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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`AVX CORPORATION,
`Petitioner,
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`v.
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`PRESIDIO COMPONENTS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00636
`Patent 6,661,639 B2
`____________
`
`Record of Oral Hearing
`Held: May 2, 2017
`____________
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`
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`BEFORE: JUSTIN T. ARBES, BEVERLY M. BUNTING, and
`KIMBERLY McGRAW, Administrative Patent Judges.
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`Case IPR2016-00636
`Patent 6,661,639 B2
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`MICHAEL R. HOUSTON, Ph.D., ESQUIRE
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`PAUL S. HUNTER, ESQUIRE
`
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`Foley & Lardner, LLP
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`
`3579 Valley Centre Drive
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`Suite 300
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`
`San Diego, California 92130
`ON BEHALF OF PATENT OWNER:
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`GREGORY F. AHRENS, ESQUIRE
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`BRETT A. SCHATZ, ESQUIRE
`
`
`Wood, Herron & Evans, LLP
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`
`2700 Carew Tower, 441 Vine Street
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`
`Cincinnati, Ohio 45202-6234
`
`
`The above-entitled matter came on for hearing on Tuesday,
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`May 2, 2017, commencing at 10:22 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-00636
`Patent 6,661,639 B2
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`P R O C E E D I N G S
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`JUDGE McGRAW: Good morning. We will now hear
`argument in case IPR2016-00636 concerning patent number
`6,661,639 with AVX Corporation as the petitioner and Presidio
`Components Incorporated as the patent owner. I am Judge
`McGraw. To my right is Judge Arbes. Appearing remotely is
`Judge Bunting from the Detroit office, who I understand can hear
`us. I apologize for the issues that we are having, but hopefully
`we should be able to proceed without further problems. I'll start
`with the parties' appearances. Petitioner?
`MR. HOUSTON: Yes, Your Honor. Michael Houston.
`And with me, my colleague, Paul Hunter, of Foley & Lardner on
`behalf of petitioner, AVX.
`JUDGE McGRAW: And patent owner.
`MR. AHRENS: Greg Ahrens and Brett Schatz on
`behalf of the patent owner, Presidio.
`JUDGE McGRAW: Thank you. Welcome.
`JUDGE BUNTING: Excuse me, counsel, this is Judge
`Bunting. Unless you are standing at the microphone, I cannot
`hear you. So I missed the last speaker.
`MR. AHRENS: I apologize, Your Honor. Can you
`hear me now?
`JUDGE BUNTING: No.
`MR. AHRENS: How about now?
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`JUDGE BUNTING: No, that's actually worse.
`MR. AHRENS: So Gregory Ahrens and Brett Schatz
`on behalf of patent owner.
`JUDGE McGRAW: We are going to see if we can fix
`this because you are not able to hear the parties speaking at the
`main podium. So I want to make sure that Judge Bunting can
`hear what is going on.
`JUDGE BUNTING: Judge McGraw, I can hear you
`well. It's just the parties I can barely hear.
`JUDGE McGRAW: Do you want to try speaking
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`again?
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`MR. AHRENS: Testing 1, 2, 3.
`JUDGE BUNTING: No, I can barely hear.
`(Pause in the proceedings.)
`JUDGE McGRAW: While we resolve that, I'll cover
`the procedures that we are going to follow today and which were
`set forth in the scheduling order. This hearing is open to the
`public and a full transcript of it will become part of the record.
`Each side will have 45 minutes to present their argument. The
`petitioner, of course, has the burden of proving unpatentability, so
`will argue first and may reserve time for rebuttal. Afterwards,
`patent owner will present, and then petitioner may use the rebuttal
`time to rebut patent owner's argument.
`Please bear in mind that Judge Bunting is appearing
`remotely and does not have the video. So we ask that you please
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`refer to each slide by slide number so that Judge Bunting is able
`to go to the correct slide. And if it turns out that we need extra
`time to allow Judge Bunting to get to the slide number, we'll see
`how that proceeds.
`Are there any questions at this point? So now we are
`going to see if Judge Bunting can hear properly us.
` (Discussion off the record.)
`JUDGE McGRAW: Petitioner, how much rebuttal time
`would you like to reserve?
`MR. HOUSTON: Fifteen minutes, Your Honor.
`JUDGE McGRAW: Okay. Whenever you are ready,
`you may begin.
