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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ITRON NETWORKED SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`ACOUSTIC TECHNOLOGY, INC.,
`Patent Owner.
`____________
`
` Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
`____________
`
`
`
`
`Before THU A. DANG, JOSIAH C. COCKS, and PATRICK M. BOUCHER,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`Record of Oral Hearing
`Held: June 4, 2018
`____________
`
`

`

`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
` ADAM R. BRAUSA, ESQUIRE
` DURIE TANGRI, LLP
` 217 Leidesdorff Street
` San Francisco, California 94111
` (415) 362-6666
`
`ON BEHALF OF THE PATENT OWNER:
`
` DAN CALLAWAY, ESQUIRE
` JAMES L. DAY, ESQUIRE
` FARELLA BRAUN MARTEL, LLP
` 235 Montgomery Street
` San Francisco, California 94104
` (415) 954-4924
`
`
`
`
`
`The above-entitled matter came on for hearing on June 4, 2018,
`commencing at 12:10 p.m., at the U.S. Patent and Trademark Office, USPTO
`Madison Building, 600 Dulany Street, Alexandria, Virginia 22314.
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`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
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`
`
`
`P R O C E E D I N G S
` JUDGE COCKS: Good afternoon. Welcome to the
`Board.
` We're here today for a consolidated oral argument
`for three proceedings: IPR 2017-01024, -01030, and
`-01031 involving Patent 6,509,841 and 5,986,574.
` Let's begin with introduction of counsel. Would
` counsel for petitioner please state their appearance today.
` MR. BRAUSA: Good afternoon. I'm Adam Brausa
`from the Durie Tangri law firm on behalf of petitioner,
`Itron Network Solutions.
` JUDGE COCKS: Thank you, Mr. Brausa.
` And would counsel for patent owner please state
` their appearance.
` MR. BRAUSA: Thank you, Your Honor. Counsel
`for patent owner Acoustic Technology, Inc. I'm Dan
`Callaway of Farella Braun & Martel.
` And with me is Jim Day, also of Farella Braun &
`Martel.
` JUDGE COCKS: All right. Thank you,
`Mr. Callaway.
` Now, as we indicated in our trial hearing order,
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`each side has 60 minutes of argument time. Petitioner bears
`the burden of showing unpatentability, so they will present
`their case first -- you may reserve rebuttal time -- patent
`owner will argue their opposition to petitioner's case, and
`then petitioner will use any time they've reserved for
`rebuttal.
` That being said, why don't you go ahead and take the
` podium, Mr. Brausa.
` Before we begin, you had filed some objections to
` the patent owner's demonstratives. A couple comments on
` that.
` The demonstratives are not part of the record at
` this point. They have not been filed in this proceeding.
` Any new argument that's offered here today will not factor
` into any final written decision, if that's the case, and any
` content of the -- as part of the motion to exclude, we've
` not ruled on the motion to exclude, so we're not going to
` prevent it from being an issue today.
` So does that alleviate some of your concerns that
` you have raised?
` MR. BRAUSA: It does, Your Honors. And just
`as a point of clarification, I want to make sure that
`in referencing any exhibits in the -- that are subject
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`to the motion to exclude in either opening argument or
`rebuttal, that we're not waiving those arguments
`presented in the motion to exclude.
` JUDGE COCKS: Okay. Duly noted.
` MR. BRAUSA: Thank you. Would Your Honors
`like -- that are in the room -- would Your Honors like
`hard copies of the slides?
` JUDGE COCKS: If you have prepared them, we
`will take them. Thank you.
` MR. BRAUSA: Permission to approach?
` JUDGE COCKS: Yes, please.
` (Pause in the proceedings.)
` JUDGE COCKS: Thank you.
` JUDGE DANG: Thank you.
` JUDGE COCKS: Another point of order is we
`have electronic copies of the demonstratives. Judge
`Boucher is joining us from Denver remotely. He will
`not be able to see anything that's displayed, but if
`you could reference the slide deck number, he will be
`able to follow along.
