UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01638 (Patent 8,201,968 B2)
`Case IPR2017-01639 (Patent 8,967,844 B2)
`____________
`
`Record of Oral Hearing
`Held: September 19, 2018
`____________
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`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and JOHN A.
`HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SATCO PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-01638 (Patent 8,201,968 B2)
`Case IPR2017-01639 (Patent 8,967,844 B2)
`____________
`
`Record of Oral Hearing
`Held: September 19, 2018
`____________
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and JOHN A.
`HUDALLA, Administrative Patent Judges.
`
`
`
`
`
`
`IPR2017-01638 (Patent 8,201,968 B2)
`IPR2017-01639 (Patent 8,967,844 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`ROBERT S. RIGG, ESQUIRE
`SUDIP K. MITRA, ESQUIRE
`Vedder Price
`222 North LaSalle Street
`Chicago, Illinois 60601
`
`
`ON BEHALF OF PATENT OWNER:
`ERIC D. HAYES, ESQUIRE
`KYLE M. KANTAREK, ESQUIRE
`Kirkland & Ellis, LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`September 19, 2018, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`IPR2017-01638 (Patent 8,201,968 B2)
`IPR2017-01639 (Patent 8,967,844 B2)
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`P R O C E E D I N G S
`- - - - -
`JUDGE HUDALLA: Okay. Good afternoon, everyone. We are
`here today for argument in IPR2017-01638 concerning U.S. patent
`8,201,968 and IPR2017-01639 concerning U.S. patent 8,967,844. I'm Judge
`Hudalla, and we have joining us remotely Judges Turner and Boucher. Why
`don't we start off with some introductions, starting with petitioner, please.
`MR. RIGG: Good morning, Your Honors. Robert Rigg on behalf
`of the petitioner, Satco Products, Inc. I have with me Sudip Mitra and
`Mr. Bob Lynn.
`JUDGE HUDALLA: Good afternoon. For patent owner?
`MR. HAYES: Good afternoon. Eric Hayes and my colleague,
`Kyle Kantarek, from Kirkland & Ellis on behalf of patent owner, Lighting
`Science.
`JUDGE HUDALLA: Good afternoon. Thank you. Okay. Well,
`we issued an order about this, maybe a little bit late, but the order stated that
`each of you will get 30 minutes to argue each case, and we'll start with the
`38 case first. We will have petitioner go first and then patent owner --
`petitioner can reserve some rebuttal time; we'll have patent owner go, and
`patent owner may also reserve a very brief sur-rebuttal time.
`I want to remind everybody that petitioner has the burden at all
`times of proving unpatentability by a preponderance of the evidence. I
`remind you also that this is a public hearing and a full transcript of the
`hearing will become part of the record. And just a reminder as well that we
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`IPR2017-01638 (Patent 8,201,968 B2)
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`have these judges joining us remotely, so as you go through your
`presentation, please be sure to say what slide you are on and what you are
`referring to so they can follow along as well.
`I think that's everything I have. Mr. Rigg, if you want to go ahead
`and start, please.
`MR. RIGG: If I understand, we are going 30 minutes for the '968,
`and I would like to reserve 10 minutes for rebuttal.
`JUDGE HUDALLA: Yes.
`MR. RIGG: Thank you.
`JUDGE HUDALLA: You can begin whenever you are ready.
`MR. RIGG: Thank you, Your Honors. I am Bob Rigg and I'm
`here on behalf of the petitioner, Satco Products, Inc. I will be talking about
`both the 1638 and the 1639, but I will limit the original discussion here to
`the 1638. And I may have to jump around a little bit. I think I have my
`slides combined, but I think we'll do okay.
`Obviously, we all know the patents at issue. The '968 patent, just
`as a reminder, is a low-profile light. It issued on June 9, 2012, and has a
`priority date because of a provisional application of October 5, 2009.
`JUDGE HUDALLA: Just as a reminder, Mr. Rigg, if you could
`mention the slide numbers.
`MR. RIGG: I apologize. Turning to slide 3, I have set forth the
`representative claim of the '968 patent, and I wanted to point out a few
`sections of the claims just as a reminder for when we talk about some of the
`other features that I'm going to refer back to. In particular, in the first
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`element there is a luminaire comprising a heat spreader and a heat sink
`thermally coupled to the heat spreader, and this next section is what I think
`is more important: The heat sink being substantially ring-shaped and being
`disposed around and coupled to an outer periphery of the heat spreader. I
`think later on when we are talking about the height-to-diameter ratio
`elements in the claims, that definition of a heat sink becomes important.
