Paper 35
`Trials@uspto.gov
`571-272-7822 Entered: February 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01600
`Patent 7,834,605 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01600
`Patent 7,834,605 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2016-01600
`Patent 7,834,605 B2
`
`I. INTRODUCTION
`In this inter partes review, Petitioner, Semiconductor Components
`Industries, LLC, d/b/a ON Semiconductor, challenged claims 1, 2, 5, and 9
`of U.S. Patent No. 7,834,605 B2 (Ex. 1001, “the ’605 patent”). After we
`instituted review of all challenged claims, Patent Owner, Power Integrations,
`Inc., filed a non-contingent Motion to Amend seeking cancellation of the
`challenged claims and proposing substitute claims 13–16.
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Patent
`Owner’s Motion to Amend is granted with respect to cancellation of claims
`1, 2, 5, and 9, and denied with respect to proposed substitute claims 13–16.
`
`A. Procedural History
`Petitioner filed a Petition seeking inter partes review of claims 1, 2, 5,
`and 9 of the ’605 patent. Paper 1 (“Pet.”). Patent Owner filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). Applying the standard set forth in
`35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood
`that Petitioner would prevail with respect to at least one challenged claim,
`we instituted an inter partes review of all challenged claims on the sole
`unpatentability ground asserted in the Petition—anticipation under 35 U.S.C.
`§ 102(b)1 by de Sartre.2 Paper 11 (“Inst. Dec.”).
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 102. Because the ’605 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we refer to the pre-AIA version of 35 U.S.C. § 102.
`2 U.S. Patent No. 4,692,853, issued Sept. 8, 1987 (Ex. 1005).
`2
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`Following institution, Patent Owner did not file a Response to the
`Petition pursuant to 37 C.F.R. § 42.120. Instead, pursuant to 35 U.S.C.
`§ 316(d) and 37 C.F.R. § 42.121, Patent Owner filed a Motion to Amend
`that was not contingent on a determination that the original claims are
`unpatentable. Paper 16 (“Mot.”). In its Motion, Patent Owner requested
`that claims 1, 2, 5, and 9 be cancelled and replaced with proposed substitute
`claims 13–16. Mot. 1. Petitioner filed an Opposition to the Motion to
`Amend (Paper 18, “Opp.”), and Patent Owner filed a Reply to Petitioner’s
`Opposition (Paper 21, “Reply”).
`Thereafter, on October 4, 2017, the United States Court of Appeals for
`the Federal Circuit issued its decision in Aqua Products, Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017) (en banc), addressing the burden of persuasion
`that applies when the Board considers the patentability of proposed
`substitute claims in a motion to amend. Following a conference call with the
`parties, we authorized additional briefing on the Motion to Amend.
`Paper 28, 3. Petitioner filed a Supplemental Response to Patent Owner’s
`Motion to Amend (Paper 29, “Pet. Supp. Resp.”), and Patent Owner filed a
`Reply to Petitioner’s Supplemental Response (Paper 31, “PO Supp. Reply”).
`An oral hearing was held on November 15, 2017. A transcript of the
`hearing has been entered into the record. Paper 34.
`
`B. Related Matters
`The ’605 patent was involved in the following district court
`proceeding: Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`No. 1:08-cv-00309 (D. Del.). Pet. 2; Paper 4, 2. An appeal from the district
`court to the United States Court of Appeals for the Federal Circuit was
`pending at the time the Petition and Preliminary Response in this case were
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`filed. See Pet. 2, 25–26; Paper 4, 2. On December 12, 2016, the Federal
`Circuit held claims 1 and 2 of the ’605 patent invalid, reversing a jury
`verdict that claims 1 and 2 were not anticipated by U.S. Patent No.
`4,763,238 to Maige (Ex. 1008). Power Integrations, Inc. v. Fairchild
`Semiconductor Int’l, Inc., 843 F.3d 1315, 1335–38 (Fed. Cir. 2016); see
`Paper 9, 2. Patent Owner did not file a petition for a writ of certiorari to the
`United States Supreme Court within the time period for filing such a
`petition. See Opp. 4.
