Trials@uspto.gov
`571-272-7822
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`Paper No. 20
`Entered: January 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01597
`Patent 6,538,908
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
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`
`
`
`
`
`
`Paper No. 20
`Entered: January 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC
`(d/b/a ON SEMICONDUCTOR),
`Petitioner,
`
`v.
`
`POWER INTEGRATIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01597
`Patent 6,538,908
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2016‐01597
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`Patent 6,538,908
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`
`INTRODUCTION
`I.
`Semiconductor Components Industries, LLC, d/b/a ON
`Semiconductor (“Petitioner” or “ON Semiconductor”) filed a Petition (Paper
`1, “Pet.”) seeking inter partes review of claims 1, 3–5, 9, 10, 19, 20, 22–24,
`and 30–34 of U.S. Patent No. 6,538,908 (Ex. 1001, “the ’908 patent”)1
`pursuant to 35 U.S.C. §§ 311–319. Power Integrations, Inc. (“Patent
`Owner”) filed a Patent Owner Preliminary Response (Paper 8, “Prelim.
`Resp.”).
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we granted Petitioner’s request and
`instituted an inter partes review on all challenged claims. Paper 9
`(“Institution Dec.”). Following institution, Patent Owner disclaimed claims
`30–34. Ex. 2066. Furthermore, Patent Owner filed a Response to the
`Petition (Paper 13, “PO Resp.”) and Petitioner filed a Reply (Paper 14, “Pet.
`Reply). Both parties waived oral hearing.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has shown by a preponderance
`of the evidence that all challenged non-disclaimed claims of the ’908 patent
`are unpatentable.
`
`
`1 The ’908 patent was reexamined, resulting in the cancellation of claims
`12–18. See Ex Parte Reexamination Certificate US 6,538,908 C1. Ex.
`1002.
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`II. BACKGROUND
`A. The ’908 Patent (Ex. 1001)
`The ’908 patent is titled “Method and Apparatus Providing a Multi-
`Function Terminal for a Power Supply Controller.” The patent is directed to
`a switched mode power supply controller. Ex. 1001, col. 1, ll. 11–14.
`According to the patent, switched mode power supplies are commonly used
`“due to their high efficiency and good output regulation.” Id. at col. 1,
`ll. 16–19. In such power supplies, low frequency (e.g., 50 or 60 Hz mains
`frequency), high voltage alternating current (AC) is converted to high
`frequency (e.g., 30 to 300 kHz) AC using a switched mode power supply
`control circuit. Id. at col. 1, ll. 19–25. The high frequency, high voltage AC
`is applied to a transformer to transform the voltage, usually to a lower
`voltage, and to provide safety isolation. Id. at col. 1, ll. 25–27. The output
`of the transformer is rectified, to provide a regulated DC output, which may
`be used to power an electronic device. Id. at col. 1, ll. 27–29. The switched
`mode power supply control circuit provides output regulation by sensing the
`output and controlling it in a closed loop. Id. at col. 1, ll. 30–32.
`The subject matter of the ’908 patent is illustrated by Figure 1, which
`is reproduced here from the Petition, with annotations provided by Petitioner
`(Pet. 4):
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`Figure 1 above depicts power supply 101. Ex. 1001, col. 4, ll. 28–29.
`Controller 139 controls conversion of AC mains input voltage 103 to a
`desired DC output voltage at DC output 125. Id. at col. 4, ll. 29–65. Multi-
`function terminal 149 enables power supply controller 139 to provide “one
`or a plurality of different functions, depending on how multi-function
`terminal 149 is configured.” Id. at col. 4, ll. 66–col. 5, l. 3. Figures 2A
`through 2F of the ’908 patent show various configurations of multi-function
`terminal 149 to provide various corresponding functions. Id. at col. 8, ll. 8–
`12.
`
`
`Related Matters
`Petitioner identifies, as a related matter, IPR2016-00995 (“IPR995”).
`Pet. 2. Filed by ON Semiconductor, the petition in that IPR sought review
`of claims 26 and 27 of the ’908 patent, and was granted on October 31,
`
`B.