`I would also like to point out that the third element on slide 3
`referring to the light source towards the end of it, it says that the LEDs are
`disposed on the heat spreader such that the heat spreader dissipates heat
`from the LEDs. Again, I think that comes into play later on, but I just
`wanted to point those out at the beginning.
`So essentially, the '968 patent, in sort of summary format, teaches
`using a fixture's own trim as the heat sink in order to keep the fixture cool
`and low profile. Obviously, there are other elements involved, but that is the
`general way in which they do it. And they do it using a heat spreader and a
`ring-shaped heat sink around its outer periphery.
`The claim also includes an optic and an LED light source, and one
`of the issues that we're going to talk about is the combined
`height-to-diameter ratio of .25 is also going to be covered here shortly.
`Looking at slide number 5, you see a Figure 12 from the '968
`patent, and this generally describes the features of the patent. You have the
`heat spreader 105. You have the light source 120. Those are the LED
`arrays. You have the outer optic (which is one of the elements of the
`claim) 115, and the heat sink 110 which you can see is coupled to the heat
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`spreader and goes around the periphery, the outer periphery of the heat
`spreader. And that's how it's described in the '968 patent.
`I'll skip over the '844 here. So I'm turning now to slide 10. So I
`think it's important to understand what the '968 patent does not teach. And
`it's listed here. It doesn't teach anything about the heat sink design, how
`thick it has to be, how wide it has to be, how much heat it has to displace. It
`doesn't talk about anything about input power, how much power is the light
`source using, how much heat is being generated by that power source. It
`doesn't talk about anything about the dimensions of the fixture other than the
`height-to-diameter ratio. It does say that but it doesn't say anything about
`thickness, width, depth.
`It doesn't say anything about what temperature the lights are going
`to operate at and what temperature you have to -- of heat you have to
`dissipate. It doesn't tell you any thermal calculations that say you have to
`dissipate 100 percent of the heat, 60 percent of the heat, 40 percent of the
`heat. It doesn't say. It only says that you create this structure that has an
`LED light source, a heat spreader, a heat sink that is coupled to and around
`the outer periphery of the heat sink and that it have a height-to-diameter
`ratio. All it describes for you is the structure. There is no teaching about
`any of the calculations or things that would need to be able to create such a
`device.
`
`So why am I going through all the things it doesn't teach? It's
`because the inventors had to have had two things in their mind when they
`created the '968 patent. Either because they haven't provided all the
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`information that you need to create it there's no enablement; or secondly,
`they knew that one of ordinary skill -- they were relying on the knowledge
`of one of ordinary skill in the art to do the things that were missing from the
`patent. One of ordinary skill in the art would know how much heat an LED
`would generate. One of ordinary skill in the art would know how thick you
`had to do it. One of ordinary skill would have to know what percentage of
`heat you have to dissipate.
`And I think that's important because it plays into the fact that when
`Dr. Roberts testifies about the anticipation using Chou and the --
`obviousness of Chou in light of some other references, that one of ordinary
`skill in the art would know how to do certain things, would have been taught
`by Chou and would have known things about sizing, about power supplies.
`And so in my mind, that means that Dr. Roberts, because the inventors didn't
`disclose any information, if this patent is enabled, then one of ordinary skill
`in the art already knew all of the other stuff that was missing from the
`patent.
`
`JUDGE TURNER: Counsel, I guess your argument brings about,
`is there an enablement ground here that you have made in the petition?
`MR. RIGG: We did make an enablement ground but not on this
`basis. I'm simply saying that if they didn't teach all this stuff and it's not
`enabled, then it has to have been known by one of ordinary skill in the art.
`JUDGE TURNER: I guess what I'm having trouble with is with
`respect to an IPR we need to look at patents and printed publications, and we
`don't generally consider enablement. So now this feels very much like 11th
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`hour you are saying, well, the patent is not enabled. It seems like that's
`outside our purview here.
`MR. RIGG: I'm not making a non-enablement. I'm sort of arguing
`in the alternative, Your Honor. I point out everything that's not taught in the
`patent that would need to be there in order for it to work. And I'm saying
`that has to mean that the inventors knew that they didn't have to include it
`because one of ordinary skill in the art already knew it.
`JUDGE TURNER: I'll let you move on. Go ahead.
`MR. RIGG: I wanted to touch on the prior art that we are relying
`on with respect to the '968, and it's the U.S. patent number 7,670,021, Chou.
