Bloom Energy Petitions for Inter Partes Review of Two Plansee Fuel Cell Interconnect Patents.

The parties and the patents

The proceedings are Bloom Energy Corp. v. Plansee SE, IPR2027-00020 (U.S. Patent 8,802,328) and IPR2027-00021 (U.S. Patent 8,753,785). Bloom Energy Corp. is the petitioner and real party in interest. The petitions name Plansee SE as the patent owner. The '328 patent is titled Method of Producing a Shaped Part. The '785 patent is titled Shaped Part. The '328 patent issued from a continuation of the '785 patent's application, and both claim priority to a December 15, 2009 Austrian application. Both describe a shaped part, produced by pressing and sintering a powdered starting material, that is suited for use as an interconnector or end plate in a fuel cell stack.

What the claims cover

Claim 1 of the '328 patent claims a method of producing a shaped part: providing a pulverulent starting material containing at least 20% by weight chromium; filling it into a press mold shaped substantially to the final part, a disc-shaped or plate-shaped basic body with knob-shaped or ridge-shaped elevations and a surface contour between them; pressing the material substantially into that final shape; and then sintering it. In the final shape, each elevation's two inclined side flanks run from its end contour, via rounded corner portions, into curved portions with a radius R and R' that merge into the surface contour, with R and R' from 0.15 to 1 mm and a ratio of that radius to the elevation height h from 0.5 to 1. Claim 1 of the '785 patent claims the shaped part itself, produced by pressing and sintering a pulverulent starting material, with the same elevation geometry plus two further limits: the rounded corner portions have a radius r and r', and the tangent at the transition to the curved portions lies at an angle of inclination of 95 to 135 degrees to the surface contour. Claim 8 of the '785 patent adds that the part is configured as an interconnector or end plate of a fuel cell stack.

The grounds and the prior art

In IPR2027-00020, Bloom challenges all 11 claims of the '328 patent on three obviousness grounds under 35 U.S.C. 103: (1) Perry in combination with Ohtani-389 and Ohtani-490 against claims 1 to 8; (2) Perry with Ohtani-389, Ohtani-490, and Glatz against claims 1 to 11; and (3) Zobl with Ohtani-389 against claims 1 to 11. In IPR2027-00021, Bloom challenges all 12 claims of the '785 patent on parallel grounds: (1) Perry with Ohtani-389 and Ohtani-490 against claims 1 to 9; (2) Perry with Ohtani-389, Ohtani-490, and Glatz against claims 9 to 12; and (3) Zobl with Ohtani-389 against claims 1 to 12. Perry is a 2008 published application filed by Bloom employees, which the petitions say discloses an interconnect resembling the claimed one in major respects. Each petition is supported by a technical expert's declaration.

Related matters

Each petition lists no related Patent Office proceedings and says the challenged patent is the subject of an arbitration between Bloom and Plansee before the WIPO Arbitration and Mediation Center. According to a February 9, 2023 report and recommendation in the Texas case, Plansee SE and Global Tungsten and Powders Corp. began that arbitration on February 9, 2022, alleging, among other things, breach of a 2010 intellectual property agreement and patent infringement by Bloom and its third-party suppliers.

On April 3, 2022, Bloom sued Plansee SE and Global Tungsten and Powders Corp. in the Eastern District of Texas, Bloom Energy Corp. v. Plansee SE, No. 2:22-cv-00101-JRG. The complaint pleaded 14 counts over the '785 and '328 patents and a third Plansee patent, including correction of inventorship, invalidity for improper inventorship and derivation, unenforceability, non-infringement, and antitrust and RICO claims. On April 26, 2023, Judge Rodney Gilstrap adopted the magistrate judge's recommendation and stayed the case pending arbitration. Bloom filed a notice of voluntary dismissal on October 9, 2026, and the court entered an order dismissing the case on October 14, 2026, 12 days before the petitions were filed.

The petitions say that, as to each challenged patent, the suit sought correction of inventorship under 35 U.S.C. 256(b) and, in the alternative, conditional invalidity for improper inventorship and derivation under pre-AIA 35 U.S.C. 102(f), and that it was voluntarily dismissed without prejudice before any answer or counterclaim. They argue that those counts do not trigger the bar of 35 U.S.C. 315(a)(1), which bars institution if, before the petition is filed, the petitioner filed a civil action challenging the validity of a claim of the patent. The petitions acknowledge the Board's precedential decision in Cisco Systems, Inc. v. Chrimar Systems, Inc., IPR2018-01511, Paper 11 (Jan. 31, 2019), which denied institution under 315(a)(1) even though the petitioner had voluntarily dismissed its earlier civil action without prejudice, and argue that its reasoning relied on a Federal Circuit decision the Supreme Court later vacated in Thryv, Inc. v. Click-to-Call Technologies, LP (2020).

What to watch next

Under 37 CFR 42.107(b), Plansee may file a preliminary response within three months of the notice according each petition a filing date. Under the USPTO's interim Director discretionary process, any discretionary denial brief from Plansee is due within two months of that notice. Watch for the notices, those filings, and the institution decisions.