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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
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`_____________________
`
`
`Case IPR2018-00523
`Patent No. 6,661,203
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`_____________________
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`B. 
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`C. 
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1 
`I. 
`The Evidence of Record Weighs in Favor of Petitioner ................................. 1 
`II. 
`III.  Koenck and Doi teach the discharging limitations. ......................................... 2 
`A. 
`The limitation “set said discharging current to zero”
`further narrows the limitation “set said discharging current
`in accordance with said temperature.” .................................................. 2 
`Koenck and Doi teach setting the “discharging current to
`zero when said temperature is higher than a first
`predetermined threshold value.” ........................................................... 5 
`Koenck and Doi teach setting the discharging current in
`accordance with temperature. ................................................................ 7 
`IV.  Koenck and Doi teach the charging limitations. ............................................. 8 
`A.  Koenck and Doi teach setting “said charging current to
`zero when said temperature is higher than a first
`predetermined threshold value.” ........................................................... 8 
`1. 
`The Petition addresses the claim limitations with an
`obviousness analysis, not on an inherency theory. ..................... 9 
`Doi’s circuitry and functionality not relied upon in
`the Petition are not relevant to the Petition’s
`analysis. ..................................................................................... 11 
`Koenck and Doi teach setting the “charging current in
`accordance with temperature.” ............................................................ 14 
`V.  A POSITA would have combined the teachings of Koenck and
`Doi. ................................................................................................................ 15 
`VI.  Koenck teaches a “maximum specified charging current.” .......................... 18 
`A. 
`Claims 5 and 20 ................................................................................... 18 
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`2. 
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`B. 
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`i
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`B. 
`Claims 6 and 21 ................................................................................... 20 
`VII.  Sakakibara teaches both “continuously” and “periodically”
`setting the charging/discharging current. ...................................................... 22 
`VIII.  The Dependent Claims are Obvious .............................................................. 24 
`IX.  Conclusion ..................................................................................................... 25 
`X. 
`Certificate of Word Count ............................................................................. 26 
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`ii
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`PETITIONER’S EXHIBIT LIST
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`Updated: March 1, 2019
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`Ex. 1001 U.S. Patent No. 6,661,203
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`Ex. 1002 Prosecution History of U.S. Patent No. 6,661,203
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`Ex. 1003 Declaration of Menahem Anderman, Ph.D., under 37 C.F.R. § 1.68
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`Ex. 1004 Curriculum Vitae of Menahem Anderman
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`Ex. 1005 U.S. Patent No. 4,709,202 to Koenck et al. (“Koenck”)
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`Ex. 1006 U.S. Patent No. 6,204,641 to Sakakibara (“Sakakibara”)
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`Ex. 1007 Certified English Translation of Japanese Patent Application No. H11-
`283677A to Doi (“Doi”)
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`Ex. 1008 Japanese Patent Application No. H11-283677A to Doi
`(“JPH11283677A”)
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`Ex. 1009 Supplemental Declaration of Menahem Anderman, Ph.D., under 37
`C.F.R. § 1.68
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`iii
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`The Petition and evidence of record provide detailed reasons why the
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`challenged claims of the ’203 patent would have been obvious to a person of
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`ordinary skill in the art (“POSITA”). None of Patent Owner’s arguments
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`adequately refute the Petition or cited evidence, and Patent Owner provides no
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`evidence of its own to rebut Dr. Anderman’s expert testimony.
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`II. The Evidence of Record Weighs in Favor of Petitioner
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`The Petition shows how the limitations of claims 1-10, 15-25, and 29 are
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`obvious and unpatentable over the cited references. In particular, the Petition,
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`citing to Dr. Anderman’s expert declaration, illustrates that a POSITA would have
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`combined the teachings of the cited references to arrive at the challenged claims of
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`the ’203 patent. Contrarily, Patent Owner’s response contains nothing more than
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`unsworn attorney argument that is not evidence and cannot rebut Petitioner’s
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`evidence of record. See generally, Response, pp.1-21 (citing Gemtron Corp. v.
