`571-272-7822
`
`Paper 10
`Entered: February 22, 2017
`
`
`
`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 IPR2016-01598
`Patent 6,107,851
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`I. INTRODUCTION
`Petitioner, Semiconductor Components Industries, LLC, d/b/a ON
`Semiconductor, filed a Petition for inter partes review of claims 12, 16, 18,
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`and 20 of U.S. Patent No. 6,107,851 (Ex. 1001, “the ’851 patent”).1 Paper 1
`(“Pet.”). Patent Owner, Power Integrations, Inc., filed a Preliminary
`Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition . . . and
`any response . . . shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon
`consideration of the Petition and Preliminary Response, we conclude the
`information presented does not show there is a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of any of the
`challenged claims of the ’851 patent.
`
`A. Related Matters
`Petitioner identifies as related matters the following two district court
`proceedings: Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`No. 1:04-cv-01371 (D. Del.), and Power Integrations, Inc. v. Fairchild
`Semiconductor Int’l, Inc., No. 1:08-cv-00309 (D. Del.). Pet. 2. The United
`States Court of Appeals for the Federal Circuit reviewed district court
`decisions in those two cases in Power Integrations, Inc. v. Fairchild
`Semiconductor Int’l, Inc., 711 F.3d 1348 (Fed. Cir. 2013), and Power
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315 (Fed.
`Cir. 2016). See Pet. 2.
`
`
`1 Of the claims challenged in the Petition, claims 16 and 20 were introduced
`or amended during reexamination of the ’851 patent (see Reexamination
`Application No. 90/008,324) and appear in Ex Parte Reexamination
`Certificate US 6,107,851 C1. Ex. 1002. Thus, all references to those claims
`of the ’851 patent are to the claims as issued in the Reexamination
`Certificate.
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`Petitioner also identifies as a related matter the reexamination of the
`’851 patent. Id. In addition, Petitioner concurrently filed a petition
`(IPR2016-01599) for inter partes review of claims 2, 3, 7, 8, 10, and 19 of
`the ’851 patent. Id. at 2–3.
`
`B. The ’851 Patent
`The ’851 patent relates to switch mode power supplies, which convert,
`for example, an AC voltage at a wall socket to a DC voltage used to power
`an electronic device. Ex. 1001, 1:5–21. A switch mode power supply may
`incorporate a pulse width modulated (PWM) switch to maintain a steady DC
`voltage. Id. The PWM switch uses an oscillator and related circuitry to vary
`the frequency of the switch. Id.
`According to the ’851 patent, a common problem with switch mode
`power supplies is the electromagnetic interference (EMI) generated at the
`switching frequency of the switch. Id. at 1:22–40. The ’851 patent explains
`that, at the time of the invention, it was known that EMI could be reduced by
`varying, or jittering, the frequency of the oscillator contained in the PWM
`switch controller. Id. at 3:9–30. Jittering allows the switching frequency of
`the switch to be spread over a larger bandwidth, which minimizes the peak
`value of the EMI generated by the power supply at each frequency. Id. at
`3:22–25.
`Figure 1 of the ’851 patent illustrates a known power supply using a
`PWM switch and frequency jitter circuitry external to the PWM switch for
`varying the switch frequency. Id. at 3:12–17, 4:37–39, Fig. 1 (labeled
`“PRIOR ART”). The ’851 patent describes shortcomings of the EMI
`reduction scheme shown in Figure 1. For example, the amount of frequency
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`jitter itself will vary due to variations in the line voltage and output load. Id.
`at 3:31–34, 6:13–17.
`The ’851 patent purports to overcome shortcomings of external
`frequency jitter circuitry by including a frequency variation circuit that is
`internal to the PWM switch itself. According to the ’851 patent, an internal
`frequency variation signal has an advantage over the frequency jitter
`operation of Figure 1 “in that the frequency range of the presently preferred
`pulse width modulated switch is known and fixed, and is not subject to the
`line voltage or load magnitude variations.” Id. at 6:13–17 (reference
`numeral omitted). Moreover, the ’851 patent continues, a power supply
`containing a PWM switch with an internally generated frequency variation
`signal will have a reduced size and overall cost as compared to the prior art
`power supply shown in Figure 1 with an externally generated frequency
`variation signal. Id. at 6:21–24. The ’851 patent also describes an
`alternative power supply embodiment containing a regulation circuit with a
`switching frequency that varies according to an internal frequency variation
`signal and has the same advantages as the disclosed PWM switch with an
`internal frequency variation signal. Id. at 11:43–50.