`
`C. The ’605 Patent
`The ’605 patent describes a switch mode power supply with an
`approximately constant output voltage when the output current is below an
`output current threshold and an approximately constant output current when
`the output voltage is below an output voltage threshold. Ex. 1001, 1:32–38,
`1:51–53. In a described embodiment, the power supply includes a regulator
`circuit that controls the voltage and current at the output of the power
`supply. Id. at 5:31–49, Fig. 4. The regulator includes an internal switch
`(e.g., a power metal oxide semiconductor field effect transistor (MOSFET))
`coupled to the primary winding of the power supply’s energy transfer
`element (e.g., a transformer). Id. at 5:37–43, Fig. 4. The regulator may
`modify the duty cycle of the switch to control the output voltage based on
`feedback from the output of the power supply. Id. at 4:50–53, 5:37–39. The
`regulator also may modify the duty cycle by turning off the switch when the
`switch current reaches a current limit. Id. at 5:40–43.
`According to the ’605 patent, there is a fixed delay between the time
`the switch current reaches a current limit threshold and the time the switch is
`finally disabled. Id. at 3:18–24. This results in a current “overshoot” that
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`will vary based on the input voltage of the power supply. Id. at 3:24–27.
`More specifically, at higher direct current (DC) input voltages, the actual
`current limit ramps to a higher level above the current limit threshold than at
`lower DC input voltages. Id. at 3:31–33.
`The ’605 patent attempts to overcome the problem of current
`variations and thereby achieve a power supply with an approximately
`constant output current. Id. at 2:45–50, 3:14–17. The purported solution is a
`power supply regulator circuit that creates a variable current limit threshold
`that increases during the on-time of the switch. Id. at [57], 1:53–59.
`Because the current overshoot is greater at higher DC input voltages than at
`lower DC input voltages, a variable current limit threshold should be lower
`for higher DC input voltages to compensate for the excess current during the
`delay time. Id. at 3:40–44; see Ex. 1003 ¶ 22 (Decl. of Dr. Douglas
`Holberg). Further, because the switch current increases more quickly when
`the DC input voltage is high, a current limit will be reached earlier in a
`switching cycle when the DC input voltage is higher than when it is lower.
`Ex. 1001, 3:45–49; see Ex. 1003 ¶¶ 22–23. Thus, a variable current limit
`threshold that increases from a first level to a second level during the on-
`time of the switch results in an effective current limit (the sum of the
`variable current limit and the excess current during the delay) that is
`approximately constant across different input voltages. Ex. 1001, 3:50–62;
`see Ex. 1003 ¶ 23.
`
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`Figure 1 of the ’605 patent is reproduced below:
`
`
`Figure 1 illustrates an embodiment of a power supply regulator circuit
`described in the ’605 patent. Clock signal 10 sets latch 90 to enable power
`MOSFET 2 (i.e., turn the switch on). Ex. 1001, 4:19–24. Power
`MOSFET 2 is disabled (i.e., the switch is turned off) when latch 90 is reset
`by any one of three inputs to OR gate 85. Id. at 4:24–53. First,
`comparator 32 may reset latch 90 based on the feedback voltage from the
`output of the power supply. Id. at 4:50–53. Second, comparator 70 may
`reset latch 90 when the drain current of MOSFET 2 (at node 37) exceeds a
`variable current limit threshold (at node 22). Id. at 4:29–49. Finally,
`maximum duty cycle signal DMAX 15 may reset latch 90. Id. at 4:24–25.
`As further shown in Figure 1, the variable current limit threshold at
`node 22 comprises a constant component and a variable component. Id. at
`4:32–42. Oscillator 5 generates sawtooth signal 20, which increases during
`the on-time of the regulator circuit switch. Id. at 4:56–61. Sawtooth
`signal 20 is applied to the base of transistor 30 so that the current in
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`resistor 25 linearly increases with the on-time of the switch. Id. at 4:32–37.
`The current through resistor 25 is mirrored by current mirror 40, resulting in
`linearly increasing current source 27. Id. at 4:37–39. The combination of
`constant current source 50 and current source 27 is applied to resistor 17 to
`create a variable current limit threshold at node 22 that linearly increases
`during the duty cycle of the power switch. Id. at 4:39–42.
