Trials@uspto.gov
`571-272-7822
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`Paper 43
`Entered: April 7, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE, INC.,
`Petitioner,
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`v.
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`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner.
`____________
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`IPR2022-00118
`Patent 10,804,740 B2
`____________
`
`Record of Oral Hearing
`Held: March 9, 2023
`____________
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`
`
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`Before JAMESON LEE, KARL D. EASTHOM, and BRIAN J.
`MCNAMARA, Administrative Patent Judges.
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`571-272-7822
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`Paper 43
`Entered: April 7, 2023
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner.
`____________
`
`IPR2022-00118
`Patent 10,804,740 B2
`____________
`
`Record of Oral Hearing
`Held: March 9, 2023
`____________
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and BRIAN J.
`MCNAMARA, Administrative Patent Judges.
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`IPR2022-00118
`Patent 10,804,740 B2
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`APPEARANCES:
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`ON BEHALF OF PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`SCOTT JARRATT, ESQUIRE
`CALMANN J. CLEMENTS, ESQUIRE
`Haynes & Boone, L.L.P.
`6000 Headquarters Drive
`Suite 200
`Plano, TX 75024
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`
`
`BRETT COOPER, ESQUIRE
`JOHN PETRSORIC, ESQUIRE
`BC Law Group, P.C.
`153 Hewlett Neck Road
`Woodmere, NY 11598
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`ANTONIO PAPAGEORGIOU, ESQUIRE
`Lombard, Geliebter & Cohen, L.L.P.
`230 Park Avenue
`4th Floor, West
`New York, NY 10169
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`The above-entitled matter came on for hearing 1:00 p.m., EDT on
`Thursday, March 9, 2023, by video, before Julie Souza, Notary Public.
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`P R O C E E D I N G S
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`JUDGE MCNAMARA: Good afternoon everyone. Welcome to the
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`Patent Trial Appeal Board. Today we're going to be conducting an oral
`hearing in case IPR 2022-00118. I am Judge Brian McNamara and with me
`on the panel are Judges Jamison Lee and Karl Easthom.
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`As we're conducting this hearing by video, I have a couple of things
`that I'd like to go over first, just some preliminary matters. Our primary
`concern, of course, is that, you know, you have a right to be heard and if at
`any time during the proceeding you come up with any -- you encounter any
`technical difficulties that you feel undermines your ability to adequately
`represent your client, let us know immediately. And you can do that by
`contacting the team member who provided you with connection information.
`
`Second wind. When you're not speaking, we request that you mute
`yourself. That's primarily to avoid crosstalk and echoes, which can be
`interfering, which can interfere with our ability to hear each other. The other
`thing -- another thing you should do is identify yourself every time you
`speak. So that will allow the court reporter to prepare an accurate transcript.
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`And keep in mind that we have the entire record, including the
`demonstratives. So when you're referring to demonstratives, papers,
`exhibits, clearly and explicitly reference the Slide or the page number.
`Pause a few seconds after you identify that particular page, that'll give us a
`little time to find it and it will also help prepare an accurate hearing
`transcript. Okay. So the -- and another thing I'd ask you to do is to sort of
`keep in mind this is a public hearing, and so you want to avoid any
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`Patent 10,804,740 B2
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`confidential material. If you do encounter the need to discuss anything that's
`confidential, please let us know and we'll have to decide how to handle that.
`Each side in this hearing will have 45 minutes as indicated in the hearing
`order.
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`And so beginning with the Petitioner, could counsel please enter
`appearances, please?
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`MR. JARRATT: Yes. Good afternoon, Your Honors. This is Scott
`Jarratt with Haynes & Boone and I represent Petitioner, Apple.
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`JUDGE MCNAMARA: Thank you.
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`MR. JARRATT: And with me I have --
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`JUDGE MCNAMARA: Oh. I'm sorry. Go ahead. I'm sorry. Didn't
`mean to interrupt.