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`2016. IPR995, Paper 11. A Final Written Decision was entered on October
`18, 2017. IPR995, Paper 26 (“IPR995 FWD”).
`The ’908 patent has also been involved in several civil actions in U.S.
`District Court, a case before the ITC, and two reexamination proceedings.
`Pet. 2; Paper 4; Paper 6, 4–6.
`
`Illustrative Claims
`Of the claims challenged in the Petition, claims 1, 19, and 30 are
`independent. Claim 30 was disclaimed after institution. See supra. Claim
`1, reproduced below, illustrates the claimed subject matter:
`
`1. A power supply controller, comprising:
`
`a power switch having first, second and third terminals,
`the first terminal to be coupled to a transformer of a power supply
`and the second terminal to be coupled to an input of the power
`supply;
`
`a control circuit coupled to a control terminal of the power
`supply controller and the third terminal of the power switch, the
`control terminal coupled to an output of the power supply, the
`control circuit to generate a switching waveform to control the
`power switch; and
`
`multi-function circuitry coupled between a multi-function
`terminal of the power supply controller and the control circuit,
`the switching waveform generated in response to the control
`terminal and the multi-function terminal.
`
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`D.
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`
`References and Other Evidence
`We instituted trial based on the following references:
`Motorola
`MC33362 Data Sheet Ex. 1005
`Shinji
`H10-108457
`Ex. 10222
`In addition, Petitioner relies on two declarations from an expert, Dr.
`Vijay Madisetti, the first submitted with the Petition (Ex. 1003, “Madisetti I
`Decl.”) and a second with Petitioner’s Reply (Ex. 1035, “Madisetti II
`Decl.”). Patent Owner did not submit an expert declaration.
`
`
`
`E.
`
`
`Grounds Asserted
`Trial was instituted on the following grounds:
`References
`Basis
`Challenged Claims3
`Motorola
`35 U.S.C. § 102
`1, 4, 9, 10, and 19
`Shinji
`35 U.S.C. § 102
`1, 3, 5, 9, 10, 19, 20, and 22–24
`
`
`II. ANALYSIS
`
`A.
`
`Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard).
`
`
`2 This exhibit is a certified English translation of Japanese Unexamined
`Patent Application Publication No. H10-108457 (Ex. 1023).
`3 Our analysis is limited to the challenged non-disclaimed claims. Thus, we
`do not consider claims 30–34, which were challenged, but have been
`disclaimed.
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`Under the broadest reasonable construction standard, claim terms are
`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1079 (Fed. Cir.
`2007). “[A] claim construction analysis must begin and remain centered on
`the claim language itself.” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Only terms that are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`We address below the scope of two claim terms. For the purposes of
`this Final Written Decision, we determine that it is unnecessary to construe
`any other claim terms.
`
`1.
`“multi-function circuitry”/“multi-functional terminal”
`The terms “multi-function circuitry” and “multi-functional terminal”
`appear in independent claims 1 and 19. Petitioner asserted that “multi-
`function circuitry” should be construed as “circuitry capable of performing
`multiple functions.” Pet. 14. Petitioner relied on the description in the ’908
`patent specification of enumerated functions “that could be performed by a
`multi-function circuit.” Pet. 15. Regarding the functions in the patent
`specification, Petitioner contended this listing is “non-exclusive.” Id. (citing
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`Ex. 1001, col. 23, ll. 28–35). In addition, Petitioner relied on Patent
`Owner’s arguments in related district court litigation. Id.
`In the Institution Decision in IPR995, the panel concluded, “nothing
`in the claims or the Specification of the ’908 patent limits the particular
`functions required of the multi-function circuit other than the requirement of
`generating a signal used to adjust the current limit.” IPR995, Paper 11, 14.