`
`C. Challenged Claims
`Of the challenged claims, only claim 20 is independent. Claim 20 was
`added as a new claim during reexamination of the ’851 patent to replace
`independent claim 11, which was cancelled. Ex. 1002, 1:19, 2:23–45;
`Ex. 1016, 2, 6, 8 (Second Amendment and Response After Final, May 9,
`2009). Challenged claim 16 was amended during reexamination to depend
`from claim 20. Ex. 1002, 1:44–47. Claims 12 and 18 were not reexamined
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`and continue to depend from cancelled claim 11. Ex. 1001, 14:1–3, 14:37–
`41.
`
`Claim 20 is illustrative of the claimed subject matter and reads:
`20. A regulation circuit comprising:
`a first terminal;
`a second terminal;
`a feedback terminal coupled to disable the regulation
`circuit;
`a switch comprising a control input, said switch allowing
`a signal to be transmitted between said first terminal and said
`second terminal according to a drive signal provided at said
`control input;
`a frequency variation circuit that provides a frequency
`variation signal, wherein the frequency variation signal is an
`internally controlled signal within the regulation circuit;
`an oscillator that provides an oscillation signal having a
`frequency range, said frequency of said oscillation signal
`varying within said frequency range according to said
`frequency variation signal, said oscillator further providing a
`maximum duty cycle signal comprising a first state and a
`second state; and
`a drive circuit that provides said drive signal when said
`maximum duty cycle signal is in said first state and said
`regulation circuit is not disabled.
`
`Ex. 1002, 2:13–45.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 12, 16, 18, and 20 of the ’851 patent are
`unpatentable based on the following grounds:
`
`References
`SMP2112 and Thompson3
`Lin,4 Unitrode,5 and Balakrishnan6
`
`
`Challenged Claims
`Basis
`§ 103(a) 12, 16, 18, and 20
`§ 103(a) 12, 16, 18, and 20
`
`II. DISCUSSION
`
`A. Statutory Bar under 35 U.S.C. § 315(b)
`
`On November 18, 2015, Petitioner entered into a Merger Agreement
`with Fairchild Semiconductor International, Inc. (“Fairchild”). Prelim.
`Resp. 1; Ex. 2001. The Petition was filed on August 11, 2016. The merger
`was completed five weeks later, on September 19, 2016. Ex. 1032; Paper 6
`(Petitioner’s Revised Mandatory Notices).
`Patent Owner asserts this Petition is time-barred under 35 U.S.C.
`§ 315(b). Prelim. Resp. 1. Under § 315(b), “[a]n inter partes review may
`
`
`2 SMP211 PWM Power Supply IC, Regulated DC Output, Power
`Integrations, Inc. (Datasheet for SMP211) (Jan. 1996) (Ex. 1009).
`3 U.S. Patent No. 5,739,658, issued Apr. 14, 1998 (Ex. 1003).
`4 Feng Lin and Dan Y. Chen, Reduction of Power Supply EMI Emission by
`Switching Frequency Modulation, 9 IEEE TRANSACTIONS ON POWER ELECS.
`132–37 (1994) (Ex. 1005).
`5 High Speed PWM Controller, Unitrode (Datasheet for UC1823, UC2823,
`and UC3823) (Apr. 1992) (Ex. 1006).
`6 Balu Balakrishnan, Three Terminal Off-Line Switching Regulator Reduces
`Cost and Parts Count, OFFICIAL PROCEEDINGS OF THE TWENTY-NINTH INT’L
`POWER CONVERSION CONFERENCE, at 267–79 (Sept. 1994) (Ex. 1011).
