Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 1 of 84
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 1 of 84
`
`EXHIBIT 9
`EXHIBIT 9
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 1 of 84
`
`EXHIBIT 9
`EXHIBIT 9
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 2 of 84
`
`1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DEMARAY LLC,
`PLAINTIFF,
`
`
`)(
`CIVIL ACTION NO.
`)(
`6:20-CV-634-ADA
`)(
`WACO, TEXAS
`)(
`VS.
`)(
`AUGUST 17, 2021
`)(
`INTEL CORPORATION,
`10:01 A.M.
`)(
`DEFENDANT.
`___________________________________________________________
`DEMARAY LLC,
`)(
`
`PLAINTIFF,
`)(
`CIVIL ACTION NO.
`)(
`6:20-CV-636-ADA
`)(
`WACO, TEXAS
`)(
`)(
`AUGUST 17, 2021
`)(
`10:01 A.M.
`
`VS.
`INTEL CORPORATION,
`DEFENDANT.
`
`
`CLAIM CONSTRUCTION HEARING
`BEFORE THE HONORABLE JUDGE ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
`
`FOR THE PLAINTIFF: Mr. Benjamin W. Hattenbach
`Mr. C. Maclain Wells
`Irell & Manella LLP
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067
`Ms. Shelly Holmes, CSR, TCRR
`Certified Shorthand Reporter
`2593 Myrtle Road
`Diana, TX 75640
`(903) 720-6009
`shellyholmes@hotmail.com
`
`COURT REPORTER:
`
`(Proceedings recorded by mechanical stenography, transcript
`produced on a CAT system.)
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 3 of 84
`
`2
`
`FOR THE PLAINTIFF: Mr. Rick Milvenan
`McGinnis Lochridge, LLP
`1111 W. 6th Street
`Suite 400
`Austin, TX 78703
`
`
`
`FOR INTEL:
`
`Mr. Yar R. Chaikovsky
`Mr. Philip Ou
`Mr. Joseph J. Rumpler, II
`Paul Hastings, LLP
`1117 South California Avenue
`Palo Alto, CA 94304
`Ms. Claire M. Specht
`WilmerHale
`60 State Street
`Boston, MA 02109
`Mr. J. Stephen Ravel
`Kelly Hart & Hallman, LLP
`303 Colorado Street
`Suite 2000
`Austin, TX 78701
`
`FOR THE SAMSUNG:
`
`Mr. Brian C. Nash
`Mr. Austin M. Schnell
`Pillsbury Winthrop Shaw Pittman, LLP
`401 Congress Avenue
`Suite 1700
`Austin, TX 78701-3797
`Mr. Cosmin Maier
`Mr. Sam Ha
`Desmarais, LLP
`230 Park Avenue
`26th Floor
`New York, NY 10169
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 4 of 84
`
`3
`
`THE COURT: Good morning, everyone.
`If I could have -- Suzanne, if you could announce
`the case.
`COURTROOM DEPUTY: Sure.
`Markman Hearing in Civil Action W:20-CV-634,
`styled Demaray LLC versus Intel Corporation; and Case No.
`W:20-CV-636, styled Demaray LLC versus Samsung Electronics
`Company Limited and others.
`THE COURT: If I can have announcements from
`counsel, please.
`MR. MILVENAN: Good morning, Judge Albright. This
`is Rick Milvenan from McGinnis Lochridge on behalf of
`Plaintiff, Demaray LLC, joined by Maclain Wells and Ben
`Hattenbach from Irell and Manella.
`We have two client representatives with us today,
`Dr. Ernest Demaray, who is one of the named inventors on
`the patents at issue and also founder of Demaray LLC. He's
`joined by Brian Martucci, who is a -- with Principal
`Advisors and is a consultant to Demaray. Also joining us
`is Dr. Alex Glew, that's G-l-e-w, who submitted a
`declaration regarding claim construction in this matter.
`THE COURT: Welcome to you, welcome to them, and
`I'll tell you, Mr. Milvenan, you look like you're on the
`set of Star Wars. So it's a very impressive set. I'm sure
`Mr. Nash right now is jealous that you have such a neat
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 5 of 84
`
`4
`
`background, and he just has his office with one sad plant
`sitting behind him.
