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 OWNER’S REPLY TO PETITIONER’S SUPPLEMENTAL
`RESPONSE TO PATENT OWNER’S MOTION TO AMEND
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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 OWNER’S REPLY TO PETITIONER’S SUPPLEMENTAL
`RESPONSE TO PATENT OWNER’S MOTION TO AMEND
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
`TABLE OF CONTENTS
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`I.
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`PETITIONER’S PROPOSED CLAIM CONSTRUCTION IS NOT
`REQUIRED AS A MATTER OF LAW AND IS NOT HELPFUL IN
`RESOLVING THE ISSUES BEFORE THE BOARD ................................... 1
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`II.
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`SUBSTITUTE CLAIMS 13-16 DO NOT INCLUDE NEW MATTER ........ 1
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`III. THE AMENDMENT DOES NOT BROADEN THE CLAIMS .................... 8
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`IV. PETITIONER’S FINAL ARGUMENT LACKS EVIDENTIARY
`SUPPORT AND SHOULD BE REJECTED ............................................... 10
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`V.
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`CONCLUSION .............................................................................................. 10
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`i
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
`The issue before the Board is the patentability of the amended claims, and in
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`particular, whether the amendments enlarge the scope of the claims or introduce
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`new matter. See 35 U.S.C. § 316(d). Under 35 U.S.C. § 316(e), Petitioner is
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`required to prove all propositions of unpatentability, including for amended claims.
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`Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1296 (Fed. Cir. 2017) (en banc). The
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`arguments in Petitioner’s Supplemental Response (Paper 29) should be rejected.
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`I.
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`PETITIONER’S PROPOSED CLAIM CONSTRUCTION IS NOT
`REQUIRED AS A MATTER OF LAW AND IS NOT HELPFUL IN
`RESOLVING THE ISSUES BEFORE THE BOARD
`The term “first state” has a well-understood plain and ordinary meaning and
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`does not require special construction. (Ex. 2010 at ¶ 49.) That said, Patent Owner
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`has never disputed that, in the preferred embodiment, the period of the “first state”
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`of the control signal corresponds to the “on time of the switch.” Thus, while Patent
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`Owner contends it is not proper as a matter of law to limit the new “first state”
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`claim element to the scope of the original “on time of the switch” language, any
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`difference is not material to the arguments presented regarding the alleged
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`inclusion of new matter and/or the broadening the claims.
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`II.
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`SUBSTITUTE CLAIMS 13-16 DO NOT INCLUDE NEW MATTER
`Even accepting Petitioner’s proposed claim construction, arguendo, the
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`amendment to new claim 13 does not introduce new matter. Petitioner alleges that
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`the original ’642 Application discloses a variable current limit threshold that
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`Attorney Docket No: 10256-0021IPC
`increases during the entire on time of the switch, and therefore supposedly a claim
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`drawn to “a variable current limit threshold that increases for less than the entire
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`on time of the switch” recites new matter. (Paper 29 at 5 (emphasis in original).)
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`This argument is legally erroneous and misstates what is claimed.
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`First, contrary to Petitioner’s arguments, the new element is not limited to a
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`“threshold that increases for less than the entire on time of the switch.” (Id.)
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`Rather, the amended language requires that the variable current limit threshold
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`increases “during at least a portion” of the first state of the control signal. This
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`language expressly covers a threshold that increases during the entire period of the
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`first state, just as Petitioner concedes is disclosed in the ’642 Application.
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`Petitioner’s arguments fail for several additional reasons as well.
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`Whether a claim element includes new matter turns on the written
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`description inquiry and is a question of fact queried through the eyes of a person of
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`ordinary skill in the art. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
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`Cir. 1991). The requirement is intended to ensure that the patent applicant had
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`possession of the claimed subject matter at the time he filed his application. In re
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`Wertheim, 541 F.2d 257, 262 (CCPA 1976). The manner in which the specification
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`meets the requirement is not material; the requirement may be met by either an
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`express or an implicit disclosure. Id. Important here, “[t]he primary consideration
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`is factual and depends on the nature of the invention and the amount of knowledge
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`imparted to those skilled in the art by the disclosure.” Id.