`MR. HOUSTON: Before I begin, Your Honors, I have
`hard copies of the demonstratives. I think typically the panelists
`don't need those, but I have them here if anyone would like them.
`JUDGE McGRAW: I'm okay.
`JUDGE ARBES: Yes.
`MR. HOUSTON: Good morning, Your Honors. May it
`please the Court, I'm going to be using my demonstratives to help
`guide my remarks today, and I would like to go ahead and turn to
`slide 2 of the demonstratives just to set the stage for my remarks.
`The entries on slide 2 show the grounds that were instituted for
`trial, and the ones that are highlighted more in black text as
`opposed to the slightly grayed-out text show the ones that were
`expressly argued by patent owner in the patent owner response.
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`So those are the ones that I will be focusing on today during my
`oral argument, of course, starting mostly with the Liebowitz and
`Devoe combination that was argued at length between the parties
`and moving on to the others as time permits and as the panel
`desires, of course.
`Slides 3 and 4, Your Honors, just reproduce claim 1 of
`the patent, of the '639 patent and show some of the key figures.
`I've inserted those in case we need to talk about some of the
`specifics. We can come back to those as needed.
`Slide 5 juxtaposes claim 1 with a couple of the key
`figures from the prior art, in particular, Liebowitz and Devoe on
`slide 5. And then an extra figure from Veater is shown on slide 6.
`And the point I would like to make, Your Honors, at the outset is
`that patent owner doesn't seem to be contesting that all of the
`elements of the claims are found somewhere in the prior art.
`What this case is hinging on is whether or not there's a motivation
`to combine the prior art references or, slash, a teaching away
`from doing that. So again, that is where I will focus my remarks.
`On slide 7, then, I have summarized and listed what the
`four primary arguments are that patent owner has made with
`respect to combining Liebowitz and Devoe. And our position is
`that these arguments are wrong or insufficient for two reasons.
`Number one, we actually think they are technically incorrect.
`They are just not true. And I'm going to go through in summary
`fashion the reasons why we believe that. But the second point
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`that I will make is that even if they were true or even assuming
`arguendo that there is some truth to them, we don't think they are
`legally sufficient to constitute a teaching away in this case.
`So I'm going to jump into argument number 1, which
`was that Liebowitz allegedly teaches away from being combined
`with Devoe in order to avoid the higher inductance that allegedly
`result from such a combination. That teaching away comes from
`the quote from Liebowitz that's reproduced here on slide 8 of the
`demonstratives and really comes right from the middle here that it
`says this high inductance drawback also applies to devices with a
`single dielectric layer with a buried electrode that's connected
`through vias. And Your Honors, the reason we think this fails
`from a technical perspective is to begin with, this passage from
`Liebowitz can't be talking about Devoe itself because Devoe
`didn't issue, wasn't published, didn't become public until after
`Liebowitz was submitted. What this is talking about is there were
`known buried layer devices in the art as of that time.
`JUDGE ARBES: Counsel, that is the feature that you
`are pulling from Devoe that you say a person of ordinary skill in
`the art would add to Liebowitz, right?
`MR. HOUSTON: You are absolutely right, Your
`Honor. And the reason why we say this teaching away is
`insufficient is because Devoe actually solved this problem.
`Devoe acknowledges this problem. It acknowledges that
`inductance is an issue with computers that are moving to higher
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`frequencies and that you want to avoid that problem. How does
`Devoe solve that problem? Well, it's shown right here on slide 9
`of my demonstratives. Devoe recognizes that there is a need for
`low inductance and it solves that problem by proposing what it
`refers to as this massively redundant interconnected vias.
`So an example of that is shown in Figure 3B of Devoe
`that's also on the slide here where it shows all the multiple vias,
`they are labeled 13A and 13B, that connect the outer electrode to
`the inner electrode. And what Devoe explains is that that's
`exactly how you avoid this inductance problem and the ESR
`problem. That's how you get good high frequency performance.
`And so Liebowitz wasn't teaching away from this. This wasn't
`even in the art at the time. It was teaching away from the more
`standard buried layer structures. Devoe comes along and says
`this is how you solve that problem.
`JUDGE ARBES: From a higher perspective, if I have a
`reference that says there is a drawback to doing something and
`therefore, I'm going to avoid doing that, that's my invention, is to
`avoid that, why is that not a teaching away? You are saying a
`person of ordinary skill in the art would turn around and do the
`very thing that the reference says it wants to avoid. Why is that
`not a teaching away?