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`not be instituted if the petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in interest, or privy of
`the petitioner is served with a complaint alleging infringement of the
`patent.” Patent Owner asserts Fairchild was served with a complaint for
`infringement of the ’851 patent on October 20, 2004, more than a year prior
`to the filing of this Petition.7 Prelim. Resp. 1. Patent Owner alleges that
`prior to the merger, Petitioner and Fairchild entered into a Confidentiality
`Agreement “that addressed the parties’ ongoing legal proceedings,
`acknowledging that they ‘share a common legal and commercial interest’
`and ‘are or may become joint defendants in proceedings.’” Id. at 6 (quoting
`Ex. 2010, 7). Patent Owner further alleges: “Since Petitioner now owns
`Fairchild, Petitioner is successor-in-interest to the products that were found
`to infringe the ’851 patent.” Id. at 6–7. In addition, Patent Owner asserts:
`“Petitioner is a privy of Fairchild, despite the fact that the merger was not
`technically finalized until just after the filing of the Petition.” Id. at 8.
`Petitioner maintains that “Fairchild and its subsidiaries had no role in
`the decision to file the Petition, the content of the Petition, or the preparation
`of the Petition [and] did not contribute in any manner to the funding for the
`Petition.” Paper 6, 3. Thus, Petitioner contends, Fairchild and its
`subsidiaries “were not real parties in interest or a privy of Petitioner as of the
`filing of the Petition or at any time before the close of the merger on
`September 19, 2016.” Id.
`For the reasons presented by Petitioner, on this record, we are not
`persuaded by Patent Owner’s contention that the Petition should be barred
`
`7 Case No. 1:04-cv-1371 in the U.S. District Court for the District of
`Delaware. See Ex. 2004 (“Complaint for Patent Infringement”).
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`under 35 U.S.C. § 315(b). Panels of the Board have interpreted this statute
`(and associated rule 37 C.F.R. § 42.101(b)) to mean “it is only privity
`relationships up until the time a petition is filed that matter.” Synopsys, Inc.
`v. Mentor Graphics Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb.
`19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case
`IPR2016-00430, slip op. at 6 (PTAB July 1, 2016) (Paper 9). We agree with
`the reasoning of those decisions. On this record, therefore, and for the
`reasons that follow, we are not persuaded that there is sufficient evidence
`that Fairchild was a privy of Petitioner before the filing of the Petition and,
`thus, we are not persuaded 35 U.S.C. § 315(b) bars institution of inter partes
`review.
`There is no allegation of privity at the time the complaint was served
`on Fairchild, in 2004, or that Petitioner controlled or could have controlled
`the lawsuit between Fairchild and Patent Owner. See Aruze Gaming Macau,
`Ltd. v. MGT Gaming, Inc., Case IPR2014-01288, 2015 WL 780607, at *8
`(PTAB Feb. 20, 2015) (“In the context of § 315(b), the goal of the
`preclusion is to prevent successive challenges to a patent by those who
`previously have had the opportunity to make such challenges in prior
`litigation. As such, the focus of our privity inquiry is on the relationship
`between the parties during the prior lawsuit.”). Patent Owner’s allegations
`of privity are directed, instead, to the events surrounding the merger and to
`the allegation that Petitioner is a proxy for Fairchild. Prelim. Resp. 6–8.
`Although not the exclusive factor for establishing privity, control of
`the requested review procedure is an important factor to establish privity in
`this context. Our Office Patent Trial Practice Guide explains that
`“[w]hether a party who is not a named participant in a given proceeding
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`nonetheless constitutes a . . . ‘privy’ to that proceeding is a highly fact-
`dependent question.” 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012). “There
`are multiple factors relevant to the question of whether a non-party may be
`recognized as a . . . ‘privy.’” Id. “A common consideration is whether the
`non-party exercised or could have exercised control over a party’s
`participation in a proceeding.” Id. However, it is recognized that there is no
`definitive test regarding the degree of participation required to establish such
`control and, hence, to establish a privity relationship. Id.
`In ARRIS, the panel determined that patent owner’s evidence of an
`agreement of a future merger was insufficient to show any degree of control
`over the requested review procedure or even the opportunity to do so.
