Trials@uspto.gov
`571-272-7822
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`Paper No. 30
`Date: June 18, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KEMET ELECTRONICS, CORP. and VISHAY AMERICAS, INC.,
`Petitioners,
`
`v.
`
`MEC RESOURCES, LLC,
`Patent Owner.
`____________
`
`IPR2019-00583
`Patent 6,137,390
`____________
`
`Record of Oral Hearing
`Held: May 13, 2020
`____________
`
`
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`
`
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`571-272-7822
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`
`
`
`Paper No. 30
`Date: June 18, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KEMET ELECTRONICS, CORP. and VISHAY AMERICAS, INC.,
`Petitioners,
`
`v.
`
`MEC RESOURCES, LLC,
`Patent Owner.
`____________
`
`IPR2019-00583
`Patent 6,137,390
`____________
`
`Record of Oral Hearing
`Held: May 13, 2020
`____________
`
`
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`IPR2019-00583
`Patent 6,137,390
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`RICARDO BONILLA, ESQ.
`MICHAEL R. ELLIS, ESQ.
`Fish & Richardson, P.C.
`1717 Main Street, Suite 5000
`Dallas, Texas 75201
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ROBERT D. KATZ, ESQ.
`Katz, PLLC
`6060 N. Central Expressway, Suite 560
`Dallas, Texas 75206
`
`LEWIS E. HUDNELL, III, ESQ.
`Hudnell Law Group, P.C.
`800 W. El Camino Real, Suite 180
`Mountain View, California 94040
`
`
`
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`The above-entitled matter came on for hearing on Wednesday, May
`
`13, 2020, commencing at 1:00 p.m. EDT, by video.
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`IPR2019-00583
`Patent 6,137,390
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`P R O C E E D I N G S
`- - - - -
`JUDGE WEINSCHENK: All right. Good afternoon everyone. This
`
`is an oral hearing for IPR 2019-00583, Kemet Electronics, Corp vs. Vishay
`Americas, Inc. Oh, sorry. Kemet and Vishay v. MEC Resources, LLC.
`
`This is Judge Weinschenk. With me are Judge Deshpande and Judge
`Jefferson. Let’s start with appearances. Who do we have here for
`Petitioner?
`
`MR. ELLIS: Good morning, Your Honors. We have Michael Ellis of
`Fish & Richardson and Ricardo Bonilla also with Fish & Richardson on
`behalf of Petitioners.
`
`JUDGE WEINSCHENK: All right. Thank you, Mr. Ellis.
`
`Who do we have for Patent Owner?
`
`MR. KATZ: Good afternoon, Your Honors. This is Robert Katz for
`Patent Owner, MEC Resources and with me joining in by phone should be
`Lewis Hudnell as well.
`
`JUDGE WEINSCHENK: All right. Great. Thank you, Mr. Katz.
`We appreciate everyone’s flexibility. I know this is a bit of an unusual
`circumstance and it probably took a little bit of logistics for you all to do this
`by video instead of in-person and we appreciate the flexibility there.
`
`I just want to start off with a few preliminary matters. First, since we
`are doing this by video, our primary concern is that you all have the right to
`be heard. If at any time during the proceedings you encounter any kind of
`technical difficulty with either your video or audio and you feel that you’re
`having trouble connecting and it’s undermining your ability to represent
`your client, please let us know immediately. The best way to do that would
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`be to contact one of the team members who provided you with the
`connection information for the hearing today.
`
`Second, when you’re not speaking please mute yourself so we can try
`to limit as much as possible the background noise. And then when you are
`speaking, please try to introduce yourself each time you start speaking. That
`will help our court reporter keep the transcript as accurate as possible.
`
`And lastly, we have all of the demonstratives, and exhibits, and papers
`so we have them in front of us and we can look at them, but please try to
`clearly identify whatever page or slide number you’re referring to so that we
`can follow along.
`
`I do want to note also that this hearing is open to the public. There is
`a public audio line, so members of the public may be listening to the
`hearing.