`Figure 2 of the ’605 patent is reproduced below:
`
`
`Figure 2 illustrates the variable current limit threshold created by the
`regulator circuit of Figure 1. Duty cycle max waveform 15, generated by
`oscillator 5, determines the maximum duration of a switching cycle. Id. at
`4:57–59. Sawtooth signal 20 begins increasing from a low point when duty
`cycle max signal 15 goes high at the beginning of the switching cycle. Id. at
`4:59–62. Sawtooth signal 20 reaches its high point at the end of the cycle,
`when duty cycle max signal 15 goes low. Id. at 4:62–64. Intrinsic current
`threshold 22 starts at a low point, K1, at the beginning of the cycle and
`linearly increases proportionally to the time elapsed during the cycle (e.g.,
`K2*telapsed). Id. at 5:1–4.
`
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`D. Challenged Claims
`Claim 1 is the only independent claim of the ’605 patent and is
`illustrative of the subject matter of the challenged claims:
`1. A power supply regulator, comprising:
`a comparator having a first input coupled to sense a
`voltage representative of a current flowing through a switch
`during an on time of the switch, the comparator having a
`second input coupled to receive a variable current limit
`threshold that increases during the on time of the switch;
`a feedback circuit coupled to receive a feedback signal
`representative of an output voltage at an output of a power
`supply; and
`a control circuit coupled to generate a control signal in
`response to an output of the comparator and in response to an
`output of the feedback circuit, the control signal to be coupled
`to a control terminal of the switch to control switching of the
`switch.
`Ex. 1001, 6:10–23. Challenged claims 2 and 9 depend directly from claim 1,
`and challenged claim 5 depends directly from claim 2.
`
`E. Proposed Substitute Claims
`In its Motion to Amend, Patent Owner proposes claims 13–16 as
`substitutes for original claims 1, 2, 5, and 9, respectively. Proposed claim 13
`adds a new limitation to claim 1, as shown below with underlining indicating
`inserted text:
`13. (Proposed substitute for original claim 1) A power
`supply regulator, comprising:
`a comparator having a first input coupled to sense a
`voltage representative of a current flowing through a switch
`during an on time of the switch, the comparator having a
`second input coupled to receive a variable current limit
`threshold that increases during the on time of the switch;
`
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`a feedback circuit coupled to receive a feedback signal
`representative of an output voltage at an output of a power
`supply; and
`a control circuit coupled to generate a control signal in
`response to an output of the comparator and in response to an
`output of the feedback circuit, the control signal to be coupled
`to a control terminal of the switch to control switching of the
`switch;
`wherein, for each of a plurality of consecutive control
`signal cycles each having a first state and a second state, the
`variable current limit threshold increases during at least a
`portion of the first state of each control signal cycle and
`decreases during at least a portion of the second state of each
`control signal cycle.
`Mot. 5; see also Mot. App’x A, 1. Substitute claims 14 and 16 are identical
`to claims 2 and 9, but modified to depend from claim 13. Mot. App’x A, 1–
`2. Substitute claim 15 is identical to claim 5, but modified to depend from
`claim 14. Mot. App’x A, 2.
`
`II. DISCUSSION
`
`A. Cancellation of Claims 1, 2, 5, and 9
`In its Motion to Amend, Patent Owner requests cancellation of claims
`1, 2, 5, and 9. Mot. 1. Petitioner urges us to deny the Motion as moot with
`respect to claims 1 and 2 because these claims “no longer exist” and have
`been “effectively cancelled” by the Federal Circuit’s ruling that they are
`invalid in Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`843 F.3d 1315, 1335–38 (Fed. Cir. 2016), which Petitioner asserts is binding
`in this proceeding. Opp. 4–6. In a related argument, Petitioner contends that
`because the Federal Circuit’s invalidity judgment precludes Patent Owner
`from requesting cancellation of claims 1 and 2, it also precludes Patent
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`Owner from requesting claims 13 and 14 as substitute claims for claims 1
`and 2. Id. at 6–9.
