UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner
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`v.
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`POWER INTEGRATIONS, INC.
`Patent Owner
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`Case IPR2016-01600
`Patent No. 7,834,605
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`PATENT OWNERS’
`MOTION TO AMEND *
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`B. 
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`TABLE OF CONTENTS
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`i
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`STATEMENT OF RELIEF REQUESTED ........................................................................ 1 
`THE SUBSTITUTE CLAIMS MEET ALL REQUIREMENTS OF 37 C.F.R. § 42.121 . 1 
`CLAIM CONSTRUCTION AND THE PERSON OF ORDINARY SKILL IN THE ART
`............................................................................................................................................. 3 
`THE SUBSTITUTE CLAIMS NARROW THE SCOPE OF THE ORIGINAL CLAIMS 4 
`THE ORIGINAL DISCLOSURE SUPPORTS THE SUBSTITUTE CLAIMS ................ 6 
`A. 
`Independent Substitute Claim 13 Is Supported by the ’642 Application ................ 7 
`“A power supply regulator, comprising” ................................................... 7 
`a. 
`b. 
`“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” ........................................................................................................ 7 
`“a feedback circuit coupled to receive a feedback signal representative of
`an output voltage at an output of a power supply” .................................... 9 
`“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,” ............................................................ 9 
`“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.” ................................................................................ 10 
`Dependent Substitute Claims 14-16 Are Supported by the ’642 Application ...... 13 
`Claim 14: “The power supply regulator of claim [[1]] 13 further
`a. 
`comprising an oscillator having a first output to generate a sawtooth
`waveform, wherein the variable current limit threshold is generated in
`response to the sawtooth waveform.” ....................................................... 13 
`Claim 15: “The power supply regulator of claim [[2]] 14 wherein the
`control circuit includes a latch to provide the control signal, wherein the
`latch includes a reset input coupled to the output of the comparator.” ... 14 
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`c. 
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`d. 
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`e. 
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`b. 
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`

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`Claim 16: “The power supply regulator of claim [[1]] 13 wherein a duty
`cycle of the control signal is modulated in response to an output of the
`feedback circuit.” ...................................................................................... 15 
`THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE PRIOR
`ART................................................................................................................................... 15 
`The de Sartre Patent Does Not Disclose the New Limitations Added to the
`A. 
`Proposed Substitute Claims 13-16 and Therefore Does Not Anticipate the
`Substitute Claims .................................................................................................. 16 
`The Maige Patent Does Not Disclose the New Limitations Added to the Proposed
`Substitute Claims 13-16 and Therefore Does Not Anticipate the Substitute Claims
`............................................................................................................................... 19 
`No Known Prior Art Discloses the New Limitations Added to the Proposed
`Substitute Claims 13-16 and Therefore No Known Prior Art Anticipates the
`Substitute Claims .................................................................................................. 22 
`No Combination of Known Prior Art Renders Obvious The Proposed Substitute
`Claims ................................................................................................................... 24 
`  CONCLUSION ................................................................................................................. 25 
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`B. 
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`C. 
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`D. 
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`c. 
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`ii
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`LIST OF EXHIBITS
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`Exhibit No. Description
`2010
`Declaration of Arthur W. Kelley
`2011
`U.S. Provisional Patent Application No. 60/325,642
`2012
`File History for U.S. Patent No. 7,834,605
`2013
`U.S. Patent No. 5,028,861 (“Pace”)
`2014
`U.S. Patent No. 5,680,034 (“Redl”)
`2015
`Reserved
`2016
`Resume of Arthur W. Kelley, Ph.D.