`
`As you know from our order, each side will have 60 minutes to
`present their case and each side may reserve some time for rebuttal. Since
`we’re not in the hearing room, we don’t have a clock behind me or the
`warning lights, but I will do my best here to keep track of time and give you
`a warning as you get close, for example around five minutes. When you
`have five minutes remaining.
`
`So with that, I’ll turn it over to Petitioner, Mr. Ellis and just let us
`know how much time, if any, you’d like to reserve for rebuttal.
`
`And also, I think there’s a preliminary issue here about filing Exhibits
`1026 through 1030. If you can briefly address that issue -- I don’t want to
`spend too much time on it now, but if you can give us just an overview of
`what happened and why those weren’t filed and then I’ll give Patent Owner
`some time to address that at the beginning of their argument too.
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`So now, Mr. Ellis, I’ll turn it over to you.
`
`MR. ELLIS: Thank you, Your Honors. Good afternoon. My name is
`
`Michael Ellis from Fish & Richardson on behalf of the Petitioners Vishay
`Americas and Kemet Electronics, and so I’ll be addressing the issue
`involving the ‘390 Patent.
`
`To your question about Exhibit 1026 through 1030, those were
`intended to be filed with the reply back in February. As a result of a clerical
`error, they were not. In the interim, Patent Owner has not presented any
`objections that those exhibits were most relevant to and so their applicability
`to the reply is accumulated because of that.
`
`All of those exhibits, those five exhibits, were -- they consisted of an
`expert -- supplemental expert declaration, three dictionary definitions and a
`librarian declaration addressing some of the objections to technical terms
`that were objected to originally in -- by Patent Owner. Things like “ferrite”,
`“polymer,” “polyester”; those sorts of things. So that is, you know, the long
`and short of those exhibits and what they entail.
`
`JUDGE WEINSCHENK: Okay. Mr. Ellis, did you say how much
`time you wanted for rebuttal?
`
`MR. ELLIS: I’d like to reserve 15 minutes for rebuttal.
`
`JUDGE WEINSCHENK: Fifteen? All right. Thank you.
`
`MR. ELLIS: Yes, Your Honor.
`
` Okay. So even (indiscernible) during today’s hearing, Petitioner’s
`rest on the --
`
`COURT REPORTER: They’ve lost sound again.
`
`MR. ELLIS: -- (indiscernible) just a little time talking about the ‘390
`Patent, actually the claim construction at issue and we’ll go straight into
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`these two grounds. In each, there are two. I’ll spend the bulk of my time on
`the primary references Franco, Shafer and Amada and the motivation to
`combine those references since that seems to be the crux of the dispute, but
`I’ll also go through claim by claim each of the 20 claims at issue.
`
`So Slide 3 in the media before. The ‘390 Patent. The ‘390 Patent is
`essentially a coiled inductor featuring a magnetic resin layer. And I just
`want to note at the outset that I made the coloring consistent throughout
`these slides so that red always is indicative of the core, blue will always be
`indicative of the coil and green will always be indicative of the magnetic
`resin layer in each and every reference that I’m referring to.
`
`The ‘390 Patent has 20 claims, a priority date of May 3rd, 1999, and it
`relates to specifically a traditional core inductor that has a compression-
`molded magnetic resin layer around it. There are no independent claims of
`that -- other features.
`
`Moving on to Slide No. 5. So the Claim 1 here is the represented
`claim and again I’ve denoted in color what each claim element is referring
`to. The ‘390 Patent has got 20 claims, two of which are independent and
`they follow a pattern. 1 through the 10, all of the device claims. 11 through
`20 are the method variance of the device claims and Claims 1 and 11 are the
`independent claims.
`
`And so the extent that it’s necessary, at the end of the slide deck on
`Slide No. 70 I’ve listed out those claims if you need to refer back to that.
`But I won’t go through -- I will not go through them all right now.
`
`Okay. I’d like to briefly turn to some of the claim constructions at
`issue here. So I’m on Slide 6.
`
`JUDGE WEINSCHENK: Mr. Ellis, before you talk about the claims,
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`if I can? I think you and Patent Owner proposed similar but maybe slightly
`different descriptions of a level of ordinary skill in the art. Is there any
`meaningful difference between your two proposals? Is there any dispute
`about that?