`As an initial matter, we agree with Petitioner that a final judgment of
`invalidity by the Federal Circuit is binding on the USPTO. See Ethicon v.
`Quigg, 849 F.2d 1422, 1429 (Fed. Cir. 1988); cf. Manual of Patent
`Examination Procedure § 2286 (“A final holding of claim invalidity or
`unenforceability (after all appeals) . . . is controlling on the Office.”). In this
`proceeding, however, we are not called upon to address whether claims 1
`and 2 are unpatentable because Patent Owner’s Motion to Amend requests
`cancellation of those claims and is, therefore, not contingent on a
`determination that those claims are unpatentable. Thus, the Federal Circuit’s
`holding that claims 1 and 2 are invalid is not directly applicable in this
`proceeding to the patentability analysis of any claims.
`As for Petitioner’s contention that the Federal Circuit’s invalidity
`ruling “effectively cancelled” claims 1 and 2 so that they “no longer exist,”
`Petitioner does not cite any authority that requires us to deny the Motion as
`moot with respect to cancellation of claims 1 and 2. See Opp. 5. The case
`cited by Petitioner, Fresenius USA, Inc. v. Baxter International Inc., 721
`F.3d 1330, 1347 (Fed. Cir. 2013), holds that cancellation of claims by the
`USPTO is binding in a pending district court litigation, but says nothing
`about the effect of a court’s invalidity judgment on whether the Board may
`cancel claims in an inter partes review. In any event, as indicated above,
`Petitioner’s primary concern does not appear to be whether the Board may
`cancel the original claims, but instead whether Patent Owner should be
`permitted to propose substitute claims for the claims previously invalidated
`by the Federal Circuit, an issue we address in the next section. See Opp. 6–
`
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`9. Accordingly, we grant Patent Owner’s Motion to Amend with respect to
`the request to cancel claims 1, 2, 5, and 9.
`
`B. Analysis of Proposed Substitute Claims 13–16
`As set forth in Section I.E, supra, Patent Owner seeks entry of
`proposed claims 13–16 as substitutes for claims 1, 2, 5, and 9. Claim 13
`adds the following new limitation to claim 1:
`wherein, for each of a plurality of consecutive control signal
`cycles each having a first state and a second state, the variable
`current limit threshold increases during at least a portion of the
`first state of each control signal cycle and decreases during at
`least a portion of the second state of each control signal cycle.
`
`Mot. App’x A, 1. Substitute claims 14–16 are identical to claims 2, 5, and 9,
`but modified to change their dependencies. For the reasons that follow, we
`deny Patent Owner’s Motion to Amend as to entry of the proposed substitute
`claims.
`At the outset, we briefly address Petitioner’s contention that the
`Federal Circuit’s invalidity judgment with respect to claims 1 and 2 of the
`’605 patent precludes Patent Owner from requesting claims 13 and 14 as
`substitute claims. See Opp. 6–9. Because claims 1 and 2 “no longer exist,”
`Petitioner argues, they “are not capable of being substituted.” Id. at 6–7.
`Thus, according to Petitioner, Patent Owner is attempting to replace the two
`remaining claims (i.e., claims 5 and 9) with four substitute claims (i.e.,
`claims 13–16), which is an unreasonable number in view of the unrebutted
`presumption that only one substitute claim is needed to replace each
`challenged claim. Id. at 6–8 (citing 37 C.F.R. § 42.121(a)(3)). Petitioner
`further contends that Patent Owner should not be allowed to use its Motion
`
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`to Amend as an “end-run” around the Federal Circuit’s final judgment of
`invalidity. Id. at 9.
`In this case, we need not decide whether the Federal Circuit’s
`invalidity judgment has any effect on Patent Owner’s ability to propose
`substitute claims for claims 1 and 2. Even if we determine that Patent
`Owner proposes a reasonable number of substitute claims and we consider
`the Motion to Amend with respect to proposed substitute claims 13 and 14,
`Patent Owner’s proposed substitute claims fail to satisfy certain other
`requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. We
`turn now to those statutory and procedural requirements.