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`TABLE OF AUTHORITIES
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`CASES
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`Global Tel*Link Corporation v. Securus Technologies, Inc., IPR2015-01225 ........ 2
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) ............................... 24
`Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 ............................................. 2
`In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997) ............................................ 3
`MasterImage3D, Inc. v. RealD, Inc., IPR2015-00040 .............................................. 2
`Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., 843 F.3d 1315,
`1336 (Fed. Cir. 2016) ..................................................................................... 3, 15, 21
`Shinn Fu Company of America, Inc. v. The Tire Hanger Corporation,
`IPR2015-00208 .......................................................................................................... 2
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`OTHER AUTHORITIES
`37 C.F.R. § 42.121 ..................................................................................... 1, 2, 3, 4, 6
`MPEP § 2111.01 ........................................................................................................ 4
`MPEP § 2143 ........................................................................................................... 24
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner Power
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`Integrations (“PI”) moves to amend U.S. Patent No. 7,834,605 (“the ’605 patent”).
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`This motion to amend is not contingent on a determination that the original claims
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`are unpatentable. PI respectfully requests that the Board grant this motion to
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`amend, which seeks to cancel claims 1, 2, 5, and 9 and substitute them with
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`proposed substitute claims 13, 14, 15, and 16, respectively. In particular, PI’s
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`proposed amendment adds a new limitation to original independent claim 1
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`(resulting in proposed substitute independent claim 13) and modifies dependent
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`claims 2, 5, and 9 such that they depend from proposed substitute independent
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`claim 13 (resulting in proposed substitute dependent claims 14-16).
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` THE SUBSTITUTE CLAIMS MEET ALL REQUIREMENTS OF
`37 C.F.R. § 42.121
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`Proposed substitute claim 13 retains all of the original elements of original
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`claim 1 and further narrows the claim by additionally requiring that: “for each of a
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`plurality of consecutive control signal cycles each having a first state and a
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`second state, the variable current limit threshold increases during at least a
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`portion of the first state of each control signal cycle and decreases during at least
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`a portion of the second state of each control signal cycle.” See Appendix A. Each
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`of the proposed substitute dependent claims incorporates this new claim limitation.
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`1
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`PI’s proposed substitute claims meet every requirement of 37 C.F.R. §
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`42.121: (i) the claims do not enlarge the scope of the original claims, (ii) the claims
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`meet the requirements of 35 U.S.C. § 112, and (iii) the claims are patentable over
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`all known prior art. See Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027
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`Decision Motion to Amend Claims, Paper 26 (June 11, 2013); MasterImage3D,
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`Inc. v. RealD, Inc., IPR2015-00040 Order Conduct of Proceedings, Paper 42 (July
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`15, 2015); Shinn Fu Company of America, Inc. v. The Tire Hanger Corporation,
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`IPR2015-00208 Final Written Decision, Paper 24 (April 22 2016); Global
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`Tel*Link Corporation v. Securus Technologies, Inc., IPR2015-01225 Decision on
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`Contingent Motion to Amend Claims, Paper 45 (December 14, 2016).
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`Each of the proposed substitute claims includes a new narrowing claim
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`limitation (either directly in proposed substitute independent claim 13 or indirectly
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`through dependent claim language) and thus the substitute claims do not enlarge
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`the scope of the original claims. See Section IV, infra; 37 C.F.R. §
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`42.121(a)(2)(ii). Moreover, each and every claim element of the proposed
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`substitute claims is supported by the specification of Provisional Application No.
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`60/325,642, to which the ’605 patent claims priority and thus meets the
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`requirements of 35 U.S.C. § 112. See Section V, infra. Finally, the proposed
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`substitute independent claim 13 distinguishes all of the proposed substitute claims
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`over the de Sarte (Ex. 1005) reference at issue in this proceeding, the Maige
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`reference (Ex. 1008) cited in the Federal Circuit’s holding Power Integrations, Inc.
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`v. Fairchild Semiconductor Int'l, Inc., 843 F.3d 1315, 1336 (Fed. Cir. 2016), and
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`all other known prior art. See Section VI, infra. Accordingly, PI’s proposed
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`substitute claims meet the requirements of 37 C.F.R. § 42.121.
