,us to. 0V
`Trials
`571—272-7822
`
`Paper 11
`Entered: February 17, 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 IPR2016-01600
`
`Patent 7,834,605 B2
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`1. INTRODUCTION
`
`Petitioner, Semiconductor Components Industries, LLC, d/b/a ON
`
`Semiconductor, filed a Petition for inter partes review of claims 1, 2, 5,
`
`1
`
`PI 2012
`
`ON Semiconductor v. Power Integrations
`|PR2016-01600
`
`1
`
`PI 2012
`ON Semiconductor v. Power Integrations
`IPR2016-01600
`
`
`Trials
`571—272-7822
`
`Paper 11
`Entered: February 17, 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 IPR2016-01600
`
`Patent 7,834,605 B2
`
`Before THOMAS L. GIANNETTI, BRIAN J. McNAMARA, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`1. INTRODUCTION
`
`Petitioner, Semiconductor Components Industries, LLC, d/b/a ON
`
`Semiconductor, filed a Petition for inter partes review of claims 1, 2, 5,
`
`1
`
`PI 2012
`
`ON Semiconductor v. Power Integrations
`|PR2016-01600
`
`1
`
`PI 2012
`ON Semiconductor v. Power Integrations
`IPR2016-01600
`
`
`
`IPR2016-01600
`
`Patent 7,834,605 B2
`
`and 9 ofU.S. Patent No. 7,834,605 B2 (Bic. 1001, “the ”605 patent”).
`
`Paper 1 (“Pet”). Patent Owner, Power Integrations, Inc., filed a Preliminary
`
`Response. Paper 8 (“Prelim Resp”). Institution of an inter partes review is
`
`authorized by statute when “the information presented in the petition .
`any response .
`.
`. shows that there is a reasonable likelihood that the
`
`.
`
`. and
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a); see 37 CPR. § 42.108. Upon
`
`consideration of the Petition and Preliminary Response, we conclude the
`
`information presented shows there is a reasonable likelihood that Petitioner
`
`would prevail in establishing the unpatentability of at least one of the
`
`challenged claims of the ’605 patent.
`
`A. Related Matters
`
`The ’605 patent was involved in the following district court
`
`proceeding: Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc. ,
`
`No. 1:08-cv-00309 (D. Del.). Pet. 2; Paper 4, 2. An appeal from the district
`
`court to the United States Court of Appeals for the Federal Circuit was
`
`pending at the time the Petition and Preliminary Response in this case were
`
`filed. See Pet. 2, 25—26; Paper 4, 2. On December 12, 2016, the Federal
`
`Circuit reversed the jury verdict that claims 1 and 2 of the ’605 patent were
`
`not anticipated by U.S. Patent No. 4,763,238 to Maige (Ex. 1008). Power
`
`Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc, 843 F.3d 1315,
`
`133 5—39 (Fed. Cir. 2016); see Paper 9, 2.
`
`B. The ’605 Patent
`
`The ’605 patent describes a switch mode power supply with an
`
`approximately constant output voltage when the output current is below an
`
`output current threshold and an approximately constant output current when
`
`2
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`2
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`IPR2016-01600
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`Patent 7,834,605 B2
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`the output voltage is below an output voltage threshold. Ex. 1001, 1:32—3 8,
`
`1:51—53. In a described embodiment, the power supply includes a regulator
`
`circuit that controls the voltage and current at the output of the power
`
`supply. Id. at 5:31—49, Fig. 4. The regulator includes an internal switch
`
`(e.g., a power metal oxide semiconductor field effect transistor (MOSFET))
`
`coupled to the primary winding of the power supply’s energy transfer
`element (e.g., a transformer). Id. at 5:37—43, Fig. 4. The regulator may
`
`modify the duty cycle of the switch to control the output voltage based on
`
`feedback from the output of the power supply. Id. at 4:50—53, 5:37—39. The
`
`regulator also may modify the duty cycle by turning off the switch when the
`
`switch current reaches a current limit. Id. at 5:40—43.
