Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 36
`
`Entered: November 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POWER INTEGRATIONS, INC.,
`Petitioner,
`
`v.
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01328
`Patent 6,845,019 B2
`____________
`
`
`
`Before BRIAN J. MCNAMARA, JOHN F. HORVATH, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`ORDER ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R § 42.121
`
`
`571-272-7822
`
`
`
`
`Paper 36
`
`Entered: November 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POWER INTEGRATIONS, INC.,
`Petitioner,
`
`v.
`
`SEMICONDUCTOR COMPONENTS INDUSTRIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01328
`Patent 6,845,019 B2
`____________
`
`
`
`Before BRIAN J. MCNAMARA, JOHN F. HORVATH, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`ORDER ON MOTION TO AMEND
`35 U.S.C. § 316(d) and 37 C.F.R § 42.121
`
`
`
`IPR2017-01328
`Patent 6,845,019 B2
`
`
`INTRODUCTION
`I.
`Petitioner Power Integrations, Inc. requested an inter partes review of
`claims 1–15 of U.S. Patent No. 6,845,019 B2 (“the ’019 patent”). Paper 2
`(“Petition” or “Pet.”). Patent Owner Semiconductor Components Industries,
`LLC1 filed a Preliminary Response. Paper 7. Upon consideration of the
`Petition and Preliminary Response, we instituted an inter partes review of
`claims 14 and 15. Paper 8 (“Decision on Institution” or “Dec. on Inst.”),
`19–21. Thereafter, Patent Owner filed a non-contingent Motion to Amend
`seeking cancellation of claims 14 and 15 and proposing substitute claims 16
`and 17.
`We have jurisdiction to conduct this inter partes review under 35
`U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Patent
`Owner’s Motion to Amend is granted with respect to cancellation of claims
`14 and 15, and denied with respect to proposed substitute claims 16 and 17.
`
`
`II. BACKGROUND
`Procedural History
`A.
`Petitioner challenged claims 1–15 of the ’019 patent as anticipated
`under 35 U.S.C. § 102(b) by Bonte et al., U.S. Patent No. 5,305,192
`(Ex. 1002, “Bonte”). Pet. 3. Petitioner supported its challenge with a
`declaration of Mr. William Bohannon (Ex. 1008). In its Preliminary
`
`
`1 Patent Owner identifies the following additional real parties in interest:
`(i) ON Semiconductor Corporation, (ii) Fairchild Semiconductor
`International, Inc., (iii) Fairchild Semiconductor Corporation, and
`(iv) Fairchild (Taiwan) Corporation. Paper 5, 1.
`
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`Response, Patent Owner disputed Petitioner’s challenges to claims 1–13 and
`offered in support of its positions a declaration of Dr. Douglas Holberg
`(Ex. 2001). Patent Owner and Dr. Holberg did not address claims 14 and
`15. See generally Prelim. Resp. and Ex. 2001.
`In our Decision on Institution, we instituted review of claims 14 and
`15 as anticipated by Bonte. Dec. on Inst. 19–21. We, however, did not
`institute review of claims 1–13 because we determined that Petitioner’s
`analysis failed to account for all the limitations of independent claims 1 and
`5. Id. at 8. On April 24, 2018, the Supreme Court held that a decision to
`institute under 35 U.S.C. § 314 may not institute review on less than all
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348
`(2018). In light of SAS, we modified our Decision on Institution to institute
`review of claims 1–15 as anticipated by Bonte, as presented in the Petition.
`Paper 21, 2. The parties subsequently filed, with our prior authorization, a
`Joint Motion to Limit the Petition under 37 C.F.R. § 42.71, seeking to
`“withdraw claims 1–13 of the ’019 patent from this proceeding.” Paper 24,
`1. We granted the parties’ Joint Motion to Limit the Petition and removed
`from this proceeding the challenges to claims 1–13. Paper 25, 2.
`Following institution, Patent Owner did not file a Response to the
`Petition pursuant to 37 C.F.R. § 42.120. Instead, pursuant to 35 U.S.C.
