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`EXHIBIT 9
`EXHIBIT 9
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`Paper No._______
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`Filed on behalf of: AMPT, LLC/Junior Party Ledenev
`By:
`Luke Santangelo
`
`Santangelo Law Offices
`125 South Howes, 3rd Floor
`
`
`Fort Collins, CO 80521
`
`Tel: (970) 224-3100
`
`Fax: (970) 224-3175
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`Anatoli Ledenev
`and
`Robert M. Porter,
`Junior Party
`(Patent 8,004,116)
`
`v.
`
`Meir Adest,
`Guy Sella, Lior Handelsman, Yoav Galin
`Amir Fishelov, Meir Gazit, Yaron Binder
`and
`Nikolay Radimov,
`Senior Party
`(Application No. 13/430,388),
`
`________________
`
`Patent Interference No. 106,054 (JTM)
`(Technology Center 2800)
`
`________________
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`JUNIOR PARTY LEDENEV NOTICE OF APPEAL
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`Junior Party Ledenev Notice of Appeal
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`Interference No. 106,054 (JTM)
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`Pursuant to 35 U.S.C. §§ 141 and 142 and 37 C.F.R. §§ 90.1, 1.301, 1.302, and 1.304
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`(effective as of July 1, 2012), Junior Party Ledenev hereby appeals to the United States Court of
`
`Appeals for the Federal Circuit for review of the following attached Decisions and Orders of the
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`United States Patent and Trademark Office Patent Trial and Appeal Board in Patent Interference
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`5
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`No. 106,054 (JTM):
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`1) Decision on Motions, dated December 31, 2019. Paper No. 185 (Exhibit A).
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`2) Judgment – Bd. R. 127 (a), dated December 31, 2019. Paper No. 184 (Exhibit B).
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`3) All underlying orders, decisions, rulings, and opinions, including but not limited to
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`decisions not to allow the filing of certain motions requested by Junior Party Ledenev and decisions
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`10
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`not to rule on certain motions filed by Junior Party Ledenev.
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`
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`Based upon current legal precedent, Junior Party Ledenev believes this appeal is warranted
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`and proper.
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`
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`This notice of appeal is being filed with 1) the Director of the United States Patent and
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`Trademark Office, by Priority Mail Express; 2) the Patent Trial and Appeal Board via the
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`15
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`Interference Web Portal, and 3) the Clerk of the US Court of Appeals for the Federal Circuit via
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`CM/ECF with payment of the appropriate fee. A copy of this Notice of Appeal is being served on
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`Senior Party Adest (Solaredge Technologies, Ltd).
`
`Dated this 28th day of February, 2020
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`
`
`Respectfully submitted,
`
`
`s/Luke Santangelo/
`Luke Santangelo
`Attorney for AMPT, LLC
`USPTO Reg. No. 31,997
`SANTANGELO LAW OFFICES, P. C.
`125 South Howes, 3rd Floor
`Fort Collins, CO 80524
`lukes@idea-asset.com
`
`
`
`1
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`
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`Junior Party Ledenev Notice of Appeal
`
`
`
`
`Interference No. 106,054 (JTM)
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this date the foregoing JUNIOR PARTY LEDENEV NOTICE
`OF APPEAL is being mailed, via Priority Mail Express, to:
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`5
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`10
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`Office of the Solicitor
`U.S. Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`15
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`20
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`25
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`30
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`Further, I hereby certify that on this date a true and correct copy of the JUNIOR PARTY
`LEDENEV NOTICE OF APPEAL was filed via the Interference Web Portal with the Patent Trial
`and Appeal Board; filed, along with the appropriate fee, with the Clerk’s Office of the United States
`Court of Appeals for the Federal Circuit, via CM/ECF; and served by electronic mail on Senior
`Party Adest, on its attorneys of record, as follows:
`
`Frederic M. Meeker (fmeeker@bannerwitcoff.com),
`Michael S. Cuviello (mcuviello@bannerwitcoff.com), and
`Joseph M. Skerpon (jskerpon@bannerwitcoff.com),
`
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`all having the following address: Banner & Witcoff, LTD, 1100 13th Street NW, Suite 1200,
`Washington, DC 20005.