` MR. BRAUSA: Understood. Thank you.
` JUDGE COCKS: Okay.
` MR. BRAUSA: Well, good afternoon, Your
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`Honors.
` JUDGE COCKS: Before you begin, do you wish to
`reserve any rebuttal time?
` MR. BRAUSA: I do. Thank you for reminding
`me. I'll reserve 15 minutes for rebuttal.
` JUDGE COCKS: Okay, thank you.
` MR. BRAUSA: Good afternoon to Your Honors in
`the room, and in Denver, Judge Boucher.
` As I mentioned, I represent Itron Network Solutions.
`We're the petitioner in this matter on three proceedings with
`respect to two patents that relate to automated meter reading
`technology.
` And the idea behind that is that by automating the
`meter reading process, utility companies no longer need to
`send out people to physically look at the meter at everyone's
`house; instead, via network infrastructure and architecture,
`signals are communicated from the meters through relays and
`then to a central controller.
` This notion as we explained in our -- or this idea
` of automated meter reading systems is not what either of the
` patents claim to be novel or non-obvious, but rather is the
` background architecture for which they're set.
` The patents are directed to very specific aspects of
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` automated meter reading technology. The first, with respect
` to the 574 patent, is this notion of a concentrator, and the
` idea that a device collects meter -- collects information
` from multiple meters, transmits that to a controller.
` The second, the 841 patent, is directed to, again,
` meters that communicate through a relay, and then the relay
` sends those signals to a central controller.
` In this instance, the key element is that CDMA
` communication takes place somewhere along that path.
` I want to start with the 1030 petition, which is the
` Argyroudis and Selph reference -- references and grounds.
` Argyroudis is presented as a single reference
` combination for many of the claims for obviousness purposes,
` because multiple embodiments in the specification of
` Argyroudis are combined together.
` Selph is relied upon almost exclusively for its
` teaching of the housing, to the extent any additional
` teaching is necessary with respect to that element for Claim
` 16.
` Now, before we get into the claims and the arguments
` that patent owners are talking about, I want to make sure
` that we understand what Mr. Colton, the named inventor of
` the 574 patent, said about his invention. Because a key
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` dispute between the parties is not whether Argyroudis
` discloses a concentrator, something that collects data from
` multiple sources, but whether all of the required components
` of the claims are within a housing and whether the claims
` require that.
` Now, Mr. Colton, in his declaration, talked about
` this very aspect, this housing that is central to Claim 16
` and Claim 20. And he said that the ingenuity, in his mind
` as the inventor, was not in placing these claimed components
` in a single housing of unspecified size and shape, but in
` placing all of those components in a standard meter housing,
` and this is displayed on slide 3.
` The reason I mention this at the outset is that it
` provides a good example of many of patent owner's rebuttal
` arguments throughout, which is, here you see Mr. Colton, a
` patent owner, talking about a standard meter housing, but
` when you go to slide 4 in the text of the claim, you see
` that the claim doesn't say anything about it, it just
` requires "a housing". There's nothing in Claim 16, or any
` of the claims, that specify a standard meter housing or a
` four-jaw socket, as we saw -- as patent owner also claimed.
` What I've done is highlighted --
` JUDGE BOUCHER: I just wanted to ask. In your
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`reply, and to some extent, I think, also in your motion
`to exclude, you indicate that it's not clear whether
`the patent owner is offering Mr. Colton's testimony as
`a fact witness or as an expert witness.
` What is the consequence of that?
` MR. BRAUSA: Well, I think one is that it -- I
`don't think the Board needs to resolve the issue. Most
`of his testimony is factual, talking about things that
`allegedly occurred while he was at PECO during
`development. At times, he wades in to the notion of,
`well, would this term be understood by one of ordinary
`skill in the art. But what's critical is he never
`presents any testimony from an expert perspective going
`through the proper analysis on a claim-by-claim basis
`to rebut Dr. Solomon's testimony.