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`MR. JARRATT: And also joining for Petitioner, Apple, is Calmann
`Clement, also with Haynes & Boone.
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`JUDGE MCNAMARA: Okay. And for the Patent Owner?
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`MR. COOPER: Thank you, Your Honor. It's Brett Cooper on behalf
`of the Patent Owner. My colleague, John Petrsoric, is with us as well. And
`on the amendment side, Mr. Antonio Papageorgiou is with us as well. I'll let
`him introduce himself.
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`MR. PAPAGIORGIOU: Yes. Thank you, Your Honor. Antonio
`Papageorgiou with Lombard & Geliebter for the Patent Owner.
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`JUDGE MCNAMARA: Great. Thank you, very much.
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`So we'll begin the hearing then with the Petitioner presenting its case-
`in-chief and its arguments on any motions pending before us, and obviously
`there's a motion to amend. The Petitioner may reserve up to 50 percent of its
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`allocated time for rebuttal, and then we will hear from the Patent Owner and
`opposition to the Petitioner and the Patent Owner may reserve up to 50
`percent of its allocated time for surrebuttal. Following the Patent Owner's
`opposition arguments, we will then hear the rebuttal from the Petitioner and
`then subsequent to the surrebuttal from the Patent Owner.
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`One other thing I'd like to add is after we adjourn, if the parties would
`please remain on the line in case the court reporter has any questions or
`needs any clarifications.
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`Assuming we are all ready to begin, let me begin with the Petitioner
`and ask if there is some amount of time you would like me to alert you to. I
`will do the best I can to do that.
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`MR. JARRATT: Yes, Your Honor. Ten minutes, please for rebuttal.
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`JUDGE MCNAMARA: Okay. Great. So you will have -- 35
`minutes is what you plan for your initial presentation, right?
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`MR. JARRATT: Correct.
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`JUDGE MCNAMARA: Okay. Great. All right. Well, we're ready
`when you are, so please proceed.
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`MR. JARRATT: All right. Thank you, Your Honor. Let's start with
`Slide 2 of Petitioner's demonstrative. And so this -- the '740 Patent is all
`about wireless charging, right, and it's focused on the receiver side, right,
`such as a wireless power receiver in a mobile device. Right. And this thing
`is Figures 26 and 27. They generally illustrate examples in the various
`components in the wireless power receiver. Coil connection terminals,
`receiving space, et cetera.
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`And I use the word "example" because the claims in the '740 Patent
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`requires a broader than the illustrated embodiment. Right. It certainly
`encompassed the embodiment, but not limited to these particular
`configurations.
`
`All right. Moving to Slide 3, let's start with the original challenged
`claims before we get to the motion to amend and you can see original
`Claims 6 on Slide 4. All right. Claim 6 is also representative of independent
`Claim 16. All right. As I mentioned before, the patentee chose to draft the
`claims of '740 Patent broadly, but it chooses not to limit the claims to the
`embodiments in the specification, right.
`
`An example of this is the recited receiving space, right. The claims
`simply say the words "receiving space." There's no limits on shape or form
`and notably nothing is actually received by the receiving space in the claim.
`All right. Connecting unit simply as the overlap the receiving space, right,
`and because of this broadness, the independent claims (indiscernible)
`potential configurations in a prior art, right, not just the configuration space
`in the Figures of the '740 Patent.
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`If we turn to Slide 5, Hasegawa which also involves --
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`JUDGE MCNAMARA: Counsel, counsel. This is Judge McNamara.
`Before you move on, I just have a quick question.
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`MR. JARRATT: Sure.
`
`JUDGE MCNAMARA: I noticed in the Petitioner's reply there was
`some comment about the Patent Owner having referred to a connection unit
`as opposed -- yeah, a coil unit, I'm sorry, as opposed to the coil. Is there any
`significance to that or can I just basically assume that you've treated it
`throughout as though the reference to the coil unit is the reference to the
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`Claim coil?