`
`MR. ELLIS: No, there is not.
`
`JUDGE WEINSCHENK: Okay. Thanks.
`
`MR. ELLIS: Okay. So Slide 6, Patent Owner sought construction of
`four terms in its reply and ran -- only two of those terms reappeared in the
`surreply. Petitioners do not see constructions of any term. The two that
`made their appearance in the surreply are the terms “enhanced inductance”
`and “layer”. I’ll take those at the end.
`
`But overall, the point here is that Petitioners don’t believe there is any
`need for a construction and hopefully the next -- or Patent Owner’s
`proposals are in accordance with the intrinsic evidence. I’ll go through that
`quickly.
`
`On Slide 7 we’re discussing the term “to imbed at least a portion of
`out an outer periphery of said electrically conducting coil”. Patent Owner’s
`proposal is that only the “outer periphery” of said coil. I think the patent
`speaks for itself that this is a narrowing of the claim language in the spec and
`it’s not supported by the intrinsic evidence.
`
`JUDGE WEINSCHENK: Mr. Ellis, it sounds like the construction
`that Patent Owner is putting forward here is consistent with what you
`proposed in district court. What’s the reason why we shouldn’t adopt your
`proposal from the district court?
`
`MR. ELLIS: Yeah. The reason we proposed that claim at an early
`stage in the claim construction process, but we -- the case was stayed before
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`we finalized that claim construction process.
`
`JUDGE WEINSCHENK: (Indiscernible) statement or something like
`that?
`MR. ELLIS: Correct.
`
`JUDGE WEINSCHENK: Okay.
`
`MR. ELLIS: We haven’t formally taken that position.
`
`Moving onto the next claim, Slide 8, which is the term “consolidated”
`
`in quotations there. The background of this claim is that during the
`prosecution of the ‘390 Patent -- we laid this out in our reply -- the Examiner
`objected to Claims 1 through 10 on a number of 112 grounds and suggested
`edits, and some of those edits didn’t make their way into Claims 11 and 20
`in what looks like just an oversight, and one of those examples is the term
`“consolidated”.
`
`So originally Claim 5 used the term “consolidated” as the advanced
`method variant, Claim 15, after the Examiner’s 112 objection. That term
`changed to “compression molding” in 5, but it didn’t make its way into 15.
`So to the extent that this -- the Board feels that this term needs construction,
`it’s our position that it should be consistent with the same term in Claim 5.
`
`JUDGE WEINSCHENK: But the language is different. Are you
`suggesting that we should construe them to mean the same thing when two
`claims have different terms in them? Don’t we presume that they mean
`different things?
`
`MR. ELLIS: I think the presumption here which is consistent with --
`you know, just an initial matter, it’s our position that the term doesn’t
`require construction, that the -- it’s clear from the intrinsic evidence, the
`patent history itself, that what the Examiner was objecting to was the term
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`“consolidated” itself throughout the patent. And through a clerical error, it
`looks like that did not get propagated down to Claim 15, but it’s clear from
`the rest of the specification that “consolidated” is used in the same way the
`term “compression-molded” is.
`
`Regardless, you know, Patent Owner is -- the core problem with
`Patent Owner’s contention is that it takes the “or different” part of the clause
`which makes it plainly inconsistent with the claim language whereas the
`claim and the patent itself refer to the “same or different magnetic resin”.
`
`Enhanced inductance. I’m on Slide 9 now, and this is one of the two
`that make their way into the surreply. Patent Owner requested construction
`which is something along the lines of what I put in parenthesis here, that
`enhanced inductance is essentially increased inductance in comparison to the
`same number of coil windings, but in the absence of the magnetic resin
`layer.
`There are a number of problems with this. First of all, there’s no
`
`support for such a narrow interpretation of the term in the patent. Secondly,
`the claim uses the term “enhanced inductance,” but the patent refers to
`“increased inductance as well as a number of other benefits associated with a
`magnetic-resin layer such as the minimization of EMI interference, reduced
`magnetic leakage and things of that nature.