`§ 316(d) and 37 C.F.R. § 42.121, Patent Owner filed a Motion to Amend
`that was not contingent on a determination that the original claims are
`unpatentable. Paper 15 (“Mot.”). In its Motion to Amend, Patent Owner
`requested that we cancel claims 14 and 15 and replace them with proposed
`substitute claims 16 and 17. Mot. 1. Petitioner filed an Opposition to the
`Motion to Amend (Paper 18, “Opp.”). Patent Owner filed a Reply in
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`IPR2017-01328
`Patent 6,845,019 B2
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`support of its Motion to Amend (Paper 22, “Reply”). Petitioner filed a Sur-
`Reply in support of its Opposition (Paper 26, “Sur-Reply”).
`During the trial, Petitioner submitted additional declarations of
`Mr. Bohannon in support of its Opposition (Exs. 1015 and 1017).
`Mr. Bohannon further testified by depositions on March 1, 2017, January 11,
`2018, and May 18, 2018, and transcripts of his testimony have been entered
`into evidence. Exs. 2008–2010.
`Patent Owner submitted an additional declaration of Dr. Holberg
`(Ex. 2007). Patent Owner further moved to exclude the declarations of
`Mr. Bohannon (Exs. 1015 and 1017) offered in support of Petitioner’s
`Opposition. Paper 29. Petitioner filed an Opposition to the Motion to
`Exclude (Paper 32) and Patent Owner filed a Reply in support of the Motion
`to Exclude (Paper 34).
`An oral hearing was held on July 19, 2018, and an official transcript
`has been entered into the record. Paper 38 (“Tr.”).
`Related Proceedings
`B.
`The ’019 patent is asserted in a counterclaim against Petitioner in
`Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. et
`al., 3:15-cv-04854-MMC (N.D. Cal.). Pet. 2; Ex. 1009 ¶¶ 63–86.
`The ’019 patent (Ex. 1001)
`C.
`The ’019 patent, issued from U.S. Patent Application No. 10/346,807
`(Ex. 1005, 95–124, “the ’807 application”), relates to power conversion
`using a flyback converter. Ex. 1001, 1:13–15. A flyback converter is one
`type of DC-to-DC converter, utilizing both direct current (DC) and
`alternating current (AC). See id. at 1:21–28. A DC-to-DC converter
`transforms a “DC input voltage to an AC voltage, and after boosting or
`
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`Patent 6,845,019 B2
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`reducing the voltage with a transformer, rectifies the AC voltage to produce
`a DC output voltage.” Id. at 1:21–26. The particular DC-to-DC converter
`described by the ’019 patent is “a flyback converter that detects an output
`voltage at the primary coil without using a photo coupler and provides an
`essentially constant output voltage independent of the size of a load, thereby
`minimizing the number of additional coils used in the transformer circuit.”
`Id. at 1:15–19. Figure 5 of the ’019 patent is reproduced below.
`
`Figure 5 “illustrates an exemplary implementation of a flyback
`converter according to an embodiment of the invention.” Id. at 6:64–66. As
`described in the ’019 patent, Figure 5 depicts a flyback converter including,
`inter alia, the following components. Primary coil L11 is coupled to an
`input power Vin and to switch 30. Id. at 7:16–18. Secondary coil L12 is
`
`
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`5
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`IPR2017-01328
`Patent 6,845,019 B2
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`coupled to output unit 20 and ground, and receives an induced current from
`primary coil L11. Id. at 7:18–21. Transformer 10, comprising coils L11 and
`L12, changes an input voltage to a predetermined level according to a
`winding ratio of primary coil L11 to secondary coil L12. Id. at 7:1–3.
`Output unit 20 rectifies the voltage signal output from transformer 10 into a
`DC signal, which is provided to drive Load 1. Id. at 7:3–5. Switch 30
`controls the on/off state of a power at primary coil L11 according to an input
`switching control signal. Id. at 7:5–8. Feedback unit 100 detects the voltage
`signal output from transformer 10 to output unit 20 in order to produce a
`driving power signal, generates a feedback signal, and detects a switching
`current of the switch 30 to correct the feedback signal. Id. at 7:8–12.