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` CLAIM CONSTRUCTION AND THE PERSON OF ORDINARY
`SKILL IN THE ART
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`For purposes of IPR, a claim is interpreted by applying its “broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). Words of a claim are given their ordinary
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`meaning as understood by one of skill in the art, unless that meaning is inconsistent
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`with the specification. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
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`As explained by PI’s expert, Dr. Kelley, the ’605 patent generally relates to
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`switched mode power supplies. Ex. 2010 at ¶ 20. A person of ordinary skill in the
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`art at the time of the invention (“POSITA” or “person of skill”) of the ’605 patent
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`would have had a bachelor’s degree in electrical engineering, physics, or a related
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`discipline, and at least two to three years of relevant experience in the field of
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`power electronics or similar circuitry. Ex. 2010 at ¶ 22. Additional education,
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`such as an advanced degree in electrical engineering or a related field, might
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`substitute for some of the experience, and substantial experience might substitute
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`for some of the educational background. Id.
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`Considering this level of ordinary skill in the art, PI does not anticipate a
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`dispute as to the meaning of any of the proposed new claim terms. The only new
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`terms used, i.e., “first state” and “second state,” would have been generally known
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`to a person having ordinary skill in the art at the time of the invention and refer to a
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`signal having various well-known known states, such as “on”/“off” or
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`“high”/“low,” for example. Ex. 2010 at ¶ 49. Accordingly, each claim term
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`should be given its broadest reasonable interpretation in light of the specification,
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`which means that “words of the claim must be given their plain meaning, unless
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`such meaning is inconsistent with the specification.” MPEP § 2111.01. The plain
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`meaning of a term is the “ordinary and customary meaning given to the term by
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`those of ordinary skill in the art at the time of the invention.” Id.
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` THE SUBSTITUTE CLAIMS NARROW THE SCOPE OF THE
`ORIGINAL CLAIMS
`Amendment of claims during inter partes review is only proper when the
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`amended claims do not expand the scope of the original claims. See 37 C.F.R. §
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`42.121(a)(2)(ii). The amendments proposed here do not expand the scope of the
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`original claims because they add a new claim limitation that narrows the scope of
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`the original claims.
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`In particular, proposed substitute independent claim 13 has each and every
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`claim limitation of original independent claim 1:
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`At least three new substantive requirements are introduced in substitute claim 13,
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`each of which further narrows the claim as compared to original claim 1. First,
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`proposed substitute claim 13 now specifies that the originally-recited “control
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`signal” has “a first state and a second state” (e.g., a high state and a low state). See
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`Ex. 2010 at ¶ 52. Next, unlike original claim 1, which only referred to “a variable
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`current limit threshold that increases during the on time of the switch,” proposed
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`substitute claim 13 also requires that the “the variable current limit threshold . . .
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`decreases during at least a portion of the second state of each control signal cycle.”
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`Thus, a continuously, or monotonically, increasing variable current limit threshold
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`is excluded from the narrowed claim scope of the substitute claims. See id.
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`Finally, proposed substitute claim 13 also requires that the increase and decrease
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`during each cycle occur for a “plurality of consecutive control signal cycles.”
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`Thus, a regulator with a variable current limit threshold having only a single cycle
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`comprising both an increase and a decrease of the variable current limit threshold
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`is also now excluded. See id.
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`Thus, proposed substitute independent claim 13 is narrower than original
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`claim 1. The substitute dependent claims have also been narrowed because they
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`depend either directly or indirectly from claim 13. Id. at ¶¶ 52-53. Accordingly,
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`the substitute claims do not enlarge the scope of the original claims and thus meet
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`the requirement of 37 C.F.R. § 42.121(a)(2)(ii).
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` THE ORIGINAL DISCLOSURE SUPPORTS THE SUBSTITUTE
`CLAIMS
`The proposed substitute claims must comply with 35 U.S.C. § 112 and thus
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`
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`must be supported by the patent’s original disclosure. See 37 C.F.R. § 42.121(b);
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`Ex. 2010 at ¶ 54. Here, the ’605 patent claims priority to Provisional Application
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`No. 60/325,642, filed on September 27, 2001 (“the ’642 application”). A copy of
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`the ’642 application is included in this matter as Exhibit 2011.
