Opposition to PO’s Motion to Amend
`Case IPR2016-01600
`U.S. Patent No. 7,834,605
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`IN THE 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 7,834,605
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
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`TABLE OF CONTENTS
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`I.
`II.
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`III.
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`IV.
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`Page
`INTRODUCTION .......................................................................................... 1
`THE BOARD SHOULD DENY AS MOOT THE CANCELLATION OF
`CLAIMS 1 AND 2, WHICH HAVE BEEN FOUND INVALID IN A
`BINDING AND FINAL DECISION BY THE FEDERAL CIRCUIT ......... 4
`THE BOARD SHOULD DENY THE SUBSTITUTION OF CLAIMS 13
`AND 14 SINCE PO HAS REQUESTED AN UNREASONABLE
`NUMBER OF SUBSTITUTE CLAIMS ....................................................... 6
`PO FAILS TO PROPOSE PROPER CLAIM CONSTRUCTIONS FOR
`NEW TERMS USED IN PROPOSED SUBSTITUTE CLAIMS ................. 9
`A. “a first state and a second state” ...................................................................10
`B.
`“the variable current limit threshold increases during at least a portion of
`the first state” ........................................................................................................11
`V.
`THE BOARD SHOULD DENY THE SUBSTITUTION OF THE CLAIMS
`BECAUSE THE AMENDMENTS INTRODUCE NEW SUBJECT
`MATTER ......................................................................................................13
`A. “a plurality of consecutive control signal cycles” ........................................13
`B.
`“control signal cycles each having a first state and a second state” ............17
`C.
`“the variable current limit threshold increases during at least a portion of
`the first state” ........................................................................................................18
`VI.
`THE BOARD SHOULD DENY THE AMENDMENTS BECAUSE THEY
`ENLARGE THE SCOPE OF THE CLAIMS ..............................................21
`A. “first state” ....................................................................................................22
`B.
`“the variable current limit threshold increases during at least a portion of
`the first state” ........................................................................................................23
`VII. CONCLUSION ............................................................................................25
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`i
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`I.
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`INTRODUCTION
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`Power Integrations, Inc. (“PO”) has submitted a Motion to Amend
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`(“MTA”) under 37 C.F.R. § 42.121. In the MTA, PO requests that the Board
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`cancel claims 1, 2, 5, and 9—every claim in this proceeding—and substitute them
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`with proposed substitute claims 13, 14, 15, and 16. MTA at 1. PO clearly states
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`that the MTA “is not contingent on a determination that the original claims are
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`unpatentable.” Id. For the reasons discussed below, Petitioner requests that the
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`Board deny the MTA as moot with respect to the cancellation and proposed
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`substitution of claims 1 and 2, grant the MTA with respect to the cancellation of
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`claims 5 and 9, and deny the MTA with respect to the proposed substitution of
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`claims 13-16.
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`First, the Federal Circuit has already held claims 1 and 2 to be invalid in a
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`final, unappealable decision. Thus, these invalidated claims no longer exist and are
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`no longer subject to this proceeding. For this reason alone, the Board should deny
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`the MTA as moot with respect to the cancellation and proposed substitution of
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`claims 1 and 2.
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`Second, PO proposes an unreasonable number of substitute claims. As
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`noted above, claims 1 and 2 have been found invalid and thus are no longer subject
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`to this proceeding. By requesting cancellation of the two remaining claims (i.e.,
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`claims 5 and 9) and proposing to substitute four claims (i.e., claims 13-16), PO has
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`1
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`proposed to add more new claims than it is able to cancel. The PO did not 1)
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`confer with the Board regarding its intent to propose more than one substitute
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`claim for each challenged claim still pending in this proceeding; or 2) point to any
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`special circumstance that would demonstrate the need for more than one substitute
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`claim for each challenged claim. Thus, the Board should deny the MTA with
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`respect to the proposed substitution of claims 13-16 because PO has failed to rebut
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`the presumption that only one substitute claim would be needed to replace each
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`challenged claim.