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`Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)); accord Itron
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`Networked Solutions, Inc., IPR2017-01024, Paper 49 (PTAB Aug. 21, 2018), at 26
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`(“In the absence of controverting evidence that we might weigh against Dr.
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`Soliman’s opinion, we are not in a position to discount Dr. Soliman’s expert
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`view.”). Thus, nothing on the record weighs against Petitioner’s evidence,
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`including Dr. Anderman’s expert testimony.
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`1
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`III. Koenck and Doi teach the discharging limitations.
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`Petitioner notes that the Board invites the parties to provide further briefing
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`on the claim scope between two limitations in claim 8 — “set said discharging
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`current in accordance with said temperature” and “set said discharging current to
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`zero when said temperature is higher than a first predetermined threshold value.”
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`See Paper 8, at 15. In the analysis below, Petitioner addresses the scope of these
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`limitations in light of the specification and the prosecution history of the ’203
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`patent.
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`A. The limitation “set said discharging current to zero” further
`narrows the limitation “set said discharging current in
`accordance with said temperature.”
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`The originally filed independent claims broadly recite setting a “discharging
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`current in accordance with said temperature.” See Ex. 1002, pp.21-26. The claimed
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`limitation of setting the “discharging current to zero when said temperature is
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`higher than a first predetermined threshold value,” though, was originally
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`presented in dependent claims 16 and 32. See id. Thus, the limitation of setting the
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`“discharging current to zero” (from the dependent claims) only further defines and
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`narrows the setting the “discharging current in accordance with said temperature”
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`limitation originally recited in the independent claims. 37 C.F.R. 608.01(i)(c).
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`Moreover, the limitation of setting the “discharging current to zero” only
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`arrived in the independent claims due to the Examiner rejecting the originally filed
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`2
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`independent claims but allowing dependent claims 16 and 32. See Ex. 1002, pp.36-
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`45. The Applicant thus amended original independent claims 9 and 26 to further
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`recite the limitation of setting the “discharging current to zero.” With this
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`amendment, the patent was allowed. 1 See Ex. 1002, pp.83-86.
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`This interpretation is further supported by the specification of the ’203
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`patent which describes setting the charging and discharging currents based on the
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`temperature of the battery, including setting the current to zero:
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`The host controller 6 memory is programmed with
`a look up table of charging and discharging currents
`related to temperatures. In the illustrative embodiment,
`these
`relations
`determined
`through
`empirical
`measurements. Table 1 below shows illustrative charging
`current and temperature values:
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`1 Petitioner notes that a similar set of events occurred for the “charging”
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`limitations. Specifically, original dependent claims 7 and 16, which recited setting
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`the “charging current to zero,” were moved into their respective independent
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`claims that only recited setting the “charging current in accordance with said
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`temperature.” See Ex. 1002, pp.21-26, 36-45, 83-86.
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`3
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`In operation, the host controller 16 periodically
`requests the battery temperature from the smart
`battery 2 and uses this value to access the memory look
`up table to select a charging current associated with
`that temperature.
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`Ex. 1001, 5:61-6:13.
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`Thus, based on the prosecution history and the express disclosure in the
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`specification, the independent claims recite both the broader limitation of setting
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`the “discharging current in accordance with said temperature” and the specific,
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`narrowed scenario of setting the “discharging current to zero when said
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`temperature is higher than a first predetermined threshold value.” Because the
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`second limitation (setting the current to zero) merely narrows the first (setting the
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`current in accordance with temperature), the Petition cites to the same teachings of
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`Koenck and Doi for both. See Petition, pp.46-51. By showing that Koenck and Doi
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`teach the narrower limitation of setting the “discharging current to zero when said
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`temperature is higher than a first predetermined threshold value,” the Petition also
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`shows that Koenck and Doi teach the broader limitation of setting the “discharging
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`4
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`Petitioner’s Reply
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`current in accordance with said temperature.” See, e.g., Comcast Cable
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`Communications, LLC v. Tovi Guides, Inc., IPR2017-01147, Paper 41 at 120-21
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`(PTAB, Nov 6, 2018) (agreeing that Petitioner showed a broader claim limitation
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`by showing a narrower claim limitation).
