UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`d/b/a ON SEMICONDUCTOR
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`___________
`
`Case IPR2016-01600
`Patent 7,834,605 B2
`___________
`
`Record of Oral Hearing
`Held: November 15, 2017
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and LYNNE E.
`PETTIGREW, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`d/b/a ON SEMICONDUCTOR
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`___________
`
`Case IPR2016-01600
`Patent 7,834,605 B2
`___________
`
`Record of Oral Hearing
`Held: November 15, 2017
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and LYNNE E.
`PETTIGREW, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01600
`Patent 7,834,605 B2
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`
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`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`NICK SCHUNEMAN, ESQUIRE
`Baker Botts, LLP
`98 San Jacinto Boulevard
`Suite 1500
`Austin, Texas 78701
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`NEIL A. WARREN, ESQUIRE
`Fish & Richardson, P.C.
`300 Arguello Street
`Suite 500
`Redwood City, California 94063
`
`
`
`
`
`The above-entitled matter came on for hearing Wednesday, November 15, 2017,
`commencing at 11:17 a.m., at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia.
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`P R O C E E D I N G S
`- - - - -
`JUDGE McNAMARA: Okay. Welcome back everyone. This is the
`
`oral hearing in case IPR 2016-01600. We will follow the same procedure
`we followed earlier. We'll hear first from the petitioner, then the patent
`owner, then the petitioner can rebut, and the patent owner will have an
`opportunity to rebut after that solely on the motion to amend.
`
`I guess everyone is ready to begin, so let's begin with the petitioner.
`Each party, by the way, has 30 minutes in this case.
`
`Is there some amount the time you would like me to alert you to?
`
`MR. SCHUNEMAN: Yes, Your Honor. I'd like to reserve six
`minutes if I could.
`
`JUDGE McNAMARA: All right. Well, that's a nice precise number.
`
`MR. SCHUNEMAN: When you only have 30 you've got to be
`precise.
`
`JUDGE McNAMARA: Okay. Please begin.
`
`MR. SCHUNEMAN: Good morning, Your Honor. My name is Nick
`Schuneman. I'll be presenting on behalf of petitioner, Semiconductor
`Components Industries, LLC. And on the 1600 IPR, the only remaining
`issue is patent owner's motion to amend. Those substitute claims are
`improper for two reasons. First, as a substantive matter, the substitute
`claims are improper under 316(d) because they add new matter and they
`broaden the claims.
`
`Now, as I'll discuss and as our papers show, there's a bit of a claim
`construction issue regarding the new claim term "first state." However,
`under either possible claim construction of first state, there's at least a new
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`matter problem and rejection is proper here.
`
`So, very quickly, as a procedural matter, which I'll discuss at the end
`of my presentation, patent owner presents an unreasonable number of
`substitute claims and is asking the board to amend claims that have already
`been found invalid in a final judgment by the federal circuit.
`
`So very quickly on the procedural history, just a couple points I'd like
`to note. First of all, claims 1 and 2 were found invalid by the Federal Circuit
`in December of 2016. The window for that appeal closed in March of this
`year, and it wasn't until two months after that window for appeal closed and
`that the finding of invalidity became final that patent owner moved to amend
`its claims.
`
`So I'd like to talk about -- moving on to slide 5 -- the substantive
`issues. And as we know, under 316(d)(3), an amendment in IPR may not
`enlarge the scope of the claims or introduce new subject matter. The
`amendments here do both.
`
`On slide 6, substitute claim 13 is shown. I'd like to highlight a couple
`of key limitations added by the patent owner in its amendments. First is
`what I'll call the first and second state limitation. That recites that the
`control signal which controls the switch in the claim has a first state and a
`second state.
`
`Second is what I will refer to as the portion limitation today. That
`recites that the variable current limit threshold increases during at least a
`portion of the first state of a control signal. Now, the portion limitation
`refers back to an original limitation, an original claim 1, which was
`maintained in claim 13, as shown here on slide 6 in blue, which recited that
`the variable current limit threshold increases during the on time of the
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`switch. I'll call that during the on time limitation.
`
`So as I mentioned, the construction of first state is a bit of a dispute
`between the parties, although I will note that patent owner's latest reply
`brief, paper 31, did not contest or offer its own construction of first state.
