U.S. Patent No. 6,586,890
`IPR2015-01292
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`WANGS ALLIANCE CORPORATION D/B/A WAC LIGHTING CO.
`Petitioner
`
`v.
`
`PHILIPS LIGHTING HOLDING B.V.
`Patent Owner
`_____________________
`
`Case No. IPR2015-01292
`U.S. Patent No. 6,586,890
`_____________________
`
`
`DECLARATION OF ROBERT NEAL TINGLER
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`WAC-1018
`
`
`IPR2015-01292
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`WANGS ALLIANCE CORPORATION D/B/A WAC LIGHTING CO.
`Petitioner
`
`v.
`
`PHILIPS LIGHTING HOLDING B.V.
`Patent Owner
`_____________________
`
`Case No. IPR2015-01292
`U.S. Patent No. 6,586,890
`_____________________
`
`
`DECLARATION OF ROBERT NEAL TINGLER
`IN SUPPORT OF PETITIONER’S REPLY TO PATENT OWNER’S
`RESPONSE TO PETITION
`
`
`
`WAC-1018
`
`
`
`I, Robert Neal Tingler, hereby submit this Declaration in support of
`
`U.S. Patent No. 6,586,890
`IPR2015-01292
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`1.
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`Petitioner’s Reply to Patent Owner’s (“Philips”) Response to Petition. In
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`preparing this Declaration, I have reviewed Philips’s Response
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`(“Response”), Dr. Regan Zane’s Declaration (Ex. 2006) and exhibits cited
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`therein, and Dr. Zane’s June 9, 2016 deposition transcript (Ex. 1019).
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`2.
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`It is my opinion that Philips has not presented any reasonable argument that
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`would negate the Petition’s position that Biebl anticipates claims 7, 15, and
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`23 of the ‘890 patent, or that the combination of Biebl and the ST Micro
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`Datasheet render obvious claims 7, 15, 23, and 31 of the ‘890 patent.1
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`3.
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`Dr. Zane opines that a person of ordinary skill in the art (“POSA”) would
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`not be motivated to combine the Biebl and ST Micro Datasheet references
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`by focusing on alleged differences between Biebl and the ST Micro
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`Datasheet, including alleged differences in power supply topologies,
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`regulation schemes, and PWM control schemes. Ex. 2006 at 25-44. I
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`disagree. In my opinion, Dr. Zane incorrectly focuses on alleged differences
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`between Biebl and the ST Micro Datasheet, instead of focusing on what the
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`combination of these references teach a POSA.
`
`
`1 While I understand that the Board did not grant institution on Petitioner’s
`ground that claims 23 and 31 are rendered obvious by Biebl in view of Hochstein,
`it is my opinion that Philips has not presented any reasonable argument that would
`negate the Petition’s position with respect to this ground.
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`2
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`
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`Further, I understand that Petitioner has submitted that the Board’s claim
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`U.S. Patent No. 6,586,890
`IPR2015-01292
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`4.
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`construction incorrectly included a requirement that the claimed “means for
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`supplying power” regulate current as opposed to voltage. Dr. Zane relies on
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`this incorrect claim construction in forming his opinions.
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`5.
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`In addition, in its Response, Philips mischaracterizes my opinion and
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`testimony regarding the use of the ST Micro flyback regulator to power an
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`LED load. It is my opinion that a POSA would be motivated to use the ST
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`Micro flyback regulator to power an LED load as discussed below.
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`6.
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`The combination of Biebl and ST Micro Datasheet renders claims 7 and 31
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`of the ‘890 patent obvious for the reasons discussed below. These reasons
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`are responsive to Dr. Zane’s arguments that a POSA would not have
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`combined the ST Micro Datasheet and Biebl to reach the claimed invention.
`
`I.
`
`A POSA Would Implement the ST Micro IC to Drive an LED
`Load in View of the Teachings of Biebl
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`7.
