UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`R2 SEMICONDUCTOR, INC.,
`Patent Owner.
`_________
`
`Cases:
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`___________
`
`Record of Oral Hearing
`Held: May 1, 2018
`__________
`
`
`
`Before JAMESON LEE, JEAN R. HOMERE, and JENNIFER S. BISK,
`Administrative Patent Judge.
`
`
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`R2 SEMICONDUCTOR, INC.,
`Patent Owner.
`_________
`
`Cases:
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`___________
`
`Record of Oral Hearing
`Held: May 1, 2018
`__________
`
`
`
`Before JAMESON LEE, JEAN R. HOMERE, and JENNIFER S. BISK,
`Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MICHAEL J. SUMMERSGILL, ESQUIRE
`DONALD R. STEINBERG, ESQUIRE
`JOSHUA STERN, ESQUIRE
`RICHARD GOLDENBERG, ESQUIRE
`WilmerHale
`60 State Street
`Boston, MA 02109
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`IMAN LORDOOEI, ESQUIRE
`JAMES M. GLASS, ESQUIRE
`LANCE YANG, ESQUIRE
`Quinn Emanuel Trial Attorneys
`50 California Street
`22nd Floor
`San Francisco, CA 94111
`
`
`
`and
`
`Mashood Rassam, Intel Corporation
`Tony Baca, HP
`David Fisher, CEO, R2 Semiconductor, Inc.
`
`
`
`The above-entitled matter came on for hearing Tuesday, May 1, 2018,
`
`commencing at 12:59 p.m., at the U.S. Patent and Trademark Office, 600
`Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`2
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE BISK: Good afternoon. This is a trial hearing for six
`
`
`cases, IPR2017-00705, 706, 707, 708, 1123 and 1124, between Petitioner,
`Intel Corporation, and the owner of U.S. Patent 8,233,250, R2
`Semiconductor, Inc.
`
`
`I have a few administrative matters before we begin. And just
`as a reminder, if you're using demonstratives, please describe any slides you
`present by number. This will make the transcript easier to read.
`
`
`And as you know, per order, each party has 90 minutes to
`present their argument. Because Petitioner has the burden to show
`unpatentability on the challenged claims and the proposed amended claims,
`Petitioner will proceed first, followed by Patent Owner. Petitioner may
`reserve rebuttal time, but may only use its time to rebut Patent Owner's
`arguments.
`
`
`One other thing is that we have looked at both parties’ motions
`to exclude. Preliminarily, we find most of the objections are lacking in
`merit.
`Authentication, for example, is a very low bar, and both parties
`
`
`appear to use the motions to exclude to improperly supplement the briefing
`on the merits. So we don't want to hear any arguments today about these
`motions to exclude, and although we are not making a definitive ruling
`today, we are inclined to deny both in their entirety, both sides in all six
`cases.
`
`
`
`So the parties are ordered to meet and confer on these motions,
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`3
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`and in five days we would like the parties to file a joint notice declaring
`which, if any, of the objections included in the motions to exclude they
`would like us to continue to consider.
`
`
`Okay. At this time we'd like Counsel to introduce yourselves
`and who you have with you, beginning with Petitioner.
`
`
`MR. SUMMERSGILL: Good afternoon, Your Honors,
`Michael Summersgill on behalf of Intel, the Petitioner. And joining me at
`counsel table is Mr. Don Steinberg and Josh Stern, and Richard Goldenberg
`is lead counsel. We also have Mashhood Rassam and Tony Baca of Intel
`and HP respectively.
`
`
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: Thank you.
`
`
`JUDGE BISK: Thank you.
`
`
`And Patent Owner?
`
`
`MR. GLASS: Good afternoon, Your Honors, my name is Jim
`Glass for Patent Owner. With me today at counsel table is Mr. Iman
`Lordgooei. Mr. Lordgooei will be presenting on behalf of PO today. Also
`with me is Mr. Lance Yang.
`
`
`Behind me is Mr. David Fisher, who is the CEO and founder of
`Patent Owner, R2.
`
`
`JUDGE BISK: Okay, thank you very much. Petitioner, would
`you like to reserve time for rebuttal, and how much?
`
`
`MR. SUMMERSGILL: We would, Your Honor, we'd like to
`reserve 30 minutes, please.
`
`
`JUDGE BISK: Thirty minutes, okay.
`
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`4
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`MR. SUMMERSGILL: Thank you.