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`Dated February 28, 2020.
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`s/Luke Santangelo/
`Luke Santangelo
`Lead Attorney for Junior Party
`USPTO Reg. No. 31,997
`SANTANGELO LAW OFFICES, P. C.
`125 South Howes, 3rd Floor
`Fort Collins, CO 80524
`lukes@idea-asset.com
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`Paper No._______
`
`Filed on behalf of: AMPT, LLC/Junior Party Ledenev
`By:
`Luke Santangelo
`
`Santangelo Law Offices
`125 South Howes, 3rd Floor
`
`
`Fort Collins, CO 80521
`
`Tel: (970) 224-3100
`
`Fax: (970) 224-3175
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`Anatoli Ledenev
`and
`Robert M. Porter,
`Junior Party
`(Patent 8,004,116)
`
`v.
`
`Meir Adest,
`Guy Sella, Lior Handelsman, Yoav Galin
`Amir Fishelov, Meir Gazit, Yaron Binder
`and
`Nikolay Radimov,
`Senior Party
`(Application No. 13/430,388),
`
`________________
`
`Patent Interference No. 106,054 (JTM)
`(Technology Center 2800)
`
`________________
`
`JUNIOR PARTY LEDENEV NOTICE OF APPEAL
`
`EXHIBIT A
`
`
`
`
`
`
`
`BoxInterferences@uspto.gov
`Tel: 571-272-9797
`
`
`Entered: December 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Anatoli Ledenev1
`and
`Robert M. Porter,
`Junior Party
`(Patent 8,004,116),
`
`v.
`
`Meir Adest,2
`Guy Sella, Lior Handelsman, Yoav Galin,
`Amir Fishelov, Meir Gazit, Yaron Binder
`and
`Nikolay Radimov,
`Senior Party
`(Application 13/430,388).
`
`
`Patent Interference No. 106,054 (JTM)
`(Technology Center 2800)
`
`
`
`
`Before SALLY G. LANE, JAMES T. MOORE, and DEBORAH KATZ,
`Administrative Patent Judges.
`
`
`MOORE, Administrative Patent Judge
`
`DECISION ON MOTIONS
`
`
`1 The real party in interest is identified as AMPT, LLC. Paper 10, 1.
`
`2 The real party in interest is identified as Solaredge Technologies, Ltd. Paper 5, 1.
`
`
`
`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`37 C.F.R. § 41.125
`
`I. BACKGROUND
`
`An interference was declared between application 13/430,388 (“Junior
`
`Party” or “Adest”) and patent 8,004,116 (“Senior Party” or “Ledev”). Paper 1.
`
`The interference was redeclared to correct the accorded benefit dates. Paper 14.
`
`After a conference call, the Board authorized numerous motions to be filed.
`
`Paper 17. Those authorized motions included Ledenev Motion 3 (no interference-
`
`in-fact); Ledenev Motion 4 (designating claims as not corresponding to the count);
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`Adest Motion 1 (unpatentability of Ledenev claims 1–29); and Adest Motion 2
`
`(motion for benefit).
`
`
`
`After a second conference call, the Board authorized Ledenev Motion 7
`
`(unpatentability, all claims). Paper 55. The Board also granted Ledenev Motion 8
`
`seeking permission to file a reissue application. Paper 103.
`
`
`
`The various motions, oppositions, and replies have been filed. The Board
`
`has awaited an initial determination on the fate of reissue application 15/469,087.
`
`In the absence of any such determination being presented to us to date, the Board
`
`has now elected to proceed with this interference on the present record to prevent
`
`further delay.
`
`
`
`
`
`II. THE TECHNOLOGY
`
`This interference concerns photovoltaic power systems that are said to be
`
`highly efficient. Ex. 2001, Title. There are many variables that affect a
`
`photovoltaic system, including non-uniformity of panels, partial shade, dirt or
`
`accumulated matter on the panels, damaged panels, and degradation due to age of
`
`
`
`
`
`-2-
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`the panels. Id. 2:38-44 There are many ways to interconnect panels, converters,
`
`and controllers. Id. 2:45-59.
