UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.
`Patent Owner.
`____________
`
`Case No. IPR2016-01600
`Patent 7,834,605
`____________
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`PETITIONER’S SUPPLEMENTAL RESPONSE TO PATENT OWNER’S
`MOTION TO AMEND
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC d/b/a
`ON SEMICONDUCTOR
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.
`Patent Owner.
`____________
`
`Case No. IPR2016-01600
`Patent 7,834,605
`____________
`
`
`PETITIONER’S SUPPLEMENTAL RESPONSE TO PATENT OWNER’S
`MOTION TO AMEND
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`Petitioner’s Supplemental Response
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`Petitioner ON Semiconductor respectfully submits
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`this supplemental
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`response in view of Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4,
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`2017). Because Aqua Products does not affect Petitioner’s arguments that the
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`cancellation of claims 1 and 2 is moot and that Patent Owner proposes an
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`unreasonable number of substitute claims, those arguments are not addressed here.
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`I.
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`Under the correct construction of “first state,” the substitute claims add
`new subject matter and enlarge the scope of the claims
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`Proposed substitute claim 13 recites, in relevant part:
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`13. (Proposed substitute for original claim 1) A power supply
`regulator, comprising:
`a comparator having a first input coupled to sense a voltage
`representative of a current flowing through a switch during an on time
`of the switch, the comparator having a second input coupled to receive
`a variable current limit threshold that increases during the on time of
`the switch;
`. . .
`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.
`Paper 16, App. A at 1 (emphasis added).
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`One key issue is the proper construction of “first state,” and in particular
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`whether the first state is coextensive with the “on time of the switch.” In view of
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`1
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`Petitioner’s Supplemental Response
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`the Aqua Products decision, Petitioner proposes a construction of “first state.”
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`Under that construction, the substitute claims are improper under 35 U.S.C. §
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`316(d)(3) because they add new matter and broaden the scope of the claims.
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`A.
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`“First state” should be construed to occur only during the “on
`time of the switch”
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`Properly construed, the “first state” of each control signal cycle is the state
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`of the control signal cycle that occurs during, and is coextensive with, the on time
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`of the switch and, consequently, the “second state” is the state of each control
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`signal cycle that occurs during, and is coextensive with, the off time of the switch.
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`These are the only constructions even arguably supported by the intrinsic record.
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`The terms “first state” and “second state” do not appear anywhere in the
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`original application. Patent Owner, however, explicitly argued in its Motion to
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`Amend that “first state” and “second state” as recited in claim 13 “correspond to
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`the on and off times of the switch.” Paper 16 at 11 (“as recited in the element [of
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`claim 13] ‘the control signal [is] to be coupled to a control terminal of the switch to
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`control switching of the switch’; accordingly, the ‘first state’ and ‘second state’ of
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`the control signal correspond to the on and off times of the switch”); see also Ex.
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`2010, Kelley Decl. at ¶ 63 (same).1 In its reply, Patent Owner again correlated the
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`1 Because claim 13 recites that the current limit threshold increases “during at least
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`a portion of the first state” and, as discussed below, the ’642 Application teaches
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`2
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`Petitioner’s Supplemental Response
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`control signal states with on and off times of the switch, albeit less directly:
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`The ‘first state’ will begin when the ‘Clock’ signal shown in FIG. 1
`goes high . . . the ‘second state’ will occur when the latch 90 is reset
`via the ‘R’ input of the latch…
`Paper 21 at 9. In Figure 1 of the ’642 Application (reproduced below), when the
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`“Clock” signal goes high, the S input to the latch goes high, and the D output
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`(which Patent Owner argues is the “control signal” of claim 13) also goes high,
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`thus turning on the switch. Conversely, when the latch 90 is reset via the “R”
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`input, the D output goes low, and the switch is turned off.
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`Thus, if the first state begins when the clock signal goes high (turning on the
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`that the current limit threshold increases when the switch is on, the first state (not
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`the second state) must correspond to the on time.
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`3
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`Petitioner’s Supplemental Response
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`switch) and the second state begins when the latch is reset (turning off the switch),
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`as Patent Owner argues, the first state occurs only during the on time of the switch.
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`Patent Owner offers no other support for its newly-added limitations “first state
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`and second state.” To the extent the specification discloses a “first state” and a
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`“second state” of the control signal cycle, therefore, those must correspond to the
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`on time and off time of the switch, respectively.
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`Despite equating “first state” and “on time of the switch,” Patent Owner
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`argues that those limitations are “different elements, and each is entitled to its
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`broadest reasonable interpretation.” Paper 21 at 11. Patent Owner’s argument is
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`beside the point. Although the state of the control signal cycle and the “on time of
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`the switch” controlled by that signal may constitute different elements, the first
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`state must occur during the on time of the switch. If that is not so, then there is no
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`support for the “first state and second state” limitation in the original application.