`
`According to the ’605 patent, there is a fixed delay between the time
`
`the switch current reaches a current limit threshold and the time the switch is
`
`finally disabled. Id. at 3: 18—24. This results in a current “overshoot” that
`
`will vary based on the input voltage of the power supply. Id. at 3 :24—27.
`
`More specifically, at higher direct current (DC) input voltages, the actual
`
`current ramps to a higher level above the current limit threshold than at
`
`lower DC input voltages. Id. at 3:31—33.
`
`The ’605 patent attempts to overcome the problem of current
`
`variations and thereby achieve a power supply with an approximately
`
`constant output current. Id. at 2:45—50, 3:14—17. The purported solution is a
`
`power supply regulator circuit that creates a variable current limit threshold
`
`that increases during the on-time of the switch. Id. at Abstract, 1:53—59.
`
`Because the current overshoot is greater at higher DC input voltages than at
`
`lower DC input voltages, a variable current limit threshold should be lower
`
`for higher DC input voltages to compensate for the excess current during the
`
`3
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`IPR2016-01600
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`Patent 7,834,605 B2
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`delay time. Id. at 3:40—44; see Ex. 1003 11 22 (Declaration of Dr. Douglas
`
`Holberg). Further, because the switch current increases more quickly when
`
`the DC input voltage is high, a current limit will be reached earlier in a
`
`switching cycle when the DC input voltage is higher than when it is lower.
`
`Ex. 1001, 3:45—49; see Ex. 1003 11‘” 22—23. Thus, a variable current limit
`
`threshold that increases from a first level to a second level during the on-
`
`time of the switch results in an effective current limit (the sum of the
`
`variable current limit and the excess current during the delay) that is
`
`approximately constant across different input voltages. Ex. 1001, 3:50—62;
`
`see Ex. 1003 1] 23.
`
`Figure l of the ’605 patent is reproduced below:
`
`. DRAIN
`12
`
`1 loam 7
`
`PWM COMPARATOR
`
`I LEADING EDGE
`
`BUNKING
`
`FEEDBACK
`
`FIG. 1
`
`SOURCE
`
`Figure 1 illustrates an embodiment of a power supply regulator circuit
`
`described in the ’605 patent. Clock signal 10 sets latch 90 to enable power
`
`MOSFET 2 (i.e., turn the switch on). BX. 1001, 4:19—24. Power
`
`MOSFET 2 is disabled (i.e., the switch is turned off) when latch 90 is reset
`
`by any one of three inputs to OR gate 85. Id. at 4:24—53. First,
`
`4
`
`4
`
`
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`IPR2016-Ol600
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`Patent 7,834,605 B2
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`comparator 32 may reset latch 90 based on the feedback voltage from the
`
`output of the power supply. Id. at 4:50—53. Second, comparator 70 may
`
`reset latch 90 when the drain current of MOSFET 2 exceeds a variable
`
`current limit threshold. Id. at 4:29—49. The variable current limit threshold
`
`at node 22 is the combination of constant current source 50 and linearly
`
`increasing current source 27. Id. at 4:32—42. Finally, maximum duty cycle
`
`signal DMAX 15 may reset latch 90. Id. at 4:24—25.
`
`C. Illustrative Claim
`
`Claim 1 is the only independent claim of the ’605 patent and is
`
`illustrative of the subject matter of the challenged claims:
`
`1. A power supply regulator, comprising:
`
`a comparator having a first input coupled to sense a
`voltage representative of a current flowing through a switch
`during an on time of the switch, the comparator having a
`second input coupled to receive a variable current limit
`threshold that increases during the on time of the switch;
`
`a feedback circuit coupled to receive a feedback signal
`representative of an output voltage at an output of a power
`supply; and
`
`a control circuit coupled to generate a control signal in
`response to an output of the comparator and in response to an
`output of the feedback circuit, the control signal to be coupled
`to a control terminal of the switch to control switching of the
`switch.
`
`Id. at 6:10—23.