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`MR. JARRATT: Thank you for the question, Your Honor. I believe
`there is a difference between the coil, a coil and coil unit. All right. If we
`turn to Slide 7, Patent Owner's Claim construction, this is in its response,
`recites that Claim 6 and 16 require two separate and distinct components for
`the "coil unit" and the "connecting unit." All right. And they put that in
`quotes, that Claim 6 doesn't actually recite the coil unit.
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`Let's turn to Slide 8 and let's look at Claim 6. So Claim 6 recites coil,
`right, and then first and second connection terminals connected to the coil,
`all right, but doesn't actually recite a coil unit, all right. And the -- you're
`right, the '740 specification does describe a coil unit, but it does so
`differently than the claims, right, and you see that turning to Slide 10.
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`And Slide 10 shows a portion of the '740 Patent specification and it
`describes the coil unit 200 with the first and second connection terminals
`located at one end the coil and the other second connection terminal located
`at the other end of the coil, right. So it describes this coil unit as a coil and a
`connection terminal is located at the end of the coil, right. So the
`specification describes the coil unit differently than how its claimed, right.
`The claim (indiscernible) --
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`JUDGE MCNAMARA: Let me interrupt you again for just a second
`because I have another question which may or may not be related or
`important to how you describe this, and that has to do with the connection
`terminals. Are the connection terminals just the ends of the coil or are they
`separate and distinct somehow?
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`MR. COOPER: I believe the -- in the '740 Patent specification, I
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`believe the coil unit connection terminals are described as being located at
`the end of the coil. The (indiscernible) here show them as integrated at the
`end of the coil, all right. But if you look at the claim, going back to Slide 8,
`it actually recites the connection terminal as being connected to the outer
`unit of the coil, right.
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`So it uses different language which means that the claim is not -- you
`know, the coil -- the claim is not exactly the same as the specification, right.
`It encompasses additional embodiments over (indiscernible) the coil unit in
`the specification, right. So I think it'd be improper to import the concept of
`the "coil unit" into Claim 6 because it uses different language and it does not
`specifically recite "a coil unit."
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`JUDGE MCNAMARA: Okay. And are you also -- is it also your
`position then that the connection terminal connected to the coil is different
`from a connection terminal that's integral with the coil?
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`MR. JARRATT: I think the claim is broad enough to encompass both
`embodiments.
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`JUDGE MCNAMARA: Okay. All right. Thank you.
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`JUDGE LEE: Mr. Jarratt, it's Judge Lee. I have a follow -up
`question. It's important. Can you clarify exactly what is the element the
`Petitioner identifies as the first connection terminal and the second
`connection terminal --
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`MR. JARRATT: Yes. Thank you, Your Honor.
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`JUDGE LEE: -- from the reference? From the reference.
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`MR. JARRATT: Yes, from Hasegawa. So let's turn to Slide 6 of
`Petitioner's demonstratives. In a petition -- this shows Hasegawa's Figure
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`3A and Figure 4. In the petition, the lead line -- Hasegawa's lead lines 34
`and 35 are identified as first and second connections terminals.
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`JUDGE LEE: The entire lead line, right? It's a little confusing
`because you kind of use inner end and outer end like an adjective.
`Sometimes you go, "Oh, the inner end lead line," or "The outer end lead
`line." That is creating a little confusion. I think you use inner end and outer
`end like an adjective, right, to refer to either the 34 which is connected to the
`inner end of the coil and then outer end to refer to 35 which is connected to
`the end of the coil; is that right?
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`MR. JARRATT: That is correct. I believe Hasegawa refers to lead
`line 34 as the inner end lead line because it connects to the inner end of the
`coil.
`JUDGE LEE: Okay.
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`MR. JARRATT: And the same for lead line 35.
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`JUDGE LEE: Yeah.
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`MR. JARRATT: Does that answer your question?