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`Thus, “first state” can only be supported by the original application if construed as
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`“the state of the control signal cycle that occurs during, and is coextensive with,
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`the on time of the switch.”
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`B.
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`The “portion” limitation is new matter
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`Under the proper construction of “first state,” the newly-added limitation
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`“the variable current limit threshold increases during at least a portion of the first
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`state of each control signal cycle” (hereinafter, “the ‘portion’ limitation”) is
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`4
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`Petitioner’s Supplemental Response
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`equivalent to “the variable current limit threshold increases during at least a
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`portion of the [on time of the switch].” Because there is no written description in
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`the ’642 Application for a variable current limit threshold that increases for less
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`than the entire on time of the switch, however, Patent Owner’s amendments add
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`new matter. See Veeam Software v. Veritas, IPR2014-00090, Paper 48 at 13
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`(where amendment lacks written description support, substitute claim does not
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`comply with 35 U.S.C. § 316(d)(3)).
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`As shown in Figure 2 of the ’642 Application, the intrinsic current limit 22
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`increases for the entire on time of the switch (when Duty Cycle Max 15 is high)
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`and decreases for the entire off time (when Duty Cycle Max 15 is low):
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`Patent Owner’s own annotations to Figure 2 make clear that the ’642 Application
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`5
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`Petitioner’s Supplemental Response
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`teaches increasing the current limit threshold during the entire “maximum possible
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`‘first state.’” See Paper 16 at 11 (annotating Figure 2 of the ’605 Patent).
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`The ’642 Application further confirms that the current limit increases during the
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`entire on time of the switch, repeatedly teaching that the current limit increases “as
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`a function of the time elapsed” during the switch’s duty cycle—that is, as time
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`progresses, the current continues to increase:
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`It is simply necessary to increase the intrinsic current limit as a
`function of the time elapsed during the cycle. A first approximation
`for increasing the intrinsic current limit with time can be obtained by
`using the Equation 1 below:
`ILIM-INTRlNSIC = K1+ K2 * telapsed, (Equation 1)
`where is [sic] ILIM-INTRlNSIC the intrinsic current limit, K1 and K2 are
`constants and telapsed is the time elapsed.
`Ex. 2011 at 13:16-22 (emphasis added); see also id. at 16:8-9 (“As time elapsed
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`progresses, the current limit increases by a factor of K2 * telapsed.”); id. at 16:5-7 (the
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`variable current limit threshold “starts at the low point at the beginning of the cycle
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`and then linearly increases with elapsed time throughout the cycle.”). The ’642
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`Application even states that the “the goal of the invention is to generate an intrinsic
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`current limit proportional to the time elapsed in the switching cycle.” Id. at 11:2-3.
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`There is no teaching in the ’642 Application of the current limit increasing
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`for less than the full on time of the switch. Instead, Patent Owner argues merely
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`that there is no “express limitation in the specification” that would explicitly
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`Petitioner’s Supplemental Response
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`“disallow thresholds that only increase during part of the on time.” Paper 21 at 10.
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`Patent Owner applies the wrong standard—specifically, the claim construction
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`canon that the ordinary meaning of a claim term controls absent an express
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`disclaimer in the specification. Petitioner agrees that the plain meaning of the
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`“portion” limitation is broader than any embodiment disclosed in the ’642
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`Application. But that is precisely the problem. Properly construed, the “portion”
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`limitation lacks written description and is thus new matter. Veeam Software v.
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`Veritas, IPR2014-00090, Paper 48 at 12; see also Lockwood v. Am. Airlines, Inc.,
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`107 F.3d 1565, 1572 (Fed. Cir. 1997) (written description “is not a question of
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`whether one skilled in the art might be able to construct the patentee’s device from
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`the teachings of the disclosure [but] whether the application necessarily discloses
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`that particular device.” (emphasis added)).
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`The Veeam case is particularly instructive. In Veeam, the original claims
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`recited “restor[ing] a set of files from the backup storage.” Veeam, IPR2014-
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`00090, Paper 48 at 3. The patent owner proposed an amendment reciting that “the
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`set of files is a subset of a plurality of files that were previously backed-up to the
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`backup storage.” Id. The Board rejected the “subset” limitation as new matter,
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`because the original disclosure did not “describe functions or processes that would
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`permit” restoring less than all of the backed up files and thus, at most, could only
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`be said not to “preclude a system that restores less than all of the backed up files.”
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`7
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`Petitioner’s Supplemental Response
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`Id. at 12 (emphasis in original). The same analysis applies here. The ’642
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`Application does not describe any functions or processes that would permit the
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`variable current limit threshold to increase for less than the full on time of the
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`switch. Patent Owner merely argues that the ’642 Application does not expressly
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`preclude such systems. The “portion” limitation of claim 13 is thus new matter for
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`precisely the same reason the Board rejected the “subset” limitation in Veeam. The
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`Board should deny the request to substitute claims 13-16 on at least this basis. 35
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`U.S.C. § 316(d)(3).