`IPR2016-00430, slip op. at 7 (Paper 9). Here, we are not persuaded, on the
`present record, that Patent Owner’s assertions regarding the Merger
`Agreement detailing a future merger, which was not yet completed at the
`time of filing this Petition, are sufficient to demonstrate the opportunity for
`control by Fairchild over this proceeding.
`Similarly, Patent Owner’s assertions regarding the pre-merger
`Confidentiality Agreement are insufficient to demonstrate that Fairchild
`exercised, or could have exercised, any control over this proceeding. The
`mere exchange of unidentified confidential information and recitations that
`the parties could be joint defendants in the future, without more, do not
`provide sufficient evidence that Fairchild has exercised, or could have
`exercised, any control over this proceeding. See Prelim. Resp. 6–7. Thus,
`the record lacks sufficient evidence to demonstrate even the opportunity to
`control this review and, thus, to establish privity between Petitioner and
`Fairchild.
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`Nor is there any persuasive evidence to support a conclusion that
`Petitioner is acting as a proxy for Fairchild. Compare RPX Corp. v. VirnetX,
`Inc., IPR2014-00171, slip op. at 9 (PTAB July 14, 2014) (Paper 57), where
`the Board concluded RPX was “at most, a ‘nominal plaintiff’ with ‘no
`substantial interest’ in [the] IPR challenges apart from those of its client,
`Apple.” Such is not the situation here.
`Accordingly, we determine that, based on the evidence presented at
`this stage of the proceeding, 35 U.S.C. § 315(b) does not bar institution of
`this inter partes review.
`
`B. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). An inventor may provide a meaning for a term that is different from
`its ordinary meaning by defining the term in the specification with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`The parties propose constructions for various terms recited in the
`claims. Pet. 17–19; Prelim. Resp. 40–41. For purposes of this decision, we
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`determine that only “frequency variation signal” requires express
`construction.
`Independent claim 20, added during reexamination, recites “a
`frequency variation circuit that provides a frequency variation signal,
`wherein the frequency variation signal is an internally controlled signal
`within the regulation circuit.” Ex. 1002, 2:2:33–36. Thus, claim 20
`explicitly requires the frequency variation signal to be internally controlled
`within the regulation circuit. Claim 16, which depends from claim 20,
`similarly requires an internally controlled signal.
`Claims 12 and 18 depend from cancelled claim 11 rather than
`claim 20. Ex. 1001, 14:1–3; 4:38–42. Claim 11 recites “a frequency
`variation circuit that provides a frequency variation signal.” Id. at 13:33–34.
`Thus, claim 11 does not explicitly recite an internally controlled frequency
`variation signal. During prior litigation, however, the United States Court of
`Appeals for the Federal Circuit affirmed the district court’s construction of
`“frequency variation signal” as “an internal signal that cyclically varies in
`magnitude during a fixed period of time and is used to modulate the
`frequency of the oscillation signal within a predetermined frequency range.”
`Power Integrations, 711 F.3d at 1360–63 (construing identical “frequency
`variation signal” language in claim 1) (emphasis added).
`During that appeal, Fairchild argued that the district court improperly
`read features of the preferred embodiments into the claims. Id. at 1360.
`With respect to “frequency variation signal,” Fairchild contended the claim
`term was not limited to an internal signal and should be construed according
`to its plain and ordinary meaning as “a signal that is used to vary the
`frequency of the oscillation signal.” Id.
`
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`The Federal Circuit disagreed with Fairchild. First, the court held that
`the term “frequency variation signal” does not have a plain and ordinary
`meaning. Id. at 1362. The court then turned to the written description of the
`’851 patent, which provides:
`That is, the switching frequency of the pulse width modulated
`switch 262 varies according to an internal frequency variation
`signal. This has an advantage over the frequency jitter operation
`of [the prior art circuit of] FIG. 1 in that the presently preferred
`pulse width modulated switch 262 is known and fixed, and is not
`subject to the line voltage or load magnitude variations.
