Trials@uspto.gov
`571-272-7822
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`Paper No. 41
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXONICS, INC.,
`Petitioner,
`
`v.
`
`MEDTRONIC, INC.,
`Patent Owner.
`____________
`
`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`___________
`
`Record of Oral Hearing
`Held: June 17, 2021
`____________
`
`
`
`Before JAMES A. TARTAL, ERIC C. JESCHKE, and
`ALYSSA A. FINAMORE, Administrative Patent Judges.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`A. JAMES ISBESTER, ESQUIRE
`BABAK SANI, ESQUIRE
`MATTHEW MEYER, ESQUIRE
`KATE GEYER, ESQUIRE
`MEGAN CHUNG, ESQUIRE
`Kilpatrick, Townsend, & Stockton LLP
`Two Embarcadero Center, Suite 1900
`San Francisco, California 94111
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`NAVEEN MODI, ESQUIRE
`PAUL ANDERSON, ESQUIRE
`CHETAN R. BANSAL, ESQUIRE
`QUADEER AHMED, ESQUIRE
`DAVID VALANTE, ESQUIRE
`Paul Hastings LLP
`2050 M Street, NW.
`Washington, D.C. 20036
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, June 17,
`2021, commencing at 9:00 a.m. EDT, by video/by telephone.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE JESCHKE: Okay, thank you. We can go on the record.
`Good morning. Welcome to the Patent Trial and Appeal Board. This is a
`set of virtual oral hearings in IPR2020-00678, 679, 680, 712, 713, and 715
`between Petitioner, Axonics Modulation Technologies, Inc. and Patent
`Owner, Medtronic, Inc. I am Judge Jeschke. With me today on the panel
`are Judges Tartal and Finamore. We are of course located remotely. Let’s
`start with counsel introductions, for Petitioner.
`MR. ISBESTER: James Isbester, Kilpatrick Townsend, on behalf of
`Axonics.
`JUDGE JESCHKE: And there are some other folks, I think, in the
`room? Could you identify them please?
`MR. ISBESTER: Well, I should start with who is going to be arguing
`on the, I believe, anchor patent, the ’314 patent. That would be Megan
`Chung of Kilpatrick, Townsend & Stockton, LLP. Also in the room with me
`are my colleagues Matthew Meyer, Kate Geyer of the Kilpatrick, Townsend
`firm and Aaron Petit. Mr. Petit is not under a confidentiality order so in the
`event we do address confidential materials Mr. Petit will be withdrawing
`from the conference room.
`JUDGE JESCHKE: Okay, thank you, Mr. Isbester. And for Patent
`Owner?
`MR. MODI: Good morning, Your Honors. This is Naveen Modi on
`behalf of Patent Owner, Medtronic. With me, I have my colleagues Paul
`Anderson, Chetan Bansal, Quadeer Ahmed, and David Valante. And we
`also have our client on the public line, Matt Anderson. He is head of IP
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`Litigation at Medtronic. If you would like I can go through in terms of how
`we’re going to split up the arguments now or later, whatever you prefer,
`Your Honor.
`JUDGE JESCHKE: That’s okay. Thank you though, Mr. Modi. As
`one quick housekeeping note for Mr. Isbester, it appears that Petitioner has
`changed its name during this proceeding from Axonics Modulation
`Technologies, Inc. to Axonics, Inc. Is that accurate?
`MR. ISBESTER: That is correct.
`JUDGE JESCHKE: Okay, thank you. Okay, so as provided in the
`Hearing Order from May 14th, we grouped the 6 proceedings based on, kind
`of, overlapping subject matter. We will have three separate hearings with
`three separate transcripts. First, we’ll have a consolidated hearing in 2020-
`00678, 680, and 712. For that hearing each side has a total of 75 minutes to
`present its arguments. And am I correct that there is no confidential material
`to be presented in that hearing, first on the Petitioner’s side?
`MR. ISBESTER: Not from the Petitioner, Your Honor.
`JUDGE JESCHKE: Okay and Mr. Modi?
`MR. MODI: That is correct, Your Honor.
`JUDGE JESCHKE: Okay, thank you. For the second of our three
`hearings, it will again be consolidated at this time for IPR2020-00679 and
`715. For that hearing each side will have a total of 60 minutes to present its
`arguments, and it sounds like there is confidential material to be presented in
`that hearing? That’s correct. It looks like Mr. Modi is nodding so that is our
`understanding as well. It sounds like though that the only public line we
`have open is for Patent Owner’s own in-house counsel. Am I correct that
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`there is no need to shut off that line? It would seem so. Is that correct, Mr.
`Modi?
`MR. MODI: Your Honor, to the extent you were able to see who is
`on the public line besides Mr. Anderson, we are okay with that. I mean the
`other thing we could do is for that portion of the hearing I can just have Mr.
`Anderson dial into, that’s Matt Anderson, our client, dial into, you know, the
`hearing, dial-in that we all use, if you prefer. That would I think alleviate
`any concerns that we would have.
`JUDGE JESCHKE: Okay, give me one moment here to confer with
`the Panel on something.
`Okay, it’s from the PTO side. It appears that there are more people on
`the public line than just the one. I misunderstood that situation. So, I think
`we will need to close that down for that period. So, I think that we'll -- what
`we may do is Patent Owner could present that information perhaps at the end
`of its opening argument in that second proceeding. We can discuss this
`more then. And then Petitioner perhaps could respond at the beginning of its
`rebuttal. That way we essentially just have one section that we can close off
`and identify as confidential. Mr. Modi, does that sound like a reasonable
`way to proceed once we get to the details of that second proceeding?