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`Based on the law, the issue here is: would a person of ordinary skill art at
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`the time of invention recognize that the ’605 patent inventor had possession of a
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`“variable current limit threshold [that] increases during at least a portion of the first
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`state of each control signal cycle”? Petitioner bears the burden of proof under
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`Aqua Products to demonstrate that a skilled artisan would answer “no” to this
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`question. Yet, Petitioner has introduced no evidence to suggest that a person of
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`ordinary skill in art (rather than Petitioner’s attorneys) would draw the conclusion
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`Petitioner argues for here. Petitioner could have, but chose not to, introduce its
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`own expert testimony, or other evidence, to support its positions. Petitioner did not
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`even cross-examine Patent Owner’s expert. Having failed to introduce any
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`evidence at all (or to attempt to impugn Patent Owner’s proffered evidence), under
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`Aqua Products, the absence of evidence alone compels a finding that Petitioner
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`cannot meet its burden to demonstrate the unpatentability of the claims.
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`Patent Owner, on the other hand, has presented evidence in the form of
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`expert testimony from Dr. Kelley, demonstrating the proper meaning of the
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`amended limitation, the level of ordinary skill in this field, and that a person of
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`ordinary skill in the art would find sufficient support in the ’642 Application for
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`the amended claims. (Paper 16 at 10-13; Ex. 2010 at ¶¶ 63-65.) There is no
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`evidence in the record about how a person of ordinary skill in the art would
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`understand the teaching of the ’642 Application other than that from Dr. Kelley,
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`and there is no cross-examination evidence to call into question his conclusions.
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`For this additional reason, there is no basis to find that Petitioner has met its
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`burden to demonstrate the unpatentability of the amended claims.
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`Putting aside the complete absence of evidence to support its argument,
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`Petitioner’s argument is legally flawed. Taken to its logical conclusion,
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`Petitioner’s argument demands that any claim that recites any subject matter
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`outside of the expressly disclosed embodiments would include new matter; that is
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`not the law. Rather, “[i]t is a familiar axiom of patent law, however, that the scope
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`of the claims is not limited to the preferred embodiments described in the
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`specification,” Fuji Photo Film Co. v. Int’l Trade Comm'’n, 386 F.3d 1095, 1106
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`(Fed. Cir. 2004), and thus the corollary would also be true: A claim is not invalid
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`merely because it covers embodiments not shown in the specification.
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`Here, Patent Owner disclosed as its preferred embodiment a single design
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`considered best at the time – i.e., a variable current limit threshold that increases
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`during the entire on time of the switch – known to achieve the patent’s goal of
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`reducing the effects of current overshoot. As explained by Dr. Kelley (and the
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`patent), the purpose of the invention is to provide an increasing current limit
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`threshold to compensate for the different degrees of current overshoot in power
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`supplies with different input voltages. (Ex. 2010 at ¶¶ 41-43.) In particular, Patent
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`Owner disclosed the continuously increasing threshold because that would allow
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`for reducing the current overshoot for the largest range of input voltages and thus
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`confer the most benefit to using the invention. Nevertheless, a current limit
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`threshold that increased for less than the entire on time of the switch would be
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`recognized by a person of skill in the art as still providing a benefit (i.e., relative to
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`the duration of the increase), although it may be less beneficial than one that
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`increased the entire on time. Nothing in the patent disclaims a threshold that
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`increases for less than the entire on time, and nothing in the patent touts the special
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`significance (let alone a requirement) of a threshold that does. A person of
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`ordinary skill in the art would have recognized the benefits of the invention may be
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`most pronounced in the preferred embodiment design, but would, nevertheless
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`understand that a benefit – as compared to a fixed threshold – would be achieved
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`for any period of increase. There is no evidence to suggest, in contrast, a person of
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`ordinary skill in the art would fail to recognize that the inventors had possession of
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`the invention as a whole, including non-ideal thresholds, or that such thresholds
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`were beyond the scope of the disclosure.