`After reviewing Patent Owner’s arguments, the panel there determined that
`the plain meaning of “multi-function circuit” is “a circuit that performs a
`plurality of functions, one of which is generation of a current limit
`adjustment signal in response to a signal received from a multi-function
`terminal.” Id. at 16. The panel also determined that the plain meaning of
`the term “multi-function terminal” is “a terminal of the multi-function circuit
`at which a signal is received that causes generation of the current limit
`adjustment signal.” Id.
`In our Institution Decision, we agreed with the panel in IPR995 that a
`“multi-function circuit” is “a circuit that performs a plurality of functions.”
`Institution Dec. 11 (citing IPR995, Paper 11, 16). We further agreed that
`these functions include (but are not limited to) setting the current limit of a
`power switch. Id. at 11–12 (citing Ex. 1001, col 3, ll. 42–45). Finally, we
`agreed also with the panel in IPR995 that a “multi-functional terminal” is “a
`terminal of the multi-function circuit at which a signal is received” and,
`further, that signal may cause generation of a current limit adjustment signal,
`among other functions. Id.
`Patent Owner contends that these constructions “must be revisited.”
`PO Resp. 2. Specifically, “[t]hey fail to construe important limitations in
`view of the ’908 specification, and also fail to construe them in view of
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`clear, unambiguous and repeated statements in the reexamination
`proceedings.” Id. Patent Owner now contends:
`a. All claims at issue require a “control circuit” and
`“multi-function circuitry” that are separate and distinct
`components that perform separate and distinct functions. Id. at
`21–29.
`b. All claims at issue require that each “function”
`performed by the “multi-function circuitry” and/or enabled by
`the “multi-function terminal” be an action or activity performed
`by the claimed controller that is distinct from the regulation
`function. Id. at 29–31.
`c. All claims at issue require a single additional terminal
`to implement multiple additional functions. Id. at 32–38.
`d. All claims at issue require a “power supply controller”
`that comprises a power switch, and hence require that the power
`switch be a sub-component of the controller. Id. at 38–41.
`We consider each of these arguments in turn.
`
`
`a. separate and distinct components/separate and distinct functions
`Patent Owner summarizes its position as follows: “Properly
`
`construed, all of the remaining challenged claims (independent claims 1 and
`19, and their dependents) require a ‘control circuit’ and ‘multi-function
`circuitry’ that are separate and independent components from one
`another and that perform distinct functions.” PO Resp. 21.
`
`
`i. Claims
`
`Patent Owner contends first that this construction is “consistent with
`the language of the claims.” Id. We disagree. The claims recite the control
`circuit and the multi-function element as separate claim elements. That does
`not, however, mean that they perform “separate and distinct functions” as
`Patent Owner contends. “[A] claim construction analysis must begin and
`remain centered on the claim language itself.” Innova/Pure Water, Inc. v.
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`Safari Water Filtration Sys., Inc., 381 at 1116. We find nothing in the
`claims that suggests this restriction on scope. The panel in IPR995 reached
`a similar conclusion. IPR995 FWD at 21–26.
`
`
`ii. Specification
`
`Patent Owner relies also on the specification of the ’908 patent to
`support its construction. PO Resp. 22–24. According to Patent Owner,
`“there is no disclosure in the ’908 specification of the multi-function circuit
`and the control circuit not being separate and distinct from one another.” Id.
`at 22. In its Reply, Petitioner contests this:
`[T]he ’908 specification describes an embodiment in which an
`on/off signal at the multi-function terminal is “used to
`synchronize the oscillator in the control circuit.” Ex. 1001,
`12:55-62 (emphasis added). Specifically, an on/off control
`signal is input to the multifunction terminal, which in turn
`generates an enable/disable signal for the oscillator. Id., 12:55-
`67. The oscillator then produces “a switching cycle each time
`an on pulse is detected” at the multi-function terminal. Id.,
`13:5-8. Thus the “switching waveform ... is synchronized” to
`the multi-function terminal. Id.; Ex.1035, ¶ 16.
`Pet. Reply 8–9.
