Petitioner’s Presentation
`IPR2016‐01600
`U.S. Patent No. 7,834,605
`
`
`IPR2016‐01600
`U.S. Patent No. 7,834,605
`
`
`
`The substitute claims are improper
`
`Paper 18, Pet. Reply at 4-25; Paper 29, Pet. Supp. Resp. at 1-10
`
`•
`
`•
`
`Patent Owner’s substitute claims are improper under 35 U.S.C. § 316(d)(3)
`– Under proper construction of “first state,” the “portion” limitation is new matter
`and broadens the claims
`– Under alternative construction of “first state,” the “first state and second state”
`limitation is new matter
`
`Patent Owner presents an unreasonable number of substitute claims
`– PO’s request to cancel claims 1 and 2 is mooted by judgment of invalidity
`– PO proposes more than one substitute claim per challenged claim, but did not
`explain any special circumstances
`
`2
`
`
`
`Procedural history
`
`Paper 1, Petition; Paper 16, PO MTA at 1; Paper 18, Pet. Opp. at 1, 4
`
`•
`
`•
`
`Timeline
`– August 11, 2016: Petitioner challenged claims 1, 2, 5, and 9 of the ‘605 Patent
`– December 12, 2016: Claims 1 and 2 found invalid by Federal Circuit
`• Final judgment
`– March 12, 2017: Window for further Fed Cir or Supreme Court appeal closed
`– May 17, 2017: Patent Owner moved to amend claims 1, 2, 5, and 9
`• Substituted amended claim 13 for original claim 1
`• Claims 2, 5, and 9 replaced with claims 14-16, which depend from claim 13
`
`Patent Owner’s motion to amend is not contingent on determination that
`the original claims are unpatentable
`– Paper 16, PO MTA at 1
`
`3
`
`
`
`Paper 18, Pet. Opp. at 3-4, 13-25; Paper 29, Pet. Supp. Resp. at 1-10
`
`The substitute claims are
`improper under 35 U.S.C.
`§316(d)(3)
`
`
`
`Paper 29, Pet. Supp. Resp. at 2
`
`“An amendment under this subsection
`may not enlarge the scope of the claims
`of the patent or introduce new matter.”
`
`35 U.S.C. § 316(d)(3)
`
`5
`
`
`
`Substitute claim 13
`
`Paper 16, PO MTA, Appx. A; Paper 29, Pet. Supp. Resp. at 1
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having [1] a first
`state and a second state, the [2] 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.
`
`6
`
`
`
`Construction of “first state”
`
`Paper 18, Pet. Opp. at 10-11, 18-23; Paper 29, Pet. Supp. Resp. at 2-10
`
`•
`
`•
`
`If “first state” occurs during “on time of the switch”
`– The “portion” limitation is new matter
`– Amendments broaden the scope of the claims
`
`If “first state” need not occur during “on time of the switch”
`– “First and second state” limitation is new matter
`
`7
`
`
`
`Construction of “first state”
`
`Paper 29, Pet. Supp. Resp. at 2-4
`
`•
`
`•
`
`Petitioner proposes the following constructions:
`– “First state” – the state of the control signal cycle that occurs during, and is
`coextensive with, the on time of the switch
`– “Second state” – the state of the control signal cycle that occurs during, and is
`coextensive with, the off time of the switch
`
`Petitioner’s construction is only one even arguably supported by intrinsic
`record
`– “First state” and “second state” are new terms
`– PO argues “first state” and “second state” supported by description of switch
`having on and off times
`
`8
`
`
`
`Paper 16, PO MTA at 11; Ex. 2010, Kelley Decl. at ¶ 63; Paper 29, Pet. Supp. Resp. at 2-3
`
`“First, as recited in the element [of proposed Claim 13]
`‘the control signal [is] to be coupled to a control terminal of
`the switch to control switching of the switch’; accordingly,
`the ‘first state’ and ‘second state’ of the control signal
`correspond to the on and off times [of] the switch.”
`
`Paper 16, PO MTA at p. 11 and
`Ex. 2010, Kelley Decl. at ¶ 63
`
`9
`
`
`
`Paper 21, PO Reply at 9; Paper 29, Pet. Supp. Resp. at 2-4
`
`“[I]n the embodiments shown in FIGs. 1 and 2 the control
`signal output by latch 90 will necessarily have a first state
`and a second state. Ex. 2010 at ¶ 63.”