`In its recent en banc decision in Aqua Products, Inc. v. Matal, 872
`F.3d 1290 (Fed. Cir. 2017), the Federal Circuit addressed the burdens of
`proof the Board applies when considering the patentability of substitute
`claims presented in a motion to amend. The lead plurality opinion explains
`that before the burdens of proof or persuasion regarding patentability come
`into play, “the patent owner must satisfy the Board that the statutory criteria
`in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable
`procedural obligations imposed by the Director are satisfied.” Aqua Prods.,
`872 F.3d at 1305–06. After the Federal Circuit’s decision in Aqua Products,
`the Office provided guidance on motions to amend. See “Guidance on
`Motions to Amend in view of Aqua Products” (Nov. 21, 2017)
`(“Guidance”).3 As explained therein, a motion to amend in an inter partes
`
`
`3 The guidance memorandum is publicly available at
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf.
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`review must meet the procedural requirements of 37 C.F.R. § 42.121 in
`addition to the statutory requirements of 35 U.S.C. § 316(d). Guidance 2.
`One requirement set forth in § 316(d) is that an amendment made via
`a motion to amend “may not . . . introduce new matter.” 35 U.S.C.
`§ 316(d)(3); see also 37 C.F.R. § 42.121(a)(2) (“A motion to amend may be
`denied where . . . [t]he amendment seeks to . . . introduce new subject
`matter.”). In order to show an amendment does not introduce new matter, a
`motion to amend must set forth written description “support in the original
`disclosure of the patent for each claim that is added or amended.” 37 C.F.R.
`§ 42.121(b)(1); see also Guidance 2 (stating that “a motion to amend must
`set forth written description support . . . in relation to each substitute claim”).
`The test for compliance with the written description requirement of
`35 U.S.C. § 112 is whether the disclosure of the application as originally
`filed reasonably conveys to those skilled in the art that the inventor had
`possession of the invention that is now claimed as of the filing date. Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
`banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
`1991).
`In its Motion to Amend, Patent Owner contends that the substitute
`claims do not introduce new matter and that the claimed subject matter is
`supported by the disclosure of Provisional Application No. 60/325,642
`(Ex. 2011, “the ’642 application”), to which the ’605 patent claims priority.
`Mot. 6–15; see Reply 7–10; PO Supp. Reply 1–8. In response, Petitioner
`alleges that the ’642 application fails to provide written description support
`for various portions of the “wherein” limitation recited in proposed
`substitute claim 13. Opp. 13–21; Pet. Supp. Resp. 1–8. We consider the
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`parties’ arguments and evidence regarding the written description
`requirement below after addressing two preliminary issues.
`
`1. Level of Ordinary Skill in the Art
`Based on the testimony of its declarant, Dr. Arthur W. Kelley, Patent
`Owner asserts that a person of ordinary skill in the art at the time of the
`invention of the ’605 patent “would have had a bachelor’s degree in
`electrical engineering, physics, or a related discipline, and at least two to
`three years of relevant experience in the field of power electronics or similar
`circuitry.” Mot. 3 (citing Ex. 2010 ¶ 22). Patent Owner further asserts that
`“[a]dditional education, such as an advanced degree in electrical engineering
`or a related field, might substitute for some of the experience, and
`substantial experience might substitute for some of the educational
`background.” Id. (citing Ex. 2010 ¶ 22). Petitioner’s declarant, Dr. Douglas
`Holberg, has a similar view, opining that a person of ordinary skill in the art
`at the time of the invention would have had “a B.S. in Electrical Engineering
`or a related field with at least two years of experience in designing power
`electronics,” or “an M.S. in Electrical Engineering or a related field.”
`Ex. 1003 ¶ 38.
`The two formulations do not differ in any material way. Based on our
`review of the record, we agree with the parties as to the level of ordinary
`skill in the art. For purposes of analyzing the Motion to Amend, we
`specifically adopt Patent Owner’s definition of a person of ordinary skill in
`the art. See Mot. 3; Ex. 2010 ¶ 22.