`
`So it’s clear from the patent specification that enhanced inductance is
`not nearly a quantitative term limiting the patent to a fewer number of
`windings to achieve the same inductance.
`
`JUDGE WEINSCHENK: I think the Patent Owner’s point here is
`though that sometimes you refer to making the device smaller or having
`better shielding, or things of that nature and that’s not really enhancing the
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`inductance. I mean, I think that the claim talks about enhancing inductance
`not making the device smaller.
`
`MR. ELLIS: Well, I would argue that those other things are not
`necessarily increasing inductance, but certainly the reduction of EMI
`interference and the reduction of magnetic flux leakage does enhance the
`inductance in a broader sense.
`
`JUDGE WEINSCHENK: So you’re saying “enhanced” doesn’t
`necessarily mean increased? It could mean something else.
`
`MR. ELLIS: Right. And that’s consistent with the patent which uses
`the term “increased inductance” in conjunction with these other qualities that
`the magnetic resin layer brings to the invention not polymer.
`
`JUDGE WEINSCHENK: So what -- I mean, wouldn’t that --
`
`MR. ELLIS: Your Honor --
`
`JUDGE WEINSCHENK: -- seem to suggest though that increased
`inductance is different than the other things and not the same? You can
`increase inductance and you could also reduce leakage. Those are two
`different things, right?
`
`MR. ELLIS: They are related but different, yes. And what we’re
`saying essentially is the enhanced inductance is the big category and within
`that category includes increased inductance and improved EMI effects,
`reduced magnetic leakage and things of that nature. Those are both subparts
`of the broader enhanced inductance.
`
`JUDGE WEINSCHENK: Okay. Is this even limiting, this preamble?
`
`MR. ELLIS: We have not asserted that it is.
`
`JUDGE WEINSCHENK: You have not asserted? You have not
`disputed whether it’s limiting is what you’re saying?
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`MR. ELLIS: That’s right.
`
`JUDGE WEINSCHENK: Okay. So we’re -- so for this case, we’re
`
`assuming that it is?
`
`MR. ELLIS: We have not taken the position that the preamble is
`limiting nor has Patent Owner.
`
`JUDGE WEINSCHENK: So what are we supposed to do with that
`then? Would you like us to consider it? Like assume that’s limiting?
`
`MR. ELLIS: One moment, please. No, there’s no need to assume it’s
`limiting.
`
`JUDGE WEINSCHENK: I guess the trouble I’m having is, you
`know, we need to decide whether the preamble is limiting or not. It sounds
`like you’re just not taking a position on it.
`
`MR. ELLIS: Well, it -- you know, it’s Patent Owner that proposed
`the construction. We don’t believe a construction is necessary because it’s
`clear from the intrinsic evidence what that means and there’s otherwise no
`basis in the record to make it limiting. That’s our position.
`
`JUDGE WEINSCHENK: Okay.
`
`MR. ELLIS: Finally, the fourth and final term on Slide 10 is the term
`“layer”. And what exactly the proposed construction of “layer” is I’m not
`sure because it’s described in the Patent Owner response, but not articulated
`clearly. It seems to be something along the lines of an ascertainable
`thickness and not a thickness that varies substantially along the
`circumference of the outside of the coil. That’s my best attempt at
`formulizing it.
`
`Ultimately, there’s just -- there’s no intrinsic support with regard to
`this construction and it resolves no dispute. I think the underlying idea here
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`is to distinguish Amada where the primary reference is coating and
`somehow not a layer. But it’s, you know, clear from our petition and expert
`declaration that that’s how she would have viewed a coating.
`
`JUDGE WEINSCHENK: I think, Mr. Ellis -- I think what Patent
`Owner is getting at here and I don’t know if you have a copy of the patent in
`front of you, but if you’re able to look at Figures 2 and 3 of the ‘390 Patent,
`I think they’re trying to capture the concept that that outer layer, the resin
`layer, looks like it has a pretty uniform thickness all the way around its
`circumference there. I think they’re trying to capture that and then
`distinguish the prior art where that outer layer isn’t necessarily having a
`uniform thickness.