`But if the first state of the control signal occurs during the on time of the
`switch controlled by that control signal, then the portion limitation we just
`discussed is new matter, and it broadens the scope of the claims.
`
`If, however, the first state of the control signal is construed such that it
`need not occur during the on time of the switch controlled by that signal,
`then the other limitation, first state and second state, would be new matter.
`
`So petitioner -- on slide 8, petitioner proposes the following
`constructions -- and we proposed constructions in first state and second state
`which are a bit of a yin and yang to each other. The first state we proposed
`that the state of the control signal cycle -- it's the state of a control signal
`cycle that occurs during and is co-extensive with the on time of the switch.
`In other words, the first state of the control signal happens at the same time
`the switch is on.
`
`And the second state is the opposite. It's the state of the control signal
`cycle that occurs during and is co-extensive with the off time of the switch.
`That construction is the only one even arguably supported by the intrinsic
`record. And I say "even arguably" because the terms "first state" and
`"second state" are new terms that don't appear in the original application,
`and patent owner noted that in its motion to amend.
`
`Rather, patent owner argues that the first state and second state are
`supported by a description in the original application of a switch that turns
`on and off and that is controlled by the control signal. So they argued if the
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`switch turns on and off and if the control signal makes the switch go on and
`off, then it must have a first state that makes it go on and a second state that
`makes it go off.
`
`And as shown here on slide 9 is precisely patent owner's argument in
`its motion to amend. From the very outset it referred to the language -- a
`specific element in proposed Claim 13 and said accordingly the first state
`and the second state of the control signal correspond to the on and off times
`of the switch. So from the very get-go patent owner was making this
`position explicit.
`
`In its reply brief -- I won't belabor the point of slide 10 and 11 other
`than to say in its reply, paper 21 reply, patent owner argued basically the
`same argument in a less direct way by walking through the only embodiment
`shown and the spec which corresponds to figures 1 and 2 and arguing that
`the signal output by the latch, which is -- should be on slide 11, the D signal
`output from latch 90, that that signal has a first state that turns the switch on
`and a second state that turns the switch off.
`
`And as you can see on slide 11 there, the D output of the control
`signal ties directly to the gate of the switch. And when that D signal has a
`first state, a high state, or a one or an on state, the switch is on. When the D
`signal has the other state -- an off, a zero -- the switch would be off.
`
`Now, patent owner does argue in paper 21 that the first state of the
`control signal is a different element than the on time of the switch. That
`might be true, but that's not the dispute between the parties. The question is,
`does the first state of the control signal happen at the same time the switch is
`on? Are those two co-extensive? Are they contemporaneous? It's a little bit
`like a light switch for a room. Whether the light switch rocker is pointing up
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`or down is different than whether the light is on or off. But when the light
`switch, typically when it's pointing up, the light is on. When it's down, the
`light is off. Same here. When the control signal is in the first state, the
`switch is on.
`
`Now, moving on to slide number 13, under that construction,
`petitioner's construction of first state, the portion limitation adds new matter
`and broadens the claims. I'll walk through each of those. I'll talk about new
`matter first. As we know, new matter is not allowed by 316(d) and the
`Veeam Software case demonstrates that there's a lack of written description
`for an element of the claim. That element is new matter.
`
`So again, on slide 16 I've got substitute Claim 13 here. And what this
`slide shows in red is the portion limitation annotated to reflect the correct
`construction of the first state where the first state occurs during the on time
`of the switch. Under that construction, the portion limitation recites that the
`current limit threshold increases during at least merely a portion of the on
`time of the switch. So it could be less than the full on time of the switch.
`
`However, prior to the amendment, as shown in blue, the original --
`during the on-time limitation, the original claim recited that that threshold
`increased during the on time of the switch, not during a portion of the on
`time of the switch, but during at least a portion.
`
`JUDGE PETTIGREW: Does the increase during the on time of the
`switch mean the entire on time of the switch?
`
`MR. SCHUNEMAN: It does, Your Honor, and I'll walk through why.
`Because in the original application, the '642 application, that was the only
`embodiment taught. And in fact, that application taught that that was one of
`the goals of the invention.