` So whether or not ATI intended him to be an expert
`witness or a fact witness we don't think is relevant because
`there's not testimony as a lay -- as a fact witness or an
`expert witness that rebuts the prima facie case which is set
`forth in the petition supported by the expert testimony of
`Dr. Solomon.
` JUDGE COCKS: Counsel, may I ask. Can he be
`both?
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` MR. BRAUSA: I think there are scenarios where
`he could be both. I think in this instance, because
`he's the named inventor of the patent, that's -- that's
`going to be a difficult thing to do without injecting
`bias, and we'll talk about the need for corroboration
`on some issues later because of his stature as an
`inventor.
` In addition, in the arbitration proceedings, the
`arbitrator specifically noted that a lot of ink has been
`spent on Mr. Colton's credibility. That's Exhibit 1006 in
`the record of the 1030 proceedings.
` And so he could theoretically be both. And, in
`fact, he might be presented for that purpose. Our position
`is that that does not matter because, even if he's being
`presented as an expert for a very limited circumstance, he
`doesn't offer any testimony on the critical issues of
`obviousness.
` So these are the claim limitations with respect to
` the 574 patent that are at issue:
` LAN means -- it's not actually disputed with respect to
` this petition, but I highlight it because it is disputed
` with respect to the 1031 proceedings.
` And so on slide 5, we see the five questions that
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` remain in dispute between the parties with respect to the
` obviousness grounds based on Argyroudis and Selph.
` First, is Argyroudis' WRMU a concentrator that
` comprises a metering device and means for monitoring?
` Second, does this WRMU include the claimed LAN
` means?
` Third, does Argyroudis alone, or in combination with
` Selph, make the claimed housing limitations obvious?
` And then fourth and fifth are two threshold issues
` that patent owner has presented given the proximity of
` Argyroudis' disclosure to the claims.
` First, the question of whether Argyroudis is
` available as prior art. Patent owner makes the
` allegation -- the serious allegation that Qualcomm breached
` its confidentiality agreement with PECO Energy, and then
` turned around and relied on information Mr. Colton provided
` to it as the basis for the Argyroudis patent. And we'll
` talk about why the evidence doesn't support that serious
` allegation in a moment.
` And second -- or second or fifth on the bullets in
` slide 5, patent owner argues that Selph and Argyroudis aren't
` enabling for what you -- what they teach. Even if you
` accept their words at face value -- and we'll see what those
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` words say in a moment -- that they're not enabled. But
` remember, both of these pieces of prior art are U.S. patents
` and they're presumed enabled. And patent owner has not come
` forward to establish its burden of non-enablement for these
` issued U.S. patents.
` So turning to the disclosure of Argyroudis, with
` these questions in mind, there's really not a dispute that
` Argyroudis discloses a concentrator. It says it in the
` plain language of the specification, and it talks about it
` in the context of Figure 3, which was added in the
` continuation in part.
` And what you see here are three buildings. Each
` building has individual meters in it, and the two buildings
` on the left have power line remote metering units. Those
` power line remote metering units collect data from the
` individual appliances and meters on the left, and then they
` communicate that to the wireless remote metering unit in
` Building 300C on the right. And this is slide 6.
` WRMU 302, which we've pointed out, and which
` Dr. Solomon has identified as the claimed concentrator, is
` also in wireless communication with meters in that building;
` the gas meter, the electric meter, and the appliances.
` The WRMU concentrates the data, not only from those
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` meters, but then collects it from the PRMUs as well, and
` then transmits it to the utility company.
` Argyroudis is very clear, and the basis for
` combining the embodiments you see in Figures 1, 3, and 2,
` which we'll get to in a moment, is that it says, "Each of
` these various embodiments, like that in Figure 3, can
` coexist in the same large-scale system."
` So while in Figure 3 you see buildings that are
` located closely together, in Figure 1 you see a larger-scale
` system where cellular devices are used over the access
` channel and paging channel to communicate through a series
` of hops from the remote metering units to the central
` controller.
` Now, the key dispute that patent owner raised in its
` opposition is whether the WRMU includes a metering device.
` As we set forth in your petition, it clearly does.