`
`We are not persuaded the ’908 patent specification supports Patent
`Owner’s argument for several reasons. First, Patent Owner’s argument is
`contrary to a guiding principle of claim construction that cautions “[t]hough
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp., 358 F.3d at
`875. Second, Patent Owner has not directed us to anything in the
`specification that discusses the merits of having such separate and distinct
`functions over alternatives. In this respect, Patent Owner’s reliance (PO
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`Resp. 24, 37) on SciMed Life Systems, Inc. v. Advanced Cardiovascular
`Systems, Inc., 242 F.3d 1337 (Fed. Cir 2001) is misplaced. In SciMed, there
`was an express disavowal and disparagement of an alternative embodiment,
`leading the Federal Circuit to conclude:
`Where the specification makes clear that the invention does not
`include a particular feature, that feature is deemed to be outside
`the reach of the claims of the patent, even though the language
`of the claims, read without reference to the specification, might
`be considered broad enough to encompass the feature in
`question.
`242 F.3d at 1341. Likewise, In re Abbott Diabetes Care Inc., 696 F.3d 1142
`(2012), does not support Patent Owner’s attempt to limit the claims. PO
`Resp. 24, 37. In Abbott, the Federal Circuit first focused on the claims
`themselves for the restrictive feature:
`As a preliminary matter, the claims themselves suggest
`connectivity without the inclusion of cables or wires: an
`“electrochemical sensor” having “contact pads” that are
`“coupl[ed]” to “conductive contacts” (in the ′752 patent), or a
`“transcutaneous electrochemical sensor” that is “receiv[ed]” by
`the sensor control unit (in the ′509 patent).
`696 F.3d at 1149. Only then did the Court conclude, “[t]hat suggestion is
`only reinforced by the specification.” Here, we have determined that the
`claim language itself does not support Patent Owner’s “separate and distinct
`functions” argument.
`
`Finally, we are persuaded by Petitioner’s argument that the
`specification does not put restrictions on the functions that may be
`performed by the multi-function circuitry. Pet. Reply 8–10; Madisetti II
`Decl. ¶¶ 16–17. This is demonstrated by the embodiment described in the
`’908 patent specification in which an on/off signal at the multi-function
`terminal is also used to synchronize a control function, namely, the oscillator
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`in the control circuit. Pet. Reply 11. This embodiment is also discussed in
`Dr. Madisetti’s second declaration. Madisetti II Decl. ¶ 16 (citing Ex. 1001,
`col. 12, ll. 55–62). Specifically, in this embodiment an on/off control signal
`is input to the multi-function terminal, which in turn generates an
`enable/disable signal for the oscillator. Id. (citing Ex. 1001, col. 12, ll. 55–
`67). The oscillator then produces “a switching cycle each time an on pulse
`is detected” at the multi-function terminal. Id. (citing Ex. 1001, col. 13, ll.
`5–8). Thus, the switching waveform is synchronized to the multi-function
`terminal. Id.
`Patent Owner’s argument that the multifunction terminal must control
`
`functions additional to control functions is, therefore, contradicted by the
`specification.
`
`
`iii. Reexamination History
`
`Patent Owner relies also on alleged disclaimers or disavowals made
`during reexamination of the ’908 patent. PO Resp. 24–29. Patent Owner
`characterizes this evidence as “critical.” Id. at 24. We are not persuaded
`that the reexamination history supports Patent Owner’s restrictive
`construction of the claims.
`
`At the outset, we note that alleged disavowals of claim scope during
`prosecution are closely scrutinized. In re Am. Acad. Of Sci. Tech Ctr., 367
`F.3d 1359, 1365 (Fed. Cir. 2004) (“[A] patentee ‘may demonstrate an intent
`to deviate from the ordinary and accustomed meaning of a claim term by
`including in the specification expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope.’”) (quoting
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002));
`In re Bigio, 381 F.3d 1320, 1325–26 (Fed. Cir. 2004) (“Absent claim
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`language carrying a narrow meaning, the PTO should only limit the claim
`based on the specification or prosecution history when those sources
`expressly disclaim the broader definition.”). Thus, the Federal Circuit has
`cautioned: “These prosecution history comments cannot trump the plain
`language of the claims and the direct teaching of the specification.”