`
`
`JUDGE BISK: All right. I will try to keep time. I'm not very
`
`
`good at the timer itself, so I'm just going to use the clock, and I'll try to
`remind you as you get close to any -- the end of your time.
`
`
`MR. SUMMERSGILL: And, Your Honor, I was going to
`argue the petitions and Mr. Steinberg the motions to amend. We were
`roughly going to try and split our --
`
`
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: -- hour by 30 or I may take 35
`minutes.
`JUDGE BISK: Okay, I'll try to remind you when you're
`
`
`halfway through the 60 minutes.
`
`
`MR. SUMMERSGILL: Great, thank you.
`
`
`JUDGE BISK: Okay, whenever you're ready.
`
`
`MR. SUMMERSGILL: Thank you, Your Honors. As I said,
`I'll be handling the petition arguments and Mr. Steinberg will be handling
`the motions to amend.
`
`
`We would respectively submit that the evidence across the six
`petitions demonstrates that each of the claims of the ‘250 Patent are invalid
`on two separate grounds; one, based on the Shekhawat reference, the
`Shekhawat primary reference, and second based on the Hibino primary
`reference.
`So the ‘250 Patent claims, as Your Honors know, claim a
`
`
`voltage regulator with voltage spike protection circuitry, also known as
`snubber circuitry, and there's no dispute that all of those components were
`
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`5
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`known. To get the patent, R2 made two arguments; one, that the manner of
`setting resistance of the resistor in the snubber circuitry was novel and, two,
`made arguments about the certain location of components relative to one
`another. And we'd submit, Your Honors, that each of those aspects was also
`well known and that the cited references invalidate the claims.
`
`
`Now, if we could pull up slide 3, please. I recognize there's a
`lot of paper, a lot of different petitions and moving pieces, so what we've
`done is organize the claims into the three sets of claims across the petitions.
`There's the first set, this is the based on matches claims and we've identified
`which petitions they're in, the second set is the physically closer claims and
`the third set is the MOS claims, and I'll address each of those in turn.
`
`
`So turning to slide 5, please, and I'll start with the based on
`matches claims. Claims 1 and 29, we'd submit, are representative of these
`claims, and when Patent Owner set out to solve the problem of voltage
`spikes and they did it with voltage spike protection circuitry, which is
`referred to as a snubber circuit. And so these claims require voltage spike
`protection circuitry that has a charge storage circuit and a dissipative
`element, and in the last limitation they require a particular way of setting the
`resistance of the dissipated element, that it be based on or matches, as in
`claim 29, "a characteristic impedance of a lumped element approximation of
`a transmission line wherein the transmission line comprises the charged
`storage circuit and parasitic conductance associated with the regulator
`circuitry." And it was that last element that R2 told the Patent Office was
`the novel element. We would submit that each of the combinations renders
`these claims obvious.
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`6
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`So turning to slide 7, this is the Shekhawat reference.
`
`
`Shekhawat also discloses a voltage regulator with voltage spike protection
`circuitry. Just like the ‘250 Patent, it talks about line inductance or parasitic
`conductance and that that causes voltage spikes, and it uses a snubber circuit
`with a capacitor and a resistor to minimize those voltage spikes.
`
`
`And if we turn to slide 8, we show a comparison of Shekhawat
`to the claim. You can see the voltage regulator or the switching circuitry is
`in purple and then the snubber circuitry, both the resistor and the capacitor,
`are shown in green and red respectively. And R2 doesn't dispute that any of
`those elements are shown in Shekhawat.
`
`
`Turning to slide 9 is the Hibino reference and Hibino, just like
`Shekhawat and just like the ‘250 Patent, discloses a voltage regulator that
`uses a snubber circuit that includes a capacitor and a resistor. And again it
`discloses doing that to address voltage spikes caused by line inductance.
`
`
`JUDGE HOMERE: Counselor, one of the arguments made by
`the Patent Owner is that the invention itself as depicted in figure 19 includes
`the voltage regulator and the switching circuit within the IC, where is that in
`the prior art?
`
`
`MR. SUMMERSGILL: Well, I would submit two things on
`that, Your Honor. First that the claims don't require the voltage regulator
`and the snubber circuitry to be on the same IC, and, second, that it is
`disclosed in the prior art. Now, I'll address your question first, then come
`back to the claim construction issue.
`
`
`It is clearly disclosed in both the Shekhawat and Hibino
`references. So if we pull up slide 34, this is from the Shekhawat reference.