`
`2. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Patent Owner submits that the new terms in proposed substitute
`claim 13, “first state” and “second state,” have an understood plain and
`ordinary meaning and would have been generally known to a person of
`ordinary skill in the art to refer to a signal having various well-known states,
`such as “on”/“off” or “high”/“low.” Mot. 4. In analyzing whether the
`substitute claims comply with the written description requirement, Patent
`Owner asserts that the “first state” and “second state” of the control signal
`correspond to the on and off times of the switch. Id. at 11 (citing Ex. 2010
`¶ 63). Nevertheless, Patent Owner maintains that “first state” is not limited
`in scope to the “on time of the switch,” a term that appears in claim 1 as
`originally issued. Reply 11; PO Supp. Reply 1.
`Petitioner argues that Patent Owner has failed to provide a proper
`construction because it does not make clear whether the newly added claim
`term “first state” has the same scope as the existing claim term “on time of
`the switch.” Opp. 10–11. In its Supplemental Response, Petitioner proposes
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`its own construction of “first state” as “the state of the control signal cycle
`that occurs during, and is coextensive with, the on time of the switch.”
`Pet. Supp. Resp. 4. According to Petitioner, this is the only construction
`supported by the specification of the original application. Id.
`For purposes of this decision, it is unnecessary for us to determine the
`exact contours of the claim term “first state.” Both parties agree that in the
`embodiment disclosed in the ’642 application, the period of the “first state”
`corresponds to the “on time of the switch.” See Pet. Supp. Resp. 4; PO
`Supp. Reply 1. As discussed below, Patent Owner points to that
`embodiment as providing support for substitute claim 13. Thus, to
`determine whether the ’642 application provides written description support
`for the substitute claims, it is sufficient for us to recognize that the “on time
`of the switch” in the disclosed embodiment corresponds to the “first state” of
`the control signal cycle recited in claim 13.
`
`3. Written Description Analysis
`In its Motion to Amend, Patent Owner contends that Figure 2 of the
`’642 application, which is substantively identical to Figure 2 of the
`’605 patent, provides written description support for the “wherein”
`limitation that proposed substitute claim 13 adds to original claim 1.
`Mot. 10–13. Compare Ex. 2011, Fig. 2, with Ex. 1011, Fig. 2. Patent
`Owner relies on the testimony of its declarant, Dr. Kelley, to support its
`arguments. See Ex. 2010 ¶¶ 62–65.
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`IPR2016-01600
`Patent 7,834,605 B2
`
`Figure 2, as annotated by Patent Owner, is reproduced below:
`
`
`Mot. 11. Annotated Figure 2 illustrates waveforms for sawtooth 20, duty
`cycle max 15, and intrinsic current limit 22 (i.e., the variable current limit
`threshold) in the embodiment disclosed in the ’642 application. Id. As
`Patent Owner explains, duty cycle max 15 defines the potential on times of
`the switch; i.e., each switch on time begins when duty cycle max 15 goes
`high and continues for a maximum period of time that ends when duty cycle
`max 15 goes low. Mot. 11–12 (citing Ex. 2011, 11:2–54 (“The sawtooth
`waveform 20 starts at the low point when the duty cycle max waveform 15
`goes high. This signals the beginning of the power MOSFET switching
`
`
`4 We cite to the page and line numbers of the ’642 application itself, not the
`page numbers added by Patent Owner to the exhibit.
`17
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`IPR2016-01600
`Patent 7,834,605 B2
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`cycle. The high point of the sawtooth 20 is reached at the end of the cycle,
`at the same time the duty cycle max signal 15 goes low.”)).
`Patent Owner asserts that in this embodiment, the only one disclosed
`in the ’642 application (and the ’605 patent), the periods of the “first state”
`and “second state” recited in proposed substitute claim 13 correspond to the
`on time and off time of the switch, respectively. Mot. 11 (citing Ex. 2010
`¶ 63); see PO Supp. Reply 1. Thus, according to Patent Owner, Figure 2 of
`the ’642 application shows that the first state of each control signal cycle
`begins at the start of the rise of sawtooth waveform 20 when duty cycle max
`15 goes high and ends when duty cycle max 15 goes low (unless
`comparator 32 or comparator 70 determines the on time of the switch should
`end earlier (see Ex. 2011, Fig. 1)). Mot. 12 (citing Ex. 2010 ¶ 64). The
`second state of each control signal cycle then begins when the switch turns
`off and duty cycle max 15 goes low. Mot. 12 (citing Ex. 2010 ¶ 64). Patent
`Owner has annotated Figure 2 to identify the periods of time corresponding
`to the maximum possible “first state” and the “second state.”
