Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
`July 20, 2016
`
`1
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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.
` Petitioners,
` v.
` PHILIPS LIGHTING HOLDING B.V.
` Patent Owner.
`
` __________
` Case IPR2015-01287
` Patent No. 6,013,988
` Case IPR2015-01290
` Patent No. 6,250,774
` Case IPR2015-01291
` Patent No. 6,561,690
` Case No. IPR2015-01292
` Patent No. 6,586,890
` __________
`
` TELEPHONE CONFERENCE CALL
` July 20, 2016
` 10:02 a.m.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
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`Page 1 of 85
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`PHILIPS EXHIBIT 2012
`WAC v. PHILIPS
`IPR2015-01292
`
`
`Conference Call
`July 20, 2016
`
`1
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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.
` Petitioners,
` v.
` PHILIPS LIGHTING HOLDING B.V.
` Patent Owner.
`
` __________
` Case IPR2015-01287
` Patent No. 6,013,988
` Case IPR2015-01290
` Patent No. 6,250,774
` Case IPR2015-01291
` Patent No. 6,561,690
` Case No. IPR2015-01292
` Patent No. 6,586,890
` __________
`
` TELEPHONE CONFERENCE CALL
` July 20, 2016
` 10:02 a.m.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Page 1 of 85
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`PHILIPS EXHIBIT 2012
`WAC v. PHILIPS
`IPR2015-01292
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`
`
`Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
`July 20, 2016
`
`2
`
` A P P E A R A N C E S
` (all appearances telephonically)
`
`PRESIDING:
` MIRIAM QUINN, Administrative
` Patent Judge
` GLENN J. PERRY, Administrative
` Patent Judge
` TREVOR JEFFERSON, Administrative
` Patent Judge
`
`ON BEHALF OF PETITIONER WANGS ALLIANCE CORPORATION
`d/b/a WAC LIGHTING CO.:
` DAVID C. RADULESCU, Ph.D.
` MARIA GRANOVSKY, Ph.D.
` Radulescu LLP
` The Empire State Building
` 350 Fifth Avenue, Suite 6910
` New York, New York 10118
` 646-502-5950
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`Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
`July 20, 2016
`
`3
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`APPEARANCES: (Continued)
`
`ON BEHALF OF PATENT OWNER PHILIPS LIGHTING
`HOLDING B.V.:
` DENISE W. DeFRANCO, ESQ.
` C. BRANDON RASH, ESQ.
` KENIE HO, ESQ.
` CARA REGAN LASSWELL, ESQ.
` Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
` 901 New York Avenue, NW
` Washington, D.C. 20001-4413
` 202-408-4475
`
`ALSO PRESENT:
` Daniel Gaudet
` Stephen Kohen
` Jonathan Andron
` John Pint
`
`REPORTED BY:
` Cappy Hallock, RPR, CRR, CLR
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`Conference Call
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` P R O C E E D I N G S
` - - - - - -
` JUDGE QUINN: Okay, this is Judge
`Miriam Quinn, and with me is Judge Glenn Perry and
`Judge Trevor Jefferson. We are here on request by
`the parties concerning authorization for a motion
`in IPRs 2015-1287, 1290, 1291 and 1292.
` Who is on the line for Petitioner?
` MR. RADULESCU: David Radulescu and
`Maria Granovsky.
` JUDGE QUINN: And Mr. Radulescu, are
`you going to be the counsel arguing for
`Petitioner?
` MR. RADULESCU: For the most part,
`yes, Your Honor.
` JUDGE QUINN: And for Patent Owner,
`who do we have?
` MR. RASH: Good morning Your Honor.
`This is Brandon Rash from Finnegan. Also with me
`from Finnegan is Denise DeFranco, Kenie Ho and
`Cara Lasswell. And with me from Philips is Dan
`Gaudet, Stephen Kohen, Jonathan Andron and John
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`Conference Call
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`Pint.
` JUDGE QUINN: Okay, and who is going
`to be addressing Patent Owner's arguments on this
`call?