`
`Paper 21, PO Reply at 9
`
`“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, PO Reply at 9
`
`10
`
`
`
`Ex. 2011; Paper 29, Pet. Supp. Resp. at 2-4
`
`
`
`Ex. 2011; Paper 29, Pet. Supp. Resp. at 2—4
`
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`
`45
`
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`
`Ex. 2011
`
`11
`
`SEIUH'BE
`
`
`
`PO’s argument that “first state” and “on time of the
`switch” are different elements misses the point
`
`Paper 21, PO Reply at 11; Paper 29, PO Supp. Resp. at 4
`
`“The fact that the claim’s original scope includes the term ‘on time of the
`switch’ does not mean that the addition of the term ‘first state of each control
`signal cycle’ broadens the claim. These are different elements, and each is
`entitled to its broadest reasonable interpretation. This is true regardless of
`whether the time periods defined by these limitations could, in certain
`embodiments, be coextensive.”
`
`Paper 21, PO Reply at 11
`
`12
`
`
`
`The substitute claims are improper under §
`316(d)(3)
`
`Paper 18, Pet. Opp. at 18-21, 23-25; Paper 29, Pet. Supp. Resp. at 1-2, 4-9
`
`•
`
`If “first state” occurs during and is coextensive with “on time of the switch,”
`the “portion” limitation:
`
`1. Adds new matter, because there is no disclosure of a variable current limit
`threshold increasing during less than the on time of the switch
`
`2. Broadens the claims, by redefining the plain and ordinary meaning of the
`“during the on time” limitation
`
`13
`
`
`
`Paper 18, Pet. Opp. at 18-21; Paper 29, Pet. Supp. Resp. at 4-8
`
`Under the proper
`construction, the “portion”
`limitation is new matter
`
`
`
`The “portion” limitation is new matter
`
`Paper 18, Pet. Opp. at 18-20; Paper 29, Pet. Supp. Resp. at 4-8
`
`“An amendment under this subsection may not . . . introduce new matter.”
`
`35 U.S.C. § 316(d)(3)
`
`“We find that the ‘subset’ limitation in proposed substitute claim 26 lacks written
`description support under 35 U.S.C. § 112(a) and, therefore, does not comply
`with 35 U.S.C. § 316(d)(3).”
`
`Veeam Software v. Veritas, IPR2014-00090, Paper 48 at 13
`
`15
`
`
`
`Substitute claim 13
`
`Paper 16, PO MTA, Appx. A; Paper 29, Pet. Supp. Resp. at 4-8
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having a first state
`and a second state, the variable current limit threshold increases during at least a
`portion of the [on time of the switch] and decreases during at least a portion of the
`second state of each control signal cycle.
`
`16
`
`
`
`’642 Application does not teach current limit
`increasing for less than entireon time
`
`Ex. 2011; Paper 29, Pet. Supp. Resp. at 4-8
`
`Ex. 2011
`
`17
`
`
`
`’642 Application does not teach current limit
`increasing for less than entireon time
`
`Paper 16, PO MTA at 11 ; Paper 29, Pet. Supp. Resp. at 4-8
`
`Paper 16, PO MTA at 11
`
`18
`
`
`
`’642 Application does not teach current limit
`increasing for less than entireon time
`
`Ex. 2011; Paper 29, Pet. Supp. Resp. at 4-8
`
`“The intrinsic current limit 22 signal starts at the low point at the beginning of
`the cycle and then linearly increases with elapsed time throughout the cycle.
`. . . As time elapsed progresses, the current limit increases by a factor of K2 *
`telapsed.”
`
`Ex. 2011 at 16:3-9
`
`“[T]he goal of the invention is to generate an intrinsic current limit
`proportional to the time elapsed in the switching cycle.”
`
`Ex. 2011 at 15:2-3
`
`“It is simply necessary to increase the intrinsic current limit as a function of the
`time elapsed during the cycle.”