`
`In Ledenev’s description of the technical field of the subject matter, it is said
`
`that certain aspects of the invention may be responsible for the high efficiency and
`
`harvest maximum power from a solar cell, a solar panel, or strings of panels.
`
`These aspects include providing electrical power conversion in a multimodal
`
`manner, establishing a system that can alternate between differing processes, and
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`differing systems that can achieve efficiencies in conversion that are said to be
`
`extraordinarily high compared to traditional systems. Ex. 2001, 1:20–31.
`
`III. The Interference Count
`
`The count is a “McKelvey” count, and recites the subject matter of the
`
`present interference. More specifically, the count comprises two alternatives –
`
`Application 13/430,388, Claim 62. An efficient solar energy power
`system comprising:
`a plurality of solar panels, each solar panel of said plurality of solar
`panels having a DC photovoltaic output;
`a plurality of DC photovoltaic inputs, each DC photovoltaic input
`configured to receive power from a respective one of said DC photovoltaic
`outputs of said plurality of solar panels;
`a plurality of buck+boost DC-DC power converters, each buck+boost
`DC-DC power converter configured to receive said power from a respective
`one of said plurality of said DC photovoltaic inputs, and each buck+boost
`DC-DC power converter configured to convert substantially all of said
`power accepted by said respective DC photovoltaic input to converted DC
`power;
`a control circuit configured to control each of said buck+boost DC-
`DC power converters to convert substantially all of said power accepted by
`said respective DC photovoltaic input to said converted DC power, and
`
`
`
`
`
`-3-
`
`
`
`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`wherein said control circuit is configured to control each of said buck+boost
`DC-DC power converters into multiple configurations;
`a converted DC power output coupled to said plurality of buck+boost
`DC-DC power converters and configured to receive said converted DC
`power;
`a DC-AC inverter configured to receive said converted DC power
`from said converted DC power output; and
`an AC power output configured to receive converted AC power from
`said DC-AC inverter.0
`
`
`
`or
`
`Patent 8,004,116 Claim 1. An efficient solar energy power system
`comprising:
`a plurality of solar panels, each said solar panel having a DC
`photovoltaic output;
`a DC photovoltaic input that accepts power from said DC photovoltaic
`output;
`at least one substantially power isomorphic photovoltaic DC-DC
`power converter responsive to at least one said DC photovoltaic input;
`substantially power isomorphic maximum photovoltaic power point
`converter multimodal functionality control circuitry to which said at least
`one substantially power isomorphic photovoltaic DC-DC power converter is
`responsive;
`a converted photovoltaic DC power output connected to said at least
`one substantially power isomorphic photovoltaic DC-DC power converter;
`at least one photovoltaic DC-AC inverter responsive to said
`photovoltaic DC power output; and
`a photovoltaic AC power output responsive to said at least one
`photovoltaic DC-AC inverter.
`
`(Paper 1, 4; Paper 7, 3–4; Ex. 2001, 22:48–67).
`
`
`
`A “buck” converter is a step-down converter, while a “boost”
`
`converter is a step-up converter. Ex. 2001, 11:28–29 and 44.
`
`
`-4-
`
`
`
`
`
`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`IV. Ledenev Motion 7 (Paper 61)(Unpatentability)
`
`We take up Ledenev Motion 7 first. We permitted Ledenev Motion 7 to be
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`filed as it was potentially dispositive of the interference. Paper 55, Page 4.
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`Ledenev Motion 7 challenges the patentability of Adest claims 62–66, 68–
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`81, 83–94, and 138. Paper 61, 1.
`
`The cited art in the motion is as follows:
`
`Seki, et al., US Patent 6,636,431, issued October 21, 2003 (hereinafter
`
`“Seki”, Ex. 2017).
`
`Linear Technology Spec Sheet, LTC3780 High Efficiency, Synchronous, 4-
`
`Switch Buck-Boost Controller, LT0413 Rev F 1-30 (2005) (hereinafter
`
`“LTC3780”, Ex. 2018).
`
`Roy, et al., Battery Charger Using Bicycle, EE318 Electronic Design Lab
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`Project Report, EE Dept., IIT 1-12 (April 2006) (hereinafter “Roy”, Ex. 2019).