`MR. NASH: It is a very sad plant, Your Honor.
`Brian Nash with Pillsbury Winthrop Shaw Pittman here on
`behalf of the Samsung Defendants. I'm also joined with my
`colleague, Austin Schnell. He is one room over because he
`will be one of our speakers this morning on one of the
`terms. So he wanted to have his own individual camera for
`that purpose.
`There's also a number of other law firms. So I'm
`going to let each of them introduce themselves, as well as
`which clients they represent. But I wanted to announce
`that we have representatives from the Samsung Defendants in
`attendance today, as well, Your Honor. That would include
`names Jongsoo Lee, Jinsung Park, Beomjun Jin, Seungbum
`Chung, and Do hyung Kim.
`THE COURT: Well, they're certainly welcome. Are
`they in the United States or in Asia?
`MR. NASH: I think it -- they may be in various
`locations, Your Honor.
`THE COURT: Well, certainly for those -- welcome
`all, but I appreciate them being here for the folks that
`take -- make the effort to attend from Asia, a special
`welcome, and my appreciation for them with the time
`difference.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 6 of 84
`
`5
`
`MR. RAVEL: Your Honor, Steve Ravel for Intel.
`Our client representative today is John Edwards, first and
`foremost. We have lawyers from Paul Hastings and
`WilmerHale, as long -- as well as myself.
`Speakers today are going to be Yar Chaikovsky and
`Phil Ou from Paul Hastings. And a couple of people who
`will be making their Markman argument and Waco Division
`debut, Joe Rumpler from Paul Hastings and Claire Specht
`from WilmerHale will be first-timers today, and I expect a
`five-star Yelp rating from both of them.
`THE COURT: Okay. For both of them or from both
`of them? I used to be --
`MR. RAVEL: For both of them from you, Judge.
`THE COURT: So far I -- I've got nothing but --
`I'm told by everyone I ask, I've got nothing but five-star
`reviews. It's funny -- funny how that works.
`So my understanding is that the first claim
`term -- are there other lawyers who needed to introduce
`themselves, and if there are, let me know. Okay.
`MR. MAIER: Yes, Your Honor. This is --
`THE COURT: Yes, sir.
`MR. MAIER: -- Cosmin Maier of Desmarais, LLP, on
`behalf of the Samsung Defendants. And also with me is my
`colleague, Sam Ha. Thank you, Your Honor.
`THE COURT: Welcome. Anyone else?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 7 of 84
`
`6
`
`Okay. The first claim term, I believe, is
`"substrate." And I am happy to hear from -- I believe it's
`the Defendants that want to take this up. So I'll start
`with them.
`MR. CHAIKOVSKY: Yar Chaikovsky, Your Honor, on
`behalf of Defendants on substrate. In a moment, we'll get
`our slides together. Apologies for the slides not being
`up.
`
`After we pull the slides up, Your Honor, the issue
`we wanted to present -- and understanding we were -- where
`we accept the Court's preliminary claim construction of
`plain and ordinary meaning with also the words "substrate
`having a layer" being part of the construction.
`I had a question about the construction, if the
`Court could answer, as to whether that -- the "including
`but not limited to within the claim" was meant to be
`exemplary or if it was meant to also, you know, define that
`it must have that in addition to other things. That was
`unclear to us from the definition as we read it yesterday
`in the email.
`THE COURT: I'm sorry, it was -- it's exemplary.
`MR. CHAIKOVSKY: It's exemplary. Okay.
`All right. Thank you, Your Honor. Appreciate
`that support.
`We'll move on to our slides. And so what we
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 8 of 84
`
`7
`
`wanted to show here, Your Honor, is a concern with the
`exemplary nature of the slides is with the -- with Demaray
`propounded as -- what we viewed as an alternative for the
`plain and ordinary meaning for substrate, and -- and at
`least that's how we read Demaray's proposal.