`
`Ex. 2011 at 13:16-18
`
`19
`
`
`
`Paper 31, PO Rep. at 4
`
`“Here, Patent Owner disclosed as its preferred
`embodiment a single design considered the best
`at the time – i.e., a variable current limit threshold
`that increases during the entire time of the
`switch…”
`
`Paper 31, PO Rep. at 4
`
`20
`
`
`
`PO: “Nothing in the patent disclaims a threshold that
`increases for less than the entire on time”
`
`Paper 21, PO Rep. at 10; Paper 29, Pet. Supp. Resp. at 6-8; Paper 31, PO Rep. at 5
`
`“If the Patentee intended to limit the disclosure to the entire time when the
`switch is on – i.e., narrow it from what the ordinary meaning of the terms would
`imply – and disallow thresholds that only increase during part of the on time,
`then the patentee would have needed to make such a limitation express
`and unmistakable. Absent an express limitation in the specification, there is no
`reason that the language should not be given its plain meaning. Moreover, the
`original disclosure expressly states that it is to be interpreted as illustrative and
`not restrictive.”
`
`Paper 21, PO Reply at 10
`
`“Nothing in the patent disclaims a threshold that increases for less than the
`entire on time, and nothing in the patent touts the special significance (let alone
`requirement) of a threshold that does.”
`
`Paper 31, PO Reply at 5
`
`21
`
`
`
`Patent Owner applies the wrong standard
`
`Paper 18, Pet. Opp. at 20-21; Paper 29, Pet. Supp. Resp. at 6-8
`
`The written description requirement of 35 U.S.C. § 112 “is not a question of
`whether one skilled in the art might be able to construct the patentee’s device
`from the teachings of the disclosure [but] whether the application necessarily
`discloses that particular device.”
`
`Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
`1572 (Fed. Cir. 1997)
`
`“At best, the disclosure as a whole does not preclude a system that
`restores less than all of the backed up files, but that does not provide
`reasonable conveyance of possession of the invention.”
`
`Veeam Software v. Veritas, IPR2014-00090,
`Paper 48 at 12 (citing Lockwood)
`
`22
`
`
`
`Veeam is instructive
`
`Paper 18, Pet. Opp. at 20-21; Paper 29, Pet. Supp. Resp. at 7-8
`
`• Original claim: “restor[ing] a set of files from the backup storage”
`
`• Amended claim: “the set of files is a subset of a plurality of files that were
`previously backed up to the backup storage”
`
`•
`
`In Veeam, the Board rejected the “subset” limitation as new matter
`– Original application did not “describe any functions or processes that would
`permit” restoring less than all backed up files
`– At most, the disclosure did “not preclude a system that restores less than all of the
`backed up files”
`
`23
`
`
`
`PO’s arguments in its reply
`
`1. “[T]he evidentiary posture was different.”
`
`Paper 31, PO Rep. at 6-8
`
`2. “[T]he legal posture was different . . . [under Aqua Products], Petitioner alone
`bears the burden of proof.”
`
`3. “[H]ere, there is no contention that the ‘at least a portion of’ language is
`relevant to distinguishing the prior art (rather, it is the decreasing during the
`second state of each cycle that distinguishes the prior art).”
`
`4. “In this case, the specification discloses circuitry that would permit a variable
`current limit threshold to increase for less than the entire on time. . . . The
`circuitry to cause that voltage signal to increase for the entire on time is
`shown, and thus, the circuitry to increase that signal for less than the entire
`on time is also shown (and the increase could simply be stopped).”
`
`24
`
`
`
`Paper 18, Pet. Opp. at 23-25; Paper 29, Pet. Supp. Resp. at 8-9
`
`Under the proper construction,
`the “portion” limitation
`broadens the claims
`
`
`
`Original claim 1
`
`Ex. 1001 ; Paper 29, Pet. Supp. Resp. at 4-9
`
`1. A power supply regulator, comprising:
`
`a comparator having a first input coupled to sense a voltage representative of a
`current flowing through a switch during an on time of the switch, the comparator
`having a second input coupled to receive a variable current limit threshold
`that increases during the on time of the switch;
`
`a feedback circuit coupled to receive a feedback signal representative of an
`output voltage at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of
`the comparator and in response to an output of the feedback circuit, the control
`signal to be coupled to a control terminal of the switch to control switching of the
`switch.