`
`Chomsuwan, et al. Photovoltaic Grid-Connected Inverter Using Two-Switch
`
`Buck-Boost Converter, IEEE 1527-1530 (2002) (hereinafter “Chomsuwan”,
`
`Ex. 2020).
`
`Caricchi, et al., 20kW Water-Cooled Prototype of a Buck-Boost
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`Bidirectional DC-DC Converter Topology for Electrical Vehicle Motor Drives, 18
`
`Via Eudossiana 00184, 887-892 (1995) (hereinafter “Carrichi”, Ex. 2021).
`
`Nino, US Patent Application Publication No. 2005/0218876A1, published
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`October 6, 2005 (hereinafter “Nino”, Ex. 2022).
`
`
`
`
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`-5-
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`Linear Technology Spec Sheet, LTC3440 Micropower Synchronous Buck-
`
`Boost DC/DC Converter LT0814 Rev C 1-20 (2001) (hereinafter “LTC3440”,
`
`Ex. 2023).
`
`Midya, et al., Buck or Boost Tracking Power Converter, 2 IEEE Power
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`Electronics Letters 4, 131-134 (2002) (hereinafter “Midya”, Ex. 2024).
`
`Viswanathan, et al., Dual-Mode Control of Cascade Buck-Boost PFC
`
`Converter, 35th Annual IEEE Power Electronics Specialists Conference 2178-2184
`
`(2004) (hereinafter “Viswanathan”, Ex. 2025).
`
`We begin with Adest claim 62. Appendix 3 to Ledenev Motion 7 states that
`
`Seki is an anticipatory reference for claim 62, and that Seki in combination with
`
`Chomsuwan renders claim 62 obvious along with LTC3780 and Chomsuywan.
`
`Paper 61, 27.
`
`Ledenev asserts that, as regards the independent claims (including claim 62):
`
`The Adest independent claims, claims 62, 78 and 81, generally claim simply
`a converter (specifically, a buck+boost DC-DC power converter) that is
`connected between solar panels on one side of it and an inverter (that
`converts DC power to AC power) on the other. The solar panels provide DC
`power, the converters convert it, and the inverter turns it into AC. To this
`basic manner of hooking up a converter to deliver AC power from solar
`panels, the independent claims also add limitations relative to efficiency or
`maximum power point control. Ex. 2012, ¶14.
`
`Paper 61, 3.
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`We observe that claim 62 has several elements, simplified here for sake of
`
`discussion:
`
`- a plurality of solar panels,
`
`
`
`
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`-6-
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`
`
`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`- a plurality of DC inputs,
`
`- a plurality of buck+boost DC-DC power converters,
`
`- a control circuit configured to control each of said buck+boost DC-DC
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`power converters and configured to control each of said buck+boost DC-DC power
`
`converters into multiple configurations;
`
`- a converted DC power output;
`
`- a DC-AC inverter; and
`
`- an AC power output.
`
`In short, Adest claim 62 claims a control circuit that can reconfigure each of
`
`the power converters connected individually to the solar panels, and convert those
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`controlled DC outputs to AC power through an inverter.
`
`
`
`In Appendix 2 of Motion 7, Ledenev asserts that:
`
`5. Seki discloses Adest’s buck+boost converter (Ex. 2012, p. 62, 2nd row,
`2nd column) in a photovoltaic harvesting application (Ex. 2012, p. 61, 2nd
`row for claim 62, 2nd column, ignoring the claim number column) with an
`ability to convert at efficiencies up to about 98%. It also discloses an
`inverter (inherently) (Ex. 2012, p. 63 (3rd row, 2nd column)), converted
`output stringing (Ex. 2012, p. 68, 5th row, 2nd 15 column), or stringing that
`renders such configuration obvious. Ex. 2012, ¶¶ 39-41.
`
`
`
`We are then pointed to Seki Figure 8 (Paper 61, 9–10) as illustrating the
`
`elements of Claim 62. Original Figure 8 is reproduced below:
`
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`-7-
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
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`This figure is said to be “topologically the same as that of Fig. 7 of the Adest
`
`
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`’815 provisional application” which is asserted to be the same as claim 62.