`Chou has an issue date of March 2, 2010, and claims priority to a provisional
`dated October 10, 2000. So it's clearly prior art to the '968 patent. It
`discloses a low-profile ceiling LED luminaire that dissipates heat into the
`surrounding air via the exterior trim.
`Turning to slide 14, I'm sorry, I remember to put the slides up,
`Chou teaches the things listed here. Importantly, it teaches a heat sink, heat
`spreader and optic height which is specifically spelled out in the patent as
`42 millimeters and its diameter of 200 millimeters giving it a
`height-to-diameter ratio of .21 which falls within the limitations of the
`claims of the '968 patent.
`The heat sink is ring-shaped and coupled to the outer periphery of
`the heat spreader. And the heat sink is in thermal communication with the
`heat spreader, and it's been used -- in the patent it's described as using the
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`conventional 5-inch and 6-inch recessed can but also could be configured to
`be used in any other geometries.
`Turning to slide 15, Chou describes the lower portion in figure --
`that's Figure 2B of the patent as having a flat trim portion, and it's included
`into two portions. The middle portion and the inner portion is the heat
`spreader and the outer portion is the heat sink. I don't think there is any
`dispute between the parties that that's what those elements show, in
`particular, that heat spreader and a heat sink, and it shows also, again, the
`height-to-diameter ratio.
`JUDGE TURNER: Counsel, let me ask a question since you are at
`this point. Why wouldn't one of ordinary skill in the art look at Chou and
`say element 14 is a heat sink; I have to consider that in my height and
`diameter calculation?
`MR. RIGG: So first of all, the patent owners and the patent goes
`through and describes in various figures how the height-to-diameter ratio is
`calculated. They show it always as being underneath the ceiling. They have
`the heat spreader, the heat sink and the optics all underneath the ceiling, and
`they use that as the height and then they use it as the diameter.
`But more importantly and also, the claim tells you that you don't
`need to use 14. When I told you earlier in the case at slide 3, the claim says
`-- specifically defines the heat sink. It says a heat spreader and a heat sink
`thermally coupled to the heat spreader, the heat sink being substantially
`ring-shaped and being disposed around and coupled to an outer periphery of
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`the heat spreader. That is the heat sink that the claim tells you is the subject
`of the height-to-diameter.
`When you go down to the fourth element on slide 3 wherein the
`heat spreader, the heat sink and the outer optic, which is referenced above,
`and it gives a specific configuration of the heat sink, that is what makes up
`the height and diameter. So that is consistent with our position that it's
`everything under the -- that it is the heat sink, heat spreader and optic under
`the ceiling. And it's consistent with the position taken by the patent owner
`who, when described where -- I can find that for you very quickly.
`JUDGE TURNER: Well, while you are looking for that, let me
`ask another question. Is there anything about claim 1 that talks about a
`ceiling?
`MR. RIGG: No, but it defines -- it does not talk about the ceiling.
`What I'm saying is that the --
`JUDGE TURNER: I understand what you are saying. I'm asking
`a different question. I understand your argument completely. It's not a
`misunderstanding on my part. I'm asking does claim 1 recite anything about
`a ceiling or using that or saying, well, you know, you have the overall
`height, but really it's the overall height with respect to the luminaire and the
`ceiling.
`
`MR. RIGG: No, that was sort of our description of how patent
`owner has described the height-to-diameter ratio. In all of their figures, it's
`always the area below the ceiling. It's not in the claim.
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`JUDGE TURNER: So the heat sink in Chou 14 that's recited as
`being the heat sink, isn't it substantially ring-shaped?
`MR. RIGG: I would argue with the fins that it's not, that it's more
`with the fins, but it doesn't meet the remainder of that claim limitation being
`disposed around the outer periphery. It sits on top of the heat spreader but it
`is not disposed around. And around means around the outer periphery.
`JUDGE TURNER: Okay. Then I guess what I'm -- so then this is
`where I'm having some difficulty. So the heat sink is potentially ring-shaped
`in Chou but it doesn't then comport with the claim, does it? I have to sort of
`exclude what Chou says is the heat sink in order to find anticipation.
`MR. RIGG: Yeah, but I think you are ignoring the fact that Chou
`also talks about the heat spreader and the heat sink and the lower trim
`portion, the trim portion 12 and the outer flange of that acting as a heat
`spreader and a heat sink.
`JUDGE TURNER: Does it call that portion a heat sink or does it
`call it a heat spreader and talk about portions there?