`Telcordia Technologies, Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1375
`(Fed. Cir. 2010) (citation omitted).
`
`Prosecution disclaimer does not apply to an ambiguous disavowal.
`See N. Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281, 1293–95 (Fed.
`Cir. 2000) (prosecution disclaimer did not “support the judicial narrowing of
`a clear claim term” because the inventors' statements were amenable to
`multiple reasonable interpretations). Prosecution disclaimer does not apply,
`for example, if the applicant simply describes features of the prior art and
`does not distinguish the claimed invention based on those features. See
`Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1337 (Fed. Cir. 2005).
`
`This caution in finding a disclaimer is especially warranted here,
`where a patentee is relying on its own self-serving arguments made during
`prosecution, and has had an opportunity to amend its claims to avoid any
`ambiguity. The Federal Circuit has observed, “that the PTO is under no
`obligation to accept a claim construction proffered as a prosecution history
`disclaimer, which generally only binds the patent owner.” Tempo Lighting,
`Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014).
`
`We do not find that there has been an unambiguous disclaimer or
`disavowal of claim scope as suggested by Patent Owner. We agree with
`Petitioner’s assertion that the statements Patent Owner made during
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`reexamination were merely describing how some embodiments of the ’908
`patent operate. Madisetti II Decl. ¶ 19.
`
`For example, Patent Owner contends it repeatedly and unambiguously
`stated, “the multi-function circuitry is expressly recited distinct from the
`control circuit.” PO Resp. 26. In support of this statement, Patent Owner
`cites to page 243 of Exhibit 2029 (page 15 of a Patent Owner’s May 2, 2008
`response to an Office Action in the Reexamination). Id. Further on, Patent
`Owner contends that it “equally clearly and unambiguously stated that the
`functions performed by the multi-function circuit must be ‘functions other
`than those performed by the control circuitry.’” Id. at 31. In support of this
`statement, Patent Owner cites to page 246 of Exhibit 2029 (page 18 of a
`Patent Owner’s May 2, 2008 response to an Office Action in the
`Reexamination).
`
`In these portions of the response, Patent Owner is addressing a
`rejection based on a U-150 application note. Patent Owner’s first remark
`simply recites what is in the claim. Ex. 2029, 243. Patent Owner then refers
`to several examples in the ’980 patent (i.e., Figs. 3, 4, and 7), and prefaces
`the discussion by stating, “[t]o illustrate by way of example, not limitation.”
`Id. at 246. Patent Owner concludes the discussion with the following:
`“Indeed, all examples illustrated in the ’908 patent describe that the control
`circuitry is separate and distinct from the multi-function circuitry.” Id. In
`the very next sentence, however, Patent Owner makes the following
`reservation: “Of course, the patent owner does not suggest that the details of
`the specific control circuit depicted in the specific examples illustrated [in]
`FIGs. 3, 4, and/or 7, and discussed in the associated text be imported as
`limitations to be read into the claims. . . . However, the patent owner
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`respectfully submits that the specification does shed light on potential
`characteristics of a ‘control circuit,’ a ‘control terminal,’ a ‘multi-function
`circuit,’ or a ‘multi-function terminal’ that must be consistent with the
`specification.” Id. at 246–247. Similar statements appear at pages 261 and
`265 (pages 33 and 37 of the May 2, 2008 response) of Exhibit 2029, which
`respond to a rejection based on a Balkasarian article, discussed in Patent
`Owner’s Response at page 27.
`
`Based on the foregoing, we agree with Petitioner’s expert, Dr.
`Masdisetti, that these statements merely discuss examples from the ’908
`specification. Madisetti II Decl. ¶ 19. They do not express an unambiguous
`disavowal of claim scope. Id. ¶ 20. At best, they refer to examples that
`“shed light on ‘potential’ characteristics.” Id. We note that the panel in
`IPR995 reached a similar conclusion. IPR995 FWD at 22–23.