`
`Ex. 1001
`
`26
`
`
`
`Substitute claim 13 adds new intrinsic evidence
`
`Paper 16, PO MTA, Appx. A; Paper 18, Pet. Opp. at 23-25; Paper 29, Pet. Supp. Resp. at 8-9
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having a first state
`and a second state, the variable current limit threshold increases during at least a
`portion of the [on time of the switch] and decreases during at least a portion of the
`second state of each control signal cycle.
`
`27
`
`
`
`Claim construction must account for the entirety of
`the claim language
`
`Paper 29, Pet. Supp. Resp. at 9
`
`“[T]his court does not interpret claim terms in a vacuum, devoid of the context
`of the claim as a whole.”
`
`Kyocera Wireless Corp. v. ITC, 545 F. 3d
`1340, 1347(Fed. Cir. 2008)
`
`“[P]roper claim construction ... demands interpretation of the entire claim in
`context, not a single element in isolation.”
`Hockerson-Halberstadt, Inc. v. Converse Inc.,
`183 F.3d 1369, 1374 (Fed.Cir.1999)
`
`28
`
`
`
`PO’s arguments in its reply
`
`Paper 31, PO Rep. at 8-10
`
`1. “The broadest reasonable interpretation of this element provides a variable
`current limit threshold that increases during at least a portion of the on time
`of the switch.”
`
`2. “Patent Owner’s proposed interpretation of the claim was adopted by
`Petitioner (and the District Court) during litigation”
`
`3. “[I]t is axiomatic that adding a new limitation to an open claim narrows the
`claim.”
`
`4. “[T]he only evidence in the record regarding whether there has been a
`broadening of the claims comes from Dr. Kelley who testified that the claims
`were not broadened.”
`
`29
`
`
`
`Paper 18, Pet. Opp. at 23-25; Paper 29, Pet. Supp. Resp. at 9-10
`
`Under any other
`construction, “first state and
`second state” is new matter
`
`
`
`Substitute claim 13
`
`Paper 16, PO MTA, Appx. A; Paper 18, Pet. Opp. at 17-18; Paper 29, Pet. Supp. Resp. at 9-10
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having a first
`state and a second state, the variable current limit threshold increases during at least a
`portion of the first state of each control signal cycle and decreases during at least a portion
`of the second state of each control signal cycle.
`
`31
`
`
`
`“First state and second state” is new matter
`
`Paper 16, PO MTA at 11; Paper 18, Pet. Opp. at 17-18; Paper 29, PO Supp. Resp. at 9-10
`
`•
`
`•
`
`If Petitioner’s proposed construction is not adopted, “first state” need not
`coincide with “on time of the switch”
`
`“First state and second state” that does not correspond to on and off times
`of the switch would be new matter
`– “First state” does not appear in the ‘642 Application
`– To support “first and second state” amendment, Patent Owner argues:
`• A control signal controls the switch
`• Switch turns on and off
`• Thus, control signal necessarily has first and second states corresponding to on and off
`times of the switch
`
`32
`
`
`
`Paper 16, PO MTA at 11; Paper 21, PO Rep. at 9; Paper 29, Pet. Supp. Resp. at 9-10
`
`“As stated above, in the embodiments shown in FIGs. 1 and 2 the control
`signal output by latch 90 will necessarily have a first state and a second
`state. Ex. 2010 at ¶ 63. 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, PO Reply at 9
`
`“First, as recited in the element [of proposed Claim 13] ‘the control signal [is] to
`be coupled to a control terminal of the switch to control switching of the switch’;
`accordingly, the ‘first state’ and ‘second state’ of the control signal
`correspond to the on and off times [of] the switch.”
`
`Paper 16, PO MTA at 11
`
`33
`
`
`
`Paper 18, Pet. Opp. at 1, 4-9
`
`Claims 1 and 2 have been
`found invalid in Final
`Judgment
`
`
`
`PO’s cancellation of claims 1 and 2 is moot
`
`Paper 18, Pet. Opp. at 1, 4-6
`
`• Claims 1 and 2 have been found invalid in a final, unappealable judgment
`– On December 12, 2016, the Federal Circuit found claims 1 and 2 invalid as
`anticipated by Maige
`– On March 12, 2017, the window for further appeal closed
`
`• Under PTO procedure, claims 1 and 2 can no longer be “challenged” in this
`proceeding
`– “A final holding of claim invalidity or unenforceability (after all appeals) . . . is
`controlling on the Office.” MPEP § 2286.