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`It makes little sense under the law to argue that Patent Owner’s choice to
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`disclose the single most-preferred embodiment limits the scope of the possible
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`patentable claims to that single embodiment. Yet, this is exactly what Petitioner
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`requests the Board to find here. That is, according to Petitioner, any claim
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`covering a less-than-ideal threshold design (i.e., a threshold that increases for less
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`than the entire on time) is per se unpatentable as lacking written description and
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`thus is essentially disclaimed to the public. It is common practice to disclose in
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`one’s patent a single preferred embodiment and to then claim additional
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`embodiments – accordingly, during claim construction, claims are not construed as
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`limited to a single preferred embodiment. Petitioner’s suggested result cannot be
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`the proper outcome under the law, and it is not. Requiring actual evidence and not
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`merely attorney argument as to how a person of ordinary skill in the art would
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`understand the disclosure is thus important to prevent such nonsensical attorney
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`arguments from carrying the day.
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`Finally, Petitioner’s cited Veeam case (IPR2014-00090, Paper 48) is
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`distinguishable. In the Veeam case, the issue was a claim element drawn to a
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`“restore application” that was configured to restore only a “subset” of a larger set
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`of files, where the disclosure only related to restoring the larger set. Veeam at 10-
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`13. Several important issues distinguish this case from Veeam. First, the
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`evidentiary posture was different: in Veeam there was actual evidence from the
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`petitioner’s expert (which was credited by the Board) to support its arguments as to
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`how person of ordinary skill in the art would understand the disclosure. (See
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`Veeam, Paper 48 at 10.) Here, there is no such evidence – the only evidence in the
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`record here supports Patent Owner. Second, the legal posture was different:
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`Veeam pre-dates the Federal Circuit’s en banc ruling in Aqua Products and thus
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`placed the burden on the Patent Owner. Here, Petitioner alone bears the burden of
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`proof (and lacks any evidentiary support).
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`Further, the facts of Veeam distinguish it from this case. As explained by
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`the Board, “Patent Owner’s stated intent in this proposed amendment is to avoid
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`the prior art, which describes restoring all files on the backup storage.” (Veeam,
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`Paper 48 at 7.) In contrast, here, there is no contention that the “at least a portion
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`of” language is relevant to distinguishing the prior art (rather it is the decreasing
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`during the second state of each cycle that distinguishes the prior art). Here, it is
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`not the case that absent this language, the prior art would be ensnared, and
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`Petitioner has never alleged that it would be. Indeed, Petitioner does not argue
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`about the prior art at all.
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`Finally, the Board in Veeam reasoned that: “In conclusion, we find that
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`Patent Owner fails to establish sufficiently that the original disclosure of the ’527
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`patent describes restoring less than all of the backed up files. Similarly, we find
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`that the ’527 patent disclosure does not describe functions or processes that
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`would permit it to do so.” (Veeam, Paper 48 at 12 (emphasis added).) The
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`highlighted portion demonstrates the difference here. In this case, the specification
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`discloses circuitry that would permit a variable current limit threshold to increase
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`Attorney Docket No: 10256-0021IPC
`for less than the entire on time. That is, unlike a process designed to be performed
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`on an entire set of files, and not on a subset of those files, the threshold here is an
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`increasing voltage signal. The circuitry to cause that voltage signal to increase for
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`the entire on time is shown, and thus, the circuitry to increase that signal for less
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`than the entire on time is also shown (and the increase could simply be stopped).
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`In sum, the ’642 Application adequately discloses a circuit where 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.” The disclosure of a variable current limit threshold
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`that increases during the entire period of the first state (as Petitioner concedes the
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`’642 Application discloses) necessarily also discloses a variable current limit
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`threshold that increases “during at least a portion” of that period. That is, the
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`disclosure of a threshold that increases during the entire on time necessarily also
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`implicitly discloses to a person of ordinary skill in the art a threshold that increases
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`during at least a portion of the on time. For all of these reasons, there has been no
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`new matter added to the claim, and Petitioner’s arguments should be rejected.