` MR. RASH: I will start, Your Honor.
`Again, this is Brandon Rash, and depending on the
`specific issues that we get into, Kenie Ho and
`Denise DeFranco may also speak.
` JUDGE QUINN: Okay.
` All right. So it appears that the
`request was posed by Patent Owner, so I will give
`you the floor to argue. As we stated, we want a
`representative argument from -- from the multiple,
`I guess, arguments that you may make, but we just
`want to see what is a representative argument of
`what you contend is outside the scope, and
`Petitioner's reply.
` MR. RASH: Thank you, Your Honor.
`This is Brandon Rash again. Kenie Ho will be
`arguing the specific argument that you asked us to
`argue. I just wanted to make a few introductory
`remarks, if I could.
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`Conference Call
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` We have requested motions to strike
`and/or respond in the four IPRs that you
`identified. In each of these IPRs, Petitioner's
`reply has raised new arguments to make out its
`prima facie case for unpatentability which we are
`asking the Court to strike.
` We believe that a surreply is not
`adequate here for a couple of reasons. A surreply
`is not going to be able to cure the prejudice from
`Petitioner's change in position after we filed our
`Patent Owner response. In filing that response we
`decided which claims to address, which arguments
`to make, what evidence to introduce, whether to
`amend claims, all based on the theories in the
`petition. And the surreply is not going to be
`able to put us back into the position we were in
`before the Patent Owner's response.
` Also, we are preparing for oral
`argument in one month, and it would prejudice
`Philips to have to shift from that to starting
`over in addressing these new arguments and
`theories, and having to call back in our experts
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`Conference Call
`July 20, 2016
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`as well who had planned to be done at this point.
` Nonetheless, if the Board is not
`inclined to strike, we do request a chance in the
`alternative to respond and at least to proffer a
`list of arguments and evidence that we would have
`submitted had the Petitioner included the
`arguments in the petition.
` As I mentioned, the parties have met
`and conferred and there is a list to one argument.
`That new argument will be in the '890 IPR. I also
`wanted to note that the parties in the meet and
`confer did agree that the Board should hear a
`representative argument for each IPR. And the
`reason for that, Your Honor, is because the IPRs
`are distinct and one is not representative of
`another. We, Philips, have shared with Petitioner
`those arguments and we are prepared to address
`them if the Board allows.
` JUDGE QUINN: Are you saying the case
`that you are going to discuss is 12890 or 1290?
` MR. RASH: I'm sorry, I was referring
`to the patent number. It's the '890 patent and
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`Conference Call
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`that is in 1292.
` JUDGE QUINN: Okay.
` MR. RASH: So lastly, before I do hand
`over to Kenie on that point, I did just want to
`point out that we have a separate issue for the
`IPR for the '988 patent, that's the IPR ending in
`1287. We do have a motion to strike a new
`obviousness theory in that IPR, but we also have a
`separate issue. And specifically we are asking to
`be able to respond on that separate issue, and
`that is whether the invention antedates one of the
`asserted references.
` Ground 2 in the '988 IPR is based on a
`reference called Perry. Our Patent Owner response
`argued that the '988 invention antedates Perry,
`and the Petitioner has responded to that in its
`reply. We are asking to respond, not to strike
`that, because Philips has the burden of
`production. And based on the research that we
`have done, in fact that is an issue that the Board
`has typically allowed a surreply on.
` I can address that further now, or if
`
`202-220-4158
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`Conference Call
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`Your Honors would prefer, after we present this
`one argument on the '890 IPR.
` JUDGE QUINN: I think we want to go
`with what we asked you to prepare for, which is to
`present a representative argument.
` MR. RASH: Yes, Your Honor. I will
`hand it over to Kenie Ho who will address that.
` MR. HO: Good morning, Your Honors.
`This is Kenie Ho. I will be speaking on the '890
`patent IPR.
` JUDGE QUINN: I'm sorry, can you from
`now on refer to the IPR number you are arguing
`about so that when we switch over to another IPR
`we can keep the dockets straight?