`MR. HOUSTON: Well, I think there's a couple of
`answers to that, Your Honor. First of all, it would certainly be
`our position that all Liebowitz is doing is expressing a preference
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`for one alternative over another. We know from In re Gurley that
`just because a prior art reference says, hey, this alternative here is
`better than this one, it doesn't make the lower performing
`alternative suddenly patentable, patentably distinct.
`JUDGE ARBES: Isn't that a little bit different? It does
`say there's a drawback to it. It says there's an undesirable
`property. That's a little bit different than saying X is better than
`Y, right?
`MR. HOUSTON: Your Honor, I think these are
`trade-offs. So, yes, it's saying that if you go to the buried layer
`structures that were known in the art at that time, which again, we
`don't think it includes this solution that's proposed by Devoe, but
`there is a drawback to higher inductance, one of ordinary skill in
`the art is also going to be weighing those factors. And what
`Devoe says is, hey, there's an advantage to go into this structure
`that allows you to get the higher capacitance. It allows you more
`flexibility with the dielectrics you use. It allows you to get a
`better form factor. So Devoe lists a whole bunch of advantages.
`So one of skill in the art is kind of engaged in a
`weighing game of weighing inductance versus these other
`advantages from Devoe. And again, I come back to the fact that
`what Liebowitz was teaching away from wasn't Devoe. Devoe
`wasn't even in the art at the time Liebowitz was filed. Devoe
`comes along later and says here is how you solve that problem,
`here is how you accomplish the advantages that we want to
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`accomplish while avoiding this high inductance drawback
`problem.
`JUDGE ARBES: Why would a person of ordinary skill
`in the art look to a reference like Devoe in the first place? I see
`your point how it may solve the problem, but why would such a
`person look to a reference that does the very thing that Liebowitz
`says to avoid? Isn't that counterintuitive?
`MR. HOUSTON: We know that when we conduct the
`obviousness analysis, we are looking at all the prior art, the
`analogous prior art. And certainly Devoe is in the same field of
`invention, so a person of ordinary skill in the art is going to be
`aware of Devoe. And if we actually go ahead and flip to slide 11,
`this gets me a little bit ahead here, slide 11 on the right, the
`excerpt from column 8 of Devoe, for example, discusses all the
`advantages of Devoe. Here is why you want to look to this
`structure. So a person of ordinary skill in the art, sure, they are
`going to know Liebowitz and see what Liebowitz says, but they
`are not going to be oblivious to Devoe. They are charged with
`knowing what Devoe says also. And Devoe says here is all these
`advantages for why you should adopt this type of structure. And
`by the way, we solved the inductance problem at the same time.
`In my mind, Your Honor, that's what I think the situation is.
`I think another piece to it, which again, I was going to
`get to later is that what the US v. Adams case tells us is that you
`don't get to claim a patentable invention just because you go
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`forward with a design that the prior art says has problems and you
`just go forward with it anyway and accept those problems. You
`can't just close your eyes to the problems that were expressed in
`the prior art and say I'm going to do it anyway; give me my patent
`without solving in any of those problems. That's what I think the
`proposition in US v. Adams stands for.
`And the reason that's relevant here is that's exactly what
`the inventors did. They have adopted the exact same structure
`that would be Liebowitz combined with Devoe without solving
`any of those problems. They certainly didn't solve the inductance
`problem. Their expert, Dr. Randall, says they weren't even trying
`to do that. The word inductance isn't even mentioned in the '639
`patent. So they are not trying to solve that problem. And they
`didn't solve that problem to the extent it exists even if you
`incorporate the features from Devoe.
`They didn't solve the other problems, the supposed
`lower capacitance problems that we saw, they allege occurs from
`the use of margins. They didn't solve the alleged problems that
`occur with the extra manufacturing steps. They just took all of
`that and just said give us our patent on this; we are not going to
`solve the problems, but we want a patent. That's not what the
`teaching away case law allows for, Your Honor, in our opinion.
`Another issue I want to point out, Your Honor, which
`dovetails, I think, with some of your questions can be illustrated
`here on demonstrative slide 10, which is the fact that this
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`inductance problem that Liebowitz mentions is actually far
`overblown. I mean, I think Liebowitz makes those statements it
`does in order to try to get allowance of its claims. It actually
`amended the claims to say, okay, I'm going to claim something
`with no vias. That wasn't in the original claims of Liebowitz. It's
`something they added during prosecution.