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`Dr. Zane asserts that a POSA would not have had a reasonable expectation
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`of success in implementing the ST Micro IC with a flyback regulator to
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`drive an LED load as in Biebl or use the ST Micro IC in place of the Biebl
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`IC. Ex. 2006 at 46-64. In my opinion, Dr. Zane improperly focuses on the
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`specific implementation of the ST Micro IC as outlined in the datasheet
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`instead of explaining why the teachings of Biebl would not motivate a
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`3
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`
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`POSA to implement the ST Micro IC to drive an LED load. My opinions
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`U.S. Patent No. 6,586,890
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`remain unchanged. See Ex. 1006 at 58-92.
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`8.
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`Dr. Zane’s specifically alleges that implementing the ST Micro IC in this
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`manner is “hindsight from the ‘890 patent,” Ex. 2006 at ¶¶ 85-89, and relies
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`upon the specific disclosure of the ST Micro Datasheet, or alleged lack
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`thereof, to conclude that a POSA would not implement the ST Micro IC to
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`drive an LED load as claimed in the ‘890 patent. I disagree. As I discussed
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`in my original declaration, Ex. 1006 at 58-92, a POSA would be motivated
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`to modify the ST Micro IC to operate similar to the invention of Biebl to
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`drive an LED load. In my opinion, Dr. Zane focuses too closely on alleged
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`differences between Biebl and the ST Micro Datasheet. In my opinion, a
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`POSA would be motivated by the teachings of Biebl to implement the ST
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`Micro Datasheet to drive an LED load in a manner similar to that of Biebl.
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`In doing so, a POSA would arrive at the invention of the ‘890 patent, as I
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`explained in my original declaration.
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`9.
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`Dr. Zane’s reliance upon alleged differences between Biebl and the ST
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`Micro Datasheet is misplaced. Dr. Zane argues that a POSA would not be
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`motivated to combine these references because the flyback topology of the
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`ST Micro Datasheet uses voltage regulation while Biebl’s DC chopper uses
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`current regulation. Ex. 2006 at ¶¶ 58-61. I disagree. First, a POSA at the
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`4
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`time of the alleged ‘890 invention would be familiar with both current and
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`U.S. Patent No. 6,586,890
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`voltage regulation for driving an LED load and understand, based on the
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`POSA’s needs, which means of regulation to implement. See, e.g., Ex. 1021
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`(U.S. Patent No. 6,304,464) (“Flyback as LED Driver”); Ex. 1022 (U.S.
`
`Patent No. 6,218,820) (“ST Micro Patent”); Ex. 1023 (U.S. Patent No.
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`6,141,232) (“Fixed Frequency Flyback Converter”). For instance, the
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`Flyback as LED Driver patent,2 discloses a flyback converter to drive an
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`LED load that regulates current. See Ex. 1021 at 1:29-31 (“the converter
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`should serve as a current source (constant current generator)”). In addition,
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`the ST Micro Patent discloses a regulator with two operating modes, one as
`
`a voltage regulator and the other as a current regulator. See Ex. 1022 at 2:5-
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`31, 3:19-34. Specifically, the ST Micro patent discloses “[a] first operating
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`mode . . . carries out regulation of the battery charging current” and “the
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`second operating mode . . . carries out regulation of the voltage of the
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`battery.” Id. at 3:24-32. Additionally, the Fixed Frequency Flyback
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`Converter patent discloses a flyback converter that regulates both current
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`and voltage. See, e.g., Ex. 1023 at 3:33-38; 3:58-60.
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`2 This patent is also assigned to Philips, and shares an inventor with the ‘890
`patent (Bertrand J.E. Hontelé).