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`A.
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`Independent Substitute Claim 13 Is Supported by the ’642
`Application
`a.
` “A power supply regulator, comprising”
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`The ’642 application discloses a “power supply regulator.” See Fig. 1, 5:4-51
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`(“Figure 1 is a schematic of one embodiment of a switched mode power supply
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`regulator in accordance with the teachings of the present invention”); see also Ex.
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`2010 at ¶ 55.
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`b.
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`“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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`As shown in FIG. 1, below, the ’642 application discloses a comparator
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`(“comparator 70”) having a first input (“node 27”) coupled to sense a voltage
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`representative of a current flowing through a switch during an on time of the
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`switch, the comparator having a second input coupled to receive a variable current
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`1 All references in this section are to the ’642 application (Ex. 2011) unless
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`otherwise noted. Additionally, citations to the ’642 application, are referenced to
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`the original page numbers shown in the application body (e.g., “-5-”) and the
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`original line numbers.
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`limit threshold that increases during the on time of the switch (“current limit
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`threshold 22”). See, e.g., FIG. 1, 10:15; Ex. 2010 at ¶¶ 56-58.
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`Comparator 70 has a first input (“node 27”) coupled to sense a voltage
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`representative of a current flowing through a switch during an on time of the
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`switch. See 10:10-12 (“The voltage on node 27 is proportional to the power
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`MOSFET drain voltage because of the voltage divider network formed by resistors
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`55 and 60.”). Comparator 70 also has a second input (“current limit threshold 22”)
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`coupled to receive a variable current limit threshold. See 10:8-10 (“The current
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`limit threshold 22 is thus proportional to the product of the combination of linearly
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`increasing current source 27 and base current source 50 with the resistor 17.”); see
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`also Ex. 2010 at ¶ 57.
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`Finally, the variable current limit threshold increases during the on time of
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`the switch. See 11:5-7 (“The intrinsic current limit 22 signal starts at the low point
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`at the beginning of the cycle and then linearly increases with elapsed time
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`throughout the cycle.”); FIG. 2; see also Ex. 2010 at ¶ 58.
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`c.
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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”
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`As shown in FIGs. 1 and 3, the ’642 application discloses a feedback circuit
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`(FIG. 1 “PWM Comparator 32”) coupled to receive a feedback signal (FIG. 1
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`“feedback” and FIG. 3 “control pin”) representative of an output voltage at an
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`output of a power supply (FIG. 3 “DC output”). See Ex. 2010 at ¶ 59; FIGs. 1, 3;
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`10:16-17 (“PWM Comparator 32 modulates the duty cycle based on the feedback
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`signal coming from the output of the power supply.”); 11:12-15 (“The feedback
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`information is provided to the regulator 250 at its control pin. The current at the
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`control pin is proportional to the voltage across resistor 235, which in tum is
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`related to the output voltage.”); see also id. at 12:6-8 (“The current at the control
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`pin is proportional to the voltage across resistor 335, which in turn is related to the
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`output voltage.”).
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`d.
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`“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,”
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`As shown in FIG. 1 above, the ’642 application discloses a control circuit
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`(FIG. 1; 85, 90, 95) coupled to generate a control signal (FIG. 1 “D” output of
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`“latch 90”) in response to an output of the comparator (“comparator 70”) and in
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`response to an output of the feedback circuit (“PWM comparator 32”), the control
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`signal to be coupled to a control terminal of the switch to control switching of the
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`switch. See Ex. 2010 at ¶ 60.
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`As also shown in FIG. 1, OR gate 85 is coupled to the “R” reset input of
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`latch 90. See Ex. 2010 at ¶ 61. Latch 90 outputs a control signal at its “D” output
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`coupled to the control terminal of MOSFET 2 to control switching. Id. at __; Ex.