`JUDGE ARBES: But counsel, the language about
`avoiding, that was in the specification presumably as originally
`filed, right?
`MR. HOUSTON: The language about there being a
`high inductance drawback was in the specification, yes, Your
`Honor.
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`JUDGE ARBES: So that wasn't added?
`MR. HOUSTON: No, no, that was not added. That's
`why I say that piece of it couldn't be talking about Devoe because
`Devoe wasn't in the art at that time. So it's not teaching away
`from Devoe. Again, this is our argument. It's not teaching away
`from Devoe. It's teaching away from the earlier known buried
`layer devices.
`JUDGE ARBES: So a reference doesn't need to talk
`about a specific other reference to teach away from the invention.
`It didn't need to talk about Devoe specifically to teach away from
`it, right?
`MR. HOUSTON: Well, Your Honor, I think there's
`actually some nuances to that question because it was teaching
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`away -- allegedly teaching away from a certain type of structure.
`Devoe comes along and proposes a similar but different structure
`that overcomes that problem. So they are trying to rely on just
`this sentence from Devoe as saying one of skill in the art would
`understand that it teaches away. And that's just not, I think, an
`accurate representation and it's also not legally sufficient. You
`are supposed to assess the prior art as a whole even when doing
`the teaching away analysis.
`So, yeah, the specification doesn't expressly mention
`Devoe. It couldn't have. Had it known about Devoe, it would be
`interesting to see what they might have said in the specification
`about Devoe's proposed solution. And I think maybe this would
`be a fair time to point out that I asked Dr. Randall, patent owner's
`expert, if he could say that the structures of Devoe, in fact, would
`have higher inductance. He said, no, I can't say that. I would
`have to model them or test them, and I haven't done any of that.
`So I can't say whether Devoe has higher inductance compared to
`the other devices or not. And just so Your Honors don't have to
`hunt for that, that would be at, say, page 96 and again at page 99
`of Dr. Randall's deposition testimony, Exhibit 1018. And then
`again starting at page 101, he goes on to explain how the
`invention of the '639 patent doesn't even fix this so-called
`problem of the inductance.
`So Your Honors, if I could turn back real quickly to
`what I was going to say about slide 10, which is that both experts
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`also acknowledged that the way these devices were mounted and
`are mounted is through the use of a wire bond. And that's
`illustrated in Figure 10 from Devoe that's shown here on
`demonstrative slide 10. And what both experts admitted is that
`that wire bond actually causes an order of magnitude more
`inductance to occur in these devices than from the device itself,
`and it's because of that long wire there. And so as our expert,
`Mr. Galvagni, explained in his reply declaration, in 2002, a
`person of ordinary skill in the art really wasn't that concerned
`with inductance. And if they were concerned with inductance, it
`was more from the context of what arose from the bonding of
`these things, their connection to the computer board. Not the
`device itself. He designed these things. He worked on designing
`actual single layer capacitor products prior to 2002.
`JUDGE ARBES: Even if that's true, Liebowitz
`obviously was concerned with higher inductance.
`MR. HOUSTON: Again, Your Honor, I think what
`Liebowitz was doing is trying to find a way to tout its invention
`and saying here is why I should get a patent, here is why I should
`get some patent claims to what I was doing. So he was trying to
`draw a distinction over prior art devices. But I think under
`In re Gurley that says just because you say one structure is better
`than another doesn't mean that the lower performing structure is
`suddenly patentable.
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`JUDGE ARBES: It was obviously a concern of
`Liebowitz, I mean, enough that that's the solution that they had,
`that Liebowitz had, right?
`MR. HOUSTON: That's the solution Liebowitz had.
`And Devoe comes along later and comes up with a different
`solution. You are right, Your Honor.
`So in any event, what Mr. Galvagni and Dr. Chung
`explained in the reply declarations is that the real concern over
`inductance would have been with the bonding and not with the
`structure itself. Basically the inductance of the structure itself
`amounts to background noise when you put this in the context of
`how these things are actually used in the real world.
`If I could move on, Your Honor, to one of the other
`technical points that patent owner made, which was you wouldn't
`combine these two references because it would result in lower
`capacitance, and certainly I think all the experts agree that
`capacitance is a desirable property. We are trying to get high
`capacitance in these devices.