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`B. Koenck and Doi teach setting the “discharging current to zero
`when said temperature is higher than a first predetermined
`threshold value.”
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`As stated in the Petition, “Koenck’s device includes a controller under
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`software control that sets the battery discharge to ‘OFF’ when the battery exceeds
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`70° C.” Petition, p.50. Petitioner’s expert explains that “a POSITA would
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`understand that since the discharge circuitry is under software control to deliver a
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`discharge current, setting the discharging to ‘OFF’ would include the software
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`being executed by the controller to set the discharge current to zero to satisfy the
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`‘OFF’ condition.” Ex. 1003, p.61; Petition, p.50. While Petitioner believes this is
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`sufficient to render this limitation obvious, Petitioner cited to additional evidence
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`of Doi which teaches that: “Discharge stop FET 24 forcibly stops the discharge of
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`battery pack 10 to prevent the electronic device 11 and the battery pack 10 from
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`falling into a dangerous state or to prevent breakdown and shortened life.” Ex.
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`1007, ¶45; Petition, p.51; Ex. 1003, pp.61-62.
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`Patent Owner argues that “there is no mention anywhere in Koenck of the
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`word ‘current’, much less disclosing setting the discharging current to zero as
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`5
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`required by the claim language.” Response, p.19. However, the Petition does not
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`argue that Koenck explicitly mentions a discharge current. Instead, the Petition
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`cites to testimonial evidence that “a POSITA would understand that since the
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`discharge circuitry is under software control to deliver a discharge current, setting
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`the discharging to ‘OFF’ would include the software being executed by the
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`controller to set the discharge current to zero to satisfy the ‘OFF’ condition.”
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`Petition, p.50; Ex. 1003, p.61. Patent Owner provides no expert testimonial
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`evidence that rebuts Petitioner’s expert. Patent Owner’s statements thus amount to
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`nothing more than attorney argument. Gemtron Corp., 572 F.3d at 1380
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`(“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . .
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`evidence.”).
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`Patent Owner further argues that “Doi does not disclose setting the
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`discharging current to zero” because “[b]attery pack 10 may be left in electronic
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`device 11 while being charged without being charged after it drops to the discharge
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`stop voltage. In this case, discharge of each lithium ion battery 23 is more by
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`internal consumption or natural leak.” Ex. 1007, ¶127 (emphasis by Patent
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`Owner); see Response, p.20. This argument fails for two reasons.
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`First, this portion of Doi references the battery dropping to a “discharge stop
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`voltage,” not the battery entering a dangerous state like an overheat condition. See
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`Ex. 1009, ¶6. Second, in the scenario in ¶127, the discharge stop FET 24 is set to
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`6
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`ON (i.e., allowing discharge (see ¶44)), thus still allowing for “internal
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`consumption.” See Ex. 1009, ¶6. Only after “the discharge further proceeds” are
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`“all the circuits such as … the FETs 24, 25, and the like … turned off.” See Ex.
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`1007, ¶127 (emphasis added); Ex. 1009, ¶6. Thus, the “internal consumption” in
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`¶127 occurs as expected, when the discharge stop FET 24 is ON (i.e., allowing
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`discharge), not when it is OFF (i.e., stopping discharge).
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`Further, even if natural leakage occurs, this would not negate the Petition’s
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`challenge to the claims. Ex. 1009, ¶8. As the Board correctly recognized, “the
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`claim language addresses the setting of the discharge current to zero, not whether
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`the result of that setting is that absolutely zero discharge current actually flows.
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`Doi may be aptly read as teaching or suggesting setting the discharge current to
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`zero even though natural leakage current occurs.” Paper 8, at 18; see also Ex.
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`1009, ¶8. Thus, the teachings of Doi appropriately meet the claim limitation of
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`setting the “discharging current to zero when said temperature is higher than a first
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`predetermined threshold value.”
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`C. Koenck and Doi teach setting the discharging current in
`accordance with temperature.