`And we wanted to ensure that that proposal is
`not -- that's not the plain and ordinary meaning, and we'll
`go through here and show that that's not -- Demaray's
`proposal is not -- and their experts should not be allowed
`to argue that that is the plain and ordinary meaning of
`substrate.
`Let's go to the next slide.
`So fine tuning the -- the dispute here, Your
`Honor, we have -- can the plain and ordinary meaning
`include, you know, the substrate any material that provides
`a surface on which something is deposited or inscribed.
`And then when you provide that in Claim 1, which is the
`only claim in this patent that's asserted, that comes to an
`insulating substrate, be it any substrate -- any type of
`substrate, as long as one thin film is insulating. That's
`what their construction leads to.
`And so what we wanted to make sure is that the
`plain and ordinary meaning cannot be what the Plaintiffs
`say it potentially is and what they will have Dr. Glew
`argue.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 9 of 84
`
`8
`
`So Your Honor found that insulating substrate is
`limiting, and we believe it is so as it provides antecedent
`basis and used in the claim. I won't cover that unless I
`have to respond.
`But we see here how Demaray replaces -- despite
`there being two independent claims in the asserted patent,
`this is a method patent, Demaray here in its briefing
`states that the patent's teaching that the claimed methods
`can use any type of substrate.
`Well, that's not true. The asserted Claim 1
`requires an insulating substrate. As the Court found,
`that's a -- that's a limiting term.
`And the issue is, focusing on substrate, when you
`plug in Demaray's plain and ordinary meaning, that you see
`here that you get, hey, it's an insulating material with
`Demaray's construction, a material that provides a surface,
`understanding it also includes the Court's example, which
`includes but is not limited to a wafer coated with an
`insulator.
`And so you'd -- you'd see here, for example,
`there's a conducting metal substrate by itself. Well, that
`could be a substrate, that could be an example of a
`substrate. But where you get into problems, Your Honor,
`and why that argument of Demaray's -- and we want to make
`sure that that is not the plain and ordinary meaning of
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 10 of 84
`
`9
`
`substrate, no one would say what Demaray has propounded --
`is the plain and ordinary meaning of substrate -- is when
`you add films.
`And so here, we've added an insulating film onto a
`metal substrate. According to Demaray, this is necessarily
`an insulating substrate. It has a material that provides a
`surface on which something could be deposited or inscribed,
`and it'd be insulated. That's not necessarily the case.
`We've got what's called 3-inch thick conducting
`metal substrate. Just because I put a one-micron
`insulating film doesn't make it an insulating substrate.
`Moreover, I can put three more inches of conducting film on
`top of that one-micron layer of insulating film. That
`doesn't make it an insulating substrate, even if one was to
`look at the entirety of the structure.
`And their argument, of course, would be if I've
`got one micron or even smaller of insulating film, using
`that definition, a material that provides the surface on
`which something is deposited, here we've got a conducting
`film on that one-micron layer of insulating film, that that
`is somehow converted into an insulating substrate using
`their plain and ordinary meaning of substrate.
`That can't be correct. Looking at that structure,
`you'd know it's going to be a conducting structure.
`One-micron layer of insulating film is not going to change
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 11 of 84
`
`10
`
`its characteristic as the conductor.
`And, you know, this stems from why this is
`happening. As you can see in their brief, this is from
`Page 6 where they say, hey, the claimed methods can use any
`type of substrate. Again, as you said, Claim 1 asserted.
`Claim 2, that's not true.
`And then Dr. Glew, as you can see in his -- his
`declaration attached to their opening brief, he went back
`to Claim -- Paragraph 37, and he said, a silicon wafer is
`an insulating substrate. So they want to argue a
`semiconductor substrate is an insulating substrate, as you
`see in Paragraph 37.
`So we're going to have confusion, although some of
`that may be perhaps left for the jury. But the example I
`provided is -- is at least an issue that the conductor is
`not an insulating substrate, their definition can't be
`correct.
`And, Mr. Ou, if you can go back to I think it's
`Slide 2 or 3, you know, of this presentation.
`Sorry, apologies, Your Honor.
