designed to be” or merely as “capable of being,” but it instead held that the claim would be unpatentable as obvious under either interpretation.  The PTAB thus ruled the claim at issue to be unpatentable over two references, Kuroda and Li, which the PTAB asserted disclosed the feature under either interpretation of “adapted to be.”  Presidio appealed.

Issue/Holding:

Was the PTAB’s finding of obviousness supported by substantial evidence? (continue reading)

Summary by:  James Potts

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