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`Responsive to the Board’s questions, and as explained above at Section
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`III.A, by teaching setting the “discharging current to zero when said temperature is
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`higher than a first predetermined threshold value,” Koenck and Doi also teach the
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`7
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`broader limitation of setting the discharging current in accordance with the
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`battery’s temperature.
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`IV. Koenck and Doi teach the charging limitations.
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`As with the discharging limitations in claim 8, the claims similarly recite
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`both a broad limitation and a narrowing limitation related to charging. Specifically,
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`the claims first recite “operable to control said charging circuit in accordance with
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`said temperature” and then narrow that limitation by reciting “operable to set said
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`charging current to zero when said temperature is higher than a first predetermined
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`threshold value.” See, e.g., Ex. 1001, claims 1, 16. Again, by showing that the cited
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`references teach the second, more narrow limitation, the Petition shows that the
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`prior art teaches the first, broader limitation. See Petition, pp.31-33. The Petition
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`also cites to additional teachings in the references that disclose setting a “charging
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`current in accordance with said temperature.” See Petition, pp.27-31.
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`A. Koenck and Doi teach setting “said charging current to zero when
`said temperature is higher than a first predetermined threshold
`value.”
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`As stated in the Petition, Koenck teaches: “As a protection from permanent
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`damage or degradation, the unit at high temperature (seventy degrees centigrade)
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`will cut off charging.” Ex. 1005, 55:40-46 (emphasis added); Petition, p.32.
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`Accordingly, “[b]ecause Koenck’s system “cuts-off” the charging of the battery
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`when the battery temperature exceeds 70° C, a POSITA would understand that
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`8
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Koenck’s system sets the charging current to zero.” Petition, p.32; Ex. 1003, p.40.
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`While Petitioner believes that Koenck alone is sufficient to render this limitation
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`obvious, the Petition provides additional evidence that this limitation is obvious by
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`citing to Doi, which teaches that for “abnormal conditions [that] are generated
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`during charging,” the system “turns the FET used for charging stop to OFF.” Ex.
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`1007, ¶10. According to Petitioner’s expert, Dr. Anderman (the only expert to
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`enter an opinion in this case), a “POSITA would understand that turning the FET
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`off and the charging being stopped would bring the charging current to zero.”
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`Petition, p.32; Ex. 1003, p.41.
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`Patent Owner attacks the Petition’s showing on this limitation by (1) arguing
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`a self-made inherency theory that was never presented in the Petition, and (2)
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`arguing that Doi describes leakage currents that suggest the charging current is
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`actually never at zero. See Response, pp.4-12. For the reasons below, Patent
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`Owner’s arguments do not withstand scrutiny. Further, Patent Owner has not
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`provided any expert testimony to either support its own positions or refute
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`Petitioner’s evidence.
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`1.
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`The Petition addresses the claim limitations with an
`obviousness analysis, not on an inherency theory.
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`Patent Owner characterizes the Petition’s analysis as requiring some sort of
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`inherency to render the claims obvious. See Response, pp.5-8. Specifically, Patent
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`9
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Owner takes the position that “the charge current is not necessary [sic] set to zero
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`when a battery is switched off from a chargeable state.” Response, p.5. Patent
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`Owner then proceeds to cite case law regarding the burden of showing inherency.
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`See id.
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`However, the Petition does not rely on inherency theory. Rather, the Petition
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`shows how the claim limitations would have been obvious to a POSITA in view of
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`the teachings of both Koenck and Doi. Specifically, the claim limitations of setting
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`the charge current to zero are rendered obvious by Koenck’s teaching that “[a]s a
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`protection from permanent damage or degradation, the unit at high temperature
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`(seventy degrees centigrade) will cut off charging.” Ex. 1005, 55:40-46 (emphasis
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`added). To the extent that anything is missing from Koenck alone, Doi enhances
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`this by teaching that for “abnormal conditions [that] are generated during
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`charging,” the system “turns the FET used for charging stop to OFF.” Ex. 1007,
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`¶10. This “forcibly stops the charging of battery pack 10.” Ex. 1007, ¶46.