`
`5
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`IPR2016—01600
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`Patent 7,834,605 B2
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`D. Asserted Ground of Unpatentability
`
`Petitioner contends that claims 1, 2, 5, and 9 of the ’605 patent are
`
`anticipated under 35 U.S.C. § 102(b) by de Sartre.1 Pet. 21—37.
`
`II. DISCUSSION
`
`A. Statutory Bar under 35 US. C. § 31 5 (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. 1012; 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
`
`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
`
`paten .” Patent Owner asserts Fairchild was served with a complaint for
`
`infringement of the ’605 patent on June 6, 2011, more than a year prior to
`
`the filing of this Petition.2 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 8 (quoting
`
`1 US. Patent No. 4,692,853, issued Sept. 8, 1987 (Ex. 1005).
`2 Case No. 1:08-cv-00309-LPS in the US. District Court for the District of
`
`Delaware. See Ex. 2003 (“Amended Complaint for Patent Infringement”).
`
`6
`
`6
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`IPR2016—01600
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`Patent 7,834,605 B2
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`EX. 2007, 7). Patent Owner further alleges: “Since Petitioner now owns
`Fairchild, Petitioner is successor-in-interest to the products that were found
`
`to infringe the ’605 patent.” Id. at 6. In addition, Patent Owner asserts:
`“Petitioner is a privy of Fairchild, despite the fact that the merger was not
`
`finalized until just afier the filing of the Petition.” Id. at 8. Finally, Patent
`
`Owner argues: “Petitioner has even admitted to the Office that Fairchild is
`
`now one of the ‘real parties in interest’ along with Petitioner.” Id (citing
`
`Paper 6, 3).
`
`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
`
`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 0p. at 12 (PTAB Feb.
`
`19, 2014) (Paper 60); see also ARRIS Group, Inc. v. TQ Delta LLC, Case
`
`lPR2016-00430, 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,
`
`7
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`IPR2016-01600
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`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 2011, 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 I
`
`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. 5-8.
`
`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
`
`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.
`
`8
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`IPR2016-01600
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`Patent 7,834,605 B2
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`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. 7—8. Thus,
`
`the record lacks sufficient evidence to demonstrate even the opportunity to
`
`control this review and, thus, to establish privity between Petitioner and
`
`Fairchild.
`
`Nor is there any persuasive evidence to support a conclusion that
`
`Petitioner is acting as a proxy for Fairchild. Compare RPX Corp. v. VirnetX,
`
`Ina, 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.
`
`9
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`IPR2016-01600
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`Patent 7,834,605 B2
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`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).
`
`Petitioner contends that resolution of this inter partes review does not
`
`require express construction of any claim terms. Pet. 21 ', Patent Owner
`
`proposes a construction for “a variable current limit threshold that increases
`
`during the on time of the switch,” recited in independent claim 1. Prelim.
`
`ReSp. 29—35. We address that claim phrase below. For purposes of this
`
`decision, we determine that no other claim terms require express
`
`construction.
`
`Patent Owner argues that to be consistent with the specification, the
`
`“variable current limit threshold” in claim 1 “must increase in a way that is
`
`10
`
`10
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`10
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`IPR2016-01600
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`Patent 7,834,605 B2
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`detectable and usable by the circuit as a function of the time elapsed during
`
`each switching cycle.” Id. at 29. Petitioner does not propose a construction
`
`for this claim language but asserts in the context of its unpatentability
`
`analysis that the claims “do not require any particular amount of increase in
`
`the current limit threshold during' the on-time of the switch.” Pet. 27. Based
`
`on the plain language of the claim, Petitioner argues that “any increase,
`
`regardless the magnitude, during the on-time of the switch satisfies this
`
`claim element.” Id. (citing Ex. 1003 {I 46).