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`Third, PO has failed to provide a claim construction of certain new claim
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`terms sufficient to support the distinction of the proposed substitute claims over the
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`prior art. PO proposes the addition of the claim term “first state” without proposing
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`a claim construction that makes clear whether the PO intends this term to have the
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`same or different meaning than “on time of the switch.” PO also proposes the
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`addition of the claim term, “during at least a portion of the first state,” without
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`proposing a claim construction that makes clear whether the PO intends this term
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`to have the same or different meaning than the already-recited “during the on time
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`of the switch” claim term. Thus, even in the event the Board determines it is
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`appropriate to propose a substitute claim for a canceled claim, the Board should
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`deny the MTA with respect to the substitution of claims 13-16 because the lack of
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`claim construction proposals renders the motion defective.
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`2
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`Fourth, PO has failed to establish that the proposed amendment, including
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`each limitation as well as the amendment as a whole, is supported by the original
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`disclosure of the patent. The patent application contains no mention of “control
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`signal cycles each having a first state and a second state” or “the variable current
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`limit threshold increases during at least a portion of the first state.” More
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`specifically, the patent application does not disclose a control signal having cycles
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`and does not disclose that the control signal includes “states.” Even if the “first
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`state” of the control signal cycle can be supported by the disclosure of an “on time
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`of the switch,” the patent application does not disclose the intrinsic current limit
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`threshold increasing for anything less than the entire on time. Thus, even in the
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`event the Board determines it is appropriate to propose a substitute claim for an
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`invalidated claim, the Board should deny the MTA with respect to the substitution
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`of claims 13-16 because the amendment seeks to introduce new subject matter.
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`Finally, even if the Board determines that the original disclosure, including
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`an “on time of the switch” supports a control signal having a “first state” and a
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`“second state,” PO proposes substitute claim 13 that includes limitations that
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`broaden the scope of challenged (and now invalidated) claim 1. Proposed
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`substitute claim 13 includes a limitation reciting a generic “first state,” which is
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`facially broader than a limitation of original claim 1 and proposed substitute claim
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`13 specifically requiring an “on time of the switch.” Proposed substitute claim 13
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`3
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`also includes a limitation requiring that “the variable current limit threshold
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`increases during at least a portion of the first state,” where the first state appears
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`to refer to the on time of the switch. This limitation is facially broader than the
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`limitation of original claim 1 requiring that “a variable current limit threshold []
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`increases during the on time of the switch” (i.e., during the entire on time). Thus,
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`even in the event the Board determines it is appropriate to propose a substitute
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`claim for an invalidated claim, the Board should deny the MTA with respect to the
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`proposed substitution of claims 13-16 because the amendment seeks to enlarge the
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`scope of the claims.
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`II. THE BOARD SHOULD DENY AS MOOT THE CANCELLATION
`OF CLAIMS 1 AND 2, WHICH HAVE BEEN FOUND INVALID IN
`A BINDING AND FINAL DECISION BY THE FEDERAL CIRCUIT
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`On Dec. 12, 2016, the Federal Circuit found claims 1 and 2 of the ’605
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`patent invalid as anticipated by U.S. Patent No. 4,763,238 to Maige (“Maige”).
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`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315,
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`1335-38 (Fed. Cir. 2016) (finding that the “jury lacked substantial evidence to find
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`that Maige did not anticipate claims 1 and 2 of the ’605 patent.”). PO did not file a
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`petition for a writ of certiorari to the U.S. Supreme Court, and the petition window
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`expired on March 12, 2017—“90 days after entry of the judgment.” See Sup. Ct. R.
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`13. The final verdict by the Federal Circuit regarding the invalidity of claims 1 and
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`2 is binding in this proceeding. See Fresenius USA, Inc. v. Baxter Int’l Inc., 721
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`F.3d 1330, 1347 (Fed. Cir. 2013) (holding that an affirmed finding of invalidity by
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`the Patent Office was binding in a concurrent non-final district court case); see also
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`Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1580-83 (Fed. Cir. 1994)
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`(holding that an affirmed invalidity finding in one district court case was binding in
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`a concurrent non-final district court case based on collateral estoppel); see also
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`Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1429 (Fed. Cir. 1988) (holding that the PTO
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`may stay reexamination of a patent when a court has found the patent invalid in a
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`final, unappealable decision); see also Manual of Patent Examination Procedure
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`(“MPEP”) § 2286 (“A final holding of claim invalidity or unenforceability (after
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`all appeals), however, is controlling on the Office); see also MPEP § 2659.