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`Petitioner’s expert then explains that “Koenck’s battery system that cuts off
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`charging when the battery exceeds the first predetermined threshold of 70° C
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`combined with Doi’s system that sets a charge FET to off when an abnormal
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`temperature is detected renders obvious” the claim limitations. Petition, p.33.
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`Thus, Koenck and Doi render obvious the claim limitations related to setting the
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`charge current to zero without relying on inherency.
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`10
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Patent Owner has provided no expert testimony to refute Dr. Anderman’s
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`conclusions regarding these limitations. Accordingly, Patent Owner has not refuted
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`the Petition’s showing that Koenck and Doi teach setting “said charging current to
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`zero when said temperature is higher than a first predetermined threshold value.”
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`2.
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`Doi’s circuitry and functionality not relied upon in the
`Petition are not relevant to the Petition’s analysis.
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`The Petition cites to Doi’s functionality in which “[c]harge stop FET 25
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`forcibly stops the charging of battery pack 10 to prevent battery pack 10 from
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`entering into a dangerous state and to prevent breakdown and shortened life.” Ex.
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`1007, ¶45; Petition, p.32. Patent Owner attempts to portray this as not actually
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`setting the charge current to zero by citing to other scenarios described by Doi in
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`which current flows to or from the battery.
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`For example, Patent Owner points to Doi’s “charge assist circuit (not shown)
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`[that] is provided in parallel with the charge stop FET,” and which provides “a
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`small current of about 50 mA” while “the FETs 24 and 25 are in the OFF state.”
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`Ex. 1007, ¶¶138-39. See Response, p.7. Doi, however, does not teach using the
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`charge assist circuit when the battery is in an overheat condition. In fact, the entire
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`purpose of forcibly stopping charging and discharging when the battery is
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`overheating is to prevent current flow to or from the battery so as to avoid
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`shortened battery life and internal short circuiting. See id., ¶6.
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`11
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Also, the proposed modification of Koenck with the teachings of Doi does
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`not import every physical feature from Doi. Rather, the Petition shows that it
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`would have been obvious to take Doi’s teaching of forcibly stopping the charge
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`current and apply it to Koenck’s system. See Petition, pp.32-33; Ex. 1003, p.41.
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`“The test for obviousness is not whether the features of a secondary reference may
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`be bodily incorporated into the structure of the primary reference.... Rather, the test
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`is what the combined teachings of those references would have suggested to those
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`of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, as
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`set forth in the Petition, “a POSITA would understand that turning the FET off and
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`the charging being stopped would bring the charging current to zero.” Ex. 1003,
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`p.41; Petition, p.32.
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`Patent Owner also points to functionality described in Doi’s ¶137 and asserts
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`that a small charging current flows from the battery “even when a FET is turned
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`OFF.” See Response, p.6. Doi’s ¶137, however, states that “[w]hen charging is
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`started from the time battery pack 10 is in an over-discharged condition, the charge
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`stop FET 25 is turned ON …, but the discharge stop FET 24 is not turned ON.” Ex.
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`1007, ¶137. This scenario is different from an overheat condition where both the
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`charge stop FET 25 and the discharge stop FET 24 are OFF (i.e., stopping both
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`charging and discharging). See Ex. 1007, ¶¶10, 44; Ex. 1009, ¶6. Thus, Doi’s ¶137
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`contradicts Patent Owner’s assertion since the charge stop FET 25 is ON rather
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`12
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`than OFF. See Ex. 1009, ¶6.
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Rather, the Petition relies on the scenario in Doi where the battery is already
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`charging and “[c]harge stop FET 25 forcibly stops the charging of battery pack 10
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`to prevent battery pack 10 from entering into a dangerous state and to prevent
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`breakdown and shortened life.” Ex. 1007, ¶45. Forcibly stopping charging already
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`in progress due to a dangerous state like an overheat condition is different than
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`starting charging due to an over-discharge condition. Ex. 1009, ¶6. Put another
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`way, Patent Owner argues that Doi’s control circuit allows a “small charging
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`current” to flow when the battery is over-discharged, just starting charging, but
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`not overheating. And, Patent Owner provides no evidence to support a finding
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`that Doi’s control circuit behaves the same in a scenario where the battery is not
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`overdischarged, is charging, and has overheated. Thus, Doi’s statement that “a
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`small charging current flows from the drain toward the source,” (Ex. 1007, ¶137),
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`is irrelevant since this occurs when beginning charging from the over-discharged
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`condition and when the charge stop FET 25 is ON. See Ex. 1009, ¶6.