`Yeah, the next slide. Next slide.
`And so, you know, just to highlight this, Claim 1
`requires an insulating substrate. Claim 2, the other claim
`within this patent, requires any substrate. That's true.
`So what they say for Claim 2, that's any substrate. That's
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 12 of 84
`
`11
`
`not asserted. That claim has an insulating film on a
`substrate. In fact, the patent in Column 7 tells us that
`that substrate could be quarts, could be glass. It
`describes silicon substrates, glass substrates, metal
`substrates. But that's applicable to Claim 2 that claims
`any substrate a substrate. That's not Claim 1.
`So if we go back to Dr. Glew's declaration.
`We see they're going to try to argue a shoehorn,
`and they have to because the Claim 1 says insulating
`substrate, and they want to shoehorn a silicon wafer is an
`insulating substrate. We don't think that's right. When
`you look at the definition of semiconductor, it's got
`insulating properties, but it's also got conducting
`properties. It's not an insulating substrate by itself --
`THE COURT: Let -- let me stop you for a second.
`MR. CHAIKOVSKY: Yeah.
`THE COURT: I'm not sure what point you're trying
`to make. I provided a preliminary construction. And my
`take-away, I think from what you said, but maybe I got lost
`a little bit in it, is that you're okay with our
`preliminary construction, but you're worried that the
`Plaintiff's construction is wrong. Do I -- is that a fair
`summary of what you're saying?
`MR. CHAIKOVSKY: That -- that's correct. That's
`the part we're presenting right now, Your Honor.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 13 of 84
`
`12
`
`THE COURT: Okay. Well -- okay. So -- and so if
`the Plaintiff -- when the Plaintiff gives you their
`infringement contentions and then when they give you the
`expert report, I'll hear from the Plaintiff in a second if
`the Plaintiff thinks my construction is wrong. In fact,
`let me turn for a second.
`Let me -- let me ask Plaintiff's counsel if they
`agree with the preliminary construction that I proffered.
`It was -- my understanding was the Defendants wanted to
`argue this issue and not the Plaintiffs. So I took from
`that the Plaintiffs were okay with my preliminary
`construction.
`But let me just -- I need to just confirm whether
`or not the Plaintiff is okay with my construction.
`MR. MILVENAN: Well, Your Honor. This is Rick
`Milvenan.
`We're -- we're comfortable with the -- with the
`Court's construction. We're not comfortable with the
`spin --
`
`THE COURT: I'm about -- Mr. Milvenan, I'm about
`to get to that. I'm going to deal -- the spin.
`MR. MILVENAN: Okay.
`THE COURT: I just need to know -- I just need to
`know whether or not the Plaintiff accepts the Court's
`preliminary construction.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 14 of 84
`
`13
`
`MR. MILVENAN: Yes, Your Honor.
`THE COURT: Okay. Very good.
`Now, turning back to Defendant. Here's -- here's
`what we're going to do. I'm going to make -- because you
`agree with my construction, as well. I'm going to make it
`the final construction.
`If when you get the Plaintiff's final infringement
`contentions, or if you get their expert report, and you
`believe that what the Plaintiff's position is with regard
`to infringement, about whether or not your accused products
`have or don't have a substrate -- which by the way, I think
`is a word that's pretty well-known -- then it -- at that
`time, you can file a motion for summary judgment and say
`they're not -- that's not -- Judge, that's not the plain
`and ordinary meaning that you gave. That's wrong as a
`matter of law. And I'll deal with it then.
`I do not prophylactically tell parties what they
`can and can't do. I'm giving you the construction. I
`think the construction is -- frankly -- give me one second.
`The truth is, is ordinarily I would have probably
`just given plain and ordinary meaning by itself, but
`there's -- there's language in the spec that seems to
`combine wafer and insulator. I get that. But I'm going
`to -- I'm going to find the Court's preliminary
`construction is the final construction.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 15 of 84
`
`14
`
`And if you have problems with the Plaintiff's
`interpretation of what I say the plain and ordinary meaning
`is, once you get their infringement contentions or you get
`their -- their expert report -- now, I'll tell you in
`advance, it may very well be that I -- after I read what
`you say, I think there's a fact issue, and the jury will
`have to decide something.