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`JUDGE LEE: Yeah, it does because I want to avoid any confusion. I
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`don't think you're just identifying the very end of a lead line as the terminal,
`right? You're identifying the entire line as the terminal.
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`MR. JARRATT: That is correct. And I believe in a Dr. Phinney's
`(phonetic) declaration he included some evidence that in the state of the art
`wireless receivers and coils, this type of lead line is often referred to as a
`connection terminal. The entire (indiscernible).
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`JUDGE LEE: Thank you.
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`MR. JARRATT: All right. Let's move to Slide 11 in the
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`demonstratives. So with respect to the connecting unit, all right, the claim
`broadly recites an open-ended list of connected components. All right. The
`claim doesn't give the connecting unit any physical structure above and
`beyond its constituent components. All right.
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`For example, when it's first introduced the connecting unit
`overlapping receiving space in vertical direction perpendicular to the
`adhesive lawyer. All right. This limitation doesn't give the connecting unit
`any specific structure or form, just a location, but the claim does recite that
`the connecting unit comprises, is made up of, a third connection terminal, a
`fourth connection terminal and a wiring layer. All right.
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`If you notice, these elements are not recited as being on the
`connecting unit. All right. These things are the connecting unit. All right.
`They're the only structure provided the claim for the connecting unit. All
`right. And that's important point because it means that the claim is broader
`than the specification.
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`Now, for example, Patent Owner in its briefing points to the
`specification that describes a connecting unit with the circuit board, all right,
`but the claims do not have that requirement. All right. The claims tell us
`exactly which three elements are required to make up the connecting unit
`and the circuit board is not one of them, all right. And it would be improper
`to force that limitation into the claims when the claims are broad.
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`All right. And I do have --
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`JUDGE MCNAMARA: Counsel, this is Judge McNamara though. I
`mean, it could include the board, right? I mean, you could have the board. I
`mean, you don't -- whether you have the board or not doesn't matter, right?
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`You just simply have to have the third, fourth and connection terminals and
`the wiring layer.
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`MR. JARRATT: Absolutely, Your Honor. Yes. The language is
`broad enough to encompass prior art that includes a circuit board and also
`does not include a circuit board. All right?
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`JUDGE MCNAMARA: Okay.
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`MR. JARRATT: All right. So Patent Owner has also argued with
`respect to the connecting unit that it must be a separate and distinct physical
`structure from the first and second connection terminals, all right, and it
`points to several cases that indicate that if the word "connected" is used, that
`means the elements are separate, all right. But if you look closely at the
`claims, it doesn't recite that the connecting unit itself is connected, right? It's
`the third or fourth connection terminals that are connected to the first and
`second connection terminal. All right?
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`And I don't think there's any dispute that under the case law, the first
`and second connection terminals have to be separate and distinct from the
`third and the fourth connection terminal, all right, and that's all that the claim
`requires, all right? And that's what the prior art shows. Hasegawa's first and
`second connection terminals are separate and distinct from a third and fourth
`connection terminal.
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`All right. So in summary, Patent Owner's construction requires a
`separate and distinct connecting unit is simply not supported by this broad
`claim language.
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`JUDGE LEE: Can I ask a question? It's Judge Lee. But what they
`are arguing is you cannot connect to yourself. That means that you kind of
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`use the lead lines 34 and 35 twice. It's within the connecting unit. They are
`components of the connecting unit which is supposed to be separate from the
`first and second connection terminal and yet, at the same time you regard the
`same lead lines 34 and 35 as the first and second connection terminal.
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`So how -- what makes you able to do that? Because really you can't
`connect to yourself. That's one of the scenarios where the courts have said
`no, that means they have to be separate. And the way you've applied it,
`they're not separate because the same component is on both sides.
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`MR. JARRATT: All right. So a couple of things there. Patent
`Owner is referring to some case law, I think, really of the Vectin (phonetic)
`case where said that when you have elements that are recited separately they
`should be interpreted as distinct components of the patented intervention, all
`right. But what Vectin doesn't say that they must be distinct physical
`structures, right.