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`Moreover, Doi’s FET 24 behaves differently than FET 25 in that when FET
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`25 is OFF, “a current having a value sufficient for driving the electronic device 10
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`flows from the drain toward the source through the parasitic diode (not shown), so
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`that the power supply to the electronic device 10 performed normally.” Ex. 1007,
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`¶140. In other words, unlike the parasitic diode in the discharge stop FET 24
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`13
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`(discussed in ¶137) that allows a charging current to flow to the battery when set to
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`OFF, the charge stop FET 25 directs the parasitic current to the device, not the
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`battery. Ex. 1009, ¶7. Thus, a POSITA would have recognized that when the
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`charge stop FET 25 and the discharge stop FET 24 are set to OFF, as is the case
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`when the battery is in an overheat condition, the charge and discharge current to
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`the battery would be “set” to zero since any parasitic current flowing through the
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`charge stop FET 25 would be directed toward the electronic device. Id.
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`Patent Owner further asserts that “Doi also does not expressly or inherently
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`tie the turning off its battery charging to the battery temperature being higher than
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`a threshold.” Response, p.9. This is false because Doi clearly states that “the
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`temperature at which charging/discharging is prohibited is 60C or more.” Ex.
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`1007, ¶151; see also Petition, p.18.
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`B. Koenck and Doi teach setting the “charging current in accordance
`with temperature.”
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`As is the case with the discharging limitations, Petitioner notes that by
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`teaching setting the “charging current to zero when said temperature is higher than
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`a first predetermined threshold value,” Koenck and Doi also teach the broader
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`limitation of setting the “charging current in accordance with temperature.” The
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`Petition also cites to additional evidence within Koenck to teach this limitation,
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`including Fig. 6.
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`Regarding Fig. 6, the Board “welcome[s] further briefing explaining the
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`teachings of Figure 6 and how they support this limitation. Responsive to the
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`Board’s question, Petitioner notes that Koenck seeks to achieve the maximum
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`charging rate. See Ex. 1005, 8:22-25. However, the maximum charge rate is
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`constrained by temperature, as shown, for example, in Fig. 6. Specifically, Fig. 6
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`offers an example showing the “maximum charge rate as a function of
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`temperature” and explains that the “maximum charging rate is achieved when the
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`charging rate can be adjusted according to quantitative measurement of battery
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`temperature during the charging cycle.” Ex. 1005, 8:17-18; 8:22-25 (emphasis
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`added); Petition, pp.30-31. In other words, by adjusting the charge rate according
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`to temperature measurements, the charging current is set in accordance with
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`temperature as recited in the claims. See Petition, p.31.
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`V. A POSITA would have combined the teachings of Koenck and Doi.
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`As stated in the Petition, the proposed combination of Koenck and Doi
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`“would have been nothing more than applying Doi’s method of stopping
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`discharging when the battery’s heat condition is met with Koenck’s similar system
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`that monitors battery temperature to yield the predictable result of a discharge
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`operation that discontinues when the battery is overheating.” Petition, p.19; Ex.
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`1003, p.22. Patent Owner alleges, without any contrary expert testimony or
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`evidence, that there is “no adequate support in the Petition or its attached
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`declaration for this speculative conclusion.” Response, p.16.
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`However, the Petition, relying on Dr. Anderman’s testimony, explains that
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`“Koenck and Doi are concerned with battery temperature during charging
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`operations and managing abnormalities while the battery is both charging and
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`discharging.” Petition, p.49; Ex. 1003, p.60. The Petition, again relying on Dr.