`Switching controller 40 operates according to the driving power output from
`feedback unit 100 to receive the output signal of feedback unit 100 and
`generate the switching control signal. Id. at 7:12–15.
`In one embodiment, feedback unit 100 includes the following
`components, which are depicted in Figure 5. Detecting coil L100 detects an
`output power of transformer 10. Id. at 7:35–36. Driving power generator
`110 rectifies the detected signal of detecting coil L100 to generate the
`driving power signal for the operation of the switching controller 40. Id. at
`7:36–39. Feedback signal generator 120 filters the driving power signal
`generated from driving power signal generator 110 to generate a stabilized
`feedback signal. Id. at 7:39–42. Switch current operator 130 detects a
`current variation Isw/m according to the switching operation of MOSFET
`switch 30 to generate a converted current signal Iscp. Id. at 7:42–45, 8:31–
`35. Gain regulator 140 generates a corrected current signal Iscp*GM using
`the converted current signal output from switch current operator 130. Id. at
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`6
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`IPR2017-01328
`Patent 6,845,019 B2
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`7:45–47. Feedback signal generator 120 drops the driving power signal by a
`voltage corresponding to the corrected current signal output from the gain
`regulator 140, thus generating a feedback voltage signal for switching
`controller 40. Id. at 7:48–52. See also, id. at 8:8–39. Via resistor R120,
`feedback signal generator 120 reduces the driving power signal by a voltage
`drop caused by corrected current signal Iscp*GM output by switch current
`operator 130 to generate feedback voltage signal VFB to switching controller
`40 (VFB=Vcc-Iscp*GM*R120). Id. 8:36–52. Switching controller 40
`receives this corrected feedback voltage signal VFB from feedback unit 100
`and generates a switching control signal that turns MOSFET 30 on and off to
`control power transferred from primary coil L11 to secondary coil L12 of
`transformer 10. Id. at 8:53–65. By correcting the value of the feedback unit
`100 using switch operator 130 and gain regulator 140, feedback voltage
`signal VFB is sustained at a predetermined level to provide switch controller
`40 a constant voltage, even though the driving voltage Vcc varies depending
`on the load condition. Id. at 8:66–9:4.
`Proposed Substitute Claims 16 and 17
`D.
`In its Motion to Amend, Patent Owner proposes claims 16 and 17 as
`substitutes for original claims 14 and 15. Proposed claims 16 and 17 are
`reproduced below, with underlining indicating text inserted into original
`claims 14 and 15, respectively:
`16. (Substitute for claim 14) A flyback converter, which
`provides an essentially
`constant output voltage
`independent of the size of a load, the flyback converter
`comprising:
`a transformer operable to change an input voltage to
`a predetermined level according to a winding ratio of a
`primary coil to a secondary coil;
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`IPR2017-01328
`Patent 6,845,019 B2
`
`
`an output unit, coupled to the transformer, operable
`to rectify a voltage signal output from the transformer into
`a DC signal operable to drive the load;
`a switch, coupled to the primary coil of the
`transformer, operable to control an on/off state of a power
`at the primary coil according to an input switching control
`signal;
`a feedback unit, coupled to the transformer,
`operable to detect the voltage signal output by the
`transformer to the output unit, generating a feedback
`signal, detecting a switching current of the switch to
`correct the feedback signal, and outputting the corrected
`feedback signal, the feedback unit not containing a
`photocoupler, the feedback unit comprising:
`a detecting coil operable to detect an output from
`the transformer;
`a driving power generator operable to rectify a
`detected signal of the detecting coil to generate a driving
`power signal for the operation of the switching controller;
`and
`
`a feedback signal generator operable to reduce the
`driving power signal output from the driving power
`generator by a voltage drop corresponding to a current
`input signal to generate the feedback signal; and
`a switching controller, coupled to the feedback unit
`and to the switch, operable to receive an output signal of
`the feedback unit and generating a switching control
`signal, operable to control the operation of the switch.