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`And so on the original record, a person of ordinary skill in the art
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`reading that term had absolutely zero reason to believe that the threshold
`could or should increase for anything less than the full on time of the switch.
`
`In fact, I'll turn to slide 17 now which shows some of that original
`disclosure. Figure 2 from 2011 is shown on slide 17. And what is shown
`here is that the current limit 22, which corresponds to the variable current
`limit threshold in the claim increases during the entire time the duty cycle
`max is high. Now, duty cycle max defines the maximum duty cycle. In
`other words, the maximum amount of time that the switch can be on. So
`with the current limit increasing during the entire time the switch can be on,
`it certainly increases during the entire time it is on. We know that because
`as shown on slide 18, patent owner actually annotated figure 2 in its motion
`to amend and noted that the variable current limit threshold as shown there
`below is increasing during the time that patent owner called the maximum
`possible first state. So they've actually highlighted that point for us.
`
`Turning to slide 19 now, the text of the application also uniformly
`teaches and only teaches a single embodiment in which the current limit
`increases throughout the time of the cycle. And I'll highlight these last two
`quotes, the one from page 15, lines 2 to 3 first. It says: "The goal of the
`invention is to generate an intrinsic current limit proportional to the time
`elapsed."
`
`And the last one here says: "It is simply necessary to increase the
`intrinsic current limit as a function of time elapsed during the cycle."
`Simply necessary. It's a goal of the invention.
`
`So not only does the '642 application not only teach a single
`embodiment, it teaches that the aspect we're talking about today, is a goal of
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`the invention, that increasing that threshold the entire on time is the goal of
`the invention and it's simply necessary.
`
`And in slide 20 I point out that in its latest paper, paper 31, patent
`owner concedes that's there's only a single embodiment taught in the '642
`application. And that embodiment taught a variable current limit threshold
`that increases during the entire on time of the switch. That's patent owner's
`words in its latest paper here.
`
`Now, faced with this uniform disclosure in the '642 application of a
`threshold that increases during the entire on time of the switch, the patent
`owner in a couple of its papers resorts to arguing that nothing in the patent
`disclaims that a threshold can increase for less than the entire on time of the
`switch, but that's not the correct standard for written description.
`
`Written description doesn't give you credit for all the things you don't
`disclaim. It gives you credit for the things you disclose. And we know that
`from the Lockwood vs American Airlines case, which was cited by the
`Board in Veeam Software. And in that case the Board there rejected a
`motion to amend where the disclosure as a whole was found not to preclude
`the invention recited in the amended claims, but that that was not enough for
`written description because it didn't provide reasonable conveyance of
`possession of the invention. The same is true here.
`
`And I'd like to spend some time on slide 23 by discussing the Veeam
`case because it's instructive for the facts here. In Veeam the original claim
`required restoring a set of files for backup storage. And the patent owner
`amended that claim such that the set of files was a subset of the files that
`were previously backed up. That mirrors exactly what we've got here, where
`the original claim recited the variable current limit threshold increasing for
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`the entire on time -- or for the on time which was properly construed as the
`entire on time under the original disclosure. The amended claim added the
`idea that that household can increase for at least merely a portion of the
`entire on time.
`
`In Veeam the Board rejected the subset limitations as new matter. It
`found that the original application did not describe any functions or
`processes that would permit restoring less than all of the backed up files.
`And at most, the disclosure merely did not preclude a system that restores
`less than all of the backed-up files. That wasn't good enough for a
`description. The same is true here. The '642 application doesn't teach a
`circuit or any functions or processes that would allow the threshold to
`increase for less than the full on time of the switch. And patent owner is
`relying on precisely the logic the Board rejected in Veeam arguing the '642
`application doesn't disclaim or doesn't preclude a threshold that would
`increase for less than the full on time. And that's not enough.
`
`JUDGE PETTIGREW: I think patent owner might argue that there's a
`little bit of a distinction between the two cases. Claim 13 recites increasing
`during at least a portion. It doesn't say only a portion. That might be the
`direct analog to the subset.
`
`MR. SCHUNEMAN: That's correct, Your Honor, but in the Veeam
`case the Board explicitly found that the subset limitation meant -- and I'm
`quoting Veeam from paper 48 at 7: "The scope of the phrase 'subset of a
`plurality of files' includes all or less than all of the files."