`MR. RIGG: It calls item 12, the trim, a heat spreader and that the
`outer portion extends beyond the opening and dissipates the heat to the air
`which makes it a heat sink.
`JUDGE TURNER: Okay. That sounds like a lot of -- I'll let you
`go ahead. Go ahead. I don't want to take up all your time.
`MR. RIGG: What I was saying earlier talking about the
`height-to-diameter ratio is that the drawings that are used in the '968 patent
`also have items that can be considered heat sinks that are above the ceiling
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`and are not included in the height-to-diameter ratio. If you look at Figure 28
`on slide 18, that item, although not disclosed, I think, is referred to as 165.
`And in a later drawing 130 on slide 19, 165 is the housing over the power
`conditioner which acts as a heat sink. That's not included when patent
`owner does its calculation for the height-to-diameter ratio. So it's not
`including -- it's only including the height-to-diameter ratio on those portions
`of the fixture that fit within the definition of claim 1.
`JUDGE TURNER: Let me ask another, hopefully, clarifying
`question. Is there anything in the patent that says that claim 1 has to read on
`the embodiment in Figure 30?
`MR. RIGG: Have to read on the embodiment?
`JUDGE TURNER: Here is an example where the heat sink is
`there and it's not included in the calculation, but isn't it also possible that
`claim 1 doesn't necessarily read on that embodiment because I can disclose
`more than I claim certainly, right?
`MR. RIGG: True, but then I think you are going into what my
`answer was before, and that is they are limiting it to what's shown in
`claim 1, which is a heat spreader and a heat sink that is ring-shaped and that
`is on the outer periphery of the heat spreader. So they are limiting it to
`what's been claimed. So I don't have to claim --
`JUDGE TURNER: Maybe we are talking past each other possibly.
`What I understand your argument to be is I think you are saying go look at
`Figure 28. 28 shows that there's a portion, because if we go and look at
`Figure 30, there's a portion that's a heat sink that's above and is not included.
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`And my response back is, well, why does claim 1 have to read on the
`embodiments illustrated in Figure 28 and 30? Why aren't you really sort of
`arguing for incorporating embodiments into the claim?
`MR. RIGG: But I think whether the material in 30 is above the
`ceiling or not, it reads on the elements that are below the ceiling. Claim 1
`reads on those elements. And every embodiment in the '968 patent has and
`requires all of those elements, the lights, the heat spreader, the heat sink to
`be within a height-to-diameter ratio of .25. So I would say, yes, it does. It
`has to. It reads on all of the embodiments disclosed.
`JUDGE TURNER: Okay.
`MR. RIGG: So based on our argument about that I don't think
`there's any dispute -- if we go back to slide 3, I don't think there's a dispute
`that Chou, without 14, if you don't look at 14, it still discloses a heat
`spreader, a heat sink thermally coupled to the heat spreader, the heat sink
`being substantially ring-shaped, it meets that element. It specifically
`discloses that element. It shows an outer optic. It shows a light source. It
`shows the height-to-diameter ratio. And the only thing that I guess I haven't
`touched on yet is the combination of the heat spreader, the heat sink and the
`outer optic is so dimensioned as to cover an opening defined by a nominally
`sized 4-inch can light fixture and cover an opening defined by a nominally
`sized 4-inch electric junction box. Since Chou teaches the use on a 5-inch
`and 6-inch can, by definition what's disclosed there would cover a 4-inch
`junction box or cover a 4-inch hole. So I think all of the elements of claim 1
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`which is a representative claim for the '968 patent are covered by the prior
`art of record.
`Turning to claim 19 -- excuse me, I'm on slide 21. Claim 19
`depends from claim 15 and has these two additional limitations. One is the
`power conditioner is disposed on an opposite side of the heat spreader as the
`plurality of LEDs. Chou clearly shows that there is -- clearly shows a power
`conditioner on the opposite side of the LED.
`JUDGE HUDALLA: Mr. Rigg, just so you know, you are going
`into your rebuttal time at the moment, but that's fine.
`MR. RIGG: The other issue here really is the power conditioner
`being so dimensioned as to fit within a nominally sized 4-inch can light
`fixture and nominally sized 4-inch electrical junction box. Chou teaches that
`you can have various geometries of the cans and that you can modify the
`size of the power conditioner to fit within there because of the representation
`that it can fit within other geometries.