`Mot. 24–25; see also Ex. 1001, 14:15–40.
`17. (Substitute for claim 15) A flyback converter, which
`provides an essentially
`constant output voltage
`independent of the size of a load, the flyback converter
`comprising:
`a transformer operable to change an input voltage to
`a predetermined level according to a winding ratio of a
`primary coil to a secondary coil;
`
`8
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`IPR2017-01328
`Patent 6,845,019 B2
`
`
`an output unit, coupled to the transformer, operable
`to rectify a voltage signal output from the transformer into
`a DC signal operable to drive the load;
`a switch, coupled to the primary coil of the
`transformer, operable to control an on/off state of a power
`at the primary coil according to an input switching control
`signal;
`a single feedback unit, coupled to the transformer,
`operable to detect the voltage signal output by the
`transformer to the output unit, generating a feedback
`signal, detecting a switching current of the switch to
`correct the feedback signal, and outputting the corrected
`feedback signal, the feedback unit not connected to the
`secondary coil and the output unit, the feedback unit
`comprising:
`a detecting coil operable to detect an output from
`the transformer;
`a driving power generator operable to rectify a
`detected signal of the detecting coil to generate a driving
`power signal for the operation of the switching controller;
`and
`
`a feedback signal generator operable to reduce the
`driving power signal output from the driving power
`generator by a voltage drop corresponding to a current
`input signal to generate the feedback signal; and
`a switching controller, coupled to the feedback unit
`and to the switch, operable to receive an output signal of
`the feedback unit and generating a switching control
`signal, operable to control the operation of the switch.
`Id. at 25–26; see also Ex. 1001, 14:41–65.
`
`
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`IPR2017-01328
`Patent 6,845,019 B2
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`
`III. ANALYSIS
`Cancellation of Claims 14 and 15
`A.
`In its Motion to Amend, Patent Owner requests cancellation of claims
`14 and 15. Mot. 1. “A motion to amend may cancel a challenged claim.”
`37 C.F.R. § 42.121(a)(3); see also 35 U.S.C. § 316(d)(1)(A). Accordingly,
`we grant Patent Owner’s Motion to Amend with respect to the request to
`cancel claims 14 and 15.
`Analysis of Proposed Substitute Claims 16 and 17
`B.
`Before considering the patentability of any substitute claims, we first
`must determine whether the motion to amend meets the statutory and
`regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
`§ 42.121. A motion to amend “may not enlarge the scope of the claims of
`the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our
`rules provide that “[a] motion to amend may be denied where . . . [t]he
`amendment seeks to enlarge the scope of the claims of the patent or
`introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal
`Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner
`must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and
`§ 316(d)(3) are met and that any reasonable procedural obligations imposed
`by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is
`no disagreement that the patent owner bears a burden of production in
`accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)).
`We, therefore, must determine whether Patent Owner has made a showing
`sufficient to establish that its Motion to Amend complies with Section
`316(d)(3).
`
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`IPR2017-01328
`Patent 6,845,019 B2
`
`
`Patent Owner contends that proposed claims 16 and 17 “add new
`limitations to original independent claims 14 and 15 . . . and these new
`limitations are similar to limitations that the Board found to distinguish
`original independent claims 1 and 5 from the prior art at issue in this
`proceeding.” Mot. 1. Patent Owner continues that “[s]upport for substitute
`claims 16 and 17 can be found at least in claims 1 and 2 in the as-filed
`version of the ‘807 application (Ex. 1005, at p. 113) and claims 1 and 5 of
`the ’019 Patent.” Id. at 3. Patent Owner further includes a claim chart citing
`the ’019 patent and the ’807 application, but providing no additional
`explanation. Id. at 3–7. For instance, reproduced below is Patent Owner’s
`identification of support for the new limitation “a feedback signal generator
`operable to reduce the driving power signal output from the driving power
`generator by a voltage drop corresponding to a current input signal to
`generate the feedback signal.”
`
`
`
`Mot. 5, 7.