`
`Patent Owner begins its argument for limiting the scope of the claim
`
`language by quoting the stated goal of the invention described in the
`
`’605 patent—“to maintain a constant actual current limit over DC input
`
`voltage variations.” Ex. 1001, 3:39—40; see Prelim. Resp. 29. Patent Owner
`
`further asserts that “the purpose of using an increasing current limit
`
`threshold is to create an intrinsic current limit that decreases relative to the
`
`DC input voltage in order to compensate for the relatively larger overshoot
`
`that accompanies relatively higher DC input voltages.” Prelim Resp. 30.
`
`The ’605 patent, however, does not claim a regulator with a variable current
`
`limit threshold used to maintain a constant output current in a power supply
`
`or to compensate for current overshoot. See Pet. 13, 15. As explained in the
`
`Petition, an earlier patent in the chain of continuations that includes the
`
`’605 patent does contain claims reciting both an increasing current limit
`
`threshold and a power supply having a constant output current that results
`
`from the variable current limit threshold. Pet. 13—14 (citing Ex. 1002, 6:47—
`
`63 (claim 6 of US. Patent No. 7,110,270 B2)). But claim 1 of the
`
`’605 patent was drafted more broadly to exclude the “constant output
`
`current” limitation. See id. at 15; BX. 1001, 6:10—23. Thus, claim 1 of the
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`11
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`IPR2016-01600
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`Patent 7,834,605 B2
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`’605 patent recites a variable current limit threshold that increases during the
`
`on—time of the switch but does not include a limitation requiring the
`
`increasing current limit threshold to be used for a particular purpose, such as
`
`providing a power supply with a constant output current.
`
`Patent Owner further argues that “[b]oth logic and consistency with
`
`the specification demonstrate that there must be some minimum bound to the
`
`amount of increase that constitutes ‘a variable current limit threshold that
`
`increases during the on time of the switch.’” Prelim. Resp. 34. According
`
`to Patent Owner, this “minimum bound” must encompass an increase that is
`
`“detectable” and “must be measurable to be used as a mechanism to
`
`determine the elapsed on-time of the switch.” Id. at 35. For support, Patent
`
`Owner cites the following sentence from the ’605 patent: “It is simply
`
`necessary to increase the intrinsic current limit as a function of the time
`
`elapsed during the cycle.” Ex. 1001, 3:54—55; see Prelim. Resp. 35.
`
`Contrary to Patent Owner’s argument, this sentence does not require that an
`
`increase in the current limit be sufficiently detectable that it can be used to
`
`determine the elapsed on-time of the switch. Rather, it simply provides that
`
`the current limit threshold must increase as a function of elapsed time during
`
`the switch cycle, i.e., during the on-time of the switch, which is exactly what
`
`claim 1 recites.
`
`On the present record, Patent Owner has not persuaded us that
`
`anything in the claim language or written description of the ’605 patent
`
`requires the recited variable current limit threshold to increase by a
`
`minimum amount or be used to achieve a particular goal. Instead, for
`
`purposes of this decision, we agree with Petitioner that the broadest
`
`reasonable interpretation of “a variable current limit threshold that increases
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`IPR2016—01600
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`Patent 7,834,605 B2
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`during the on time of the switch” does not require any particular amount of
`
`increase during the on-time of the switch.
`
`C. Asserted Anticzpation by de Sartre
`
`Petitioner contends that claims 1, 2, 5, and 9 of the ’605 patent are
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by de Sartre. Pet. 21—
`
`36. Relying on the testimony of Dr. Holberg, Petitioner explains how de
`
`Sartre allegedly discloses all limitations of the challenged claims. Id. (citing
`
`Ex. 1003).
`
`I. Overview ofde Sartre
`
`de Sartre discloses a switch mode power supply that includes two
`
`integrated circuits—regulation circuits C11 and C12. Ex. 1005, Fig. 1.