`Id. at 1363 (quoting Ex. 1001, 6:12–18); see also Ex. 1001, 11:44–49
`(explaining the same advantages with respect to the regulation circuit
`embodiment in the ’851 patent). This description, the court held, “indicates
`that the internal character of the frequency variation signal is essential to the
`invention. It is the internal character of the signal that makes the frequency-
`jittering functionality ‘not subject to the line voltage or load magnitude
`variations.’” 711 F.3d at 1363 (emphases added). The court went on to state
`that “the patentee did not employ the term ‘frequency variation signal’ to
`refer to external signals, nor did the patentee consider external frequency
`variation signals as part of the invention. In fact, the patentee sought to
`alleviate problems with the prior art’s external frequency variation
`techniques.” Id. For these reasons, the Federal Circuit held that the district
`court properly limited the claimed “frequency variation signal” to an internal
`signal. Id.
`Petitioner acknowledges the Federal Circuit’s affirmance of the
`district court’s construction. Pet. 19. Although stating this construction
`would be too narrow under the broadest reasonable interpretation standard,
`Petitioner does not provide any support for that assertion or propose an
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`alternative construction. Id. Instead, in its patentability analysis Petitioner
`treats the “frequency variation signal” recited in claims 12 and 18 the same
`as the explicitly claimed internal frequency variation signal in claim 20.
`See, e.g., id. at 47; see also id. at 19 (asserting that the grounds presented in
`the Petition disclose the “frequency variation signal” under the district court
`construction). For its part, Patent Owner “agrees to use the same claim
`construction for ‘frequency variation circuit’ that is relied on by Petitioner
`and that was affirmed by the Federal Circuit.” Prelim. Resp. 41.
`Based on the parties’ arguments, and in view of the Federal Circuit’s
`determination that the internal character of the frequency variation signal is
`essential to the invention of the ’851 patent, we construe “frequency
`variation signal” in the same manner as did the district court and Federal
`Circuit—as “an internal signal that cyclically varies in magnitude during a
`fixed period of time and is used to modulate the frequency of the oscillation
`signal within a predetermined frequency range.”
`
`C. Asserted Obviousness over SMP211 and Thompson
`
`Petitioner contends that claims 12, 16, 18, and 20 of the ’851 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
`of SMP211 and Thompson. Pet. 19–50. Petitioner relies on the declaration
`testimony of Dr. Douglas Holberg (Ex. 1012) as support for its contentions.
`In response, Patent Owner argues that the asserted combination of references
`does not disclose or suggest the recited frequency variation circuit or the
`internal frequency variation signal required by the claims. Prelim. Resp. 41–
`51. Patent Owner also contends a person of ordinary skill in the art would
`have had no reason to combine SMP211 and Thompson in the manner
`proposed by Petitioner. Id. at 51–57. For the following reasons, we
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`determine Petitioner has not established a reasonable likelihood of prevailing
`on this ground.
`
`1. Overview of SMP211
`SMP211 is a datasheet for a “PWM Power Supply IC.” Ex. 1009, 1.
`The SMP211 chip is a monolithic integrated circuit that combines a high
`voltage power MOSFET switch and a PWM controller to be used in a switch
`mode power supply. Id. Figure 3 of SMP211 (annotated by Petitioner) is
`reproduced below:
`
`
`Pet. 6; see Ex. 1009, 2. As shown in annotated Figure 3, the SMP211 chip
`contains both a high-speed power MOSFET switch and a controller section
`(including an oscillator, PWM comparator, and drive circuit) to control and
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`drive the power switch. Ex. 1009, 1–2. The PWM switching frequency of
`the SMP211 is based on the frequency of the oscillator, which in turn is
`dependent on an external capacitance coupled to the CEXT pin. Id. at 3.
`We note that in the prior art power supply configuration in Figure 1 of
`the ’851 patent, the “PWM switch” is an SMP211 chip. Ex. 1001, Fig. 1.
`Also, during reexamination of the ’851 patent, the examiner determined that
`claims 16 and 20 were patentable over SMP211 in combination with the
`patentee’s admitted prior art (i.e., Figure 1 of the ’851 patent). Ex. 1018, 7
`(Notice of Intent to Issue Reexamination Certificate, Aug. 9, 2010).