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`Paper 61, 10. Exactly how, though, is unexplained in the briefing and left to us to
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`
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`decipher.
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`
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`As regards Figure 8, Seki states:
`
`Referring to FIG. 8, a symmetrical DC/DC converter 79 according to
`a fourth embodiment of this invention uses FETs 81 as the switching circuits
`77 (77a-77d.) illustrated in FIG. 7. Each of the FETs 81 has a body diode 83
`which can be used as a rectifier.
`As illustrated in FIG. 8, the diode 75 as a high performance diode
`which is low in forward voltage Vf than the body diode 83 and short in
`recovery time is connected in parallel to the body diode 83 of each FET 81
`to be oriented in the same direction. With this structure, the symmetrical
`DC/DC converter 79 is operable irrespective of the body diode 83.
`Referring to FIG. 9, a symmetrical DC/DC converter 85 according to
`a fifth embodiment of this invention has a structure in which the diode
`operation in the DC/DC converter in FIG. 8 is realized by synchronous
`rectification so as to improve the efficiency.
`Specifically, in the fifth embodiment, a diode 21 is connected to one
`end of each FET 81 through a resistor 87 so as to perform analog control in a
`manner such that the output of an operational amplifier 89 is not saturated on
`a minus side.
`As described above, according to the first through the fifth
`embodiments of this invention, it is possible to provide a symmetrical
`
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`-8-
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`DC/DC converter operable in a desired energy transfer direction and at a
`desired step-up or a desired step-down ratio.
`
`Ex. 2017, 5:59–6:15. We find that Seki thus describes a controlled step up or step
`
`down converter which can operate bidirectionally.
`
`
`
`Further, Ledenev points to witness testimony, apparently in the place of
`
`explanatory briefing:
`
`Appendix 2 of the Second Declaration of Eric A. Seymour (Prior Art
`Reference Claim Charts (Adest Claims)) presents Mr. Seymour’s opinion
`that all Adest claims are unpatentable, in the form of a claim chart for each
`of two exemplary pieces of prior art treated as primary references – Seki and
`LTC3780. See also, Ex. 2012, ¶¶28 and 29, pp. 60-103, and Appendix 3 (p.
`105).
`
`As shown in Appendix 1 of Mr. Seymour’s 2nd Declaration (the
`Construction Chart for Adest Claims), Adest’s independent claims –
`claims 62, 78 and 81 – describe a certain type of converter electrically
`connected in a very straightforward manner (which was well known at the
`time of their filing in 2006 as shown, e.g., in Chomsuwan (Ex. 2020, p.
`1527, Fig. 1) to collect solar power and deliver it to an inverter, which then
`converts it to AC power so it can be delivered to, e.g., the power grid.
`Ex. 2012, pp. 47-48 (claim 62)…”
`
`Paper 61, 8.
`
`We discern from these arguments we have found for claim 62 within
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`Ledenev Motion 7, the argument and evidence for unpatentability of claim 62 is
`
`that Seki describes a buck+boost converter in a photovoltaic harvesting apparatus
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`with an efficiency of up to 98%, an inverter (inherently), and converted output
`
`stringing. Ledenev then asserts the skilled artisan would have combined LTC3780
`
`
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`-9-
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`which describes 98% efficiency, and Chomsuwam, which describes maximum
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`power point control, would have been obvious because all relate to dual mode DC
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`power conversion, and the motivation to provide enhanced efficiency. Paper 61,
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`11. While this may in fact be true, we are left without guidance as to how the art
`
`directs us to the elements arranged as claimed in Adest’s claims. A claim chart in
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`the motion would have been useful. See, e.g. 37 C.F.R. § 41.121 (e).
`
`
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`In search of further detail within the motion, we look to the specifically cited
`
`Figure in Chomsuwan. It is reproduced below.
`
`
`
`
`
`Ex. 2020, 1527.
`
`Figure 1 depicts the proposed system.
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`It is evident to us that there is a photovoltaic array connected to a
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`buck+boost converter and thence to an inverter and from there potentially to a
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`
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`utility.