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`2011 at 10:14-16 (“comparator 70 disables the power MOSFET by ultimately
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`resetting latch 90.”); see also 10:17-18 (“PWM Comparator 32 modulates the duty
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`cycle based on the feedback signal coming from the output of the power supply.”).
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`e.
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`“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.”
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`As shown in FIG. 2 below, the ’642 application discloses that for each of a
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`
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`plurality of control signal cycles each having a first state and a second state, the
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`variable current limit threshold increases during at least a portion of the first state
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`of each control signal cycle and decreases during at least a portion of the second
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`state of each control signal cycle. Ex. 2010 at ¶ 62.
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`First, as recited in the element above “the control signal [is] to be coupled to
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`a control terminal of the switch to control switching of the switch”; accordingly,
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`the “first state” and “second state” of the control signal correspond to the on and
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`off times the switch. Ex. 2010 at ¶ 63. The “duty cycle max waveform 15”
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`defines the potential on-times of the switch; in particular, each switch on time
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`begins when the duty cycle max waveform 15 goes high and continues for a
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`maximum period of time determined when the duty cycle max waveform 15 goes
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`low. See Ex. 2011 at 11:2-5 (“The sawtooth waveform 20 starts at the low point
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`when the duty cycle max waveform 15 goes high. This signals the beginning of the
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`power MOSFET switching cycle. The high point of the sawtooth 20 is reached at
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`the end of the cycle, at the same time the duty cycle max signal 15 goes low.”).
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`Thus, as shown in the annotated FIG. 2 above, the first state of each control
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`signal cycle begins at the start of the rise of the saw tooth waveform 20 when the
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`duty cycle max waveform goes high and will continue until the PWM comparator
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`32 (or comparator 70) determines that the on-time should end, with a maximum
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`possible on-time being set by the duty cycle max 15 waveform; then, each second
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`state of the control signal therefore begins when the switch turns off and the duty
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`cycle max signal 15 goes low. See Ex. 2010 at ¶ 64.
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`During each cycle of the control signal, the variable current limit threshold
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`(“intrinsic current limit 22”) begins increasing at the beginning of each switch on
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`time corresponding to each first state of the control signal. See Ex. 2010 at ¶ 65;
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`Ex. 2011 at 11:5-9 (“The intrinsic current limit 22 signal starts at the low point at
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`the beginning of the cycle and then linearly increases with elapsed time throughout
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`the cycle. At a time elapsed of zero, the intrinsic current limit is at Ki. As time
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`elapsed progresses, the current limit increases by a factor of K2 * telapsed.”). In
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`addition, during each cycle of the control signal, the variable current limit
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`threshold (“intrinsic current limit 22”) begins decreasing as soon as the maximum
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`duty cycle signal 15 goes low. See Ex. 2010 at ¶ 65; see also 9:16-21 (The rising
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`edge of Clock signal 10 determines the beginning of the switching cycle. When
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`Clock signal 10 is high, output latch 90 is set, causing power MOSFET 2 to begin
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`conducting. The maximum conducting time is 20 determined by DMAX 15 signal
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`being high. When DMAX 15 signal goes low, latch 90 is reset, thus disabling the
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`power MOSFET 2.”). Accordingly, the ’642 application discloses and supports
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`every element of substitute claim 13.
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`B. Dependent Substitute Claims 14-16 Are Supported by the ’642
`Application
`a.
`Claim 14: “The power supply regulator of claim [[1]] 13
`further comprising an oscillator having a first output to
`generate a sawtooth waveform, wherein the variable current
`limit threshold is generated in response to the sawtooth
`waveform.”
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`
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`The ’642 application discloses each and every element of proposed
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`substitute dependent claim 14. As shown in FIG. 1, the ’642 application discloses
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`that the power supply regulator of claim 13 additionally comprises an oscillator
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`(“oscillator 5”) having a first output to generate a sawtooth waveform
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`(“Sawtooth”), wherein the variable current limit threshold is generated in response
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`to the sawtooth waveform. Ex. 2010 at ¶ 66.