`
`Figure 1 of de Sartre (annotated by Petitioner) is reproduced below:
`
`power source 10
`
` Regulation circuit {311
`
`
`
`
`
`Regu§ation circuit CI2
`
`Pet. 17; Ex. 1005, Fig. 1. Figure 1 illustrates a power supply with regulation
`
`circuits C11 and C12 on the primary and secondary side, respectively, of a
`
`transformer. Ex. 1005, 4:11—14. Regulation circuit C11 controls the base of
`
`13
`
`13
`
`13
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`IPR2016-01600
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`Patent 7,834,605 B2
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`power transistor Tp (i.e., a switch), which controls the flow of current from
`
`electric mains line 10 (i.e., a power source) into the primary winding of the
`
`transformer. Id. at 1:30—36, 1:41-45. Regulation circuit C12 monitors the
`
`output voltage of the power supply and sends feedback to regulation circuit
`
`C11. Id. at 1:36—41. During normal operation of the power supply,
`
`regulation circuit C12 sends regulation signals to regulation circuit C11 to
`
`cause the switch to turn on and off. Id. at 10:45—50.
`
`Figure 2 of de Sartre (annotated by Petitioner) is reproduced below:
`
`from regulation circuit C12
`
`
`
`
`
`regulation circuit C11
`
`
`
`
`
`'
`
`'
`'
`
`FIG_2
`no "
`
`.
`“.4”.
`"
`u
`_ T
`5“
`.L m- To m rm:
`’ a
`
`-
`
`'
`
`,2:
`" (er
`
`i
`
`_
`‘
`Signal to swrtch
`
`”rm——
`b
`
`W WIT
`
`
`
`
`Pet. 18; Ex. 1005, Fig. 2. Figure 2 illustrates detail of regulation circuit C11.
`
`EX. 1005, 4:15—17. To protect the switch, the power supply may use a
`
`safety mode during start-up or when an overcurrent condition is detected.
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`Id. at 2:48—53. In safety mode, regulation circuit C11 gradually increases
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`current through the switch. Id. at 2:53—3:11.
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`Figure 4 of de Sartre (annotated by Petitioner) illustrates timing
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`diagrams of signals at different nodes in C11 during start-up:
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`current limit
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`increasing during
`{in—time of switch
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`Pet. 19; Ex. 1005, Fig. 4. Figure 4, above, shows signals (e)—(i) at
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`oscillator 82, comparator 88, high-frequency oscillator 62, AND gate 58,
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`and variable threshold elaboration circuit 90 of regulation circuit C11,
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`respectively. Ex. 1005, 10:14—39. During short enablement windows (f),
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`bursts of triggering pulses (h) are sent to transistor Tp while the current limit
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`threshold (i) is increased gradually from a low value, Vs2, to the current
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`limit used during normal operation, Vs]. Id. at 728—28, 8:52—64, 9:37—42.
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`Each triggering pulse may enable, or turn on, transistor Tp. Id. at 8:5 5—65,
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`10:45—48; see Ex. 1003 1] 34.
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`2. Analysis
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`After the Petition and Preliminary Response in this case were filed,
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`the Federal Circuit reversed a jury verdict that claims 1 and 2 of the
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`’605 patent are not anticipated by Maige. Power Integrations, 843 F.3d at
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`1335—38. Although the mandate has issued, the time for filing a petition for
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`writ of certiorari has not expired. Furthermore, the remaining challenged
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`claims depend from claim 1 or claim 2 and thus incorporate the limitations
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`of those claims. See Ex. 1001, 6:35—38, 6:51—53 (claims 5 and 9). For these
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`reasons, we include claims 1 and 2 in our analysis of Petitioner’s asserted
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`anticipation ground.
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`a. Claim 1
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`Petitioner contends that de Sartre discloses a power supply regulator
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`that satisfies all the limitations of independent claim 1. Pet. 21—32. We
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`address the parties’ arguments for each limitation.
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`“comparator having a first input [and] a second input”
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`First, Petitioner argues that comparator 92 in de Sartre’s regulator
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`circuit C11 is “a comparator having a first input coupled to sense a voltage
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`representative of a current flowing through a switch during an on time of the
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`switch, [and] a second input coupled to receive a variable current limit
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`threshold that increases during the on time of the switch.” Id. at 23—28.