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`
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`However, it is not apparent to us, from a careful reading of Ledenev
`
`Motion 7, how Ledenev urges that all this ties in to the specific claim language of
`
`claim 62. More specifically, and inter alia, we do not see where Ledenev
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`
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`
`
`-10-
`
`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`Motion 7 asserts the plurality of converters are to be found or where the control
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`circuit of claim 62, which can reconfigure the converters, are to be found.
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`
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`We are pointed, without the benefit of specific argument, to the additional
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`testimony of witness Eric Seymour, presented as Exhibit 2012. This approach
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`violates 37 CFR § 106 (b) (3) and the Standing Order ¶ 106.2, prohibiting the
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`incorporation of arguments by reference.3 In our view, the motion has not made
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`out a case of unpatentability of claim 62 to this point.
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`
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`At this stage, we must address a procedural point raised by Adest. Adest
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`asserts that this incorporation by reference by Ledenev is improper. Paper 93, 6.
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`Adest is correct, for the reasons noted above. Adest further asserts that without the
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`incorporation by reference, the motion fails to make out a case. Id. 7-9. We, to this
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`point in this decision, agree with Adest on this issue.
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`Ledenev takes issue with the Adest’s assertion that absent incorporation by
`
`reference, it failed to make out a case, at least for the independent claims. More
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`specifically, Ledenev asserts in reply that:
`
`Sufficient detail as to all independent claim limitations appears explicitly in
`Ledenev Motion 7 (see, e.g., p. 11, l. 2-6, p. 12, l. 4-6 and p. 13, l. 20-22
`regarding efficiency; p. 9, l. 13-14 and p. 13, l. 18-20 regarding converter
`control; p. 9, l. 3-8 and 11, l. 11-12 regarding solar application; p. 13, l. 12-
`20 and p. 14, l. 5-8 regarding converter-to-panel connection; p. 14, l. 5-8
`regarding inverter limitation; p. 13, l. 18-19 regarding MPP (found in Adest
`claim 81 only); and p. 13, l. 18-20 regarding strings of panels (found in
`claim 81 only), all of Ledenev Motion 7, Paper No. 61).
`
`
`3 Adest Opposition 7 notes that, absent this improper incorporation by reference,
`the motion likely fails. Paper 93, 7-9.
`
`
`-11-
`
`
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`
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
`
`
`
`Paper 118, 1. Again, the panel is left to hunt for the meaning to these strings of
`
`evidentiary citations and how one of ordinary skill in the art would tie them to the
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`specific structures claimed and arranged in each claim.
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`
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`Ledenev also points us to Appendix One of Exhibit 2012 for its arguments
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`concerning construction of the claims. Paper 61, 3. Again, these arguments are
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`not contained in the brief.
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`We therefore determine that the motion does not put forth a sufficient
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`meaningful argument in the motion itself to establish the elements of
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`unpatentability of the independent claims.
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`Continuing, as regards the dependent claims, Ledenev states:
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`Any alleged insufficiently specific treatment in Ledenev Motion 7 of
`certain other dependent claims is, respectfully, insufficient reason to ignore
`Ledenev’s motion as to such claims for the following reasons:
`(i) Ledenev Expert Declaration II (Ex. 2012) presents arguments on a
`numbered claim basis, so, respectfully, a reader can still expeditiously gather
`arguments as to all dependent claims beyond Ledenev Motion 7 itself.
`(ii) Ledenev’s arguments were lengthy because of requirements to:
`construe every single limitation of 32 claims; show each limitation of each
`of such claims in the art; and rebut the 41 C.F.R. 207(c) presumption; and
` (iii) the prior art does indeed render such claims unpatentable, and
`allowing unpatentable claims to issue due to any alleged imperfect rule
`compliance would disserve the public interest.
`
`
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`Paper 118, 1-2.
`
`We find statement (i) to be an attempt to bypass the Board’s express rules.
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`The content of the briefs and the page limitations are set at 37 CFR § 41.106. We
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`will not disregard the rules and look “beyond Ledenev Motion 7 itself” for
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`arguments which by rule must have appeared in the brief. We also find statement
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`(ii) to be unpersuasive because the Board is always available for requests for relief
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`from the rules by miscellaneous motion if sufficient justification is given.