` It's structurally and functionally similar to remote
` metering units 102A through 102N, as we see in slide 8. And
` when you look at the structure of those devices, it
` identifies a measurement device and a reading interface,
` which we identified as the claimed metering device and
` monitoring means.
` Patent owner's only response to that is that it's
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` not a single physical device. You see a line connecting
` those two things, and you see connections between the
` various elements of the remote metering unit, and therefore,
` it can't be the concentrator comprising a meter.
` But as Your Honors held on Institution, nothing in
` the claims -- nothing in the specifications supports this
` single physical device limitation that patent owner
` continues to try and read into the claims.
` And moreover, it doesn't really make sense if you
` think about this in the context of electrical circuitry. We
` have phones, of course, if our pockets that I think we'd all
` think of as single devices. But if we open the case,
` underneath we see various components hardwired together.
` And the fact that they're connected to one another and
` hardwired doesn't mean we don't think of it as a single
` device; we do. And that's exactly what's shown in Figure 2,
` and why Figure 2 and these components are depicted as
` individual meters in Figures 1 and 3, if we go back to
` slide 7.
` There was a claim construction argument raised by
` patent owner about the difference between measuring and
` monitoring. And in response to that, I think that's a bit
` of a red herring. The 574 patent uses those terms
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` synonymously and interchangeably, as does Argyroudis. And
` as a result, the metering device is performing both the
` steps of monitoring and measuring.
` Turning to the question about whether the WRMU can
` be a single device that includes a metering device. If we
` accept patent owner's flawed construction, Argyroudis
` teaches that, even under this flawed construction, it's
` disclosed.
` In one embodiment, it talks about having the
` transceiver and the electrical meter being separate. But in
` an alternate embodiment, it talks about the remote metering
` units, 102A through 102N, being integral units which combine
` the utility measurement and communication circuits into a
` single device. That language on 10 -- on slide 10 is
` dispositive of this issue.
` Argyroudis' WAN means -- Argyroudis' WAN means are
` the communication by this WRMU over the series of hops to
` the central controller. ATI hasn't offered any evidence to
` rebut Dr. Solomon's testimony that the claimed WAN means is
` disclosed.
` Patent owner argues that WAN means should be
` construed to require a publicly available wide area network,
` but this is just an example in the specification. Again, if
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` we look at the claims, there's no limitation that actually
` supports that construction.
` Moreover, as with the single device limitation, even
` if patent owner's construction were adopted, Argyroudis
` teaches communication over existing cellular networks; i.e.,
` a publicly available wide area network. And so this is
` taught and obvious in view of Argyroudis as well.
` Now, we come to the housing comprising limitation.
` We have to start with construction. Again, we see on the
` right --
` JUDGE COCKS: Counsel, can I interrupt you
`briefly?
` MR. BRAUSA: Sure.
` JUDGE COCKS: You mentioned claim construction
`several times, and through most of these trial
`proceedings claim construction is fairly central, so a
`couple questions.
` One, my understanding is both of the underlying
`patents have expired?
` MR. BRAUSA: That's correct, Judge.
` JUDGE COCKS: So what impact is that going to have on claim
`construction; i.e., should we be using a district court style
`claim construction rather than BRI?
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` MR. BRAUSA: Yes. And the correct standard is
`the district court claim construction. As we set forth
`in our reply papers, that difference in the standards
`doesn't actually impact the construction of any of
`these terms, in our view or in patent owner's. Patent
`owner, in their opposition or their response, has not
`identified any different construction that turns on the
`claim construction applied.
` JUDGE COCKS: So in your reply you've offered
`claim constructions that you consider account for the
`district court style interpretation.
` MR. BRAUSA: That is correct. And we have --
`and to be clear, they haven't changed from the
`petition, but that's because the standard doesn't
`impact the correct construction.
` JUDGE COCKS: I understand. Thank you. Go
`ahead.
` MR. BRAUSA: So patent owner proposes a
`construction of housing which is part of a larger
`phrase that patent owner also proposes a construction
`for.