`Dr. Roberts says that one of ordinary skill in the art would know
`how to change the size of the power conditioner. This goes back to the point
`that I made with respect to there is nothing in the '968 patent that tells you
`how to size the conditioner. It tells you simply that's what it must be. It
`must be, it must fit within a 4-inch device, a 4-inch junction box or a 4-inch
`can, but it doesn't tell you how to do it. Therefore, Mr. Roberts thinks that
`doing something, changing the size of something to make it fit when you
`described nothing about how to do it would have been known to one of
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`IPR2017-01638 (Patent 8,201,968 B2)
`IPR2017-01639 (Patent 8,967,844 B2)
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`ordinary skill in the art given the fact that Chou tells you that you can make
`it of various sizes.
`JUDGE TURNER: Counsel, just before you step down, just a
`quick question. Does the obviousness ground over Chou with respect to
`claims 19 through 23, does it stand or fall with the anticipation ground of
`Chou or has petitioner made a separate case with respect to that
`obviousness?
`MR. RIGG: It stands with the anticipation in terms of all of the
`other elements are there except for the sizing of the power conditioner which
`Dr. Roberts indicates would have been known to one of ordinary skill in the
`art.
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`JUDGE TURNER: So if we were to find that petitioner didn't
`prove by a preponderance of the evidence that Chou was anticipatory, we
`also wouldn't find that Chou renders claims 19 through 23 obvious; is that
`correct?
`MR. RIGG: Yes.
`JUDGE TURNER: Okay. Thank you.
`MR. RIGG: Thank you.
`JUDGE HUDALLA: I have 7 minutes left for your rebuttal.
`MR. RIGG: Thank you.
`JUDGE HUDALLA: Do you want to reserve sur-rebuttal time?
`MR. HAYES: Maybe five minutes.
`JUDGE HUDALLA: Mr. Hayes, you can begin whenever you are
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`ready.
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`IPR2017-01638 (Patent 8,201,968 B2)
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`MR. HAYES: Good afternoon, again. Eric Hayes from Kirkland
`& Ellis on behalf of patent owner, Lighting Science Group. This is kind of
`the second go-around on these patents and these issues, so I'll try to keep my
`comments brief here and focus on the judges' questions and the issues that
`seem to be of interest to folks.
`So I'm on slide 2, and I will try my best to continue to identify
`slides as I move through. Similar to the last time, there are three issues that
`we would like to focus on. That is issue 1, Chou does not anticipate claims
`1, 2, 6, 14 and 15 of the '968 patent because you have got to include heat
`sink 14 when you look at Chou and what it discloses. The second issue,
`Chou does not render obvious claims 19 through 23 because Chou does not
`disclose 4-inch junction boxes or can housings. And then one of skill in the
`art would not combine Roberge with Chou.
`Moving ahead slide 3, we've always seen this multiple times now,
`the '968 patent is about a low-profile light. I thought it was interesting, in
`petitioner's slides, they pointed out in their slide 4 that really the '968 patent
`describes using the fixture's own trim as the heat sink. At a high level that is
`the fundamental difference here between the '968 patent and the prior art that
`we have in this case. All of the prior art has what we think of as a traditional
`fin heat sink, including in Chou heat sink 14. Yes, Chou has a trim as well,
`but it hasn't eliminated that trim. And that really is what the '968 patent is
`about, about this low-profile light using the trim as the heat sink.
`Turning to slide 4, the focus again is on this last limitation, the
`H/D limitation which everybody knows well now, this requirement that the
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`height be one quarter or less than one quarter of the outside dimension. And
`in response to --
`JUDGE BOUCHER: Can I ask you a question about the structure
`of this claim. It's a comprising claim. So do you agree that a structure that
`is read on by the claim can include additional heat sinks other than the one
`that the claim focuses on?
`MR. HAYES: So I agree that the comprising limitation in patent
`law has a well understood meaning, includes but not limited to. In this case
`I would say and I would agree that there can be an additional heat sink, but
`the height of the overall heat sink in the structure has to fit within the H/D
`limitation. So to some extent, I mean, comprising is an open-ended
`limitation that allows for more, but the H/D limitation is a bit unique in the
`sense that it only allows more in the sense that that more still is -- the overall
`height of that more is less than or equal to .25 in relation to the outside
`diameter.
`JUDGE BOUCHER: So suppose the patent were being asserted
`against a luminaire that has a heat spreader and two heat sinks. The
`combination of the heat spreader, the first heat sink and the outer optic meet
`that dimensional requirement and then there's this other heat sink that
`performs some additional function. Why would that structure not infringe
`this claim?