`But by and large, if you think the Plaintiff is
`applying the wrong application of what my construction is,
`I will deal with that formally once the Plaintiff has made
`it in concrete, and I'll deal with that at the summary
`judgment stage.
`So give me one second here. Too many iPads. I
`apologize. I'm pulling up the next claim term. Give me
`one second.
`Next claim term I have is "providing pulsed DC
`power."
`And it's my understand -- understanding that the
`Defendants want to discuss the Court's preliminary
`construction. I'm happy to hear from you.
`MR. OU: Good morning, Your Honor. Good morning,
`Your Honor. Philip Ou from Paul Hastings for Defendants.
`THE COURT: Welcome back. Good to see you again.
`MR. OU: Thank you, Your Honor. Same to you.
`Your Honor, we wanted to -- Mr. Chaikovsky noted,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 16 of 84
`
`15
`
`you know, we received a tentative ruling from the Court
`yesterday, Your Honor. And we understand that while we
`believe that our proposed construction that we put forward
`in the briefing was the correct one, in the interest of
`attempting to fine tune the Court's preliminary
`construction and focus there on this hearing today,
`hopefully, you'll be able to see, Your Honor, that's what
`we've attempted to do here in this presentation, Your
`Honor.
`
`To briefly orient you, Your Honor, and the Court,
`I think we've seen this figure below many times in the
`prior hearings, but I don't think there's a dispute that
`these alleged inventions are a specific PBD configuration.
`And if Your Honor remembers from prior hearings, we've
`talked about those various pieces of hardware. There is a
`pulsed DC power supply, there is an RF bias power supply to
`the substrate, and then there is a filter, and that's a
`very specific type of filter, the narrow band rejection
`filter. And this term obviously is the pulsed DC power
`supply, which I'll be addressing.
`Your Honor, here we have the tentative
`construction from the Court. We understand Your Honor
`construed pulsed DC power to be direct current power that
`oscillates between positive and negative voltages.
`At least as we read this term, effectively, the
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 17 of 84
`
`16
`
`parties were really disputing what does it mean for it to
`be pulsed, or what is a pulsed DC power that's provided in
`the method claims, and then what's a pulsed DC power
`supply, which is in the reactor claims.
`And, Your Honor, understanding your construction,
`I think what we wanted to focus on in terms of fine tuning
`and getting clarity from the Court -- and we'll explain why
`this is the case -- but the phrase "oscillating between
`positive and negative voltages," we certainly recognize
`that at least as we understand it, those definitely include
`characteristics that you would find in the pulsed DC power
`supply as opposed to what we would say is a conventional or
`continuos DC power supply.
`I think we know that that's not the way that the
`Plaintiff is reading the term. And so in order to fine
`tune that proposed construction, Your Honor, we had
`proposed -- and you see below -- including in the
`construction "oscillates between predetermined positive and
`negative voltages."
`And what we'll see in the -- in the proposed
`construction, as well as the presentation, Your Honor, is
`that during prosecution, this phrase "oscillating between
`positive and negative voltages" was included to
`differentiate the claimed invention from other conventional
`DC power supplies that were already before the Patent
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 18 of 84
`
`17
`
`Office.
`
`And, effectively, what the Plaintiff is we believe
`attempting to do is reading out the term "pulsed" in its
`application of your construction. And so we're going to be
`seeking some clarification. That's the reason we have
`predetermined there, Your Honor. We have another variation
`on that that we'll get to a bit later that we think is
`consistent with the entirety of the intrinsic record.
`And so, Your Honor, this is just a very brief
`illustration. We don't think that there's any dispute that
`what's above is a pulsed DC power supply. We see that
`there's a constant and negative voltage, and then you go
`up, and then there's a constant positive voltage.
`It doesn't have to be negative and positive. It
`can both be negative. It can be negative and zero. But
`the point is that this is some type of predetermined
`voltage, and we are pulsing between these two different
`voltages.