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`Given that Claims 1 and 2 have been ruled invalid, these claims have been
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`effectively cancelled by the effect of the Federal Circuit ruling. The Federal Circuit
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`has held that “there is no basis for distinguishing between the effects of a final,
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`affirmed court decision determining invalidity and a final, affirmed PTO decision
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`determining invalidity on a pending litigation.” Fresenius, 721 F.3d at 1344.1
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`1 The Federal Circuit has recently held that the Board was not bound by a district
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`court decision holding that claims were not invalid. Novartis AG v. Noven Pharm.,
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`Inc., 853 F.3d 1289, 1291 (Fed. Cir. 2017). However, Novartis addresses the case
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`where the lesser burden of proof applicable before the Board may be met when the
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`higher burden of proof applicable in district court was not satisfied. Id. Here, the
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`5
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`Thus, claims 1 and 2 are already invalid due to the Federal Circuit’s decision, and
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`the Board should deny as moot the MTA with respect to the cancellation of claims
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`1 and 2. For these reasons, the Board should deny the MTA as moot with respect to
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`the cancellation of claims 1 and 2, which have previously been found invalid by
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`the Federal Circuit.
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`III. THE BOARD SHOULD DENY THE SUBSTITUTION OF CLAIMS
`13 AND 14 SINCE PO HAS REQUESTED AN UNREASONABLE
`NUMBER OF SUBSTITUTE CLAIMS
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`The Federal Circuit’s finding of invalidity also precludes PO from
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`requesting substitute claims 13 and 14. In the MTA, PO was required to propose a
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`reasonable number of substitute claims. 37 C.F.R. § 42.121(a)(3). It is presumed
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`that a reasonable number of substitute claims is no more than one per challenged
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`claim that is being canceled. Id.; see also Paper 14 (Order, Conduct of the
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`Proceeding) at 2. Given the prior invalidation of claims 1 and 2, PO may only
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`properly request cancellation of the two remaining claims subject to this IPR
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`proceeding, claims 5 and 9. However, PO is requesting that the Board substitute
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`four substitute claims for these two remaining challenged claims. Stated another
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`way, PO is requesting to substitute claims for claims 1 and 2, but these claims no
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`Federal Circuit found claims 1 and 2 invalid under the higher burden of proof,
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`which necessarily means that the lesser burden of proof would also have been
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`satisfied.
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`6
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`longer exist and thus are not capable of being substituted. Thus, the Board should
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`find that PO has requested an unreasonable number of claims based on the
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`presumption of § 42.121(a)(3).
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`To overcome the presumption, PO was required to show sufficiently
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`special circumstances to demonstrate need for more than one substitute claim per
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`pending challenged claim. See id.; see also Idle Free Systems, Inc. v. Bergstrom,
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`Inc., IPR2012-00027, Paper 26 at 4-6 (Patent. Tr. & App. Bd. June 11, 2013)
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`(describing the requirements for requesting substitute claims and rebutting the
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`presumption for a reasonable number of claims). Furthermore, PO was also
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`required to discuss their “desire[] to rebut the presumption that only one substitute
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`claim would be needed to replace each challenged claim . . . with the Board prior
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`to filing of the motion to amend.” Idle Free, Paper 26 at 6.
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`PO did not discuss any desire to rebut the presumption either in the
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`telephone conference prior to filing or in the MTA itself. When the Board brought
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`up the Federal Circuit determination of invalidity on this telephone conference, PO
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`indicated that they would “provide briefing on” their contention that the Federal
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`Circuit decision did not affect their ability to amend claim 1. Ex. 1014 at pages 7-
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`8. However, PO did not discuss the possibility of rebutting the presumption in the
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`telephone conference. Id. Moreover, PO did not address the import of the Federal
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`Circuit’s invalidity determination on the viability of proposing a substitute for
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`7
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`claim 1 at all in the MTA. See generally MTA. Therefore, PO did not satisfy the
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`requirement to discuss rebutting the presumption with the Board. PO also did not
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`even attempt to show that special circumstances exist which would demonstrate the
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`need for more than one substitute claim per challenged claim as required by 37
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`C.F.R. § 42.121(a)(3). Thus, the Board should deny the MTA with respect to
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`substitute claims 13 and 14.