` MR. HO: Of course.
` JUDGE QUINN: Thank you.
` MR. HO: This will be for the IPR
`ending in 1292.
` Now, in this particular IPR we are
`requesting the Board to strike the new argument or
`certifying in the alternative because Petitioner
`has presented for the first time in its reply
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`Conference Call
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`brief and in its accompanying declaration for his
`expert witness, Mr. Tingler, a brand new argument
`that was not in the original petition.
` The Board instituted the IPR based on
`the combination of the STMicro datasheet and the
`Biebl patent, which are Exhibits 1006 and 1003
`respectively. In particular, the Petitioner
`argued for obviousness in its original petition by
`modifying a component in a flyback regulator
`circuit disclosed in the STMicro datasheet to
`sense current to an LED. They were modified error
`amplifier and a comparative component in the
`flyback regulator circuit of the STMicro datasheet
`to allege obviousness.
` They alleged that the Biebl patent
`provided motivation to do so. The Board
`instituted the IPR based on this combination of
`the STMicro datasheet and the Biebl patent.
`However, in Petitioner's reply brief they are
`representing a new alternative combination for
`these two references.
` Specifically Petitioner is now
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`Conference Call
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`alternatively arguing obviousness by modifying a
`circuit disclosed in one embodiment of the Biebl
`patent by replacing its battery in Figure 8 of the
`Biebl patent with the flyback regulator circuit
`from the STMicro datasheet, and then operating
`that flyback regulator circuit in a special mode
`called discontinuous conduction mode, or DCM for
`short.
` The Petitioner never presented this
`alternative combination in their original petition
`or in the expert declaration accompanying the
`petition. And just in case we overlooked
`something in the petition, we asked the
`Petitioner's expert witness, Mr. Tingler, during
`his deposition last week if he had presented his
`alternative combinations somewhere in his expert
`declaration accompanying the original petition and
`Mr. Tingler stated that he had not presented this
`alternative combination before.
` For those reasons --
` JUDGE QUINN: Where is it in the
`reply, that argument, please?
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`Conference Call
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` MR. HO: It's in Section 3.B at Pages
`11 to 18 of Petitioner's reply.
` JUDGE QUINN: And that is 11 through
`13?
` MR. HO: 18.
` JUDGE QUINN: 18.
` So you would be asking to strike that
`entire section?
` MR. HO: That's correct, and also to
`strike Section 2 of Mr. Tingler's reply
`declaration, Paragraphs 13 to 29, which is where
`he discusses this new alternative combination for
`the reference.
` JUDGE QUINN: All right.
` Petitioner? I'm sorry.
` Mr. Ho, were you done with your
`argument?
` MR. HO: I would like to just add one
`more point which is that the -- thank you, Your
`Honor -- which is that if, in the alternative, the
`Board decides not to strike this new argument we
`would request leave to file a surreply to present
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`new evidence explaining why Petitioner's new
`combination fails to meet the claim limitations.
`And specifically we would present evidence of how
`the flyback regulator in the new alternative
`combination would not be responsive to a drive
`signal as recited in the claims, the challenged
`claims 7 and 31, and it would not be responsive to
`a drive signal from a PWM means or a PWM control
`circuit which are limitations recited in those
`claims.
` We would also present evidence on how
`that alternative combination, both the circuits in
`the Biebl patents and the STMicro datasheet, would
`operate using its own PWM control scheme without
`affecting the other, thereby again failing to meet
`the claim limitations of the challenged claims.
` And with that, that's all I have for
`our initial argument, Your Honor.
` JUDGE QUINN: Okay.
` Petitioner.
` MR. RADULESCU: Thank you, Your Honor.
`This is David Radulescu for Petitioner, and I do
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`want to respond both to the substance of what
`Mr. Ho just argued and also the opening remarks by
`his colleague, Mr. Rash. And I will start with my
`response to the opening remarks by Mr. Rash.