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`Oscillator 5 generates as an output the sawtooth 20 signal. See 10:21-22
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`(“The sawtooth 20 waveform and the duty cycle max waveform 15 are generated
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`by the oscillator 5.”). The variable current limit (“intrinsic current limit 22”) is
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`generated in response to the sawtooth 20 signal. See 10:1-4 (“The intrinsic current
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`limit is, to the first order proportional to the voltage on node 22. As stated earlier,
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`the goal of the invention is to generate an intrinsic current limit proportional to the
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`time elapsed in the switching cycle. The saw tooth waveform 20 can be used to
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`perform this task.”). The ’642 application describes in detail how the intrinsic
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`current limit 22 is generated in response to the sawtooth 20 signal. See 10:4-10.
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`Accordingly, the ’642 application discloses and supports every element of
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`substitute claim 14. Ex. 2010 at ¶¶ 66-67.
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`b.
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`Claim 15: “The power supply regulator of claim [[2]] 14
`wherein the control circuit includes a latch to provide the
`control signal, wherein the latch includes a reset input coupled
`to the output of the comparator.”
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`As also shown in FIG. 1, the ’642 application discloses that the control
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`circuit (FIG. 1; 85, 90, 95) includes a latch (“latch 90”) to provide the control
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`signal (“D” output of “latch 90”), wherein the latch includes a reset input (“R”
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`input of “latch 90”) coupled to the output of the comparator (“comparator 70”).
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`See Ex. 2010 at ¶¶ 68-69.
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`Comparator 70 is used to disable switching by resetting latch 90. See Ex.
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`2010 at ¶ 69; Ex. 2011 at 10:14-16 (“After the voltage on node 27 exceeds the
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`voltage on current limit threshold node 22, comparator 70 disables the power
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`MOSFET by ultimately resetting latch 90.”). Accordingly, the ’642 application
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`discloses and supports every element of substitute claim 15.
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`14
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`c.
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`Claim 16: “The power supply regulator of claim [[1]] 13
`wherein a duty cycle of the control signal is modulated in
`response to an output of the feedback circuit.”
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`Finally, as shown in FIG. 1, the ’642 application discloses that a duty cycle
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`of the control signal is modulated in response to an output of the feedback circuit.
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`See Ex. 2010 at ¶ 70. In particular, PWM comparator 32 modulates the duty cycle
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`of the control signal in response to the feedback voltage. See Id; Ex. 2011 at
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`10:17-19 (“PWM Comparator 32 modulates the duty cycle based on the feedback
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`signal coming from the output of the power supply. The higher the feedback
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`voltage, the higher the duty cycle will be.”). Accordingly, the ’642 application
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`discloses and supports every element of substitute claim 15.
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` THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`OVER THE PRIOR ART
`The newly added elements of proposed substitute independent claim 13
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`distinguishes all of the proposed substitute claims over the de Sarte prior art
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`reference at issue in this proceeding, the Maige prior art reference cited in the
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`Federal Circuit’s holding Power Integrations, Inc. v. Fairchild Semiconductor Int'l,
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`Inc., 843 F.3d 1315, 1336 (Fed. Cir. 2016), (Maige), and all other known prior art.
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`Ex. 2010 at ¶ 71.
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`15
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
`A. The de Sartre Patent Does Not Disclose the New Limitations
`Added to the Proposed Substitute Claims 13-16 and Therefore
`Does Not Anticipate the Substitute Claims
`The de Sartre patent (Ex. 1005) asserted in this proceeding fails to anticipate
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`substitute claim 13. The de Sarte reference discloses a continuously increasing
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`current limit threshold – used to effectuate “soft start” – that increases over the
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`period of many switching cycles and thus does not disclose a “variable current
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`limit threshold [that] increases during at least a portion of the first state of each
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`control signal cycle and decreases during at least a portion of the second state of
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`each control signal cycle,” as required by proposed substitute claim 13. Ex. 2010
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`at ¶ 72.