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`In the past, the Board has recognized that the inter partes review
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`proceedings are different than the “ex parte patent prosecution and patent
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`reexamination.” Idle Free, Paper 26 at 4; see also id. at 6 (suggesting that ex parte
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`reexamination and reissue proceedings are more appropriate strategies for
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`restructuring claims than motions to amend during an inter partes review). The
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`Board has also construed regulations governing inter partes review proceedings
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`“to secure the just, speedy, and inexpensive resolution of every proceeding.” Id. at
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`4 (citing 37 C.F.R. § 42.1(b)). Finally, the Board has recognized that “every
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`substitute claim to be briefed by the parties and analyzed by the Board adds to the
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`cost of the review in terms of both time and expense” and has sought “to
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`streamline and converge issues at all phases of the proceeding.” Id. at 4-5
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`(describing various reasons why “[a]ll proposed claims should be traceable to an
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`original challenged claim as a proposed substitute for that challenged claim.”).
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`Given that the Federal Circuit has already determined that claims 1 and 2 are
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`invalid, PO should not be allowed to use an IPR motion to amend as an end-run
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`around an unfavorable decision from the federal judiciary. Allowing PO to
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`resurrect patent claims that have already been finally adjudicated and canceled in
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`the federal court context is anything but a “just, speedy, and inexpensive
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`resolution.” For these reasons, the Board should deny the MTA with respect to
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`substituting claims 13 and 14.
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`IV. PO FAILS TO PROPOSE PROPER CLAIM CONSTRUCTIONS
`FOR NEW TERMS USED IN PROPOSED SUBSTITUTE CLAIMS
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`A patent owner must propose a claim construction for any new term used in
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`a proposed substitute claim “where the patent owner reasonably anticipates a
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`dispute as to the meaning of such term.” Paper 14 at 3; see also Ex. 1014 at 12:3-8;
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`see also Idle Free, Paper 26 at 7 (stating that the burden of proving patentability,
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`including claim construction, is on the patent owner); see also Baby Trend et al. v.
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`Wonderland Nurserygoods Co., Ltd., IPR2015-00842, Paper 81 at 71 (Jun. 27,
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`2016) (citing Idle Free and MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040,
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`slip op. at 2 (PTAB July 15, 2015) ( Paper 42)). Here, PO’s proposed substitute
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`claims include at least two new limitations that should have been construed:
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`“control cycles each having a first state and a second state,” and “the variable
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`current limit threshold increases during at least a portion of the first state.”
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`Given that these terms introduce ambiguities and/or conflict with terms in
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`the original language of claim 1, PO should have reasonably anticipated a dispute
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`as to the meaning of these terms. Furthermore, the specification does not include
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`these terms and, therefore, does not provide any guidance in determining the
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`“broadest reasonable construction in light of the specification.” See MTA at 4. PO
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`claims that the only new terms used were “‘first state’ and ‘second state.’” MTA at
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`4. PO ignores other terms that were introduced and briefly proposes an improperly
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`broad construction for a single term. Id. Thus, PO has failed to satisfy the
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`requirement to provide claim constructions, and the Board should deny the
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`substitution of claims 13-16 for claims 1, 2, 5 and 9 for at least this additional
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`reason.
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` “a first state and a second state”
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`A.
`PO proposes to substitute claim 13 for claim 1. MTA at 1, App. A. The
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`proposed substitute claim differs from claim 1 in that it adds a final “wherein”
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`clause. Id. (“wherein, for each of . . .”). Original claim 1 recites an “on time of the
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`switch” in at least two places. Proposed substitute claim 13 recites this same
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`language but also adds that the control signal cycle has “a first state and a second
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`state.” Thus, the proposed substitute claim uses the new terms “first state” and
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`“second state” in addition to the term “on time of the switch.” PO does provide a
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`construction for these terms. MTA at 4 (“‘first state’ and ‘second state,’ would
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`have been generally known to a person having ordinary skill in the art at the time
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`of the invention and refer to a signal having various well-known known [sic]
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`states, such as ‘on’/‘off’ or ‘high’/‘low,’ for example.”). However, PO does not
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`make clear whether or not they intend “first state” to have the same scope as the
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`existing claim term “on time of the switch.”