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`5
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`10. A POSA would not be dissuaded by one reference utilizing voltage
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`U.S. Patent No. 6,586,890
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`regulation and another using current regulation. Instead, a POSA would
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`understand those differences but still be motivated by the disclosure of one
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`to inform the other. A POSA could choose to implement current or voltage
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`regulation, but would be motivated by the disclosure of Biebl to utilize
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`current regulation, and would be motivated by the ST Micro Datasheet to
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`utilize a flyback regulator. A POSA would also understand how to modify
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`the flyback regulator of the ST Micro Datasheet to be a current regulating
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`power supply. See, e.g., Ex. 1022 at 2:5-31, 3:19-34 (U.S. Patent No.
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`6,218,820) (“ST Micro Patent”), (disclosing a regulator with two operating
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`modes, one as a voltage regulator and the other as a current regulator); see
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`id. at 3:24-32 (disclosing “[a] first operating mode . . . carries out regulation
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`of the battery charging current” and “the second operating mode . . . carries
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`out regulation of the voltage of the battery.”)
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`11. Dr. Zane further argues that a POSA would not be motivated to combine the
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`ST Micro Datasheet and Biebl because they allegedly disclose different and
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`incompatible PWM control schemes. I disagree. First, a POSA would
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`understand that it could implement the ST Micro IC to drive an LED load
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`using current mode PWM control whether the flyback regulator is
`
`implemented to regulate either current or voltage. A POSA would further
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`6
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`understand that it need not implement the specific PWM control scheme of
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`U.S. Patent No. 6,586,890
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`Biebl in the ST Micro IC. As Dr. Zane admitted at his deposition, a POSA
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`would have been aware of and understood different PWM control schemes,
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`and would have been capable of understanding how they operate. See Ex.
`
`1019 at 131:10-132:4:
`
`Q. Would a person of ordinary skill in the art have known about
`these three different types of pulse width modulation control
`schemes?
`
`A. It’s my understanding that a person of ordinary skill in the
`art would understand pulse width modulation and would be
`aware of the three examples given in my declaration.
`
`Q. Aside from being aware of them, would the person of
`ordinary skill in the art have understood how they work?
`
`
`A. Whether or not they had specific experience with the feed
`forward voltage version or a current mode PWM is not
`necessary for a POSITA, but they would certainly be capable of
`understanding when they see it what the difference is from the
`basic PWM that they understood.
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`Thus, a POSA would be motivated by the teachings of Biebl to implement
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`the ST Micro IC to drive an LED load, and would further understand how to
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`do so using the current mode PWM control of the ST Micro IC.
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`12. Additionally, as I discussed in my original declaration, a POSA might prefer
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`to use commercially available ICs such as the ST Micro IC instead of
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`building the circuit of Biebl. See, e.g., Ex. 1006 at ¶ 93. Dr. Zane
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`7
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`confirmed that a POSA could be motivated to use such a commercially
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`U.S. Patent No. 6,586,890
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`available, off-the-shelf IC such as the ST Micro IC, as motivations to do so
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`include size, cost, and thermal characteristics, Ex. 1019 at 124:1-15, and that
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`in fact Dr. Zane “frequently use[s] off-the-shelf components,” id. at 119:4-
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`15.
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`II. A POSA Would Be Motivated to Implement a Switch Mode
`Power Supply with Biebl in View of the ST Micro Datasheet
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`13.
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`In addition to utilizing the ST Micro IC to drive an LED load, a POSA
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`would be motivated to replace the battery of Biebl with the flyback regulator
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`of Figure 11 of the ST Micro Datasheet. See Ex. 1006 at ¶¶ 106-07. I
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`discuss one implementation of such a combination below.
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`14. For instance, Biebl discloses that its circuit may be used in “traffic light
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`systems”:
`
`This circuit arrangement allows malfunctions in the LED
`cluster to be identified easily. If any LED cluster in an
`LED array (comprising a number of LED clusters) fails,
`it may be important to signal this failure immediately to a
`maintenance center. This is particularly important in the
`case of safety facilities, for example in the case of traffic
`light systems. Even in the motor vehicle area (passenger
`vehicles, good vehicles), it is desirable to be informed
`about the present status of the LEDs, for example if the
`tail lights are equipped with LEDs.