`Patent Owner also contends that Figure 2 of the ’642 application
`provides support for the following language in the “wherein” limitation of
`proposed substitute claim 13: “the variable current limit threshold increases
`during at least a portion of the first state of each control signal cycle and
`decreases during at least a portion of the second state of each control signal
`cycle.” Mot. 12–13 (citing Ex. 2010 ¶ 65). As shown in its annotations to
`Figure 2, Patent Owner asserts that the variable current limit threshold
`(labeled “intrinsic current limit 22” in Figure 2) “begins increasing at the
`beginning of each switch on time corresponding to each first state of the
`control signal” and “begins decreasing as soon as the maximum duty cycle
`
`18
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`IPR2016-01600
`Patent 7,834,605 B2
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`signal 15 goes low.” Mot. 12 (citing Ex. 2010 ¶ 65). As further support for
`the “increasing” variable current limit threshold language, Patent Owner
`relies on the following disclosure accompanying Figure 2:
`The intrinsic current limit 22 signal starts at the low point at the
`beginning of the cycle and then linearly increases with elapsed
`time throughout the cycle. At a time elapsed of zero, the
`intrinsic current limit is at K1. As time elapsed progresses, the
`current limit increases by a factor of K2 * telapsed.
`Ex. 2011, 11:5–9; see Mot. 12 (citing Ex. 2010 ¶ 65). As further support for
`the “decreasing” variable current limit threshold, Patent Owner cites the
`description of duty cycle max 15 signal turning off the switch (i.e., disabling
`MOSFET 2) by resetting latch 90, as shown in Figure 1. Mot. 12–13 (citing
`Ex. 2010 ¶ 65; Ex. 2011, 9:16–21). Based on Figure 2 and the cited portions
`of the disclosure, Patent Owner and Dr. Kelley conclude that the
`’642 application discloses and supports the “wherein” limitation of proposed
`substitute claim 13. Mot. 10, 13; Ex. 2010 ¶¶ 62, 65.
`Petitioner argues, inter alia, that there is no written description support
`in the ’642 application for “the variable current limit threshold increases
`during at least a portion of the first state of each control signal cycle,” as
`recited in proposed substitute claim 13. Opp. 18–21 (emphasis added); Pet.
`Supp. Resp. 4–8. In particular, Petitioner contends the “at least a portion”
`language is new matter that lacks written description support because “there
`is no support for the variable current limit threshold doing anything other
`than increasing during the entire on time of the switch.” Opp. 18. As
`Petitioner points out, Figure 2 of the ’642 application shows the variable
`current threshold increasing throughout the entire first state (i.e., the on time
`of the switch). Id. at 19. Indeed, Patent Owner’s own annotations to
`
`19
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`Figure 2 make clear that the ’642 application describes increasing the current
`limit threshold during the entire “maximum possible ‘first state.’” See
`Mot. 11. The portion of the written description cited by Patent Owner also
`confirms that the “intrinsic current limit 22 signal starts at the low point at
`the beginning of the cycle and then linearly increases with elapsed time
`throughout the cycle.” Ex. 2011, 11:5–7 (emphasis added); see Mot. 12
`(quoting Ex. 2011, 11:5–9); see also Mot. 8–9 (citing the same disclosure as
`written description support for “a variable current limit threshold that
`increases during the on time of the switch,” recited in proposed substitute
`claim 13 and original claim 1).
`Petitioner directs us to other portions of the ’642 application not cited
`in Patent Owner’s Motion to Amend that further confirm the variable current
`limit threshold increases throughout the entire on time of the switch (i.e., the
`claimed “first state”). Pet. Supp. Resp. 6. For example, the ’642 application
`explains that to achieve the desired result of a reduced intrinsic current limit
`threshold when the DC input voltage is higher, “[i]t is simply necessa
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