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` Again, Petitioner and the Board are left to guess as to the intended scope of
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`this term and how it may affect the meaning of existing terms. PO states that
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`examples of “first states” include “on,” “off,” “high,” and “low.” Id. Thus, PO
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`seems to indicate that the first state may encompass more scope than the “on time
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`of the switch.” See supra Section VI.A. However, PO also states that “the ‘first
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`state’ and ‘second state’ of the control signal correspond to the on and off time
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`[sic] the switch.” MTA at 11; see also id. at 10-13. PO has failed to provide a
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`claim construction that would allow Petitioner and the Board to fully address
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`whether or not these claim terms are supported in the original disclosure of the
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`patent (see supra Section V.B) or attempt to broaden the scope of the original
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`claims (see supra Section VI.A). Thus, the Board should deny the request to
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`substitute claims 13-16.
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`B.
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` “the variable current limit threshold increases during at least a
`portion of the first state”
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`Claim 1 recited “a variable current limit threshold that increases during the
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`on time of the switch.” Proposed substitute claim 13 includes this language and
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`adds that “the variable current limit threshold increases during at least a portion of
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`11
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`the first state.” PO does not provide a construction for the new term “during at
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`least a portion of the first state.”
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`As discussed in the previous sub-section, Petitioner and the Board are left to
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`guess as to the difference, or lack thereof, between a “first state” and an “on time
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`of the switch.” Further, Petitioner and the Board must determine whether PO
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`intends any difference between the requirement that the variable current limit
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`threshold increase (1) “during the on time of the switch” as recited in claim 1 and
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`the first clause of proposed substitute claim 13 and (2) “during at least a portion of
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`the first state” as recited in the last clause of proposed substitute claim 13.
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`If PO intends “during at least a portion of the first state” to have the same
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`meaning as “during the on time of the switch,” the new term is “largely
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`redundant.” Baby Trend, Paper 81 at 71-75 (finding that a patent owner had failed
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`to provide required claim constructions when introducing conflicting terms in a
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`motion to amend). If PO intends a different meaning, “the difference in scope is
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`unclear given” PO’s failure to provide any proposed claim construction. Id. This
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`clear ambiguity resulting from the proposed language of claim 13 should have led
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`PO to reasonably anticipate a dispute as to the meaning of this term. Yet, PO has
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`failed to provide a claim construction for this term. Thus, the Board should deny
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`the request to substitute claims 13-16.
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`V. THE BOARD SHOULD DENY THE SUBSTITUTION OF THE
`CLAIMS BECAUSE THE AMENDMENTS INTRODUCE NEW
`SUBJECT MATTER
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`Under 37 C.F.R. § 42.121(b), a PO must describe the support in the original
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`disclosure of the patent for proposed substitute claims. A PO must show that the
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`disclosure of the application relied upon reasonably conveys to those skilled in the
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`art that the inventor had possession of the claimed subject matter as of the filing
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`date. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
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`The Board has held that the PO must provide an explanation as to why a person of
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`ordinary skill in the art would have recognized that the inventor possessed the
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`claimed subject matter when the claim language does not appear verbatim in the
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`original disclosure. See Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 27
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`at 4 (Patent Tr. & App. Bd. June 3, 2013). Here PO fails to adequately point out
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`and explain how the proposed substitute claim language is supported in the original
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`disclosure.
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`“a plurality of consecutive control signal cycles”
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`A.
`Claim 1 and proposed substitute claim 13 each recite a control circuit that
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`generates “a control signal in response to an output of the comparator and . . . an
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`output of the feedback circuit.” The control circuit also controls the “switching of
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`the switch.” Proposed substitute claim 13 proposes an additional limitation that
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`would require the control signal to include “a plurality of consecutive control
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`13
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`signal cycles.”
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`PO argues that “each and every claim element of the proposed substitute
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`claims is supported by the specification of Provisional Application No. 60/325,642,
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`to which the ‘605 patent claims priority.” MTA at 2. PO argues that “a control
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`circuit” is disclosed in Figure 1 of the ‘642 Application as components 85, 90, and
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`95. Id. at 9. PO further argues that Figure 1 discloses “a control signal” as the “‘D’
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`output of ‘latch 90’” that is “coupled to a control terminal of the switch to control
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`switching of the switch.” Id. at 9-10. PO asserts that the ‘642 Application discloses
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`this control signal at page 10, lines 14-18. Id. (citing the ’642 Application (Ex.