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`Petitioner asserts that the recited first input is input 44, which is the voltage
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`across current sense resistor 18 created by current from the emitter of
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`transistor Tp (i.e., the switch) when the switch is on. Id. at 23—24 (citing
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`Ex. 1005, 4:38—41, 5:58—59, Fig. 1, Fig. 2; Ex. 1003 fl 40). Petitioner
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`further asserts that the recited second input to the comparator is the threshold
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`signal produced by circuit 90 when the power supply is in safety mode. Id.
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`at 24—25 (citing Ex. 1005, 7:41—45, 7:49—50, 8:55—65, 9:25—26, 9:39—42,
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`10:45—46, Fig. 4; Ex. 1003 {[1] 41—42). With reference to Figure 4 ofde
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`Sartre, Petitioner contends that each burst of triggering pulses (h) to turn on
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`transistor 1",, during an enablement window (f) is subject to the progressively
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`increasing current limit threshold (i) produced by circuit 90. Id. Petitioner
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`further argues that during each triggering pulse, which may turn on transistor
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`Tm, the output signal of circuit 90 is a “variable current limit threshold that
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`increases during an on time of the switch,” as recited in claim 1. Id. at 25.
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`Patent Owner responds that de Sartre does not disclose a variable
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`current limit threshold that increases during an on—time of the switch because
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`“de Sartre teaches only a current limit signal that for any given single switch
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`on-time would be essentially fixed and not provide a detectable increase.”
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`Prelim. Resp. 36. Patent Owner argues that although there may be an
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`increase in the current limit threshold during a given on-time of the switch,
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`the increase is too small to be easily detectable with, for example, an
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`oscilloscope. Id. at 40—44. Patent Owner further argues that de Sartre does
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`not address the same problem as the ’605 patent—maintaining a constant
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`actual current limit over DC voltage variations. Id. at 36. Instead, Patent
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`Owner continues, de Sartre is directed to addressing problems that arise
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`when a power supply first starts up. Id. at 3;].
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`On the present record, we are not persuaded by Patent Owner’s
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`arguments. As discussed above, for purposes of this decision we agree with
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`Petitioner that the broadest reasonable construction of the “variable current
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`limit threshold” does not require any particular amount of increase during
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`the on-time of the switch. Although we agree with Patent Owner that the
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`annotated excerpt of de Sartre’s Figure 4 on page 25 of the Petition does not
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`accurately show the number of triggering pulses (switch on-times) that occur
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`while the current limit threshold increases from V32 to Vsl, see Prelim.
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`Resp. 39—40,3 the Petition and supporting evidence nevertheless indicate
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`there is some increase during an on-time of the switch. See Pet. 23—25, 27—
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`28; Ex. 1003 11 42. Under our claim construction, that is all that is required.
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`3 See also Ex. 1005, 10:19—22 (“The high frequency pulses have however
`been shown symbolically in FIG. 4, in a more limited number than in reality
`for facilitating the representation”).
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`Furthermore, as discussed previously, claim 1 is not directed to the particular
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`problem of maintaining a constant output current, so de Sartre may
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`anticipate claim 1 as long as it discloses a variable current limit threshold
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`that increases during the on-time of the switch, even if used for a different
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`purpose than the increasing current limit threshold described in the
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`’605 patent.
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`For these reasons, we determine that Petitioner has shown sufficiently
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`for purposes of this decision that de Sartre discloses a comparator as recited
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`in claim 1, including a variable current limit threshold that increases during
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`the on-time of the switch. Our determination is consistent with the Federal
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`Circuit’s decision regarding anticipation of claim 1 by Maige. See Power
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`Integrations, 843 F.3d at 133 5—3 8. As Petitioner indicates, Maige and de
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`Sartre share a common inventor and have overlapping, but not identical,
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`disclosures. See Pet. 27; Ex. 1008, 6:63—65 (referring to Maige’s Figures 1
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`and 2, which are similar to Figures 1 and 2 of de Sartre, as “prior art”).