`
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`7
`
`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`And as you can see in the top left box, this is Shekhawat at column 8, 17 to
`22. It says that "the circuit could be implemented on a single semiconductor
`die, commonly referred to as a chip."
`
`
`If we turn to slide 35, this is the Hibino reference, and Hibino
`explicitly discloses on slide 35 that the switching device and the snubber
`circuit, 300, are arranged on the same substrate.
`
`
`So we would submit that it was clearly disclosed in both of the
`references, But let me step back, because we don't think there's any basis for
`the claims -- that the claims don't require the voltage regulator circuitry and
`the snubber circuit to be on the same integrated circuit. So if we could jump
`to slide --
`JUDGE BISK: I have a question. We have to decide that issue
`
`
`eventually, though, either -- if we don't -- if we decide it's not required in the
`original claims, we have the amended claims that specifically add that in.
`
`
`MR. SUMMERSGILL: If -- you have to decide -- yeah, if
`they're allowed to amend the claims to add that limitation, then, yes, of
`course you have to --
`
`
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: -- decide the obviousness issue and we
`think that based on what I've just shown, that it is clearly disclosed in the
`prior art.
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: On the claim construction issue just
`
`
`quickly, if -- and let's actually jump to slide 28, please -- we would submit
`that their claim construction argument is wrong for two principal reasons --
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`8
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`or three principal reasons. One, there's nothing in the claims that requires
`the snubber circuit or the voltage spike protection circuitry to be on the same
`circuit. These are the claims, there's nothing in there about being on the
`same circuit.
`
`
`And in fact, if we jump to slide 29, the fact that they are trying
`to add that limitation in their proposed amended claims is an indication of
`how easy it would have been for them to do that, if they'd wanted to, and
`they didn't do it.
`
`
`Second, turning to slide 30, there's nothing in the specification
`that would justify limiting these claims on the same circuit. The
`specification describes voltage spike protection circuitry for voltage spike
`protecting the regulator circuitry. In every instance where it's referred to as
`on the same -- and if we jump to -- actually to slide 31, in every instance
`where it's described as on the same integrated circuit, it's described
`specifically as an example. And you can see it in both of these sites at the
`top it's referring to an example.
`
`
`And finally, there's nothing in the claims that require -- there's
`nothing in the specification that requires -- that would constitute a
`disavowal, if we jump to slide 32. As Your Honors know, disavowal
`requires very strong language, expressions of manifest exclusion or
`restriction representing a clear disavowal of claim scope. If we jump to slide
`33, there's nothing in the 250 specification that disclaims using off-chip
`circuitry.
`
`R2 cites to this passage, but this passage, if you actually
`read it, isn't talking about the claimed voltage spike protection circuitry, it's
`talking about circuitry that doesn't have the voltage spike protection. It says
`
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`-- I think it's at line -- there's column 16, lines 18 to 19, it says "this is
`circuitry with no spike protection provided." So this isn't disavowing off-
`chip capacitors in the claimed invention, it's not even talking about the
`claimed voltage spike protection circuitry.
`
`
`So for those reasons, we don't think that their proposed claim
`construction is correct, and even if the claims did require it, it's clearly
`disclosed in the -- both the Hibino and Shekhawat references.
`
`
`So, Your Honors --
`
`
`JUDGE BISK: Can you explain that a little further, the clearly
`disclosed? Because I thought that both sides agreed that it's not really
`explicitly mentioned in any of the prior art.
`
`
`MR. SUMMERSGILL: Your Honor, we certainly did not.
`
`
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: And so let me jump back to slide 34.
`
`
`So slide 34, this is the Shekhawat reference, and it says that "all
`or a portion of power converter systems for 10-510, 10-110 and 210 shown
`in figures 1 and 3" -- I'll stop with those two figures -- "can be implemented
`on a single or multiple semiconductor dies, commonly referred to as a chip."
`
`
`In figure 3 of Shekhawat -- if we could pull up figure 3 of
`Shekhawat, please -- figure 3 of Shekhawat, as you can see, discloses both
`the voltage regulator circuitry, those are the switches in purple, and then the
`snubber circuitry, which is the resistor in red and the capacitor in green. So
`what Shekhawat specifically says in the cite I just read is that the snubber
`circuitry can be on the same semiconductor die as the voltage regulator
`circuitry.
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`Hibino then has a very similar disclosure. So if we turn to slide
`
`
`35, Hibino says that "the switching device, 130," that's referring to the
`voltage regulator circuitry, "and the snubber circuit, 300," that's the snubber
`circuit with the capacitor and the resistor, "are arranged on the same
`substrate."