`Petitioner argues, inter alia, that the limitation “a feedback signal
`generator operable to reduce the driving power signal output from the
`driving power generator by a voltage drop corresponding to a current input
`signal to generate the feedback signal,” recited in each of proposed claims
`16 and 17, constitutes new matter in violation of 35 U.S.C. § 316(d) and 37
`C.F.R. § 42.121. Opp. 20–24. In particular, Petitioner asserts “[t]he
`
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`IPR2017-01328
`Patent 6,845,019 B2
`
`feedback unit element . . . of proposed claims 16 and 17 recite[s] two distinct
`feedback signals, ‘a feedback signal’ (i.e., the uncorrected feedback signal)
`and the ‘corrected feedback signal’ that is output by the feedback unit.” Id.
`at 23. According to Petitioner, “[t]here is no disclosure in the patent of the
`uncorrected ‘feedback signal’ being generated by reducing the driving power
`signal by a voltage drop.” Sur-Reply 9.
`In response to Petitioner’s arguments, Patent Owner asserts that
`“‘corrected’ is simply an adjective modifying that same ‘feedback signal’”
`such that proposed claims 16 and 17 each recite only one feedback signal.
`Reply 12. Patent Owner further states that, as originally filed, claims 1 and
`6 recite the terms “feedback signal” and “corrected feedback signal.” Id.
`Having considered the complete trial record, we determine that the
`Specification does not contain adequate support for the limitation “a
`feedback signal generator operable to reduce the driving power signal output
`from the driving power generator by a voltage drop corresponding to a
`current input signal to generate the feedback signal.”
`The plain language of claims 14 and 15—retained in proposed claims
`16 and 17—recites a feedback unit that is used for “generating a feedback
`signal, detecting a switching current of the switch to correct the feedback
`signal, and outputting the corrected feedback signal.” Ex. 1001, 14:31–34,
`14:57–60 (emphasis added). Thus, we agree with Petitioner that the claimed
`feedback unit “plainly requires that a feedback signal be generated and then
`be corrected and a different ‘corrected feedback signal’ be output.” Sur-
`Reply 10. Originally filed claims 1 and 6, to which Patent Owner directs our
`attention, similarly differentiate between the feedback signal and the
`corrected feedback signal. Originally filed claim 1 recites “generating a
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`IPR2017-01328
`Patent 6,845,019 B2
`
`feedback signal,” detecting a current “to correct the feedback signal,” and
`subsequently outputting “the corrected feedback signal.” Ex. 1005, 113.
`Originally filed claim 6 recites generating “a stabilized feedback signal” and
`detecting a current “to correct the feedback signal.” Id. at 115. Thus,
`contrary to Patent Owner’s argument, proposed claims 16 and 17, canceled
`claims 14 and 15, and originally filed claims 1 and 6, differentiate between
`the “feedback signal” and the “corrected feedback signal.”
`Proposed substitute claims 16 and 17 recite additional structural
`limitations of the “feedback unit” recited in cancelled claims 14 and 15.
`Proposed substitute claim 16 is exemplary, and our analysis equally applies
`to proposed substitute claim 17. The claimed “feedback unit” detects the
`voltage signal output by the transformer to the output unit. The newly added
`limitations recite the “feedback unit” includes a detecting coil to detect the
`transformer output. The claimed “feedback unit” also (i) generates a
`feedback signal, (ii) detects a switching current of the switch to correct the
`feedback signal, and (iii) outputs the corrected feedback signal. The newly
`added limitations recite the “feedback unit” includes (i) a driving power
`generator that rectifies the detected signal from the transformer to generate a
`driving power signal to operate the switching controller, and (ii) a feedback
`signal generator that reduces the driving power signal output from the
`driving power generator by a voltage drop corresponding to a current input
`signal to generate the feedback signal. As discussed above, however, the
`Specification discloses that the purpose of reducing the driving power signal
`output from the driving power generator by a voltage drop corresponding to
`a current input signal is to output a corrected feedback signal VFB, as
`opposed to generating the feedback signal. Ex. 1001, 8:40–9:4 (disclosing
`
`13
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`Patent 6,845,019 B2
`
`reducing the driving power signal by a voltage drop using switch operator
`130 and gain regulator 140, so that “switching controller 40 receives the
`corrected feedback voltage VFB from feedback unit 100” that is constant
`regardless of load conditions that cause Vcc to vary).