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`2011)).
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`Regarding “cycles” of the control signal, PO argues that Figure 2 of the ‘642
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`Application discloses “a plurality of consecutive control signal cycles.” Id. at 10
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`(“As shown in FIG. 2 below, the ‘642 application discloses that for each of a
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`plurality of control signal cycles . . .”). However, Figure 2 (reproduced below)
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`does not contain a depiction of the control signal at all, but rather contains a
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`depiction of the sawtooth waveform and the duty cycle max (neither of which is
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`“the control signal”). See ‘605 Patent at Fig. 2; see also Ex. 2011 at 9:16-21, 11:2-
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`9 (discussing a switching cycle but not a control cycle).
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`14
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`For further alleged support of the “control signal cycles” limitation, PO
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`points to page 11, lines 2-9 and page 9, lines 16-21 of the ‘642 Application. MTA
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`at 11-13. However, the cited portions of the ‘642 Application do not contain the
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`words “control signal cycle.” The disclosure discusses the “sawtooth waveform,”
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`the “duty cycle max waveform,” and a “power MOSFET switching cycle.” Id.
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`Given that these citations do not explicitly disclose the claimed subject matter, PO
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`has the burden to come forward with some evidence, testimony, or argument
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`demonstrating that these citations provide adequate written support. Nichia Corp.
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`v. Emcore Corp., IPR2015-00005, Paper 27 at 4 (representative) (“[S]hould the
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`claim language not appear in ipsis verbis in the original disclosure, a mere citation
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`. . . without any explanation . . . may be [] inadequate.”).
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`PO attempts to provide the required explanation through a declarant, Dr.
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`Kelley. See Ex. 2010. Dr. Kelley relies upon the same disclosures discussed above.
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`15
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`See Ex. 2010 at ¶¶ 62-65. Dr. Kelley asserts that “the ‘first state’ and ‘second state’
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`of the control signal correspond to the on and off times [sic] the switch.” Id. at ¶
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`63. Further, Dr. Kelley asserts that “[t]he ‘duty cycle max waveform 15’ defines
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`the potential on-times of the switch” and that “the first state of each control signal
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`cycle begins at the start of the rise of the saw tooth waveform 20 when the duty
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`cycle max waveform goes high.” Id. at ¶¶ 63-64.
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`However, Dr. Kelley fails to explain how or why a person having ordinary
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`skill in the art would draw these conclusions from the cited portions of the ‘642
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`Application. In fact, aside from unsupported, conclusory statements, Dr. Kelley
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`does not provide any insights into what a person having ordinary skill in the art
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`would have understood from the cited disclosures. See id. at ¶ 65 (making the
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`conclusory statement that “the ‘642 application discloses and supports every
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`element of substitute claim 13” without referencing a person having ordinary skill
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`in the art).
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`PO and Dr. Kelley do not adequately explain how the disclosure of signals
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`other than the control signal and a cycle related to the switch would convey to a
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`person having ordinary skill in the art that the inventor had possession of a “control
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`signal” that included “cycles.” Ariad, 598 F.3d at 1351. PO has therefore failed to
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`adequately point to support for the proposed substitute claims. The Board should
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`deny the request to substitute claims 13-16 under 37 C.F.R. § 42.121(b).
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`16
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`“control signal cycles each having a first state and a second state”
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`B.
`PO argues that Figure 2 of the ‘642 Application discloses a control signal
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`“having a first state and a second state.” MTA at 10. PO argues that “the control
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`signal [is] to be coupled to a control terminal of the switch to control switching of
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`the switch; accordingly, the ‘first state’ and ‘second state’ of the control signal
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`correspond to the on and off times of the switch.” MTA at 11. PO again asserts that
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`the ‘642 Application discloses these features on page 11, lines 2-9 and page 9,
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`lines 16-21. Id. at 11-13. However, the cited passages only disclose the sawtooth
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`waveform and the duty cycle max waveform, not a control signal. Further, the
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`disclosure only discusses on and off times of the switch and a power cycle of the
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`switch.