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`8
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`
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`Ex. 1003 at 4:29-38 (emphasis added). A POSA would recognize that such
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`U.S. Patent No. 6,586,890
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`traffic light systems deliver power over an AC line, see generally Ex. 1004,
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`and that the AC signal can be rectified to a DC signal. In such systems, a
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`POSA would be motivated to use an SMPS selected from at least a buck,
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`boost, buck-boost, or flyback converter. As Dr. Zane recognized at his
`
`deposition, a POSA would have known about these power supplies, and
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`specifically recognize that “you can rectify an AC input and use one of these
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`DC-DC [SMPSs] in that application.” Ex. 1019, 47:4-16; see also id. at
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`45:1-46:3. In traffic light systems, the most common means of connecting
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`to the AC line is to first rectify the AC signal to DC and use an SMPS such
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`as a buck, boost, buck-boost, or flyback converter. See, e.g., Ex. 1004 at
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`3:18-38. One reason a POSA would employ such an arrangement is to step
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`down the voltage to a reasonable level to be compatible with the LED array
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`used in Biebl. A POSA would have understood that if one were to rectify
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`AC line voltage with a bridge, an extremely high DC input voltage would
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`result.
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`15.
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`In such an implementation, a POSA would utilize the constant Vout voltage
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`of an implementation of the Figure 11 flyback regulator of the ST Micro
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`Datasheet, where Vout replaces the output voltage Ubatt of Biebl, as shown
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`below. The flyback regulator here is implemented as a discontinuous
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`9
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`
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`conduction mode (“DCM”) flyback regulator, which is a common operating
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`U.S. Patent No. 6,586,890
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`mode in a flyback regulator where all of the energy stored in the transformer
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`is delivered to the load before the beginning of the next switching cycle.
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`See, e.g., Ex. 1020 (“Switching Power Supply Design”) at 107-09.
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`
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`16.
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`In this implementation, as opposed to Dr. Zane’s opinions (See Ex. 2006 at
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`¶¶ 49-57), it does not matter whether the flyback regulator of Fig. 11
`
`provides isolation, a POSA only need ensure that if it is an isolated
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`10
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`
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`implementation, that the grounds of the secondary side (Vout) and Biebl are
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`the same. Further, in this implementation, as opposed to Dr. Zane’s
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`opinions (See Ex. 2006 ¶¶ 62-75), differences in the PWM control schemes
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`between Biebl and the ST Micro IC are inconsequential, as each of the Biebl
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`circuit and the ST Micro flyback regulator operates using its own PWM
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`control scheme without affecting the other.
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`17.
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`In this implementation, the “means for supplying power” is the flyback
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`regulator of Fig. 11, where the claimed “supplying current to the LED array”
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`is sourced from Vout and flows through the transistor T in Biebl.
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`18. This “means for supplying power” is “responsive to the drive signal”—
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`namely, the signal from the PWM comparator driving transistor T in Biebl—
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`as discussed below. First, I note that the pulse current through the LEDs is
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`itself responsive to the drive signal. Any action responsive to the pulse
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`current is therefore also “responsive to the drive signal.”
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`19. When the pulse current is applied to the output of the implementation of the
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`DCM flyback regulator above (at the point where Vout is delivered), the
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`output power of the flyback regulator is increased. This is because the duty
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`cycle in a DCM flyback regulator is a function of the output power. Ex.
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`1020 at 107 (“the primary current has ramped up to Ip = (Vdc – 1)Ton/Lp”
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`where Ton is the on-time of the pulse, thus the primary current is a function
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`11
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`
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`of duty cycle (and vice versa)). The duty cycle increases as a result of the
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`U.S. Patent No. 6,586,890
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`increase in output power, where the increase in duty cycle results in a longer
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`on-time of the switching field-effect transistor of the flyback regulator, Q1.