`Now, these references aren't limited to circuitry that's all on the
`
`
`same substrate, nor are they limited to circuitry that's on separate substrates;
`they say that you can do it either way.
`
`
`JUDGE BISK: Doesn't Patent Owner make an argument,
`though, that on the same substrate does not mean on the same integrated
`chip?
`MR. SUMMERSGILL: They -- I -- there's a lot of paper, they
`
`
`may have made that argument.
`
`
`JUDGE BISK: I think they argue that because all of the -- in
`Hibino all of the components are, what do they call it, they have a wire --
`
`
`MR. SUMMERSGILL: A bond wire.
`
`
`JUDGE BISK: -- bond wire connection, and therefore they
`can't be on the same chip.
`
`
`MR. SUMMERSGILL: Well, Your Honor, I guess I'd have
`three responses for that.
`
`
`JUDGE BISK: Okay.
`
`
`MR. SUMMERSGILL: Number one, that's an argument that is
`only as to Hibino, it doesn't affect Shekhawat, which says it's on the same
`semiconductor die, so that's not disputed. Number two, there's nothing in
`Hibino that defines substrate to be something other than a semiconductor
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`chip. And as Dr. Leeb has said, one of ordinary skill would interpret
`substrate to refer to a chip. Number three, as to their bond wires argument,
`figure 22 of the ‘250 Patent, which they say is -- includes circuitry on the
`same chip, figure 22 also uses bond wires. And so their argument that just
`because Hibino references bond wires doesn't work because figure 22, which
`they say is -- has everything on one chip, the use of bond wires there didn't
`mean --
`JUDGE BISK: I'm sorry, where did they say that figure 22 has
`
`
`everything on one chip, is that in the patent itself or --
`
`
`MR. SUMMERSGILL: That's in the patent itself. And so slide
`37, this is figure 2 in the ‘250 Patent, and you can see here in the quote on
`the right, it's talking about figure 2 and it says that "bond wires or other
`contact means may be employed." And then on the left we have Patent
`Owner's POR and they say figure 22 shows the switches and the voltage
`spike protection circuitry on the same integrated circuit. So the fact that it
`references -- that Hibino references bond wires in one context certainly
`doesn't mean that the circuitry isn't all on one chip.
`
`
`So unless there are other questions on that, I will step back and
`address some of the other arguments made by R2.
`
`
`So one of the first arguments they make is that the combination
`of McMurray and either Shekhawat or Hibino don't disclose the claimed
`transmission line, we would submit that Your Honors correctly found in the
`institution decision that they do.
`
`
`If we could pull up slide 14, the required transmission line is
`simply a wired design to carry an electrical signal that includes both a charge
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`
`
`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`storage circuit, i.e. a capacitor, and parasitic conductance. And their own
`expert, Dr. Pedram, agrees. He says "transmission lines are generally
`conductors designed to carry electricity or an electrical signal from one place
`to another." And in the ‘250 Patent it includes both an inductor and a
`capacitor, inductance and capacitance. All three of the references, the
`Shekhawat reference, the Hibino reference, and the McMurray reference
`disclose this.
`
`
`If we could pull up slide 16, this is Shekhawat figure 1. And
`Shekhawat explains that there will always be line inductance and you can
`see there's this line that we've highlighted in yellow, it has -- it shows the
`line inductance with the inductor symbol, and then there's a capacitor, which
`is a little bit hard to see, but the capacitor right in the middle. So that
`discloses the required transmission line. Hibino discloses virtually the same
`thing.
`And if we jump to slide 18, McMurray also discloses the same
`
`
`thing. You can see a transmission line, a wire that has inductance and a
`capacitor. So, each of the three references discloses the claimed
`transmission line.
`
`
`And if we jump to slide 20, how do we know that they disclose
`-- how do we know for sure they disclose the required transmission line?
`Well, McMurray discloses this characteristic impedance equation, R equals
`or approximately equals the square root of the inductance over the
`capacitance. And even Patent Owner agreed that the square root of
`inductance, that that equation that disclosed in McMurray, square root of an
`inductance divided by the capacitance, they said is only one possible
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`equation that could be used to estimate a specific type of transmission line.
`So even they agree that that equation discloses the required transmission
`line.