`And, Your Honor, we believe that's very different
`than what we would call a continuous DC power supply that
`might, for example, occasionally turn on and turn off. So
`if I have a continuous DC power going and for whatever
`reason I turn it off, obviously, the voltage is going to
`change. It will go to zero. There may be some ancillary
`let's say oscillation. I wouldn't even call it
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 19 of 84
`
`18
`
`oscillation, but some changes in voltage. And then I might
`turn it back on.
`And we think this is very different than a pulsed
`DC power supply, as contemplated in the invention and as
`explained by the patentee to the Patent Office when it
`sought its invention.
`And, Your Honor, the difference between DC power
`supplies and pulsed DC power supplies I think is clear from
`the record and the intrinsic record. This is just one
`example, Your Honor. For background, there was about five
`or six years of prosecution. Many rejections, many
`amendments.
`But in this response, which was quite early during
`prosecution, you see that the -- that the applicant is
`making very clear and distinguishing DC power supplies are
`not pulsed DC power supplies. So we know that there's a
`difference.
`And I don't think that the Plaintiff disputes that
`there is a difference, but what we believe and what we're
`trying to seek clarification in today's hearing is that the
`interpretation of oscillating really -- in the Court's
`construction, and whether or not that is intended to cover
`continuous DC power supply.
`Your Honor, but I -- before we get there, I wanted
`to point out and -- and we'll show how we got to this --
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 20 of 84
`
`19
`
`THE COURT: Let --
`MR. OU: -- how we --
`THE COURT: Let me interrupt.
`MR. OU: Yes, Your Honor.
`THE COURT: So on this claim term, which I think
`is, again, something that -- give me one second -- that I
`frankly would think would be plain and ordinary meaning
`usually since pulsed DC power is something I think is
`unbelievably well-known in the art.
`But what we did here was we went to the
`specification, and where the applicant defined pulsed DC
`power to refer to power that oscillates between positive
`and negative voltages, and, essentially, we took that and
`directly -- from what the applicant said -- and it would --
`how it was defining pulsed DC power, and that's what we
`have. I mean, that's -- that's what the Patent Office had
`in front of it when it allowed the claim.
`Why wouldn't that be the appropriate construction
`
`now?
`
`MR. OU: Yes, Your Honor. It's a great question.
`Certainly, I understand the -- and recognize the statement
`in the specification that Your Honor pointed to.
`I think it's important, though, that we look at
`during the prosecution, when that statement was identified,
`the reason that the applicant identified that statement was
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 21 of 84
`
`20
`
`to distinguish itself from a reference before the Court --
`before the Patent Office of Smolanoff.
`And in doing so, in order to get over Smolanoff,
`what the applicant did was it added claim language to the
`claim. And so, Your Honor, let me -- if you can indulge me
`here, I'll walk you through these next two or three slides
`that -- that go to this very point.
`We have the '657 patent, Claim 1 here, Your Honor.
`And what we've shown is that instead of pulse, we've -- the
`Court's tentative construction has defined pulse as
`oscillates between positive and negative voltages.
`But when we look at what happened in the file
`history, when the patentee pointed to that point in the
`specification, what it did was, on that same day, it
`amended the claims to add the language that is below,
`alternates between positive and negative voltages.
`And so, Your Honor, the oscillates between
`positive and negative voltages was in -- already a
`limitation that was added to the claim to overcome
`Smolanoff. And Smolanoff also disclosed pulsed DC power.
`And so we know that oscillating between positive
`and negative voltages cannot be simply the meaning of
`pulsed because that limitation was added already to the
`claim to distinguish the pulsed DC power of these patents
`from the pulsed DC power of Smolanoff.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 22 of 84
`
`21
`
`And, Your Honor, I know here it says "alternates,"
`and in the claim language it says "oscillates." Oscillates
`is the language from the spec. I do believe the applicant
`was using these two interchangeably. And we see that here
`in the next slide, which is the parent application, the
`parent application where most of the file history back and
`forth with the PTO is happening. It's an unasserted
`patent.