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`III.
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`THE AMENDMENT DOES NOT BROADEN THE CLAIMS
`The Board construes the claims under the broadest reasonable interpretation
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`standard. At issue here is the proper construction of the term “a variable current
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`limit threshold that increases during the on time of the switch.” Petitioner
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`erroneously argues that the preferred embodiment should be read into the claim
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`and that the broadest reasonable interpretation of this element is: a variable current
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`limit threshold that increases during the entire on time of the switch. This
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`construction should be rejected. The broadest reasonable interpretation of this
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`element provides a variable current limit threshold that increases during at least a
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`portion of the on time of the switch. Patent Owner’s interpretation is not
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`inconsistent with the specification, but rather reads on the preferred embodiment.
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`Patent Owner’s proffered interpretation is also not unreasonably broad.
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`Rather, it is the interpretation applied by both parties and the District Court during
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`litigation. Petitioner never alleged during litigation that this element lacked written
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`description, as it now implicitly alleges. In fact, some of Petitioner’s adjudged
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`infringing products have a variable current limit threshold that increases for less
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`than the full range of possible switch on times and then plateaus. (See Ex. 2018
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`(AN-5841 Application Note) at 6.) Petitioner never alleged that its accused
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`products did not infringe because their threshold did not increase during all
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`possible switch on times. Given that Patent Owner’s proposed interpretation of the
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`claim was adopted by Petitioner (and the District Court) during litigation,
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`Petitioner should not be heard to now argue it is unreasonably broad.
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`There is simply no basis to allege that the claim scope is broadened by the
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`amendment. Indeed, it is axiomatic that adding new limitations to an open claim
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`narrows the claim. This is because the original limitation still provides the same
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`limitation as it always did and cannot be broadened by additional later-recited
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`limitations. In any event, here, the only evidence in the record regarding whether
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`there has been a broadening of the claims comes from Dr. Kelley who testified that
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`the claims were not broadened. (See Ex. 2010 at ¶¶ 51-53.) For this additional
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`reason, Petitioner cannot meet its burden of demonstrating the claims are
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`unpatentably broadened.
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`IV.
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`PETITIONER’S FINAL ARGUMENT LACKS EVIDENTIARY
`SUPPORT AND SHOULD BE REJECTED
`Petitioner’s final argument alleges that there is no written description for the
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`new limitation reciting a “first state and second state” of each control signal cycle.
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`For all of the reasons stated above in Sections I and II, the reasons explained by
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`Dr. Kelley (Ex. 2010 at ¶¶ 48-49, 62-65) and Patent Owner’s Reply (Paper No. 21
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`at 7-9), and the additional reason that Petitioner has cited no evidence in support of
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`its alleged understand of the disclosure by a person of ordinary skill in the art (as
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`required by Aqua Products), the Board should reject this argument.
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`V.
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`CONCLUSION
`For all of the reasons stated above, and all of the reasons stated in Patent
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`Owner’s prior briefing (Papers 16 and 21), Patent Owner requests the Board grant
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`its motion to amend.
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
`Respectfully submitted,
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`/Neil A. Warren/
`Neil Warren, Reg. No. 63,582
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`Date: 11/1/2017
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (650) 839-5070
`Facsimile: (877) 769-7945
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`Case IPR2016-01600
`Attorney Docket No: 10256-0021IPC
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on November
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`1, 2017, a complete and entire copy of this Patent Owner’s Reply to Petitioner’s
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`Supplemental Response to Patent Owner’s Motion to Amend was provided via
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`email to the Petitioner by serving the correspondence email address of record as
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`follows:
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`Roger Fulghum
`Brett Thompsen
`Nicholas A. Schuneman
`Baker Botts L.L.P.
`One Shell Plaza, 910 Louisiana Street
`Houston, TX 77002-4995
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`Email: ONSemi_605IPR@bakerbotts.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`12
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