`Their next argument -- if we could jump to slide 22, please -- is
`
`
`that McMurray doesn't disclose the required characteristic impedance of a
`transmission line, very similar to the first argument. As we've shown on
`slide 22, it was well known that the equation that L over C refers to
`characteristic impedance of a transmission line, that's in both the Ramo
`textbook and the Severns textbook. You can see in the Severns,
`characteristic impedance, ZO, of the network is defined by ZO equals the
`square root of L2 over CS, that's conductance over capacitance.
`
`
`If we could jump to slide 12, please. McMurray specifically
`discloses setting resistance using that equation. And in fact -- and you can
`see that on the left, it says resistance equals -- now there's a dampening
`factor, that 2SO, that's just a multiplier, where it equals the square root of L
`over C. And in fact that's the same equation that's disclosed in the patent for
`-- as one example at least of setting the resistance to equal the characteristic
`impedance, that's what we've shown in the middle where we say -- where we
`show its resistance approximately equals the square root of inductance over
`capacitance. And in fact when the Patent Owner was trying to establish
`conception in this context they used the same equation and that's what's
`shown on the right side, that's Dr. Pedram's analysis where he used the
`equation R equals square root of inductance over capacitance.
`
`
`So, McMurray discloses that equation, that equation clearly
`discloses setting resistance based on characteristic impedance.
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`The third argument they make is that McMurray purportedly
`
`
`teaches away from accounting for parasitic inductance because it references
`an ideal circuit. So if we could jump to slide 13, please. McMurray actually
`shows inductance in its figure 1, in its equivalent circuit. And Mr. Fisher in
`his deposition acknowledged that a lumped element approximation of a
`transmission line can be used to generate an equivalent circuit. So a lumped
`element approximation as a simplification takes all of the values of the
`circuit, boils them down into one, and that's what you can get when you have
`an equivalent circuit.
`
`
`So, as Dr. Leeb testified, and this is in his declaration, Exhibit
`1002 at paragraph 120, one of ordinary skill would understand that the
`McMurray equivalent circuit would include all of the values, including the
`parasitic inductance in that circuit.
`
`
`Now, this is an instance where we don't need to guess as to how
`this has been applied. McMurray has been described as the classic equation
`that is used for setting resistance in snubber circuits. It's not just used in
`ideal circuits, as they've argued, it's actually been used in real circuits in the
`prior art. And that's in both the Kassakian textbook, which is Exhibit 1007,
`which talks about using the McMurray equation with transistors generally,
`not limited to what's described in McMurray, and in the Severns textbook,
`which again talks about using that classic equation in the context of
`MOSFETs.
`So, again, we think it's -- the reference is plainly disclosed that
`
`
`they were accounting for parasitic inductance.
`
`
`So let me now turn to their motivation to combine argument,
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`because they spent a lot of time arguing that there's no motivation to
`combine either Shekhawat with McMurray or Hibino with McMurray, and
`I'll start with Shekhawat. As I said at the beginning, both Shekhawat and
`Hibino disclose a voltage regulator and a snubber circuit with a capacitor
`and a resistor which is used to minimize voltage spikes, no dispute about
`that. McMurray teaches the technique of setting resistance of a resistor in a
`snubber circuit to obtain the optimum level of resistance. Optimum level of
`resistance is a quote from McMurray. And as I just mentioned, McMurray's
`equation has been described in subsequent prior art textbooks, Severns,
`Kassakian, as the classic equation for selecting the value of resistance of the
`resistor in a snubber circuit.
`
`
`JUDGE HOMERE: But, Counsel, what about the argument
`that the two circuits, they are being used in different environments, one is
`the AC conversion or the other one is a DC circuit?
`
`
`MR. SUMMERSGILL: Absolutely, Your Honor. So as Dr.
`Leeb testified, notwithstanding the fact that they're used in different
`applications, one of ordinary skill in the art would look to the fact that each
`is talking about using a snubber circuit for the same purpose, i.e. minimizing
`voltage spikes. So three responses to their -- to that argument, Your Honor.
`
`
`So although they describe snubber circuits in different
`applications, they're describing the use of Snubber circuits for the same
`general purpose, i.e. minimizing voltage spikes. And in fact these snubber
`circuits in each of the three primary references -- if we could go back to the
`prior slide, Josh -- slide 39, you can see each of the snubber circuits in
`Hibino, Shekhawat and McMurray. And if we had the ‘250 Patent up here,
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`it would be the same. They have the same basic structure, a capacitor and a
`resistor, same basic structure and used for the same purpose, minimizing
`voltage spikes.