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`The Federal Circuit has repeatedly said that a single physical structure
`can meet multiple limitations. All right. As long as you give each limitation
`separate meaning, all right. Separate meanings in the claim, all right, and
`that's what Hasegawa's mapping in the petition, it gives meaning to every
`one of those elements in the class. So --
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`JUDGE LEE: Yeah, that's true. I understand that completely, except
`that the claim implicitly says the connecting unit has to be entirely separate
`from the first and second connection terminal because it requires there to be
`a connection between them. But you are putting an element on both sides.
`You're counting lead lines 34 and 35, both on the left side and on the right
`side, which is illogical.
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`MR. JARRATT: So a couple of points. I think the connecting unit
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`comprises certain elements, right? So it's an open-ended list, right. It can
`include these things, it includes these things, but it also includes additional
`things.
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`JUDGE LEE: Yeah. And you cannot -- how can you include
`something that you're supposed to connect to because it's supposed to be
`different from you? So therefore you cannot include it if it's different from
`you.
`MR. JARRATT: Well, the way the claim was drafted, it doesn't give
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`any structure to the connecting unit itself. Right? It doesn't say the
`connecting unit is a circuit board that's connected to the first and second
`connection point. All right. It doesn't say that. Instead, it says the third and
`fourth connection terminal. Those are the things that are connected to the
`first and connection terminals, all right?
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`So I totally agree that because the first and second connection
`terminals are connected to the third and fourth connection terminals, they
`have to be physically separate, right. But as you said, things that are
`connected -- something physical can't be connected to itself, all right.
`
`But here, it's not the connecting unit that's connected to the first and
`second connection terminal. It's the third and fourth connection terminals
`that are connected and the prior art, Hasegawa's lead line for the connection
`terminals are, in fact, connected and separate from its third and fourth
`connection terminals which are the connection pads one to three, right.
`Because in this claim the connection is basically a label for a collection of
`components, right, and it can include additional elements.
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`All right. In the -- I guess, so, you know, explain further. In the '740
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`Patent, the purpose for the connecting unit is to connect the coil to the
`remainder of the device to transfer the power from the inductive coil to a
`load, right? That's its purpose. The lead line as part of Hasegawa's
`connecting unit fulfilled that same purpose. It transfers the power from the
`coil to the load in the -- to the mobile device, right.
`
`So it has the same purpose. It also has the same benefit of the
`connecting unit in the '740 Patent. All right? The lead line 34 fits down
`within the slit of the adhesive pad to ensure that the connection, the whole
`(indiscernible) device is (indiscernible). All right. And that's the same
`benefit as connecting it in the '740 Patent.
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`So even though the lead lines are the -- are referred to as not to the
`same structure, there's still good meaning to every claim element and that's
`all we want to require.
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`JUDGE LEE: Thank you.
`
`MR. JARRATT: All right. Now let's skip to Slide 13. So all of
`Patent Owner's arguments against Hasegawa rely on -- rely upon its overly
`narrow claim construction, right. Patent Owner repeatedly argues that
`Hasegawa doesn't show (indiscernible), but it doesn't need to, all right. The
`claims can encompass things that look Hasegawa. They can also encompass
`things that look like the '740 Patent.
`
`All right. So if we turn to Slide 14, so -- and Hasegawa shows every
`single one of the elements that are required for connecting unit. The
`connection first (indiscernible) third, fourth connection terminals and the
`wiring layer and they're connected as described. So the original claims are
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`IPR2022-00118
`Patent 10,804,740 B2
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`unpatentable under Hasegawa.
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`All right. Let's move on to substitute Claims 21 and 23. So let's go to
`Slide 16.