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`C. The “portion” limitation broadens the claims
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`Original claim 1 and substitute claim 13 both recite “a variable current limit
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`threshold that increases during the on time of the switch” (hereinafter “the ‘during
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`the on time’ limitation”). The original application teaches only a current limit
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`threshold that increases during the entire on time of the switch, and there is no
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`language in original claim 1 that modifies that meaning. Thus, before the proposed
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`amendments, the plain and ordinary meaning of the “during the on time” limitation
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`in view of the intrinsic record was that the current limit threshold increases during
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`the entire on time of the switch.
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`The “portion” limitation, however, would change the plain and ordinary
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`meaning of the “during the on time” limitation. Under the proper construction of
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`“first state,” the “portion” limitation is equivalent to “the variable current limit
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`8
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`Petitioner’s Supplemental Response
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`threshold increases during at least a portion of the [on time of the switch],” which
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`is simply a broadened version of the “during the on time” limitation.
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`Claim construction must account for the entirety of the claim language.
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`Kyocera Wireless Corp. v. ITC, 545 F. 3d 1340, 1347(Fed. Cir. 2008) (“[T]his
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`court does not interpret claim terms in a vacuum, devoid of the context of the claim
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`as a whole.”); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374
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`(Fed.Cir.1999) (“[P]roper claim construction ... demands interpretation of the
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`entire claim in context, not a single element in isolation.”). By adding the
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`“portion” limitation, Patent Owner inserts new intrinsic evidence that would
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`broaden the plain and ordinary meaning of the claim language to allow the variable
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`current limit threshold to increase for less than the full on time of the switch—a
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`meaning not supported by the original intrinsic record. Under the correct
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`construction of “first state,” the substitute claims therefore improperly broaden the
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`scope of the claims in violation of 35 U.S.C. § 316(d)(3). The Board should deny
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`the request to substitute claims 13-16 for this additional reason.
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`II.
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`If “first state” is not coextensive with “on time of the switch,” the
`substitute claims add new subject matter
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`Even if the Board construes “first state” such that it need not coincide with
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`“on time of the switch,” it should still deny the request to substitute claims 13-16
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`because there would be no written description for the new limitation reciting a
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`“first state and second state” of each control signal cycle.
`9
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`Petitioner’s Supplemental Response
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`The original application does not include the phrase “control signal cycle”
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`nor does it describe any states of such cycles. See Paper 18 at 15. To support its
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`newly-added “first state and second state” limitations, therefore, Patent Owner
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`relies entirely on an inherency argument. Specifically, Patent Owner argues that
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`the ’642 Application discloses a switch that turns on and off and is controlled by a
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`control signal, and thus the control signal must “necessarily have a first state and a
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`second state.” Paper 21 at 8-9.
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`But Patent Owner’s inherency argument only succeeds if there is a one-to-
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`one correspondence between the first state and the on time of the switch. A
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`teaching of on and off times of the switch can only necessarily disclose first and
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`second states that correspond precisely to the on and off times. If the Board
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`construes “first state and second state” such that they could correspond to some
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`other, undisclosed (and unspecified) statuses of the switch beyond the on and off
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`times, Patent Owner’s written description argument fails and the “first state and
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`second state” limitation would be new matter. Lockwood, 107 F.3d at 1572. Thus,
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`even if the Board disagrees with Petitioner’s proposed construction, it should deny
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`the request to substitute claims 13-16.
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`10
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`Petitioner’s Supplemental Response
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`Respectfully submitted,
`BAKER BOTTS L.L.P.
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`October 25, 2017
`Date
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`
` /Roger Fulghum/
`
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
`
`Brian W. Oaks (Reg. No. 44,981)
`Nicholas A. Schuneman (Reg. No. 62,088)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`
`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
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`11
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`Petitioner’s Supplemental Response
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
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`the 25th day of October, 2017, a complete and entire copy of PETITIONER’S
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`SUPPLEMENTAL RESPONSE TO PATENT OWNER’S MOTION TO
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`AMEND was served on the patent owner via electronic mail at the following
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`correspondence addresses:
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`Neil A. Warren (warren@fr.com)
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`John C. Phillips (phillips@fr.com)
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`IPR10256-0021IPC@fr.com
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`PTABInbound@fr.com
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`October 25, 2017
`Date
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`
` /Roger Fulghum/
`Roger Fulghum (Reg. No. 39,678)
`One Shell Plaza
`910 Louisiana Street
`Houston, Texas 77002-4995
`
`Brian W. Oaks (Reg. No. 44,981)
`Nicholas A. Schuneman (Reg. No. 62,088)
`Brett J. Thompsen (Reg. No. 69,985)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`
`Attorneys for Petitioner,
`Semiconductor Components Industries, LLC
`d/b/a ON Semiconductor
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`12
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