` We see that Claim 16, as shown in slide 12,
`requires just a housing that comprises certain elements.
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`Patent owner's construction is internally inconsistent. On
`the top we see a construction for housing, which the parties
`I don't think really dispute what that is. It's an
`enclosure. It completely surrounds those components.
` But then when we flip to the larger phrase, patent
` owner loses sight of the housing entirely, and again, we see
` it reading in the standard meter socket language that's
` nowhere in the claims.
` And so that construction cannot be correct because
` it doesn't even account for the term "housing", which kicks
` off the claim element.
` The question between the parties -- or the dispute
` between the parties is whether it would be obvious to
` enclose that WRMU in Argyroudis in a housing. And as we
` saw, Argyroudis teaches it as a single device and as an
` integral unit.
` Dr. Solomon has opined that common sense would tell
` one of ordinary skill in the art that you put those
` electrical components inside a housing. And I don't think
` you need a Ph.D. in electrical engineering to know that.
` These are meters being used outside, they're going to be
` susceptible to the elements, they're going to be susceptible
` to tampering, and so it would naturally be the case that you
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`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
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` would want to put something around these so that the
` circuitry is not exposed to rain, sleet, and snow.
` But if that weren't enough, we've also provided the
` teaching of Selph, which specifically talks about putting the
` circuitry housed within a protective glass or plastic
` enclosure, and how you put those on the boards and fit them
` into the meter socket.
` The reasons to combine are set forth in our papers
` and with -- with clarity. And I don't want to go through
` each one of these, but I do want to focus on the fact that
` both Argyroudis and Selph, as you see in slide 14,
` contemplate that the -- or contemplate the concern with
` tampering.
` That utility companies are metering, you're paying
` based on the amount of utilities you're using, and so for
` utility companies, you don't want people messing around with
` the meters because you could lose money as a result of that.
` And so Selph says that one way to alleviate this concern is
` to prevent physical tampering by using a housing.
` Given the proximity of Argyroudis alone, and
` certainly Argyroudis in combination with Selph to the claimed
` inventions, ATI's also made the allegation that I referenced
` earlier, which is that Argyroudis and Qualcomm, the
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`Case IPR2017-01024 (Patent 6,509,841 B1)
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` assignee, derived their invention from Mr. Colton while he
` was at PECO Energy.
` Now, there's no debate that Qualcomm and PECO Energy
` were involved in a joint enterprise at the time and were
` collaborating on some issues. It didn't pan out.
` Ultimately, PECO Energy went on and worked with ATI, the
` current owner of the patents.
` But the allegation that Mr. Colton and ATI make that
` Qualcomm took something from them, they breached their
` confidentiality obligations, and not only that, turned
` around and relied on that breach to file and get an issued
` patent, is a serious allegation.
` And as a result, under the law, the burden imposed
` on the patent owner to prove up that allegation is equally
` strong. To prove derivation, you've got to prove both prior
` conception and communication to the patentee by clear and
` convincing evidence. That's patent owner's burden.
` Most of the testimony we have about this in this
` case are conclusory allegations from Mr. Colton, the
` inventor. And the law is equally clear that the inventor's
` testimony, as we see on slide 15, citing the Price case,
` cannot, standing alone, rise to the level of clear and
` convincing proof. You've got to have some corroborating
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`Case IPR2017-01024 (Patent 6,509,841 B1)
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` evidence.
` JUDGE BOUCHER: Where does that clear and
`convincing proof requirement come from?
` MR. BRAUSA: That comes from the case law and
`the fact that it's an issued patent. And so it's
`presumed enabled, and so the Eaton case that we cite on
`page 15 establishes that as the burden.
` JUDGE BOUCHER: That seems to me to be in a
`different context, not in an IPR. I don't really want
`to get into this too much, but it seems to me that if
`we were to look at burdens, that the burden shifting
`framework that the Federal Circuit has talked about in
`things like Dynamic Drinkware would be what would apply
`here, not a clear and convincing requirement on the
`part of the patent owner.