`
`In sum, we do not adopt Patent Owner’s position that all claims at
`issue require a “control circuit” and “multi-function circuitry” that are
`separate and distinct components that perform separate and distinct
`functions.
`
`b. an action or activity that is distinct from the “core” regulation
`function
`
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`Patent Owner contends: “[o]ne of skill in the art would understand,
`and indeed the ’908 patent specification clearly teaches, that a ‘control
`circuit’ for a ‘power supply controller circuit’ is the part of the circuit that
`performs the core regulation function of ensuring that the power supply
`output is being properly maintained, or in other words ‘regulated,’ to meet
`the demands of the load connected at the power supply output.” PO Resp.
`29. Patent Owner further contends: “all remaining challenged claims require
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`that each ‘function’ of the ‘multi-function circuit’ and/or enabled by the
`‘multi-function terminal’ be a function that is separate and distinct from the
`function performed by the recited control circuit, namely, the core regulation
`function.” Id. at 29–30.
`
`We are not persuaded by this argument. This argument is an
`elaboration of the “separate and distinct function” argument just discussed.
`Here, however, Patent Owner introduces the concept of the “core regulation
`function.” However, neither the claims nor the specification make any
`reference to “core regulation function,” much less one that is “separate and
`distinct” from the other functions performed by the multi-function circuit.
`Once again, Patent Owner relies on the reexamination history, citing pages
`(Ex. 2029, 246, 261, 265) and arguments directed to the U-150 application
`note and Balakrishnan article discussed supra. See PO Resp. 30–31. As
`was discussed above, these citations to the reexamination do not demonstrate
`a clear and unambiguous disavowal, suggesting instead that Patent Owner
`did not intend to be bound by its discussions of the ’908 patent specification.
`
`We conclude that Patent Owner’s argument that the multi-function
`circuit must perform a different function from what it terms the “core
`regulation function” is unconvincing. We note that the panel in IPR995
`reached a similar conclusion. IPR995 FWD at 24–25.
`
`c. a single additional terminal to implement multiple additional
`functions
`
`Patent Owner contends: “[p]roperly construed, all challenged
`independent claims require that there be a single additional terminal that
`implements the multiple additional functions of a multi-function circuit.”
`PO Resp. 32. Patent Owner explains further: “[i]n other words, the
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`operation enabled by the multi-function terminal is not responsive to a signal
`from some other terminal beyond the signal received at the multi-function
`terminal.” Id.
`Patent Owner relies first on the language of the claims, specifically
`
`the requirement that the multi-function circuitry be “coupled between” a
`multi-function terminal and the control circuit. PO Resp. 32. According to
`Patent Owner, this means that no additional terminals can be required. Id.
`We disagree with Patent Owner. Nothing in the language of the claims
`excludes the possibility that the multi-function circuit might be affected by
`signals at additional terminals beyond the multi-function terminal. In fact,
`the open-ended claim language, signaled by the use of “comprising,”
`contradicts Patent Owner’s proposed construction. Madisetti II Decl. ¶ 5.
`
`Likewise, the specification does not support Patent Owner. We
`disagree with Patent Owner’s conclusion that the specification “disclaims”
`such a construction. PO Resp. 33. The fact that the specification discloses
`having a single terminal perform multiple functions does not amount to a
`clear disavowal of claim scope. The specification specifically states: “[t]he
`present specification and figures are accordingly to be regarded as
`illustrative rather than restrictive.” Ex. 1001, col, 23, ll. 33–35. This is
`consistent with Patent Owner’s statements in the reexamination, quoted
`supra. Under the circumstances, we see no persuasive reason to limit the
`claims to the examples in the specification. SuperGuide Corp., 358 F.3d at
`875.