`
`Standing Order ¶ 3.1. No request to enlarge the page limits was made with a
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`persuasive reason. Nor was a request for a conference call to discuss the matter
`
`made. Statement (iii) is unpersuasive because it assumes the burden of proof has
`
`been met, when we cannot determine effectively at this stage whether it has. It is
`
`only the assertion of counsel that they will prevail, which is not evidence thereof.
`
`
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`The arguments concerning the remaining claims suffer from this same
`
`infirmity.
`
`
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`
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`
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`Ledenev Motion 7 is therefore denied.
`
`V. Adest Motion 1 – (Paper 49) (Unpatentability)
`
`Adest moves for judgment against Ledenev on the grounds that all claims in
`
`U.S. Patent No. 8,004,116 are unpatentable under Pre-AIA 35 U.S.C. § 112, first
`
`and second paragraphs, for failing to contain sufficient written description of the
`
`invention, and for failing to particularly point out and distinctly claim the subject
`
`matter which the applicant regards as his invention. Paper 49, 1.
`
`
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`
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`
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`A. Indefiniteness
`
`1. Legal Principles
`
`“[A] patent is invalid for indefiniteness if its claims, read in light of the
`
`specification delineating the patent, and the prosecution history, fail to inform,
`
`with reasonable certainty, those skilled in the art about the scope of the invention.”
`
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`-13-
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014).
`
`
`
`
`
`2. Discussion
`
`“said photovoltaic output” “said photovoltaic DC power output,” and “at least
`one said DC photovoltaic input”
`Adest first asserts that each of Ledenev independent claims 1, 17, and 20 is
`
`indefinite because a person of ordinary skill in the art cannot determine its scope
`
`with reasonable certainty. Paper 49, 9. More specifically, Adest asserts it is
`
`uncertain whether the claim requires a plurality of solar panels to operate with a
`
`single power converter and inverter, or instead, requires each solar panel to operate
`
`with its own dedicated power converter and inverter. This is said to be because
`
`these claims are replete with ambiguous antecedent problems with respect to
`
`outputs/input for these elements in the phrases, “said DC photovoltaic output,”
`
`“said photovoltaic DC power output,” and “at least one said DC photovoltaic
`
`input.” Id.
`
` We begin with claims 1, 17, and 20.
`
`Claim 1 recites as follows:
`
`1. An efficient solar energy power system comprising:
`a plurality of solar panels, each said solar panel having a
`DC photovoltaic output;
`a DC photovoltaic input that accepts power from said DC
`photovoltaic output;
`at least one substantially power isomorphic photovoltaic
`DC-DC power converter responsive to at least one said
`DC photovoltaic input;
`substantially power isomorphic maximum photovoltaic
`power point converter multimodal functionality control
`circuitry to which said at least one substantially power
`
`-14-
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`
`isomorphic photovoltaic DC-DC power converter is
`responsive;
`a converted photovoltaic DC power output connected to
`said at least one substantially power isomorphic photovoltaic
`DC-DC power converter;
`at least one photovoltaic DC-AC inverter responsive to said
`photovoltaic DC power output; and
`a photovoltaic AC power output responsive to said at least
`one photovoltaic DC-AC inverter.
`
`
`
`Ex. 2001, 22:48–67.
`
`Claim 17 recites as follows:
`
`17. An efficient solar energy power system comprising:
`a plurality of solar panels, each said solar panel having a DC
`photovoltaic output;
`a DC photovoltaic input that accepts power from said DC photovoltaic
`output;
`first modality photovoltaic DC-DC power conversion circuitry
`responsive to said DC photovoltaic input;
`second modality photovoltaic DC-DC power conversion
`circuitry responsive to said DC photovoltaic input;
`at least one photovoltaic DC-DC power converter responsive
`to at least one said DC photovoltaic input;
`high efficiency multimodal converter functionality control circuitry to
`which said at least one photovoltaic DC-DC power converter is responsive
`and wherein said high efficiency multimodal converter functionality control
`circuitry is configured to switch at least some times between said first
`modality photovoltaic DC-DC power conversion circuitry and said second
`modality photovoltaic DC-DC power conversion circuitry;
`a converted photovoltaic DC power output connected to said at least
`one photovoltaic DC-DC power converter;
`at least one photovoltaic DC-AC inverter responsive to said
`photovoltaic DC power output; and
`
`
`
`
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`-15-
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`
` a
`
` photovoltaic AC power output responsive to said at least one
`photovoltaic DC-AC inverter.