`
`Is there some reason why we shouldn’t read the claims to require this
`uniform thickness of the layer that’s shown in Figures 2 and 3?
`
`MR. ELLIS: Well, yes. That’s just a depiction of the invention and
`the word “uniform” is not even used in the patent. There’s no point in which
`the uniformity or non-uniformity of the layer is described as being important
`or essential to the underlying invention.
`
`JUDGE WEINSCHENK: Right. So you would interpret “layer” to
`mean that the thickness can vary and that’s not a problem?
`
`MR. ELLIS: I wouldn’t interpret “layer” at all.
`
`JUDGE WEINSCHENK: No, I mean it would be your position that it
`would include a layer such as the one in Amada that doesn’t necessarily
`have the same thickness all the way around?
`
`MR. ELLIS: Well, I’m not sure that I agree Amada’s layer varies in
`thickness. It’s pretty clear from Amada that its coating is also -- continues to
`be relatively uniform. They talk about the flatness of the sides. Whether or
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`not it’s a circle or a square is just one particular embodiment of Amada.
`Amada is not limited to a square-shaped coating. That’s just what is shown
`in one of the many figures.
`
`Ultimately, we’re not the ones trying to construe the term “layer,” so
`you know it means it could be with -- anything within the plain and ordinary
`meaning of “layer” whether that means that the layer is uniform or not.
`
`JUDGE JEFFERSON: Counsel, this is Judge Jefferson. Let me try a
`different approach.
`
`Is there anything in -- that you could alert us to in the ‘390 Patent that
`would tell us if “layer” is a term that a person of skill in the art would
`understand requires any kind of limitation on thickness, or shape, or -- other
`than, I believe, the limitation in the claim that it has to be embedded in
`another material that it’s coating. Is there any -- are there any other
`requirements that the ‘390 Patent puts on the term “layer”?
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`MR. ELLIS: No, Your Honor. Not as far as we can tell.
`
`Okay. If there are no further questions on those claim constructions,
`I’ll move on to the instituted grounds starting at Slide 11 and then directly
`onto Slide 12. I’ll be using this chart here throughout the remainder of the
`presentation because it’s helpful in orienting us in time and space.
`Essentially, what it shows is that 12 of the 20 claims or about 60 percent are
`covered by the primary combinations, Franco and Shafer and Amada and
`Shafer and the remaining 8 claims are covered by the tertiary references
`listed below.
`
`Starting with the primary references, I’ll just go ahead and skip
`straight to Slide 14. Franco is an introductory and collegiate textbook,
`electronic circuits, and it devotes, you know, roughly two pages of a
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`thousand, almost thousand-page textbook to inductors. We’ve included both
`of those pages in our exhibits, and essentially what it teaches is that, you
`know, a traditional inductor features a coil with a coiled wire wrapped
`around it and the inductance is a function of several variables including the
`number of windings and links of the core in the cross-sectional area S.
`
`Moving on to Slide 15, Amada is a coiled inductor with a resin
`coating. Sometimes it refers to it as a shield or an armor and the only real
`difference between Amada and the ‘390 Patent is that Amada’s coating is
`not compression-molded, it’s potted. But it’s a lengthy patent that describes
`the limit of the embodiments and --
`
`JUDGE WEINSCHENK: What do you mean it’s “potted”?
`
`MR. ELLIS: -- a number of (indiscernible). As I understand it,
`potting is a technique where you place a device in a mold and then you mix
`two or more compounds together and let it sit and slowly form into that
`mold, those compounds interact with one another.
`
`JUDGE WEINSCHENK: How is that different than compression
`molding?
`
`MR. ELLIS: Compression molding is a technique that uses high
`pressures rather than chemical reactions to force an electronic into a mold, or
`any component rather.
`
`JUDGE WEINSCHENK: Okay. Thank you.