`
`So that distinction is not actually accurate that the patent owner has
`raised. The subset of and portion of limitations are exactly parallel.
`
`And I'm glad you raised patent owner's arguments because I'd like to
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`go through a few of them on slide 24. First, patent owner argues that in
`Veeam the evidentiary posture was different. They are right but not for the
`reason they implied. In this case patent owner's expert has not met the same
`level of specificity that patent owner's expert did in Veeam. In Veeam, the
`patent owner's expert cited to specific sections of the original disclosure and
`argued that those sections taught the new scope, that they taught restoring
`less than all the backed-up files.
`
`In that case the Board went through each of those and found that they
`disagreed with patent owner's expert and found that that was not enough.
`There was no written description. Here patent owner's expert does not go
`through any specific examples and say those disclose a threshold of less than
`the on time of the switch. He says, at most, that the original application
`teaches a threshold that increases for the entire on time of the switch and
`then extrapolates and says therefore it also discloses at least less than the full
`on time as well.
`
`So the evidentiary posture is different. It's less favorable to patent
`owner here. They also argue the legal posture is different and claim that
`Aqua Products has changed and shifted the burden of proof to petitioner.
`That is not true under Aqua Products. In page 21 of the slip opinion of Aqua
`Products the Federal Circuit made clear that the patent owner still bears the
`threshold burden of showing that its claims do not add new matter or
`broaden the scope of the claims. It's less clear who has the burden on claim
`construction, which is why we went through the supplemental briefing
`process. But the Federal Circuit has distinguished between the burden of
`proof for 102/103 patentability and the burden of proof for 316(d)(3).
`
`Third -- this is a very interesting point -- patent owner argues that they
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`are not contending that the portion limitation is relevant to distinguishing the
`prior art. In other words, patent owner is admitting that the portion
`limitation is causing all these problems. It's adding new scope. It's
`broadening the claim isn't responsive to an alleged ground of
`unpatentability. That's another reason to reject the motion to amend.
`
`And finally, patent owner argues that the specification discloses
`circuitry that would permit the current limit threshold to increase for less
`than the entire on time because the increase can simply be stopped. Now,
`this is in the reply. I don't have a pinpoint cite for you here, but it is worth
`noting patent owner doesn't cite to a single piece of the evidence for that
`statement, and I'd be interested to hear from patent owner what it thinks in
`the '642 application or in its expert declaration stops the increase in variable
`current limit threshold. The answer is there's nothing there. It's not
`disclosed in the '642 patent, which is why this motion to amend should be
`rejected.
`
`Secondly, under the proper construction of first state, the portion
`limitations also broaden the claims. Shown here on slide 26 is original claim
`1. As we discussed, during the on-time limitation, according to the original
`intrinsic record, the claimed ordinary meaning to one of ordinary skill in the
`art would be that the current threshold increased during the entire on time of
`the switch.
`
`Through the amendment, turning to slide 27, patent owner has
`inserted new intrinsic evidence in the form of a new limitation, the portion
`limitation that has broadened the scope of the term because it refers back to
`the original during the on-time limitation. It says now it's not during the
`entire on time. Now you can really increase for a portion of the on time, less
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`than all the on time. That broadens the claims.
`
`JUDGE PETTIGREW: How does that broaden the claims -- how
`does the limitation broaden -- the added limitation broaden the claims if it
`also includes the decreasing during a portion of the second state?
`
`MR. SCHUNEMAN: Because, Your Honor, I think most broadly
`read, the decreasing just requires that the threshold just come back down.
`During the portion limitation requires that the threshold go up, but it can
`plateau under this new amendment. So it can plateau and stop in a
`maximum before the end of the on time. It couldn't do that before the
`amendment.
`
`JUDGE PETTIGREW: Okay. But again, is it also -- the amendment
`also adds this additional decrease in limitation. It arguably narrows the
`claim.
`
`MR. SCHUNEMAN: That is correct. It narrows the claim on another
`axis, if you will. It broadens the claim on the axis of how long the increase
`has to happen. But then it adds a new limitation that actually narrows the
`claim by requiring, now, decrease. So there's both an increase and a
`decrease in the scope here.
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`JUDGE PETTIGREW: Does that make it an increase in scope?