` MR. BRAUSA: It's in the context of -- this
`comes up often in an issue we'll talk about in a
`moment, which is enablement. And in that same
`situation, the burden does not shift to the petitioner.
`While we bear the burden of establishing
`unpatentability by a preponderance of the evidence, as
`the challenger to show that the patent is derived from
`another, that burden remains with ATI. That burden
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`Case IPR2017-01024 (Patent 6,509,841 B1)
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`remains with the patent owner.
` JUDGE BOUCHER: Okay, thank you.
` MR. BRAUSA: And when we look at what their
`evidence of that is, of derivation, of conception, of
`communication, and of reliance by Qualcomm, it's just
`not there.
` We see Mr. Colton talking about a concentrator in
`one paragraph and citing Exhibit 2008. But as the Board
`recognized on Institution, this doesn't refer to a
`concentrator comprising a meter. And Exhibit 2008 references
`a pull-top concentrator, which is -- both sides agree -- was
`disclosed in the prior art.
` Similarly, in paragraph 68 of Mr. Colton's
`declaration, on slide 17, he again references a concentrator
`approach, not a concentrator comprising a meter.
` And again, even if it's considered, Exhibit 2012,
`shown on -- or 2012 referenced in slide 17 refers to a
`concentrator, not a concentrator comprising a meter.
` The only time in Mr. Colton's declaration that he
` actually refers to a concentrator meter is in paragraph 36
` of his declaration shown on page 18 -- or slide 18, rather.
` And in support of that he cites Exhibit 2022 which, if you
` look at the exhibit, states that Qualcomm discussed a
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`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
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` concentrator approach. That was in Qualcomm's slides, and a
` concentrator comprising a meter is once again not mentioned.
` While there is reference to components being under
` the same metering glass, there's no specificity as to what
` those components are and whether those are specific to the
` concentrator comprising a meter. And as a result, even if
` these handwritten notes dated in Mr. Colton's writing just a
` mere eight days before Qualcomm filed its patent
` application, even if those are considered, the exhibit does
` not corroborate his testimony that he disclosed a
` concentrator comprising a meter to Qualcomm.
` And moreover, there's no evidence that a complete
` invention in any of the claims, in addition to concentrator
` comprising a meter, was ever communicated to Qualcomm.
` And finally, even if Mr. Colton and ATI had overcome
` these evidentiary burdens and shown that there was
` disclosure, shown that there was conception prior to
` September 27th, 1996, the priority date of the Argyroudis
` prior art reference, there's no evidence at all, other than
` Mr. Colton's say-so in paragraph 69 and 72, that Qualcomm
` actually relied on that information in filing the patent.
` Mr. Colton just says, as we see in slide 19, "It's
` apparent that Qualcomm used this information. Those
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`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574)
`Case IPR2017-01031 (Patent 5,986,574)
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` disclosures are based on information I and others at PECO
` disclosed." He offers no analysis, and patent owner offers
` no analysis at all of how he knows that's the case, or even
` why he thinks that's the case, other than these naked
` conclusions.
` And so as a result, ATI hasn't carried its burden to
` establish that Argyroudis is not available as prior art.
` Again, as we mentioned at the outset, they're presumed
` enabled, and the -- as U.S. patents, they're enabled for
` what they teach.
` Now, in the papers, it's a bit unclear whether
` patent owner was arguing a lack of enablement or a lack of a
` reasonable expectation of success. But I would propose that
` they haven't actually made the argument relating to
` reasonable expectation of success, if you look at their
` opposition, and as a result, that argument's been waived.
` But even if you were to consider that argument, the
` technical obstacles that ATI alleges that it overcame to
` point at Argyroudis and Selph and say, "These aren't enabled,
` they're not enabling disclosures for one of ordinary skill
` in the art, you had temperature issues, you had conductivity
` issues, you had these issues fitting them in a standard
` meter housing," none of those solutions and nothing relevant
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`Case IPR2017-01024 (Patent 6,509,841 B1)
`Case IPR2017-01030 (Patent 5,986,574

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