`
`MR. ELLIS: Okay. Moving on to Slide 16, Shafer is using a coreless
`coiled inductor totally embedded in resin as shown in blue here. It does not
`feature a separate coil which is why you don’t see anything in red, but the
`resin material that is on both the outside and the inside functions similarly to
`a coil. It just lowers the induction, generally speaking however it depends
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`on many variables including the composition of the material. So those are
`our three primary references, Franco and Shafer and then Amada and Shafer.
`So Shafer is common amongst them.
`
`All right. Onto Slide 17, the motivations to combine. So this is
`probably the core of the disagreement as I alluded to earlier and I summed it
`up as follows. Patent Owner’s responses to our motivations to combine is
`essentially they just layer them. There’s the claim that the references are
`technically incompatible and also the claim that they teach away from one
`another. So I would like to spend a little bit of time on each of those three
`broad topics.
`
`So moving to Slide 18, Ground A which is always going to be the
`Franco/Shafer ground. We set out in our petition in its own section that a
`POSITA would have been motivated to incorporate Shafer’s compression-
`molded magnetic resin layer into Franco’s inductor, traditional inductor,
`because of a number of benefits made by the air space providing magnetic
`shielding, physical protection, the increase of inductance and so on.
`
`Each of these motivations come directly out of the Shafer patent. If
`we jump ahead to Slide 19, I’ve listed those six motivations again along with
`a summary of response. And, in general, the response is either, “No, the
`patent doesn’t say that” or “There’s another way to do it.” For example,
`providing -- you know, it’s clear from Shafer’s disclosure that with magnetic
`resin that surrounds the coil provides magnetic shielding and the Patent
`Owner’s response is essentially that magnetic shielding could be
`accomplished another way and the same with physical protection.
`
`But, you know, whether or not that’s true is irrelevant to the --
`whether or not a POSITA would have been motivated to combine the
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`references for the reasons that we set out. It’s clear ultimately from the
`Shafer patent that support for each of those motivations is in the intrinsic
`record.
`
`JUDGE WEINSCHENK: Mr. Ellis, I have a question about one of
`them. Specifically, the first one you have listed there is minimizing air
`space. I think Shafer talks about minimizing air spaces that are formed
`between the inductor and the shell, but there’s no shell in Franco so what air
`space would you want to minimize? I’m not sure I follow that rationale and
`how it applies to Franco.
`
`MR. ELLIS: Well, the -- air spaces are not limited to the space
`between the resin and the shell, whether or not there’s a shell. Air spaces
`refer generally to anything between the coil and the exterior walls. So the
`minimization of air spaces within the resin layer itself is an advantage.
`Now, the ‘390 Patent doesn’t use the term “air spaces”, but it uses the term
`“void space” and discusses the same benefit.
`
`The compression molding using high pressures minimizes these void
`spaces or these gaps in magnetic resin material and that, in itself, is the
`benefit. The shell, whether or not it exists, is irrelevant to this motivation.
`
`JUDGE WEINSCHENK: Okay.
`
`MR. ELLIS: Okay. So moving on to Slide 20. Technical
`incompatibility. This is -- I’ve included a quote from the Patent Owner
`response that I think sums it up here and the basic idea is that Shafer’s
`pressure molding machine could not accommodate a coil or an inductor such
`as Franco because it’s leads are on the opposite side.
`
`So there are two major problems with this. First on Slide 21 is that
`whether or not, you know, someone can take Franco’s inductor which is not
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`even a real inductor. It’s a text book describing an abstraction and literally
`put it into Shafer’s molding machine is not the test for obviousness. That’s
`the leading problem.
`
`The problem with the merits of this argument as illustrated on Slide
`22 is that Shafer comes around and says the position of the leads doesn’t
`distract from the invention. And in fact, the embodiment that we’re citing
`throughout the patent, Shafer’s Figure 6, does have coil leads on opposite
`sides of the inductor.
`
`And so, you know, what Patent Owner is doing is taking the molding
`machine that’s specific to the embodiment in Figure 3 and assuming that it
`applies throughout the patent when that’s clearly not the case and the patent
`teaches otherwise. And as we cited in our response, their -- even Patent
`Owner’s expert was first to concede that changing the shape of the die which
`is item 72 there in Figure 5C is a trivial thing within the skill of a POSITA.