`MR. HAYES: It would not infringe the claim because I think, as
`we've said, one of ordinary skill in the art -- we can take Chou. It's kind of
`the perfect example. One of ordinary skill in the art would look at Chou and
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`IPR2017-01638 (Patent 8,201,968 B2)
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`say what is the heat sink? It's the trim and heat sink 14. Similarly, one of
`ordinary skill in the art couldn't, in trying to prove infringement, say I'm
`only going to take a portion of the trim 12 and ignore heat sink 14 all the
`time and take a portion of trim 12, which is a heat sink, and say, okay, with
`that portion, it fits within the H/D limitation. So I think you have got to start
`from the position of how one of ordinary skill in the art would look at the
`luminaire from the standpoint of what's the heat sink. You can't pick and
`choose portions, pick and choose one, not both. I think you have to say what
`is the heat sink.
`JUDGE BOUCHER: So is your position then that any structure
`within the luminaire that functions as a heat sink needs to be included as part
`of that calculation?
`MR. HAYES: I think that the structure that one of ordinary skill in
`the art would look at as the heat sink has to be part of that calculation, yes.
`That makes sense.
`JUDGE BOUCHER: Okay. What about other structures that have
`structural aspects to them but they do function to dissipate heat, are those
`properly considered part of the heat sink?
`MR. HAYES: That's an interesting question because at some point
`you kind of get into the fundamentals of thermodynamics. Anything that's at
`a lower temperature, in theory, will dissipate heat from anything that's at a
`higher temperature, right. But I think you have got to look and you kind of
`got to put the meaning of heat sink in the context of the '968 patent and how
`one of ordinary skill in the art describes it. So it's hard for me to answer that
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`question. Would any structure that dissipates heat, I think one of ordinary
`skill in the art would have to look at the luminaire and say what is the heat
`sink, determine that, and then use that as when they are making their
`calculations, if that makes sense.
`JUDGE BOUCHER: Thanks.
`JUDGE TURNER: Counsel, does claim 1 read on the embodiment
`in the '968 patent illustrated in Figures 28 and 30?
`MR. HAYES: That's a good question. I was going to make the
`point that you are absolutely right, Judge Turner, that not every claim has to
`read on every embodiment. That's a fundamental tenet of patent law. So I
`would say that -- your question is does claim 1 read on embodiment 28?
`JUDGE TURNER: And 30. I think they are referred to as the
`same embodiment.
`MR. HAYES: Right, 28 and 30. So I haven't really done a
`detailed analysis, but I have looked at Figures 27, 28 and 29, and I would
`point out that -- so we were focusing on this power conditioner 165 and
`whether or not that has its own separate heat sink. If you look at Figure 27,
`power conditioner 165 is mounted to the back of heat spreader 305. And
`you can see that even better in Figure 29 where that's kind of the bottom
`view, if you will, where the power conditioner 165 is mounted to the back
`of, in this case, base 32, which is the combined or the integral heat spreader
`and heat sink that has the fins and the radial gaps. And so what I think is
`going on here is in this embodiment that the power conditioner is mounted
`on the back of the base which is its heat sink. And that's what the disclosure
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`talks about. There isn't any disclosure in the case that the power conditioner
`165 or the housing of power conditioner 165 is a heat sink. I think if you
`look at Figure 30, it's specifically mounted on the back of the base which
`acts as the heat sink for the power conditioner. I think the power
`conditioner, in fact, is a heat source. So that's kind of my analysis there.
`And I was also looking here --
`JUDGE TURNER: Let me ask this while you are looking. If 165
`has its own heat sink, is that included in the calculation of the width to
`diameter?
`MR. HAYES: So if one of ordinary skill in the art would say that
`power conditioner 165 has its own heat sink, which I don't think it does, but
`within your hypothetical, if one of ordinary skill in the art would say power
`conditioner 165 has its own heat sink, then, yes. As I just said in response to
`Judge Boucher's question, that has to be part of the overall height of the heat
`sink, heat spreader and outer optic.
`Just to follow up on my point why I don't think there's any
`disclosure in the '968 patent that supports petitioner's position that the power
`conditioner has its own heat sink, in addition to what I just pointed out in
`Figures 29 and 30 which show power conditioner on the backside of the fin
`heat sink, 302, 305, you see here on column 8, lines 40 to 41, 42 of the '968
`patent, Exhibit 1001, a power conditioner 165 similar to that discussed
`above in connection with Figure 11.
`Then if you go over here to
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