`The arguments that patent owner raised were twofold.
`Number one, they said if you use the structure of Devoe, you
`would have margins and these margins would decrease your
`capacitance and therefore, no one would ever do it. And what we
`wanted to point out is illustrated here on slide 12, Your Honor.
`The use of margins was widely known, well accepted in the art
`even as of 2002. On the right is an excerpt from one of patent
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`owner's exhibits. It's a product catalog which Dr. Randall
`admitted was representative of the types of products available in
`2002. It shows all sorts of designs where their margins were in
`use.
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`And then even Liebowitz anticipated using margins.
`The figure there 1B on the left is a design where you can see that
`top electrode has a margin around it on the edges. So this idea
`that margins would be a concern to a person of ordinary skill in
`the art such that they would never consider using Devoe, we don't
`think -- just doesn't hold water. Margins were well known,
`widely adopted and used in the industry.
`I don't need to go into it today necessarily, but the
`reasons for that were explained in Devoe. He explains them. I
`have a couple of cartoons on the next slide, 13, that shows the
`reasons why you used margins at that time. So that problem, the
`problem with this epoxy coming up and shorting out your
`capacitor was actually more of a problem than what they were
`concerned about with the margins.
`And on top of that, patent owner and their expert really
`exaggerate this margin issue. The margins in use at that time
`were much, much smaller than what patent owner's experts
`recites in his declaration. So the effect is that much smaller.
`The other main argument that they use for avoiding this
`to avoid lower capacitance is the dielectric thickness issue. They
`say, oh, Liebowitz proposes some examples that have much
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`thinner dielectrics than Devoe and therefore, since capacitance
`varies inversely with a dielectric thickness, then you just want to
`use Liebowitz and its very thin dielectrics and not use Devoe.
`Our response to that is that first of all, Liebowitz
`discloses a number of embodiments, not all of which are at that
`ultra thin dielectric thickness. It discloses many embodiments
`that are on the order of one, two, three, mills, and that's closer to
`the traditional SLC dielectric thickness. And that's where Devoe
`comes in and says, a-ha, by using my design, you can reduce that.
`You can get a smaller dielectric thickness and improve your
`capacitance. So at least as to some embodiments of Liebowitz,
`the teachings of Devoe are perfectly applicable and would give
`you the advantages that Devoe teaches.
`The other thing I'll point out, Your Honors, is that now
`we have to go back to demonstrative slide 11, which is why I had
`this in there, the ultra low thickness example that patent owner
`points to, this .00001 thickness for the dielectric which I believe
`converts to .01 mills, certainly that's a very thin dielectric. We
`agree. However, that example, as you can see from the quote
`there from column 7 of Liebowitz, is specific to a very specific
`dielectric material. They sputter titanium and then oxidize that to
`get titanium dioxide. So that particular embodiment is limited to
`that material. The reason that's relevant is because titanium
`dioxide, as Liebowitz reports, has a dielectric constant of only 90.
`So where I'm going with this, Your Honors, is there's more than
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`one variable in the equation for calculating capacitance. It's
`actually proportional to dielectric constant and inversely
`proportional to the thickness of the dielectric. So because this
`titanium has a dielectric constant of only 90, the fact that it has an
`ultra thin layer, those two things sort of offset each other.
`If we compare that to what Devoe discloses, it, for
`example, mentions some of the dielectric materials, one of which
`is this X7R you see at column 8, line 65. Well, we know from
`the contemporaneous technical article, Exhibit 1015, we have a
`contemporaneous technical article from the same Devoe
`inventors, and in that technical article, it discloses the same
`structure as Devoe. It talks about all the different dielectrics that
`you can use in these devices. One of them is the X7R. And we
`see the dielectric constant there goes up to 4,000. So the
`dielectric constant is so much higher than titanium dioxide, it
`makes up for the thinner layer that you get with titanium dioxide.
`And what we see down here at the bottom of the table in this
`Devoe technical article is that there are other dielectrics you can
`use that have dielectric constants going all the way up to 140,000.
`So again, a person of ordinary skill in the art is going to know
`that with the structure of Devoe, you actually have a lot more
`flexibility and variability, and you can choose dielectric materials
`that have dielectric constants that will ultimately give you a much
`higher capacitance than the example that they rely on from
`Liebowitz, which is sort of missing a large part of the story
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`because they don't factor into this dielectric constant issue. They
`simply look at only dielectric thickness, and that's only half the
`story here.