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`JUDGE EASTHOM: Counsel, can I ask you a question? So can we
`just summarize your argument is that the connection unit itself can have
`connections within it and that doesn't -- that still gives meaning to all the
`claim terms?
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`MR. JARRATT: That's correct, Your Honor. Right. If you look at
`the claims the -- that's how it's described between the third and fourth
`connection terminals are connected to the wiring layer. So it's already
`recited as having internal connections.
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`JUDGE EASTHOM: Right.
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`MR. JARRATT: Because it's -- so -- all right. So turning to Slide 16,
`so this is substitute Claim 21 and it's meant to replace Claim 6 and the
`underlined portions are what Patent Owner has added to Claim 6, right. And
`if you'll notice, in the middle of the claim, you'll see that they've added that
`now the connecting unit includes the circuit board where these -- the
`connection terminals and wiring layer are on the circuit board, all right, and
`that's not something that was recited in the original claim.
`
`But if we just look at Claim 21, the only element at issue here is this
`last one that's highlighted and it says, "When the connecting unit is
`otherwise separate from the first connection terminal, second section
`terminal and the coil."
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`And let's look at the prior art. Moving to Slide 17. So the opposition
`to the revised motion to amend refers to this Kato reference we see here and
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`like the '740 Patent, Kato describes as a wireless power receiver
`(indiscernible) and includes an inductive coil (indiscernible) that's stuck to a
`circuit board and an adhesive layer shown in green at the bottom, see on that
`bottom figure of Figure 19.
`
` And this coil has connection terminals 36 and 35, you can see on
`either end of the coil, and other than those connections, the circuit board is
`otherwise separate from the coil, right. Now, that makes sense because it
`has this adhesive layer between, right.
`
`So Kato, on its face, meets the language in substitute Claim 21. So
`Patent Owner's argument against Kato depends upon a narrow construction
`of the word "separate," right. It's actually inconsistent with the remainder of
`the claim.
`
`If we go to Slide 18, in -- yeah, Slide 18, we can see their
`construction. So in its reply Patent Owner has urged the Board to adopt the
`construction of "otherwise separate" than means "otherwise not connected."
`All right.
`
`And I know actually at this point that Patent Owner itself chose the
`words otherwise separate in its revised motion to amend, all right. It could
`have chosen the word "otherwise not connected," but it chose "not." All
`right. But in any case, the construction can't be correct because -- so for a
`couple of reasons.
`
`All right. Let's turn to Slide (indiscernible). Well, first there's another
`usage of "separate" and the way Patent Owner is interpreting otherwise
`separate is inconsistent with its earlier recitation. So if we look at the first
`how it says the connecting unit is "connected to a circuit separate from the
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`connecting unit." Right. So the connecting unit has to be both connected
`and separate, all right. So in this usage, "connected" cannot mean "not
`connected" because connecting unit is connected. All right.
`
`But now in the second usage of the word "separate," Patent Owner
`wants the word "separate" to exclusively mean "not connected," right, and
`the Federal Circuit is very clear that you cannot use a word, a term,
`inconsistently within the same claim. All right. So --
`
`JUDGE EASTHOM: Counsel, I was interpreting their argument, and
`maybe I'm wrong, but I thought "otherwise separate," they were trying to say
`without really saying it, that it's not connected via the adhesive. But I get --
`I guess from what you would say is because of this first paragraph, the
`"connected to a circuit separate from the connecting unit," you would argue
`that that doesn't preclude connection with an adhesive or some other thing
`that's above and beyond the connection via solder or whatever makes the
`connection terminals connect?
`
`MR. JARRATT: Correct. Like based on the way the word "separate"
`is used earlier in the claim, the word "separate" down below cannot
`exclusively mean not connected.
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`JUDGE EASTHOM: Right.
`
`MR. JARRATT: -- because that would create this internal
`inconsistency.
`
`JUDGE EASTHOM: But do you agree that that -- do you -- is that
`how you -- are they arguing that you can't have this "connect" -- you can't be
`connected with adhesive as the prior art is? Is that how we understand their
`argument or is that how you understand it?