` Clearly, what he has characterized as
`new argument, it's simply just that, an argument,
`not tied to any specific merits of any of the four
`petitions. It is a theoretical statement as to
`oh, the Petitioner has raised new arguments, and
`oh, a surreply would not be adequate to address
`the prejudice. That's theoretical.
` He has also characterized the
`Petitioner's position as changing, that somehow
`the Petitioner's position had changed from the
`original petition to what we set forth in the
`reply. And my response to that set of arguments
`is that they are not based on actual, specific
`portions of this record. And it becomes pretty
`clear once we start getting into the response on
`the 1292 petition that clearly with respect to
`what we heard is not an adequate basis to ask for
`some type of surreply or to ask for some type of
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`striking.
` And for now I will address
`specifically, and if the Patent Owners are held to
`what they just argued, they should not be allowed
`to file any motion for striking and they should
`not be allowed to file any surreply, because what
`they have just done is mischaracterized the record
`in connection with not only their representative
`petition that they just fixed, but I believe the
`remaining petitions as well.
` And so firstly there is an argument
`that the Petitioner raised some new argument that
`wasn't in the original petition. Now, let's first
`address that statement. We have to look
`specifically at what the ground was, and we are
`talking about Ground 3 in the petition set forth
`at Page 31 to the end.
` And with respect to this ground, if we
`go back to the institution position and we look to
`see what this dispute is really about, at a high
`level, the argument is as follows: That the Biebl
`reference teaches using an integrated circuit to
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`Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
`July 20, 2016
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`drive LED.
` That's what it teaches, a very
`specific integrated circuit to drive LEDs on the
`one hand. And on the other hand, if you look at
`the STMicro datasheet, which is the other
`reference, at a high level what that is, it's an
`integrated circuit to drive a load using
`specifically pulse width modulation with using
`specifically all the various details that are set
`forth in the Philips patent.
` And how do we know that? Because this
`is the very chip that is actually referred to in
`the patent specifications that Philips filed the
`patent for. They are simply taking a standard
`off-the-shelf chip and saying oh, we can use this
`to drive an LED load, and they claim that is some
`type of invention.
` That is the background.
` Now, let's go specifically to what's
`the ground for unpatentability. The ground for
`unpatentability was based on the STMicro datasheet
`and a very clear acknowledgment by the Petitioner,
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`that's us, that this doesn't describe the load
`being an LED. That this generic integrated
`circuit off the shelf set forth in the datasheet
`can drive data protected loads. And, in fact, it
`can drive it in the very specific ways that the
`load is driven in the Philips patent, because we
`know that LEDs are specific loads, and we are
`acknowledging that the STMicro datasheet does not
`mention LED loads. Fine.
` Therefore, the grounds for
`unpatentability is people of ordinary skill in the
`art would simply look to Biebl, which again is an
`integrated circuit to drive an LED load, and say
`yeah, you can just take the standard integrated
`circuit, in fact use it on many different types of
`loads, and a very specific type of load you can
`use it on is an LED load. Therefore, not
`patentable. Not patentable in light of these two
`references, in light of these two specific driver
`circuits, integrated circuits, driver circuits and
`architecture to drive generic loads in the case of
`the STMicro datasheet and specifically to drive
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`Conference Call
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`LEDs in the case of Biebl.
` That is the ground by which this trial
`has been instituted. That is the ground by which
`we need to be focused on within --
` JUDGE QUINN: Mr. Radulescu, we
`understand the grounds. It is the combination of
`STMicro with Biebl. Can you address the specific
`contention that the component --
` MR. RADULESCU: Sure.
` JUDGE QUINN: -- and where in the
`petition do you have to support for that. You
`said Pages 31, 32 of your petition?
` MR. RADULESCU: Pages 31 to the end
`articulates the theory of unpatentability and this
`is where the Philips' response comes into play.
` What Philips then did in response was
`they said you have two integrated circuits, and it
`started nitpicking and saying here is a component.