`
`
`Second, there's nothing in McMurray that limits the use of its
`resistance equation to applications involving the specific application in
`McMurray, the thyristors or SCRs or whatever the specific application was
`there. It gives it as an example, but it doesn't limit it to that particular
`context. And jumping to slide 41, we again know that persons of ordinary
`skill in the art, in the prior art, in the Kassakian and Severns textbook did
`apply that equation outside the context of thyristors. They applied it in the
`Severns case, for instance, the use of MOSFETs.
`
`
`And in fact, if we could pull up slide 12, R2 has effectively
`conceded that the equation disclosed in McMurray could be used in the --
`outside the context of thyristors. And how have they done that? Well, on
`the right we've shown the equation that Dr. Pedram, their expert, used when
`he's trying to show conception and the equation he used is the same thing as
`the McMurray equation shown on the right, it says resistance approximately
`equals the square root of inductance over capacitance. So even they have
`applied that equation outside the context of thyristors.
`
`
`And third, Your Honors, it's well settled and as Your Honors
`know that obviousness doesn't require combining the actual structures of the
`prior art references. What it requires is that a person of ordinary skill in the
`art would apply the teachings of McMurray to Shekhawat or Hibino. And
`that's plainly the case here where McMurray explains the benefit of setting
`the resistance using that equation, it explains that if you use that equation
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`you can set the resistance at an optimum level for minimizing voltage spikes.
`
`
`And in fact if I could pull up slide 11, you can see that the title
`of McMurray is "Optimum Snubbers for Power Semiconductors." And then
`in the quote on the left, the bottom highlighting says "Design procedures are
`delivered for selecting the capacitance and optimum resistance to limit the
`peak voltage."
`
`
`And then in the bottom right, the heading of the section that
`includes that equation says, "Snubber circuit design for minimum voltage
`spike."
`So, yes, they were used in different applications, but it is for
`
`
`exactly the same purpose, minimizing voltage spikes. So their argument is a
`little bit like saying that although it was known to use wheels in horse-drawn
`buggies, a person of ordinary skill in the art when developing the first car
`wouldn't have looked to the teachings of wheels in horse-drawn buggies, yet
`of course we know they didn't reinvent the wheel each time, they looked to
`the teachings of wheels and applied them to cars, to planes, to the space
`shuttle, to wagons.
`
`
`JUDGE HOMERE: While we're talking about the combination
`of Shekhawat and McMurray, what is your response with regard to the
`question of whether McMurray is good prior art? That's one of the
`arguments that's made --
`
`
`MR. SUMMERSGILL: Whether McMurray is good prior --
`well, we --
`
`
`2(a)?
`
`JUDGE HOMERE: Yeah, and publicly available under 1 and
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`MR. SUMMERSGILL: Yep, we would say it is good prior art,
`
`
`Your Honor -- or that it is prior art, we also think it's good, but that it is prior
`art.
`And so if we could pull up slide 46, we'd submit that the
`
`
`petition does more than enough to show that McMurray was publicly
`accessible. Even Petitioner -- and we've shown this -- I'm sorry, or
`Petitioner, even R2 has admitted that McMurray was published in October
`1972.
`And in the bottom left-hand corner of the McMurray reference,
`
`
`you can't see it as much here, but it's on the first page of McMurray, it refers
`to the fact that it was published IEEE, and then it was widely cited by other
`prior art references, including the Severns reference, the Grenier reference
`and the Kassakian reference, and you can see that. I apologize for having
`gone out of order, but -- so Kassakian refers to it as the classic snubber
`reference, Severns refers to it as the classic paper by McMurray, and the
`Grenier declaration from the IEEE says that the paper would have been
`made available to IEEE transactions on or before September 1972. So we
`think we've presented substantial evidence that it was publicly available.
`
`
`Now, unless there are other questions on the based on-matches
`claims, I'd like to -- how much time do I --
`
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`JUDGE BISK: You have about five minutes left in the --
`
`
`MR. SUMMERSGILL: In the 30?
`
`
`JUDGE BISK: -- first half hour, yes.
`
`
`MR. SUMMERSGILL: Okay. Thank you very much.
`
`
`So unless there are other questions, I'll turn to -- briefly to the
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`IPR2017-00705, IPR2017-00706, IPR2017-00707,
`IPR2017-00708, IPR2017-01123, and IPR2017-01124
`Patent 8,233,250 B2
`
`physically closer claims. And, Your Honors, claim 12 is representative of
`the physically closer claims and these are at issue in the 706 and 708
`petitions. And these claims require multiple segme
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