`
`Ex. 2001, 25:63–26:21.
`
`Claim 20 reads as follows:
`
`20. An efficient solar energy power system comprising:
`at least one string of a plurality solar panels, at least one of said solar
`panels having a DC photovoltaic output;
`a DC photovoltaic input that accepts power from said DC photovoltaic
`output;
`at least one multiple panel dedicated substantially power maximum
`photovoltaic power point DC-DC power converter responsive to at least one
`said DC photovoltaic input;
`maximum photovoltaic power point converter multimodal
`functionality control circuitry to which said at least one multiple panel
`dedicated substantially power maximum photovoltaic power point DC-DC
`power converter is responsive;
`a converted photovoltaic DC power output connected to said at least
`one multiple panel dedicated substantially power maximum photovoltaic
`power point DC-DC power converter;
`at least one photovoltaic DC-AC inverter responsive to said
`photovoltaic DC power output; and
`a photovoltaic AC power output responsive to said at least one
`photovoltaic DC-AC inverter.
`
`Ex. 2001, 26:44–67.
`
`
`
`Each of these claims, generically, claim a solar power system including solar
`
`panels with outputs, some form of control, a DC-DC power converter that accepts
`
`power through an input, DC power outputted to a DC-AC converter, and AC
`
`power output.
`
`
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`
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`-16-
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`
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`said DC photovoltaic output” (claims 1,17, and 20)
`“at least one said DC photovoltaic input” (claim 1, 17, and 20)
`
`According to Adest, each of independent claims 1, 17, and 20 is indefinite
`
`because a person of ordinary skill in the art cannot determine its scope with
`
`reasonable certainty. Adest asserts that it is uncertain whether the claim requires a
`
`plurality of solar panels to operate with a single power converter and inverter, or
`
`instead, requires each solar panel to operate with its own dedicated power
`
`converter and inverter. Paper 49, 9.
`
`First, Adest asserts that “said DC photovoltaic output” lacks antecedent basis
`
`in claims 1, 17, and 20. More specifically, these claims are said to introduce “a
`
`plurality of solar panels, each [or at least one of] said solar panel having a DC
`
`photovoltaic output” and therefore the scope of the claims include a plurality of
`
`DC photovoltaic outputs, rendering subsequent reference to a singular “said DC
`
`photovoltaic output” ambiguous as to which of the plurality of DC photovoltaic
`
`outputs “said DC photovoltaic output” is referring. Id. 9-10.
`
`Second, Adest asserts that “said photovoltaic DC power output” lacks
`
`antecedent basis in claims 1, 17, and 20. Those claims introduce “a DC
`
`photovoltaic output” and “a converted photovoltaic DC power output.” Adest
`
`observes that “said photovoltaic DC power output” is an ambiguous mix of these
`
`two previously introduced distinct elements, and a person of ordinary skill in the
`
`art cannot determine with reasonable certainty which, if any, of these different
`
`
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`-17-
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`Interference 106,054 (JTM) – Ledenev v. Adest
`Decision on Motions
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`outputs is referenced by “said photovoltaic DC power output,” rendering claims 1,
`
`17, and 20 indefinite. Id. 10-11.
`
`Third, Adest asserts that “at least one said DC photovoltaic input” also lacks
`
`antecedent basis in claims 1, 17, and 20. These claims introduce the singular “a DC
`
`photovoltaic input” and Adest notes that “at least one said DC photovoltaic input”
`
`indicates that the input is selected from among a plurality of inputs; otherwise, “at
`
`least one” would be superfluous. Accordingly, Adest asserts a person of ordinary
`
`skill in the art canno
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