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`Therefore, the proposed substitute claim language does not appear anywhere
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`in the ‘642 Application, and PO is required to provide evidence that a person
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`having ordinary skill in the art would have understood that this element is
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`disclosed. Nichia at 4. Once again, Dr. Kelley attempts to provide this evidence.
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`Dr. Kelley relies upon the same disclosures and makes the same assertions as
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`discussed above. Ex. 2010 at ¶¶ 62-65; see also infra Section V.A. Dr. Kelley’s
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`conclusory statements fail to explain why a person having ordinary skill in the art
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`would understand Figure 2 and the other cited portions of the ‘642 Application as
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`differentiating between different “states” of a control signal. Further, Dr. Kelley
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`17
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`has not explained how these states could be anything other than states
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`corresponding to the on and off times of the switch. See MTA at 4 (PO’s claim
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`construction proposal for “first state” and “second state”); see also infra Section
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`IV.A.
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`PO has chosen to use language, i.e., “control signal cycles each having a first
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`state and a second state,” that cannot be supported by the ’642 Application. PO and
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`Dr. Kelley do not adequately explain how the disclosure of signals other than the
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`control signal and an on time of a switch would convey to a person having ordinary
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`skill in the art that the inventor had possession of a “control signal” that broadly
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`included a “first state” and a “second state,” including on, off, and many other
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`conditions. Ariad, 598 F.3d at 1351. The Board should deny the request to
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`substitute claims 13-16 under 37 C.F.R. § 42.121(b).
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`C.
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`“the variable current limit threshold increases during at least a
`portion of the first state”
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`Even assuming that the “first state” of the control signal corresponds to the
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`on time of the switch, there is no support for the variable current limit threshold
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`doing anything other than increasing during the entire on time of the switch. At
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`certain places in the MTA, PO seems to recognize this. See, e.g., MTA at 7-9
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`(citing Ex. 2011 Fig. 1, page 10, lines 8-12, 15 (“The current limit threshold 22 is
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`thus proportional to the product of the combination of linearly increasing current
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`source 27 and base current source 50 with the resistor 17.”)); see also MTA at 8-9
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`
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`18
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`
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`(pointing out 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
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`the cycle” and citing Ex. 2011 at page 11, lines 5-7 and Fig. 2).
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`However, PO’s proposed substitute claim recites that the variable current
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`limit threshold increases during at least a portion of the first state. In trying to
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`show support for such claim language in the ‘642 Application, PO references
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`Figure 2 of the ‘642 Application, but this figure shows the variable current limit
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`threshold increasing throughout the entire first state of the signals shown. Id. at 10-
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`11. PO points out that “the variable current limit threshold (“intrinsic current limit
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`22”) begins increasing at the beginning of each switch on time corresponding to
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`each first state of the control signal.” MTA at 12 (citing Ex. 2011 at page 11, lines
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`5-9 “The intrinsic current limit 22 signal starts at the low point at the beginning of
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`the cycle and then linearly increases with elapsed time throughout the cycle.”).
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`Further, PO previously pointed to a portion of the disclosure that explicitly states
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`that the current limit must increase for the entire on time. Paper 8 at page 30; see
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`also id. at page 29-35.
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`Therefore, the phrase “at least a portion” does not appear in haec verba in
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`the ‘642 Application, and PO is required to provide evidence that a person having
`
`ordinary skill in the art would have understood that this element is disclosed.
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`Nichia at 4. Dr. Kelley relies on the portions of the disclosure cited above in
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`
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`19
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`support of the added language. Ex. 2010 at ¶ 65. However, Dr. Kelley does not
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`make any attempt to explain why the “at least a portion” language was included.
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`Rather, Dr. Kelley points to portions of the disclosure that explicitly state that
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`“[t]he intrinsic current limit 22 signal . . . linearly increases with elapsed time
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`throughout the cycle.” Id.; see also Ex. 2011 at page 11, lines 5-9. Based on this
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`support, Dr. Kelley makes the unsupported and conclusory statement that a
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`intrinsic current limit threshold that increases “during at least a portion of the first
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`state” is disclosed. See Ex. 2010 at ¶¶ 62, 65.
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`Thus, PO does not p