`Patent Owner contends that the reexamination prosecution history is
`
`“consistent” with its claim construction. PO Resp. 34–38. Nevertheless, the
`mere fact that the Examiner allowed claims over a LT1074 data sheet (art
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`that is not relied on here by Petitioner) is insufficient proof of waiver or
`limitation of claim scope. Patent Owner does not sufficiently demonstrate
`that the arguments before the Examiner were the same as those presented
`here, or that the data sheet is comparable to the art before us here. See
`Madisetti II Decl. ¶ 7. We agree with Dr. Madisetti’s analysis that different
`arguments than those presented here were made there to overcome data
`sheet. We do not see nor have we been made aware of the type of specific
`disclaimers found in SciMed and In re Abbott Diabetes Care in the record
`presented here. See discussion supra.
`
`In sum, we do not adopt Patent Owner’s position that all claims at
`issue should be read to prohibit the possibility that the multi-function circuit
`might be affected by signals at additional terminals. We note that the panel
`in IPR995 reached a similar conclusion. IPR995 FWD at 18–21.
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`d. the power switch is a sub-component of the controller
`
`Patent Owner contends that claims 1 and 19 (and thus their dependent
`claims) require that “the claimed controller include the claimed power
`switch.” PO Resp. 38. In support, Patent Owner points to the configuration
`shown in Figure 1 of the ’908 patent (Ex. 1001), reproduced supra, to
`various references in the specification describing the power switch and
`power supply controller, and to the claim language, specifically, the
`recitations of “power supply controller” in the preambles including the use
`of “comprising.” PO Resp. 38–40. Patent Owner concludes: “independent
`claims 1 and 19 and their respective dependent claims require the claimed
`controller include the power switch, or in other words, that the power switch
`not be a separate component from the controller.” PO Resp. 41.
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`Petitioner responds that the ’908 patent specification does not support
`
`Patent Owner. Pet. Reply 16–18. Specifically, the specification states,
`“[a]switched mode power supply may include an integrated circuit power
`supply controller coupled in series with the primary winding of the
`transformer.” Id. at 17 (quoting Ex. 1001, col. 1, ll. 33–35 (emphasis
`added)). Patent Owner also relies on this statement (PO Resp. 40), but the
`permissive language does not support Patent Owner’s argument that the
`power switch and controller must be integrated. See Pet. Reply 17 (citing
`Madisetti II Decl. ¶¶ 26–27).
`
`We agree with Petitioner that neither the claims nor the specification
`restricts the claimed elements to those embodied in separate components.
`Pet. Reply 16–18. Our reasoning is similar. “Though understanding the
`claim language may be aided by the explanations contained in the written
`description, it is important not to import into a claim limitations that are not
`a part of the claim.” SuperGuide Corp., 358 F.3d at 875. This issue will be
`discussed further infra, in connection with our consideration of Shinji.
`
`B. Anticipation – Motorola
`
`Petitioner contends that claims 1, 4, 9, 10, and 19 are anticipated by
`Motorola.4 Pet. 17–38.
`
`1. Overview of Motorola (Ex. 1005)
`
`Motorola is a data sheet titled “High Voltage Switching Regulator.” It
`provides technical data for integrated circuit MC33362, described as a high-
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`4 Petitioner also challenged claims 30–34 as anticipated by Motorola. As
`discussed supra, Patent Owner has disclaimed those claims. Thus, we do not
`take a position on whether Motorola anticipates those claims.
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`voltage off-line switching regulator. The Petition (at p. 12) provides the
`annotated version of Figure 17 from Motorola that follows:
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`Figure 17 (as annotated by Petitioner) is a representative block diagram of a
`switching regulator. Motorola discloses a switching regulator designed to
`operate from a rectified 120-volt AC source. Ex. 1005, 1. The switching
`regulator is implemented as a monolithic (i.e., single-chip) device. Id. at 1,
`8. Petitioner contends that a single pin in Motorola controls multiple
`functions. Pet. 11. Petitioner states that pin 6 is used to program the current
`limit comparator threshold and to affect the oscillator frequency. Id. Thus,
`Petitioner identifies pin 6 as the “multi-function terminal” called for in the
`patent claims. Id. at 24. Petitioner also identifies the current mirror circuit
`shown in Fig. 17 as the “multi-function circuit” of the claims. Id. at 25.
`Other elements in Fig. 17 identified by Petitioner are the control circuit,
`
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