`
`2. Overview of Thompson
`Thompson discloses the use of frequency modulation to reduce noise
`generated by switches in a PWM switching system. Ex. 1003, Abstract.
`Figure 3 of Thompson is reproduced below:
`
`
`Figure 3 of Thompson illustrates PWM controller 300 electrically connected
`to switching transistors 302 and 303, which provide pulse width modulated
`signals to output device 306. Id. at 3:61–65. PWM controller 300 includes
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`PWM control unit 308, which contains timing circuit 314. Id. at 3:66–4:12.
`The frequency of the signal at timing output 316 is established by operating
`timing source 333 to bias timing input node 318. Id. at 4:18–20. In one
`embodiment, timing source 333 includes current source 324 and variable
`reactance 326 (preferably comprising a variable capacitance), which
`provides a fluctuating capacitance at timing input node 318, resulting in a
`frequency modulated timing signal at timing output node 316. Id. at 4:20–
`35. In a second embodiment, timing source 333 includes a varying current
`source to vary the frequency of timing circuit 314. Id. at 5:5–33, Fig. 4.
`Thompson states that the disclosed invention may be used in a switch
`mode power supply. Id. at 5:60–64. For example, as shown in Figure 6 of
`Thompson, a PWM controller with a PWM control unit similar to PWM
`control unit 308 may provide a variable reactance to switching transistors
`that selectively apply power to a transformer in a regulated power supply.
`Id. at 5:65–6:22.
`
`3. Analysis
`Petitioner contends that SMP211 discloses most of the limitations of
`independent claim 20, including a regulator circuit comprising a switch (the
`MOSFET in Figure 3 of SMP211), first and second terminals (DRAIN and
`COM terminals of the MOSFET), feedback terminal, oscillator, and drive
`circuit. Pet. 25–44; see id. at 27, 30, 40, 43 (Figure 3 of SMP211 with
`Petitioner’s annotations mapping SMP211 components to limitations of
`claim 20). For the recited “frequency variation circuit that provides a
`frequency variation signal, wherein the frequency variation signal is an
`internally controlled signal within the regulation circuit,” Petitioner relies on
`Thompson’s disclosure of a variable capacitance for modulating the
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`frequency of a timing circuit in a PWM controller. Id. at 31–38.
`Specifically, Petitioner contends that a person having ordinary skill in the art
`would have coupled Thompson’s circuitry for modulating the frequency of a
`timing circuit to the CEXT pin of SMP211. Id. at 22–24, 35–38. For
`example, Petitioner proposes that circuitry in Thompson’s Figure 3 be
`combined with the SMP211 chip in the following manner:
`
`Petitioner’s proposed combination of
`Thompson and SMP211
`
`Pet. 24; see Ex. 1003, Fig. 3; Ex. 1009, 2. Petitioner asserts it would have
`been obvious to a skilled artisan to combine the teachings of Thompson and
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`SMP211 in this manner in order to reduce the switching noise generated by
`SMP211’s controller. Pet. 35.
`Petitioner further argues that “Thompson discloses that either
`embodiment of its frequency variation circuit may be incorporated on the
`same integrated circuit as the primary oscillator of its PWM controller.” Id.
`In particular, Petitioner cites claim 21 of Thompson, which requires the
`control unit, variable reactance, and modulator (shown in Figure 3 of
`Thompson) to be “embodied in circuitry of a single integrated circuit.” Id.
`(citing Ex. 1003, 9:45–47). Petitioner also cites claim 11 of Thompson,
`which requires the control unit and current source in Thompson’s second
`embodiment (Figure 4) to be “included in a single integrated circuit.” Id.
`(citing Ex. 1003, 9:3–4). Based on these claims in Thompson, Petitioner
`contends it would have been obvious to incorporate Thompson’s frequency
`variation circuit (e.g., the modulator and variable capacitance shown in
`Figure 3) onto the same integrated circuit as SMP211. Id. at 36. According
`to Petitioner, such incorporation is consistent with SMP211’s combination
`of a MOSFET switch and a switch mode power system controller in a
`monolithic integrated circuit. Id. at 35. When Thompson’s frequency
`variation circuit is located on the same chip as the PWM controller of
`SMP211, Petitioner continues, the frequency variation signal provided by
`the frequency variation circuit is “internally controlled,” as required by
`claim 20 of the ’851 patent. Id. at 36.