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`MR. JARRATT: Yes, that is how I understand their argument.
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`JUDGE EASTHOM: And but there is there is support in their spec
`
`for that, right?
`
`MR. JARRATT: For?
`
`JUDGE EASTHOM: For the connecting unit not to be connected, to
`be only connected with soldering.
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`MR. JARRATT: I believe that's correct, Your Honor, but I guess let's
`step back a second. If they wanted to claim that the connecting unit is
`otherwise not connected from the first connection terminal, the second
`connection terminal and the coil, they should have used those words, all
`right. They had a chance in the revised motion to amend to clearly delineate
`over the art and clearly claim what they wanted to in their specification and
`they should have used the words "otherwise not connected." They chose to
`use the words "otherwise separate," and the prior art, Kato, shows a coil
`that's otherwise separate from the connecting unit.
`
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`JUDGE EASTHOM: Oh, I understand your argument. Okay. Thank
`you.
`MR. JARRATT: All right. So turning to Slide 20, so another reason,
`
`you know, "separate" cannot mean "not" -- cannot exclusively mean not
`connected is because the preliminary guidance said as much. All right. So
`let's take a step back. In Petitioner's original opposition, we included a 112
`argument and it was based upon the fact that "separate" sometimes can mean
`"not connected," but again said no, in the context of these claims it means
`separate things can be connected, but remain separate. All right.
`
`So based on the guidance, "separate" cannot exclusively mean "not
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`connected," all right. And the Patent Owner's construction that now it
`requires "separate" only mean "not connected" is not responsive to the
`guidance.
`
`All right. And but at the end of the day, Petitioner is simply asking
`the Board to hold Patent Owner to the specific word it shows in its revised
`motion, right, otherwise (indiscernible) and Kato teaches a coil that's
`otherwise separate from the connecting terminal. All right.
`
`Turn to Slide 23. Sorry. Excuse me, 22. We'll see substitute Claim
`23 and this is a dependent claim that depends from Claim 22.
`
`JUDGE LEE: I'm sorry. Excuse me. Are we leaving 21 right now?
`
`MR. JARRATT: Yes. Yes, Your Honor.
`
`JUDGE LEE: Well, what about "discrete?" Do you see any
`difference between "discrete" and "separate," or do you just construe
`"discrete" to simply mean separate?
`
`MR. JARRATT: I think that -- I think "discrete" -- separate can
`include a meaning of "discrete," I believe.
`
`JUDGE LEE: So in your accounting for this claim, you're just saying
`it satisfies "discrete" because you've shown separate, right?
`
`MR. JARRATT: Correct.
`
`JUDGE LEE: In other words, you haven't made any extra showing
`from beyond showing that it's separate in order -- and then because you've
`shown "separate," you've shown "discrete."
`
`MR. JARRATT: I believe -- because I think "discrete" or "discrete"
`and "separate" are very closely related. And I believe in Patent Owner's
`reply to our second opposition included dictionary definition of "discrete"
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`and it included the word "separate."
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`JUDGE LEE: I know, but let -- before we get to their reply, I just
`want to see what your attack is. The way you accounted for "discrete" is
`simply by this -- showing "separate," right? And you haven't gone an extra
`step to say, "Well, now that I've shown separate, I'm going to show
`something else to show that it's discrete," right? I mean, you kind of make
`the two equivalent and you show discrete by showing separate. Is that right?
`
`MR. JARRATT: Well, the Kato reference shows that -- in Figure 18,
`it shows that the circuit board is an independent, different physical entity
`than the coil, right. So that would show that they are discrete component,
`right. They're also separate because they're not a -- the same physical
`structure, right. And because they're the --
`
` JUDGE LEE: Aren't they the same? I don't see the difference.
`What's the distinction between "separate" and "discrete," the way you've just
`
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