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`Compare Ex. 1005, Figs. 1 & 2, and Ex. 1005, 4:25—8:26 (describing
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`Figures 1 and 2 of de Sartre), with Ex. 1008, Figs. 1 & 2, and Ex. 1008,
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`1:32—5:49 (describing similar Figures 1 and 2 of Maige). In the district
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`court case and subsequent appeal, Fairchild apparently relied on the same
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`disclosure of a current threshold during start-up mode in regulation circuit
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`CIl cited by Petitioner here, although Maige does not include the timing
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`diagrams of de Sartre’s Figure 4 that fiirther explain the operation of
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`regulator circuit C11 in Figure 2. See Power Integrations, 843 F.3d at 1336;
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`Pet. 27. The Federal Circuit ultimately found that Patent Owner’s expert
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`conceded in his trial testimony that Maige’s current threshold increases
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`during the on—time of the switch, and therefore concluded the jury lacked
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`substantial evidence to find that Maige did not anticipate claim 1 of the
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`’605 patent. Power Integrations, 843 F.3d at 1337—38.
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`‘feedback circuit ”
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`Petitioner contends that de Sartre’s regulation circuit C12 is a
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`“feedback circuit coupled to receive a feedback signal representative of an
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`output voltage at an output of a power supply,” as recited in claim 1, because
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`it receives information concerning the value of Vs, the output voltage of the
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`power supply, and feeds a signal representative of that output voltage back
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`to regulation circuit C11. Pet. 28—29 (citing Ex. 1005, 5:21—25, 5:36—41,
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`Fig. 1). Patent Owner does not respond to this argument. For purposes of
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`this decision, Petitioner has shown sufficiently that de Sartre discloses this
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`limitation.
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`”control circuit ”
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`Petitioner asserts that OR gate 60, AND gate 58, flip flop 50, and
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`amplification stage 48 collectively serve as “a control circuit coupled to
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`generate a control signal in response to an output of the comparator and in
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`response to an output of the feedback circuit, the control signal to be coupled
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`to a control terminal of the switch to control switching of the switch,” as
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`recited in claim 1. Pet. 30—31. The Petition includes the following
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`annotated version of Figure 2 of de Sartre:
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`Id. at 30. As shown in annotated Figure 2, Petitioner asserts that OR gate 60
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`of the control circuit receives one input from regulation circuit C12 (i.e., the
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`claimed “output of the feedback circuit”) via terminal 40, and a second input
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`from comparator 92 (i.e., the claimed “output of the comparator”). Id. ; see
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`Ex. 1005, Fig. 2. Petitioner further submits that the output of OR gate 60 is
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`coupled to reset input 54 of flip flop 50 to control transistor Tp (i.e., the
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`switch) through output 46, so that a control signal is generated “in response
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`to an output of the comparator and in response to an output of the feedback
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`circuit.” Pet. 30 (citing Ex. 1005, 6:14—17).
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`Patent Owner argues that de Sartre does not disclose this limitation
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`because de Sartre’s control circuit cannot respond to both of the recited
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`inputs during any given switch on—time. Prelim. Resp. 44—49. Patent Owner
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`points out that regulation circuit C12 sends feedback regulation signals to
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`regulation circuit CIl only during normal operations, when the regulator is
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`not in start-up mode and the threshold elaboration circuit that provides an
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`input to comparator 92 is fixed, not variable. Id. at 46—48 (citing Ex. 1005,
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`3:33—34, 3:52—53, 3:65—66, 8:46—51, 9:10—14, 9:56—60). In other words, the
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`“output of the feedback circuit” relied on by Petitioner exists in de Sartre
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`only during normal operations, and the “output of the comparator” relied on
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`by Petitioner exists only during start-up mode. Therefore, in Patent Owner’s
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`view, de Sartre’s control circuit is not within the scope of the claim because
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`it never has the capability to generate a control signal in response to two
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`different inputs, i.e., at any given time it can generate a control signal in
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`response to only one of the
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