`– See also MPEP § 2659.
`
`35
`
`
`
`Patent Owner proposes an unreasonable number of
`substitute claims
`
`Paper 18, Pet. Opp. at 1-2, 6-9
`
`•
`
`•
`
`•
`
`Patent Owner cancels only two claims not already invalidated (claims 5 and
`9)
`– …but proposes four substitute claims (claims 13-16)
`
`“PO was required to propose a reasonable number of substitute claims.”
`– Paper 18, Pet. Opp. at 6-7 (citing 37 C.F.R. § 42.121(a)(3)).
`
`“PO was required to show sufficiently special circumstances to demonstrate
`need for more than one substitute claim per pending challenged claim.”
`– Paper 18, Pet. Opp. at 7 (citing 37 C.F.R. § 42.121(a)(3) and Idle Free Systems, Inc.
`v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-6)
`
`36
`
`
`
`Patent Owner proposes an unreasonable number of
`substitute claims
`
`Paper 18, Pet. Opp. at 7-9
`
`•
`
`“The same is true if a patent owner desires to rebut the presumption that
`only one substitute claim would be needed to replace each challenged
`claim. Such actions must be discussed with the Board prior to filing of
`the motion to amend.”
`– Idle Free, Paper 26 at 6.
`
`37
`
`
`
`Patent Owner proposes an unreasonable number of
`substitute claims
`
`Paper 18, Pet. Opp. at 7-9
`
`•
`
`Patent Owner has not identified any special circumstances to justify more
`than two substitute claims
`– …either in teleconference or in MTA
`
`• At most, PO offered to “provide briefing” on its view that the Federal Circuit
`decision did not preclude amending claims 1 and 2 (Ex. 1014 at pp. 7-8)
`– …but PO did not provide any briefing in the MTA
`
`38
`
`
`
`Backup
`
`
`w ON Semiconductor®
`
`
`
`Original claim 1
`
`Ex. 1001
`
`1. A power supply regulator, comprising:
`
`a comparator having a first input coupled to sense a voltage representative of a
`current flowing through a switch during an on time of the switch, the comparator
`having a second input coupled to receive a variable current limit threshold that
`increases during the on time of the switch;
`
`a feedback circuit coupled to receive a feedback signal representative of an
`output voltage at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of
`the comparator and in response to an output of the feedback circuit, the control
`signal to be coupled to a control terminal of the switch to control switching of the
`switch.
`
`40
`
`
`
`Substitute claim 13
`
`Paper 16, PO MTA, Appx. A
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having a first state
`and a second state, the variable current limit threshold increases during at least a portion
`of the first state of each control signal cycle and decreases during at least a portion of the
`second state of each control signal cycle.
`
`41
`
`
`
`Paper 21, PO Reply at 5; Paper 18, Pet. Opp. at 9-11
`
`“As explained by Dr. Kelley, ‘“first state” and “second state”
`would have been generally known to a person having
`ordinary skill in the art at the time of the invention and refer
`to a signal having various well-known states, such as
`“on”/“off” or “high”/“low,” for example.’”
`
`Paper 21, PO Reply at 5
`
`42
`
`
`
`“Plurality of consecutive control signal cycles”
`
`Paper 16, PO MTA, Appx. A; Paper 18, Pet. Opp. at 13-16
`
`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;
`
`a feedback circuit coupled to receive a feedback signal representative of an output voltage
`at an output of a power supply; and
`
`a control circuit coupled to generate a control signal in response to an output of the
`comparator and in response to an output of the feedback circuit, the control signal to be
`coupled to a control terminal of the switch to control switching of the switch;
`
`wherein, for each of a plurality of consecutive control signal cycles each having a first
`state and a second state, the variable current limit threshold increases during at least a
`portion of the first state of each control signal cycle and decreases during at least a portion
`of the second state of each control signal cycle.
`
`43
`
`
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