`In light of the foregoing, we disagree with Patent Owner that
`“‘corrected is simply an adjective modifying that same ‘feedback signal.’”
`Reply 12. Rather, the originally filed claims, issued claims, proposed
`claims, and Specification make clear that the “corrected feedback signal” is
`distinct from the “feedback signal” in that the “corrected feedback signal” is
`obtained by further processing the “feedback signal.” To the extent Patent
`Owner’s proposed amendment is inconsistent with the written description in
`the ’019 patent, the proposed amendment impermissibly introduces new
`matter because the original disclosure does not contain adequate support for
`“a feedback signal generator operable to reduce the driving power signal
`output from the driving power generator by a voltage drop corresponding to
`a current input signal to generate the feedback signal,” instead of to generate
`the corrected feedback signal that is output by the “feedback unit” recited
`earlier in proposed claims 16 and 17. See Western Digital Corp. v. SPEX
`Techs., Inc., Case IPR2018-00082, -00084, Paper 13, *7 (Apr. 25, 2018)
`(informative) (“New matter is any addition to the claims without support in
`the original disclosure.”) (citing TurboCare Div. of Demag Delaval
`Turbomach. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) (“When
`[an] applicant adds a claim . . . the new claim[] . . . must find support in the
`original specification.”)). Indeed, if the feedback signal generator were to
`generate the feedback signal by reducing the driving power signal output
`from the driving power generator by a voltage drop corresponding to a
`
`14
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`IPR2017-01328
`Patent 6,845,019 B2
`
`current input signal, as Patent Owner proposes, proposed claims 16 and 17
`would further require the “feedback unit” to detect a switching current of the
`switch to further correct that feedback signal, and then to output the
`corrected feedback signal—an operation not disclosed in the Specification.
`Accordingly, we determine Patent Owner’s proposed amendment
`impermissibly introduces new matter and, therefore, deny Patent Owner’s
`Motion to Amend with respect to the request to enter proposed substitute
`claims 16 and 17.
`
`
`IV. CONCLUSION
`For the foregoing reasons, we cancel claims 14 and 15, and we
`determine that Patent Owner’s proposed substitute claims 16 and 17 do not
`satisfy the requirements of 35 U.S.C. § 316(d)(3) and 37 C.F.R.
`§ 42.121(a)(2)(ii).
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`V.
`Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017,
`which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is
`not qualified to testify as an expert with respect to the technology in this
`[proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion
`because we did not rely on Exhibits 1015 and 1017 in our determination
`above that Patent Owner did not show adequate support for proposed
`substitute claims 16 and 17. See supra Section III.B.
`
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`
`VI. ORDER
`
`It is, therefore,
`ORDERED that Patent Owner’s Motion to Amend is granted-in-part
`as to its request to cancel claims 14 and 15;
`FURTHER ORDERED that Patent Owner’s Motion to Amend is
`denied-in-part as to substitute claims 16 and 17;
`FURTHER ORDERED that Patent Owner’s Motion to Exclude is
`denied as moot; and
`FURTHER ORDERED that, because this is a final written decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`16
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`IPR2017-01328
`Patent 6,845,019 B2
`
`FOR PETITIONER:
`Neil Warren
`John Phillips
`FISH & RICHARDSON PC
`IPR10256-0041IP1@fr.com
`PTABInbound@fr.com
`warren@fr.com
`phillips@fr.com
`
`PATENT OWNER:
`Roger Fulghum
`Brian W. Oaks
`Brett J. Thompsen
`Nick Schuneman
`Jennifer Nall
`Eliot D. Williams
`BAKER BOTTS LLP
`roger.fulghum@bakerbotts.com
`brian.oaks@bakerbotts.com
`brett.thompsen@bakerbotts.com
`nick.schuneman@bakerbotts.com
`jennifer.nall@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`17
`
`
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