`Patent Owner argues that Petitioner has not shown sufficiently that the
`combination of SMP211 and Thompson discloses or suggests a regulation
`circuit with an internally controlled frequency variation signal, as recited in
`claim 20. Prelim. Resp. 41–51. We agree. Claim 21 of Thompson, which
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`depends directly from claim 12 and indirectly from claim 1, recites a PWM
`controller comprising a PWM control unit and a timing source comprising a
`variable reactance (e.g., capacitance) and a modulator, all in a single
`integrated circuit. Ex. 1003, 4:34–35, 8:21–37, 9:5–14, 9:45–47.
`Thompson’s claimed PWM controller corresponds to PWM controller 300 in
`Figure 3 of Thompson. Id. at Fig. 3. Notably, a switch is not one of the
`components of the PWM controller recited in claim 21 of Thompson, just as
`switches 302 and 303 are not part of PWM controller 300 in Figure 3. The
`PWM controller recited in Thompson’s claim 11, corresponding to the
`controller in Thompson’s Figure 4, similarly does not include a switch.
`Therefore, although Thompson teaches incorporating into a single
`integrated circuit the components of a controller (e.g., an oscillator and drive
`circuit, as recited in claim 20 of the ’851 patent) as well as a variable
`capacitance and modulator (asserted by Petitioner to comprise a frequency
`variation circuit, as recited in claim 20), Thompson does not teach also
`incorporating into the integrated circuit a switch, such as the MOSFET in the
`SMP211 chip. And although SMP211 discloses a chip that includes both a
`switch and a controller, it does not teach incorporating a frequency variation
`circuit onto the same chip. Thus, we are not persuaded by Petitioner’s
`argument that it would have been obvious based on claims 21 and 11 of
`Thompson to integrate a switch, a controller (including an oscillator and
`drive circuit), and a frequency variation circuit in a single integrated circuit.
`See Pet. 36. Because Petitioner’s contention regarding the recited
`“internally controlled” frequency variation signal depends on its
`unpersuasive argument regarding integration of all claimed components onto
`the same chip, Petitioner has not shown sufficiently that the combination of
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`SMP211 and Thompson discloses or suggests an “internally controlled”
`frequency variation signal, which is required by claim 20 and, as the Federal
`Circuit held, is “essential” to the claimed invention.
`As discussed above, claims 12 and 18 depend from cancelled claim 11
`rather than independent claim 20. But as also discussed, we have construed
`the “frequency variation signal” required by these claims as an internal
`signal, similar to the internal signal explicitly recited in claim 20. Petitioner
`alleges that the combination of SMP211 and Thompson discloses every
`limitation of claim 11 in a similar manner as described with respect to
`claim 20. Pet. 47. Thus, for the same reasons discussed above with respect
`to claim 20, Petitioner has not shown sufficiently that the combined
`references disclose or suggest the recited frequency variation signal.
`For these reasons, we determine the information presented does not
`show a reasonable likelihood that Petitioner would prevail in establishing
`that independent claim 20, claim 16 depending therefrom, or claims 12 and
`18 would have been obvious over SMP211 and Thompson.
`
`D. Asserted Obviousness over Lin, Unitrode, and Balakrishnan
`
`Petitioner contends that claims 12, 16, 18, and 20 of the ’851 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the combination
`of Lin, Unitrode, and Balakrishnan. Pet. 50–74. Petitioner relies on the
`declaration testimony of Dr. Holberg (Ex. 1012) as support for its
`contentions. In response, Patent Owner argues that the asserted combination
`of references does not disclose or suggest the recited frequency variation
`circuit and the internal frequency variation signal required by the claims.
`Prelim. Resp. 57–60. Patent Owner also contends a person of ordinary skill
`in the art would have had no reason to combine the references in the manner
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`proposed by Petitioner. Id. at 60–61. For the following reasons, we
`determine Petitioner has not established a reasonable likelihood of prevailing
`on this