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`In particular, as explained by de Sartre (and as confirmed by Petitioner’s
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`own expert), de Sarte explains that it delivers “a variable threshold as a function of
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`the saw tooth of the very low frequency oscillator” (Ex. 1005, 9:14-15) and that the
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`low frequency oscillator is a 1 hz oscillator (i.e., an oscillator with a period of 1
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`second). See Ex. 2010 at ¶ 73; 1005, 3:55-56 (“The periodic cycle is at very low
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`frequency (for example 1 hz)”); see also Ex. 1003 at ¶¶ 33-35. Further, de Sarte
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`discloses that its variable threshold increases continuously while driven by the low
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`frequency oscillator. See id. at 9:22-25 (“then this threshold increases
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`progressively (because driven by the very low frequency saw tooth) from the
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`second value to the first one.”); see also Ex. 1003 at ¶¶ 33- 34. As further
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`16
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`explained, the increase of the variable threshold occurs continuously over
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`approximately 10% of the period of the low frequency oscillator (i.e., 1 second).
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`See id. at 9:25-27 (“The duration of the increase coincides preferably with the
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`duration of a start-up attempt square wave (namely about 10% of the very low
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`frequency period).”); see also Ex. 2010 at ¶ 73; Ex. 1003 at ¶¶ 33- 34.
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`As explained by de Sarte, and as shown in de Sarte FIG. 4, the variable
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`threshold increases continuously with the low frequency oscillator (1 Hz) over
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`many cycles of the high frequency oscillator (20 kHz) that drives the control signal
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`that controls the switch, without ever decreasing: “FIG. 4 shows the very low
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`frequency signals during the start up cycles. The diagrams are not to the same time
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`scale as in FIG. 3 since it will be recalled that an example of the frequency of the
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`high frequency oscillator 64 is 20 kilohertz whereas an example of the very low
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`frequency of oscillator 82 is 1 hertz. The high frequency pulses have however been
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`shown symbolically in FIG. 4, in a more limited number than in reality for
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`facilitating the representation.” See id. at 10:14-22.
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`In addition, there is never a consecutive plurality of switching cycles in
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`which both an increase and a decrease of the variable current limit threshold occur.
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`That is, as stated three separate times in de Sarte, and as shown in FIG. 4, the
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`variable threshold of de Sarte moves “suddenly” from its high value to its low
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`value and thus there are never consecutive cycles with both an increase and a
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`17
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`decrease. See Ex. 1005 at FIG. 4, 3:38-41 (“the threshold to pass suddenly from
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`the first value to a second value”); 9:20-22 (“the threshold passes suddenly from
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`the first value Vsl to a second value Vs2 corresponding to a smaller current than
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`for the first value”); 10:35-37 (“fixed value Vsl in theory, sudden drop to Vs2 at
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`the beginning of the very low frequency saw tooth”).
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`Petitioner’s own expert does not appear to dispute the fact that de Sarte only
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`discloses a continuously increasing variable current limit: “To protect transistor
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`TP, the current limit from circuit 90 (i.e., the current limit threshold at which
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`transistor TP is turned off by comparator 92) is set to a low value (Vs2) and then
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`gradually increased to the current limit threshold used during normal operation of
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`the power supply (Vs1). Id., 9:19-25, Fig. 2, Fig. 4.” Ex. 1003 at ¶ 33; see also Ex.
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`2010 at ¶ 76. Petitioner’s expert’s annotated FIG. 4 showing the intrinsic current
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`limit threshold increasing during both the on-time and the off-time of the switch.
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`Ex. 1003 at ¶ 33.
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`That de Sarte does not anticipate substitute claim 13 is further explained by
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`Petitioner’s expert who explains that “the current limit threshold increases over
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`numerous triggering pulses” – which necessarily means it does not both increase
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`and decrease during a plurality of consecutive switching cycles. Ex. 1003 at ¶ 34.
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`This is further shown by the figure that Petitioner’s