`One example is this U-battery and you can't just
`simply swap it out and put in the flyback, the
`flyback configuration in STMicro. They, in fact,
`identify many different differences on the
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`Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
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`specific components and said these things are not
`compatible, these things are not interchangeable.
`And they look at it from a perspective that we
`were trying to argue oh, you can substitute this
`feature for that feature as opposed to what we
`really argued in the ground for unpatentability,
`which I just articulated.
` So one of their examples was the
`argument that oh, the specifics are different and
`incompatible. They pointed to the DC chopper
`circuit, at Page 16 of their response. They
`argued that this DC chopper circuit in Biebl was
`different from and incompatible with the flyback
`topology in STMicro, and therefore that's a
`difference and therefore you can't swap these very
`specific components, but that was not the argument
`for the grounds of institution.
` JUDGE QUINN: What page are you on on
`the response?
` MR. RADULESCU: In their response at
`Page 16 they are making this argument about the
`specific incompatibility of a very specific
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`Case IPR2015-01287; IPR2015-01290; IPR01291; IPR2015-01292
`Conference Call
`July 20, 2016
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`feature in the circuit. They cite to the same
`Paragraph 57, so they are now doing this very
`specific swapping of features, and our position is
`that this is their argument. Their argument is
`that these specific features can't be swapped,
`even though as I told you earlier the STMicro
`datasheet discloses all of those features. The
`only thing it doesn't disclose is driving an LED
`load, so it's not really addressing the grounds
`for institution.
` In any event, we, of course responded
`to it in reply. We are the ones in reply that
`went through and explained how they have actually
`mischaracterized the ground and they are
`mischaracterizing the basis for our assertion of
`unpatentability. And then eventually we get to
`the substance of the merits of this argument and
`we say what are you talking about? We can swap
`the U-battery with the flyback regulator because
`they are insubstantially, insignificantly
`different. It's not a big deal. People of
`ordinary skill in the art know how to swap out
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`Conference Call
`July 20, 2016
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`power supplies.
` And that's what we responded to. We
`did it in our reply, and we did it in connection
`with a declaration by our expert.
` And so our position is that the
`arguments that they are raising are not arguments
`that are new. We are simply addressing one of
`their off-point arguments in the response, and we
`feel that we should be allowed to at least also
`explain, in addition to why their response is not
`legally relevant to the grounds for institution,
`we should also be allowed to explain why it has no
`basis in connection with -- in connection with,
`you know, their factual assertion that someone of
`ordinary skill in the art wouldn't know how to
`swap power supplies.
` And so at a high level, again, it's
`not a new theory of patentability and, therefore,
`this motion, if you are addressing the merits, the
`merits of the motion, we, of course -- if it's
`allowed to file we will, of course, address the
`merits and we will go through all this in
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`connection with our response to the motion.
` And if we are looking at a procedural
`level as to what they should be allowed to file it
`in the first place, my -- you know, clearly,
`clearly looking at the merits of the motion as the
`hurdle, it's probably going to be very difficult,
`and we acknowledge that in terms of the Board's
`ability to substantively analyze an argument on
`the fly, you know, it's very difficult to address
`this on the merits. And we will do so in any
`response to the motion.
` But as a procedural matter, in light
`of what you heard from the Petitioner arguing that
`it's a new argument for patentability and this is
`something they could not address in their
`surreply, only on that basis, the motion should be
`denied because they didn't really mete out and
`make out their prima fascia case as actually
`having something to complain about.
` And that's my response on the first
`petition, and as I indicated earlier we are
`prepared to go through all of the other three if
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`the Board so desires.
` JUDGE QUINN: Okay.
` Patent Owner, do you have a response
`to Mr. Radulescu's argument?
` MR. HO: Yes, Your Honor. This is
`Kenie Ho again. Just a couple of points.
` Mr. Radulescu points to Pages 31 to
`the end of their original petition as presenting
`their original grounds for the STMicro datasheet
`and the Biebl patent for institution of the IPR.