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`This longer on-time results in an increase in the inductor current and energy
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`in the primary winding, which is transferred to the secondary winding to
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`support this increase in output power. Ex. 1020 at 109 (“Thus the feedback
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`loop will regulate the output by decreasing Ton as Vdc or Ro goes up,
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`increasing Ton as Vdc or Ro goes down,” where Ro going down is indicative
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`of load current increasing).
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`20. Because the “means for supplying power” adjusts its output power according
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`to the pulse current that flows in the LEDs, and because that pulse current is
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`“responsive to the drive signal,” the claimed “means for supplying power” is
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`likewise responsive to the drive signal.
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`21. Further, under this implementation, the current to the LEDs is regulated as
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`Biebl’s circuitry performs that regulation as discussed in my original
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`declaration. See Ex. 1006 at ¶¶ 44-54. To the extent that the claimed
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`“means for supplying power” must also regulate the current, the “means for
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`supplying power” includes the flyback regulator of the ST Micro Datasheet
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`and the current regulation feedback loop of Biebl (including transistor T,
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`current sensing resistor, regulator, and comparator, see id.).
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`12
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`22. To the extent that the Board finds that the “means for supplying power”
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`must be a self-contained power supply that regulates current, a POSA would
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`also be motivated to integrate an SMPS that regulates current as opposed to
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`voltage for the reasons described below.
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`23. As discussed above, in a traffic signal application, which is an AC/DC
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`application, a POSA would be motivated to add a SMPS to step down the
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`rectified voltage to an appropriate level for use with an LED load. A POSA
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`would be motivated to replace the DC chopper circuit of Biebl with an
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`SMPS to do so.
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`24. As the ‘890 patent recognizes and as Dr. Zane admitted in his deposition, a
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`POSA at the time of the alleged ‘890 invention would have known and
`
`understood that current regulation is preferable to drive an LED load. The
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`Background of the Invention in the ‘890 patent states that “a current source
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`is the preferred method of driving the LEDs,” 1:21-22, and as Dr. Zane
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`admitted, it was known that “it was desirable to operate the LED current at
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`its nominal current, already known and controlled current,” Ex. 1019, 21:23-
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`22:2. Further, Biebl provides motivation to a POSA to use current
`
`regulation to drive an LED load.
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`25.
`
`It was well known to a POSA at the time of the alleged ‘890 invention that
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`an SMPS could operate to regulate current, voltage, or both. See, e.g., Ex.
`
`13
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`
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`1021 (U.S. Patent No. 6,304,464) (“Flyback as LED Driver”); Ex. 1022
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`(U.S. Patent No. 6,218,820) (“ST Micro Patent”); Ex. 1023 (U.S. Patent No.
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`6,141,232) (“Fixed Frequency Flyback Converter”). For instance, the
`
`Flyback as LED Driver patent, discloses a flyback converter to drive an LED
`
`load that regulates current. See Ex. 1021 at 1:29-31 (“the converter should
`
`serve as a current source (constant current generator)”). In addition, the ST
`
`Micro Patent discloses a regulator with two operating modes, one as a
`
`voltage regulator and the other as a current regulator. See Ex. 1022 at 2:5-
`
`31, 3:19-34. Specifically, the ST Micro patent discloses “[a] first operating
`
`mode . . . carries out regulation of the battery charging current” and “the
`
`second operating mode . . . carries out regulation of the voltage of the
`
`battery.” Id. at 3:24-32. Additionally, the Fixed Frequency Flyback
`
`Converter patent discloses a flyback converter that regulates both current
`
`and voltage. See, e.g., Ex. 1023 at 3:33-38 (“During operation the output
`
`voltage Us can be adjusted within broad limits by the adjustable reference
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`voltage source URefU, and likewise the current Is with the aid of the reference
`
`URefI, wherein the adjustment of the current generally serves to limit the
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`current the operation is carried out with a constant voltage Us.”).
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`26.