`
`MR. SCHUNEMAN: It does. As I understand the case law, it does
`mean that this limitation is improper because it broadens on one dimension
`at least.
`
`And we know that limitation is new intrinsic evidence because the
`Federal Circuit has been consistent in stating that claim construction must
`account for the claim as a whole.
`Now, I'll go through patent owner's
`arguments in its reply very quickly. They argue that the broadest reasonable
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`interpretation of the original claim would allow that the current limit
`threshold increase during at least a portion of the on time of the switch. That
`might be the broadest interpretation. It is certainly not reasonable because
`there's really no lower bound as to how small that portion may be.
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`In other words, under patent owner's construction the claim would be
`satisfied by a threshold that increases for a tenth of the on time, a hundredth,
`one one thousandth, one one millionth, all the way down to an arbitrary
`small amount. The only thing excluded would be something that increases
`for zero. And increasing for zero is just the same as saying not ever
`increasing at all.
`
`So what patent owner is doing is reading out the words "increasing
`during the on time of the switch." It's taking out the "during the on time of
`the switch" part and just saying the claim means increasing for any amount.
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`Second, patent owner argues that petitioner adopted its proposed
`interpretation during prior litigation. That is not true. Petitioner was not
`involved in that litigation and did not take any claim construction positions
`in that litigation.
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`Third, they argue it's axiomatic that adding a new limitation to a claim
`narrows the claim. There's some confusion there because patent owner is
`using the term limitation to refer to any language added to a claim. But it's
`very possible to add language to a claim that broadens it out. You can have
`a claim that recites a car with four rubber tires and amend that claim to state
`where the tires don't have to be rubber. It's a bit absurd, but it would
`certainly broaden the claim and that's what's happened here. They've added
`new language to the claim, but the portion limitation is just the portion
`language. It's not --
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`JUDGE GIANNETTI: The example that you gave was adding a
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`negative limitation; is that right, Counsel?
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`MR. SCHUNEMAN: That is true, Your Honor.
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`JUDGE GIANNETTI: And that's not what happened here, is it?
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`MR. SCHUNEMAN: Well, what they have said -- well, in a sense it
`is because what they've said is now you can have that threshold increased for
`less than what we previously recited.
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`JUDGE GIANNETTI: I don't think of that as a negative limitation.
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`MR. SCHUNEMAN: Maybe the example is not perfect.
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`JUDGE GIANNETTI: I see your point, but I don't think of it that
`way.
`MR. SCHUNEMAN: You might be right. The example may not be
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`perfect. That's the danger of using analogies and examples I suppose.
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`JUDGE GIANNETTI: Be careful with analogies.
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`MR. SCHUNEMAN: Always a good pointer.
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`And fourth, they argue that the only evidence regarding the scope and
`broadening of the claim is Dr. Kelley's testimony. That's not correct
`because, as we all know, the most important evidence in determining the
`scope of the claim is the intrinsic record, which is here very clear. Dr.
`Kelley's testimony, although he did testify to its effect, it's extrinsic
`evidence, and not only that, it's widely regarded as the least reliable form of
`extrinsic evidence that can't overcome a clear intrinsic record like we have
`here.
`Next, if the Board doesn't adopt petitioner's construction of first state
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`and finds that the first state doesn't have to happen when the switch is on,
`then the first state and second state limitation would be new matter.
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`Turning to slide 32, if petitioner's proposed construction is not
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`adopted, what that means is that first state need not coincide or correlate to
`the on time of the switch. The first state and second state that doesn't
`coincide with the on time of the switch would be new matter, because if
`you'll recall, the first state doesn't appear in the original application. The
`only way that patent owner could support those limitations in its motion to
`amend was to say that there's a control signal disclosed in the application
`that controls the switch, and the switch turns on and off.
`
`So necessarily or inherently, that control signal must have a first state
`that turns a switch on and a second state that turns a switch off. If the first
`state no longer has to be the state that corresponds with the switch being on,
`we have no idea what that state would be. We have no guidance from the
`original application, and there's no bound to it. It would be new matter that's
`not disclosed in the '642 application. The only first and second state even
`arguably disclosed by the application are the ones necessary to turn the
`switch on and off.