`And in those pages, as I mentioned earlier, what
`they proposed in their argument for obviousness
`was to modify an error amplifier or a current
`sense comparator in the flyback regulator circuit
`of the STMicro datasheet so that it can sense
`current to an LED. That was their argument in
`their petition, and they argued that the Biebl
`patent provided motivation to do so.
` Looking at their reply, and
`specifically the sections that we are asking to be
`struck at Page 11 of the reply, second sentence,
`first paragraph, they point out that -- and I
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`Conference Call
`July 20, 2016
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`quote -- in addition to utilizing the STMicro IT
`to drive an LED system load, a person of ordinary
`skill in the art would have alternatively been
`motivated to replace the battery of Biebl with the
`flyback regulator at the STMicro datasheet.
` This is exactly the new argument that
`they themselves have argued in the reply as an
`alternative argument.
` JUDGE QUINN: But how come this is not
`in response to your argument that it wouldn't have
`the knowledge to do so?
` MR. HO: Our arguments it would have
`been obvious to do so was relating to how they
`were arguing that the error amplifier and the
`current sense comparator, the configuration of
`those two would be modified, and they present a
`specific modification in their petition to argue
`for obviousness. And they respond to that
`argument at the beginning of the reply,
`Section 3.A.
` In Section 3.B following that, they
`present now a new alternative argument which, as I
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`mentioned earlier, when we deposed Mr. Tingler, to
`try to make sure that we didn't overlook something
`in Petitioner's petition. Sometimes maybe there
`is some argument that we just maybe didn't
`understand. Maybe that was the case, but in order
`to make sure that wasn't the case we asked
`Mr. Tingler if he had presented this alternative
`combination of the STMicro datasheet with the
`Biebl patent and he stated no. They had never
`presented this before.
` So that's the response to
`Mr. Radulescu's argument.
` JUDGE QUINN: Okay.
` MR. RADULESCU: Your Honor, I have two
`brief, two brief responses, if I may, to what I
`just heard.
` The first is, I will point the Board
`specifically to the Patent Owner's response at
`Page 16, the last full sentence, and I will read
`it into the record because this is what we
`responded to. And Your Honor was correct, that
`why wasn't what Petitioner argued in reply just
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`simply responding to a position that Philips took
`in connection with their response, and this is
`their statement.
` It says at Page 16 of their response,
`it says, Accordingly, the DC chopper in Biebl --
` JUDGE QUINN: Hold on, Mr. Radulescu.
`Give me a second here to find it.
` MR. RADULESCU: Okay. Page 16 of the
`response.
` JUDGE QUINN: Okay.
` MR. RADULESCU: At the bottom of
`Page 16, the last full sentence -- do you have
`that?
` JUDGE QUINN: Yes, I'm at Page 16 of
`the Patent Owner's response.
` MR. RADULESCU: And it states that,
`Accordingly, the DC chopper in Biebl is different
`from and incompatible with the flyback topology in
`STMicro, and replacing transistor T in Biebl with
`the flyback regulator in STMicro would completely
`change the system's behavior, citing to
`Paragraph 57 of the Zane declaration.
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`Conference Call
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` Okay? That is their argument for
`somehow some basis to support patentability -- and
`even though I believe it is inconsistent with what
`we argued in the original position, but they are
`the ones -- they are the ones that raised it. And
`what you got to understand is that the DC chopper
`that is referenced here is, in fact, the battery,
`U-battery. That is what it is in the Biebl
`reference.
` And so it was Patent Owner that raised
`this argument about swapping it, batteries not
`incompatible or batteries being incompatible with
`the flyback topology in STMicro, and our position
`is that's nonsense. It's clearly something that
`can be swapped, and we addressed it and put it
`into our reply.
` As a result, this is something that is
`responsive to their argument about incompatibility
`of very specific circuitry. So that is my first
`response to what I heard. And Your Honor was
`directly correct with respect to reply. We are
`allowed to reply to arguments made in the
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`response, and I will cite the C.F.R.
`Section 42.23, Subsection B, where explicitly it
`said a reply may only respond to arguments raised
`in the corr
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