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`I further note that the Flyback as LED Driver reference (Ex. 1021) and the
`
`‘890 patent both sense current through a load via a resistor and present this
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`14
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`sensed current signal to the inverting input of an error amplifier, which is
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`then connected to a PWM Comparator. Ex. 1021 at 3:51-54; Ex. 1001 at
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`3:25-29. Additionally, the ST Micro patent reference (Ex. 1022) and the
`
`‘890 patent both sense the current through the load via a resistor and amplify
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`this sensed current signal using an operational amplifier, and present this
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`signal to the inverting input of an error amplifier, which is then connected to
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`a PWM comparator. Ex. 1022 at 3:2-9; Ex. 1001 at 3:25-29. Additionally,
`
`the Fixed Frequency Flyback Converter reference (Ex. 1023) also measures
`
`the load current on the secondary side of the transformer through a sense
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`resistor, Rs, which is amplified through Ks, which is then connected to a
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`PWM comparator, K. Ex. 1023 at 3:21-27.
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`27. Thus, the references at Exs. 1021-23 are analogous to the ‘890 patent.
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`28. Additionally, a POSA would have known how to modify the flyback
`
`regulator of the ST Micro Datasheet to regulate current instead of, or in
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`addition to, voltage. For instance, as the ST Micro Patent discusses, such an
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`SMPS that has both a current error amplifier and a voltage error amplifier
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`having two operating modes, regulating output current when “the current
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`error amplifier prevails over the voltage error amplifier,” and to regulate
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`voltage when “the voltage error amplifier prevails over the current error
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`amplifier.” Ex. 1022 at 3:24-34. In an AC/DC application such as for LED
`
`15
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`
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`traffic lighting as discussed above, a POSA would have been motivated to
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`modify the flyback regulator of the ST Micro Datasheet such that it is
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`capable of regulating current. Further, other than the single buck-boost
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`converter shown in the ‘890 patent, Dr. Zane admitted that the ‘890 patent
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`did not include details on how to connect any other SMPS as it was within
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`the purview of a POSA. Ex. 1019 at 79:12-81:6 (“it’s presumed that the
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`teachings from the ‘890 could be applied to the flyback converter”).
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`29. Thus, a POSA at the time of the alleged ‘890 invention would have known
`
`SMPSs that could regulate current, voltage, or both, and that an SMPS that
`
`regulates current such as a flyback is preferable in LED applications. Thus,
`
`a POSA would have been motivated to implement an SMPS with Biebl, and
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`such implementation and modification would have been within the skill of a
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`POSA.
`
`III. Philips Mischaracterizes My Opinion Regarding Using the ST
`Micro Flyback Regulator to Power an LED
`
`30.
`
`In its Response, Philips mischaracterizes my opinion regarding using the ST
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`Micro flyback regulator to power an LED. Specifically, Philips argues that I
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`“conceded that a [POSA] would not use the ST Micro flyback regulator to
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`power an LED because it regulates voltage, not current.” Response at 27-
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`28, 33-34. This is not my opinion, nor was it my testimony.
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`16
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`31. Rather, as I testified, it is my opinion that “it would have been obvious for a
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`person of ordinary skill to use a flyback converter as a method to drive an
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`LED array.” Ex. 2008 at 44:16-45:3. I further testified only that the specific
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`flyback converter of the ST Micro datasheet was “not set up as a constant
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`current drive [s]o it wouldn’t provide the constant current regulation to the
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`LED array.” Id. This is not testimony that a POSA would not have used the
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`ST Micro flyback regulator to power an LED, only confirmation that the ST
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`Micro flyback regulator does not regulate current. In fact, as I stated in my
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`original declaration, it is my opinion that the Hochstein reference in
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`combination with Biebl renders claims 23 and 31 obvious, and that the buck-
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`boost converter of Hochstein itself powers an LED yet regulates voltage and
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`not current. Ex. 1006 at ¶¶ 84-87.
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`Respectfully submitted,
`
`_____________________________
`Robert Neal Tingler
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`Date: June 23, 2016
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