`
`And finally, I'll quickly address the procedural issues that Claims 1
`and 2 have been found invalid in the final, now on appeal, judgment. The
`Federal Circuit found those claims invalid as anticipated by the major
`reference. The window for further appeal closed March 12th, 2017. Patent
`owner is now pursuing essentially amendments of those invalid claims
`before the Board. That's an end run around this invalidity, this finding of
`invalidity, as a result because they are offering four substitute claims instead
`two and haven't explained special circumstances. It's an end run around this
`Board's procedures.
`
`Unless there are any further questions, I'll reserve the rest of my time.
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`JUDGE PETTIGREW: I do have a question about that. Your second
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`bullet item there. It says: Under PTO procedure. I believe those MPEP
`sections relate to reexaminations.
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`MR. SCHUNEMAN: They do, Your Honor.
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`JUDGE PETTIGREW: Why should that necessarily apply in IPRs?
`
`MR. SCHUNEMAN: It doesn't directly apply. It's not controlling
`precedent. We've looked to see if a case or MPEP had ever addressed these
`facts head on and they have not. But the guidance from the MPEP and the
`re-examination process, for example, conducts both of those for
`reexamination as well as the guidance from the court -- the courts on general
`notions of comity between the patent office and the courts all point in the
`same direction, which is that the courts and the Board and patent office
`should respect each other's findings of invalidity.
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`JUDGE PETTIGREW: I don't think there's much question that we're
`bound by the Federal Circuit about the validity of the claims, Claims 1 and
`2; but what's less clear is why that necessarily means patent owner is not
`entitled to amend those claims.
`
`MR. SCHUNEMAN: The best guidance we could find, Your Honor,
`was the MPEP on reexamination which said once claims are found finally
`invalid by a federal court and the appeals have run, they no longer can be
`considered. They should be withdrawn from consideration. And we think
`that would apply here, too, to respect that final invalidity claim.
`
`JUDGE PETTIGREW: I think the case cited for that is the Ethicon v.
`Quigg case, which says the patent office may terminate or withdraw those
`claims from re-examination. It doesn't mandate that it do so.
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`MR. SCHUNEMAN: That's correct. And this may be a matter where
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`the board has some ability not to withdraw those claims from amendment,
`but we believe that is the proper course here.
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`Thank you, Your Honors.
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`JUDGE McNAMARA: All right. Six minutes remaining.
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`MR. WARREN: May it please the board. Neil Warren --
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`JUDGE McNAMARA: Would you like to leave a certain amount of
`time?
`MR. WARREN: Yes, Your Honor. I'd like to -- let's hold back five
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`minutes, please.
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`There's three issues that were just presented and that are at issue in
`this inter partes review. The first one is the new matter issue, the second is
`the broadening issue, and then the final one that I'll discuss is the procedural
`issue.
`I'm going to start with the new matter issue because I think that's
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`really where the crux of this proceeding is, and what I heard again and again
`that really the crux of their argument is that the claim before required that
`during the entire on time of the switch, the signal was increasing, the current
`limit threshold was increasing. And now we've limited it to possibly be
`during only a portion of it.
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`And the purpose here, what we have to look at, is what does the '642
`application teach to a person of ordinary skill in the art? This is not claim
`construction where we're looking at the teachings of the intrinsic evidence
`and where expert testimony is extrinsic evidence. In this portion of the
`analysis, we are actually looking directly at the teachings of the '642
`application to a person of ordinary skill in the art. And as we know from the
`In Re: Wertheim case, which is 541 F.2d 257, in that case they said the
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`primary consideration is factual and depends on the nature of the invention
`and amount of knowledge imparted to one of skill in the art from the
`disclosure.
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`So this is a fact-based determination. It's an evidentiary-based
`determination. And patent owner contends that this issue alone can be
`determined on the factual and evidentiary matters.
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`In this proceeding the only evidence that exists as to how a person of
`ordinary skill in the art would understand the disclosure of the '642
`application, including taking into consideration those factors that were listed
`-- the amount of knowledge imparted and the types of problems addressed in
`the art -- the only evidence that we have of how a person of skill in the art
`would read this came from Dr. Kelley, patent owner's expert. That's the only
`evidence that exists here.
`
`Dr. Kelley was not cross examined
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