`So this argument essentially crumbles on its own weight.
`
`All right. Judge Weinschenk, if I’m pronouncing your name right, I
`can see you --
`
`JUDGE WEINSCHENK: Oh.
`
`MR. ELLIS: -- talking, but I can’t hear you.
`
`JUDGE WEINSCHENK: Sorry. I was on mute. Thank you, Mr.
`Ellis.
`
`My question is I think Patent Owner raises a broader argument here
`that Franco has a solid core whereas Shafer has this coreless embodiment
`where you compression-mold this resin around the coil. Do we have any
`evidence in the record that you could compression-mold resin around a solid
`core like Franco’s with compression molding as a technique? I’m not
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`talking just about the machine in Shafer, but the general technique. Is it
`possible and do we have any evidence of that?
`
`MR. ELLIS: Yes. You know, one key evidence of that is the
`Butherus patent from 1976 which talks about compression molding cores
`and other aspects of inductors. We’ve cited that with reference to -- let’s see
`-- Claims 5 and 15. But it shows that compression molding core is just not
`new nor indicative as far as the ‘390 Patent is concerned.
`
`The other aspect of your question was this idea that Franco is limited
`to solid cores which I think we dispatched within our response, but if -- it’s
`clear from Franco that -- and which, again, is just a textbook showing an
`abstraction of an inductor that it doesn’t matter what the core material is
`because the -- of course it matters what the core material is, but the core
`material may not be anything in particular because all that matters is it’s
`permeability value with respect to this equation.
`
`So, you know, for example looking back at Slide 14, all that matters
`from Franco’s perspective is the permeability value view of that core
`material and what Patent Owner has done is feed on a disclosure at the end
`of Franco that said, “For high inductance applications, a solid core of ferrite
`or iron may be used, but again that is not a limitation to Franco’s concept.
`
`JUDGE WEINSCHENK: Well, I think, Mr. Ellis, they feed on that
`because you’ve cited it in your petition, right? I mean, you relied on that
`ferrite core to satisfy some of the limitations, so I think that’s where that
`comes from.
`
`MR. ELLIS: Understood.
`
`JUDGE WEINSCHENK: Could you provide me and do have a
`specific cite to Butherus that teaches compression molding on a solid core or
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`something similar to it?
`
`MR. ELLIS: Yes. So there are several places in Butherus or
`Butherus. One which we cited in our petition starts at column 1, line 17
`through at least line 24 or so.
`
`JUDGE WEINSCHENK: Okay.
`
`MR. ELLIS: “One widely used class of materials consist of fine
`particles of magnetic material which are coated with an insulating material
`and compressed to form the desired magnetic body. Two common materials
`used in this fashion are carbonyl iron powders and pulverized permalloy
`powders.” That is the first of several disclosures in Butherus along those
`lines. There’s more detailed information about that common practice
`starting in column 2, line 10 and essentially all the way down to about 64. I
`won’t read it all, but it talks about, you know, iron powders and how they
`have been used for many years in the production of inductor and transformer
`cores and why they would be used and what advantages they present.
`
`JUDGE WEINSCHENK: Thank you, Mr. Ellis. Thank you.
`
`MR. ELLIS: All right. Let’s see. And finally -- we’re on spec -- on
`Slide 23 now, this idea that the references teach away from one another.
`Again, this is a misrepresentation of Franco, the idea that Franco only
`discloses the use of a core composed of iron and ferrite although we have
`used that in two of our combinations.
`
`But there is just a blanket statement that shows it’s compatible with
`the use of a ferrite material because presumably the combination results in
`an inductor that saturates at a much lower level. Those two statements are
`just not connected to one another. I mean, Shafer’s inductor saturates at a
`much lower level because of the material the magnetic resin layer is
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`composed of and it did not follow that the presence of that material teaches
`away from the presence of another material or the use of a ferrite material.
`
`There’s just no support for this idea that these references teach away
`from one another. I think Patent Owner’s eventually get to the point that
`Franco is silent as to the effect of the surrounding area. I don’t have a sli
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