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`Anderman, also explains that the “combination would have been nothing more
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`than applying Doi’s method of stopping discharging when the battery’s heat
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`condition is met with Koenck’s similar system that monitors battery temperature to
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`yield the predictable result of a discharge operation that discontinues when the
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`battery is overheating.” Petition, p.49 Ex.1003, p.60. The close connection
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`between the technologies at issue in, and the problems being solved by Koenck and
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`Doi would, as Dr. Anderman explains, provide ample reason to combine the two
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`references.
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`Similarly, there is ample support for the conclusion that the combination of
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`Koenck and Doi would have suggested the claimed invention to a person of skill.
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`The Petition, again relying on Dr. Anderman, explains that “a POSITA would
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`understand that Doi’s system specifically monitors battery temperature during
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`discharging and stops the discharging when the temperature exceeds a threshold”
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`and that “when the discharge FET is turned off, the discharge current it set to
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`zero.” Petition, p.49; Ex. 1003, p.60. Thus, the Petition establishes that “the
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`combination of Koenck’s system that monitors battery temperature and sets the
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`discharging to ‘OFF’ when a temperature threshold is exceeded and Doi’s system
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`that stops discharging when an abnormal temperature is detected renders obvious”
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`the claim limitations. Petition, pp.49-50; Ex. 1003, p.60.
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`Patent Owner further argues that Doi teaches away from setting the charging
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`current to zero, (see Response, p.13), but then only cites to features or scenarios in
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`Doi other than stopping charging due to an overheat condition. Specifically, Patent
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`Owner states that: “Doi expressly relies upon a non-zero current (e.g., provided by
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`a charge assist circuit or drain-to-source current of a switched off FET) to achieve
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`certain purposes.” Id. However, Doi’s use of a charge assist circuit to assist with
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`charging is unrelated to and thus does not teach away from forcibly stopping
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`charging due to an overheat condition.
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`Petitioner notes that: “It is not necessary that the inventions of the references
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`be physically combinable to render obvious the invention under review.” In re
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`Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Keller, 642 F.2d 413. “The test
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`for obviousness is not whether the features of a secondary reference may be bodily
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`incorporated into the structure of the primary reference.... Rather, the test is what
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`the combined teachings of those references would have suggested to those of
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`ordinary skill in the art.” In re Keller, 642 F.2d at 425.
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`Patent Owner also provides no testimonial evidence to refute the proposed
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`combination. Thus, the evidence of record is undisputed on this point—the
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`teachings of Doi for forcibly stopping the discharge of the battery due to
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`temperature are applicable to Koenck’s system, which sets the discharge to off
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`when temperature reaches a threshold. See Petition, pp.46-50; Ex. 1003, p. 60.
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`Accordingly, all of the evidence of record—including the testimony of Dr.
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`Anderman—supports the obviousness of the claims based on the prior art, as set
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`forth in the Petition.
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`VI. Koenck teaches a “maximum specified charging current.”
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`The Board’s Institution Decision expresses some doubt as to whether the
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`Petition establishes a reasonable likelihood of success for claims 5, 6, 20, and 21.
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`See Paper 8 at 21-22. Petitioner addresses this below.
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`A. Claims 5 and 20
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`Claims 5 and 20 recite setting the “charging current to a maximum value
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`when said temperature is lower than a second predetermined threshold value.” This
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`simply requires that the highest value of charging current for a particular battery be
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`selected when the temperature falls below a chosen threshold. See Ex. 1009, ¶ 10.
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`For this limitation, the Petition references Koenck’s teaching of the need to adjust
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`the charging rate to use a “maximum charging current”: “utilizing a maximum
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`charging rate is achieved when a charging rate can be adjusted according to
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`quantitative measurement of battery temperature.” Ex. 1005, 8:22-25; Petition,
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`18
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`Petitioner’s Reply
`IPR2018-00523 (Patent No. 6,661,203)
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`p.31. The Petition also references Koenck’s teaching of a second temperature
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`threshold of 55° C, above which the charging current is reduced: “[u]nits will taper
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`back charge rate at low temperature below 10° C. and cut back to trickle rates at
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`high battery temperature above 55° C.” Ex. 1005, 40:40-47. Koenck thus
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`teaches that, while it is desirable to use a “maximum charging rate,” the rate of
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`charge must