`But you see in Claim 1, we have very similar
`language. And if we use the Court's tentative
`construction, "oscillates between positive and negative
`voltages," you see below in the limitation of applying
`pulsed DC power, we already have a limitation that goes to
`"oscillates between positive and negative voltages."
`So, Your Honor, in our view, this additional
`limitation was already added. But what -- the danger, I
`think, that we have is that by adding it -- and you now
`actually have the limitation in there twice, but if we
`remove "pulsed," we've effectively removed pulsed from the
`claim, Your Honor.
`And I'll show you in the next slide. This is the
`same point we just made, but this is the '276 patent, same
`thing. If we add "oscillates between positive and negative
`voltages," and then we see in the -- in the claim language,
`"alternate negative and positive voltages to the target,"
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 23 of 84
`
`22
`
`that was added.
`And, Your Honor, in so Demaray's presentation, and
`I believe in their briefing, they pointed to a portion of
`the file history where they -- they said that this was
`definitional. They said the applicants have explicitly
`defined pulsed DC in that way.
`Your Honor, candidly, we don't believe that that
`was a definition of pulsed DC power. That was more of a
`description of this particular pulsed DC power
`implementation is one that oscillates between positive and
`negative voltages. It's not just simply how you would
`define pulsed DC because pulsed DC can, for example, in
`Smolanoff, go between negative and zero. And so this was a
`limitation that was distinguishing Smolanoff's pulsed DC,
`not defining pulse.
`And, Your Honor, we see here, this is actually the
`paragraph above and the paragraph below from the file
`history of what the applicant was pointing to or what
`Demaray was pointing to in its slide.
`And so, Your Honor, we see at the top, the header
`of the section of the -- of the file history response was
`Smolanoff does not teach applying pulsed DC power such that
`the target voltage oscillates between positive and negative
`voltages. And so this was the difference between Smol --
`between the patent -- the patentee's alleged invention and
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 24 of 84
`
`23
`
`Smolanoff.
`And so you see below in the last -- in the second
`call-out at the bottom, they amended on that same day
`Claims 21 and 43 to add this positive limitation of
`oscillating or alternating between positive and negative
`voltages.
`And we see that here on this next slide, Your
`Honor. This is the amendment. It's from the same day,
`February 6th, 2007. You see it underlined. You already
`have applying pulsed DC power in the claim, but they added
`this additional limitation that the voltage oscillates
`between positive and negative voltages.
`And, Your Honor, it wasn't just with the parent
`application. On this same day, February 6th, 2007, the
`applicant amended the '276 application, which is the
`reactor patent. And we see here in the next slide, Your
`Honor, it's a supplemental preliminary amendment. They
`weren't even responding to an Office Action at that time.
`But they knew that because they were amending the claims in
`the parent to overcome Smolanoff, they did the same in the
`'276 application.
`Here, again, you see pulsed DC power was already
`in the claim. They added that the pulsed DC power supply
`provides alternating negative and positive voltages. So it
`was an additional limitation.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case 5:20-cv-09341-EJD Document 138-12 Filed 03/18/22 Page 25 of 84
`
`24
`
`And, Your Honor, you see below, this is explaining
`that they amended Claim 15. And, notably, they say which
`is disclosed, for example, to -- in Paragraph 53 of the
`specification.
`And, Your Honor, Paragraph 53 of the
`specification, I believe, is what Your Honor just pointed
`to. It's the one disclosure in the spec where they do
`reference oscillating between positive and negative
`voltages. But, again, Your Honor, that's a limitation that
`was added in this amendment. It's not definitional pulsed
`DC because Smolanoff was also pulsed DC. It was a way of
`differentiating it.
`And, Your Honor, here again, this is the same --
`this is the same response where they're overcoming
`Smolanoff. They're pointing to Paragraph 53. I won't
`belabor that point, Your Honor.
`And just to close the loop on this, this is now
`the method claim. Claim 62 of the '657 patent, later
`issued as Claim 1 of the method claim, which we just
`discussed in the context of insulating substrate. And you
`see here again, th
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