`So Your Honor, I know we've already talked about it.
`Maybe I'll put this slide 15 up so I can touch upon this again.
`Here I have a couple of case law quotes that we think are
`perfectly relevant to this situation. The first is US v. Adams. This
`is not to say that one who merely finds new uses for old
`inventions by shutting his eyes to their prior disadvantages
`thereby discovers a patentable innovation. We think that's
`exactly what patent owner has done here. They are just taking the
`known structures in the art and they are trying to rely on
`Liebowitz saying, well, there's this inductance drawback and say
`that that's why their invention should be patentable. But they
`haven't solved that problem. They just closed their eyes to that
`stated disadvantage.
`And again, I can provide some quotes from patent
`owner's expert where he acknowledges that at page 101 to 103 of
`his deposition transcript, Exhibit 1018, he admits the '639 patent
`didn't fix the problem of increased inductance. At pages 152 to
`155, he admits that the '639 patent doesn't overcome any of the
`alleged problems of combining Liebowitz and Devoe. So it's not
`just inductance. It's capacitance. It's the extra processing steps.
`It's all those things that patent owner has listed for why you
`shouldn't combine those things. Patent owner's expert admits that
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`the '639 patent doesn't overcome any of those. And then he also
`goes on to say at page 123 to 127 that there's nothing surprising
`or unexpected about the combination of the elements from
`Liebowitz and Devoe. So nothing surprising or unexpected. So
`we think that those admissions combined with the case law on
`teaching away illustrates that you simply can't rely on that one
`sentence from Liebowitz as a teaching away, especially since it's
`not even talking about the solution that's proposed in Devoe.
`On the next slide I have a quote from the case that
`patent owner attempts to rely on, the Syntex v. Apotex case. It
`says the reference will teach away when it suggests the
`developments flowing from its disclosure are unlikely to produce
`the objective of the patented invention. Well, this is telling us
`that we have to look to what the objectives were of the patented
`invention. So that dovetails with what I was just arguing and the
`admissions from patent owner's experts, why that's so relevant.
`He is admitting that the objective of the invention here wasn't to
`produce a low inductance device. And so that's what's relevant
`when you are considering this teaching away argument from
`Liebowitz. It wasn't something they set out to do. So a person of
`ordinary skill in the art wouldn't -- so what, why do I care about
`inductance? I don't care about inductance for doing what the
`patent owners are now trying to claim in their claims.
`In fact, on the next slide I juxtaposed a few of what the
`stated purposes were of the two inventions. On the left are some
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`excerpts from the '639 patent. On the right are some excerpts
`from Devoe. We see a lot of the same language, a lot of the same
`stuff: Make them less expensive, the same capacitance for a
`smaller volume or better form factor, miniaturization, making
`them monolithic, making them more structurally strong,
`improving the structural strength. These are all the same
`purposes that the '639 patent says it was trying to achieve. We
`find all those same purposes listed in Devoe. We think that's
`what a person of ordinary skill in the art is going to be
`considering.
`JUDGE ARBES: What case law would you point us to,
`to say that we should look at the purpose of the '639 patent for
`purposes of evaluating whether Liebowitz teaches away?
`MR. HOUSTON: I think it's right there on slide 16,
`Your Honor, the Syntex v. Apotex case. It talks about the
`objective of the patented invention.
`JUDGE ARBES: How do you account for the other
`case law that says a reference will teach away when it criticizes,
`discredits or discourages someone from following the path set out
`by the claim?
`MR. HOUSTON: I think that's a great point, Your
`Honor. The way I would distinguish the two is the following: I
`know it was just sort of a summary of the case law, but what it's
`talking about is the path that the inventor set out upon, what did
`they try to do. That's what this is talking about, the purpose or
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`the objective of the invention. And what we know is that it was
`not the purpose or the objective of the inventors of the '639 patent
`to produce a low inductance device. So I think those two case
`law pieces fit together perfectly.
`JUDGE ARBES: Part of the claim is the very
`minimizations and the vias regardless of the purpose of the
`invention. That's part of the claim. So I think the question is
`whether Liebowitz teaches away from keeping the device of
`Liebowitz and adding those things that are in the claim.
`MR. HOUSTON: Well, again, Your Honor, so I'm not
`sure what else to say other than I think that the Syntex case very
`clearly states, and I bel
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