`MR. MODI: Yes, Your Honor, it does. And the other thing I will
`note is both, we have spoken with Petitioner’s counsel and I think both
`parties will also try their best to not go into the confidential information so,
`you know, we will try that because you know how sometimes when you’re
`in an argument you start to talk about it so we’re going to do our best, but
`your proposal sounds fine.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`
`JUDGE JESCHKE: Okay, and that was going to be the other thing I
`was going to mention is, you know, a lot of these are, you know, dollar
`figures and such where we have the briefing so to the extent that you all can
`just say, you know, the sales values on page 67 of the response or whatever,
`that may alleviate a lot of the issues that as you know, you know, marking
`out transcripts and things like that we can avoid it perhaps, some. Okay, so
`for the third hearing, the third of our three hearings again will just be in
`2020-00713, and for that hearing each side will have a total of 30 minutes to
`present arguments. And I think there’s no confidential material for that
`hearing. Is that right, Patent Owner?
`MR. MODI: That’s right, Your Honor.
`JUDGE JESCHKE: Okay, so for all three hearings of course
`Petitioner bears the burden of persuasion here and will proceed first
`followed by Patent Owner. Petitioner may reserve some of their total time
`for rebuttal if it would like. Similarly, Patent Owner may reserve some of its
`time for sur-rebuttal if it would like. As the presentations near their end, we
`will let you know when there are roughly 2 minutes left and when your time
`has expired. For the clarity of the record and given the remote nature of
`these hearings, please make sure to identify early and often the current slide
`number of the demonstratives that’s being discussed. And also please
`remember to speak directly into your microphones to the extent you can. All
`panel members of course have a set of the demonstratives as does the court
`reporter and of course access to the complete record for all these
`proceedings.
`As to objections, please, we’d like to keep the arguments focused on
`the merits of the case so counsel is encouraged not to interrupt the other side.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`So counsel though may raise and discuss any objections during their own
`time for response, rebuttal, or sur-rebuttal. We have reviewed the joint list
`of objections to the demonstratives here, and we will not rule on those at this
`particular time because they appear to be all linked to the list of allegedly
`improper arguments in evidence filed by the parties. So we will assess those
`issues when we put together the final written decisions here.
`With that, yes? With that presenting counsel for Petitioner, perhaps
`could start getting ready. Before the opening presentations, I’m going to ask
`each side for their requested rebuttal time for that particular session. The
`request is of course only an estimate though and can certainly be changed if
`you take less or slightly more time, but with that is, we will give you the 2-
`minute, kind of, warnings based on your original requested time. Let’s see,
`Mr. Isbester, do you wish -- how much of your time for the initial argument
`so again you will have 75 total minutes. How much would you like to
`request right now for rebuttal?
`MR. ISBESTER: My plan, Your Honor, is to reserve 20 minutes for
`rebuttal. I may not need all of that.
`JUDGE JESCHKE: Okay, so we’ll start then with 55 minutes it
`sounds like of time for the opening. And same question for Patent Owner
`just so we can get general numbers down here just so we have -- we can
`move right in.
`MR. MODI: Sure, Your Honor. This is Naveen Modi for Patent
`Owner. We would like 15 minutes.
`JUDGE JESCHKE: Okay, so we’ll start Mr. Modi with 60 minutes
`roughly for you. And with that if there are no questions or comments, I
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`think we are ready to begin. Mr. Isbester, are there any questions you have
`before we proceed?
`MR. ISBESTER: Not for me, Your Honor.
`JUDGE JESCHKE: Okay, Mr. Modi, any questions?
`MR. MODI: No, Your Honor. I will note for this particular argument
`Mr. Paul Anderson and Mr. Quadeer Ahmed will be handling the argument
`for Medtronic.
`JUDGE JESCHKE: Okay, thank you, Mr. Modi. Okay, and with
`that, oh yes.
`REPORTER: Mr. Isbester, it’s hard to make out what he’s saying. It
`sounds kind of hollow. Can you come closer to your speakers? Mr. Modi is
`using a headset so it’s easy to hear him, but if you could come closer to your
`speakers, it will be easier for us to make out what you’re saying. Thank you,
`Your Honor.
`MR. ISBESTER: Is it possible to move maybe the -- let me do a
`soundcheck then. Is that any better?
`REPORTER: Yes, sir, it is, thank you very much, thank you.
`JUDGE JESCHKE: Okay, and I think with that Mr. Isbester, you can
`probably begin whenever you’d like, and we’ll start the time then.
`MR. ISBESTER: Good, thank you, Your Honor. As we discussed
`I'm here to discuss -- present Axonic’s position with respect to ’069 and
`’758 and ’148 patents, all of which of course appear in identical
`specification. Our position is quite straightforward, specific to Petitioner's
`position, I suspect. All the challenged claims are either anticipated or
`obvious. Each of the claimed elements can be found in the prior art, and
`Patent Owner’s distinctions rest on to a large part communication (audio
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`skip). As we have already discussed, there are no confidential matters here,
`and there are no secondary considerations offered at all. Because we have
`the three patents in one presentation, let me start with the common features
`of the patents. This is disclosure specification that describes a very typical
`implanted device having a power source. So, each of the patents include a
`device that provides electrical stimulation to the tissue, as listed on Slide 4;
`batteries or other internal source; and that batteries or internal energy source
`is transcutaneously powered by an external charger. And if you look at
`Slide 5, you will see what is, to us, the best depiction of this basic structures
`that the patent provides. The dashed line 38 is the skin. Anything below
`line 38 is the tissue or implanted in tissue. Anything above is the external
`charger. On Slide 6 we have attempted to provide a little bit of a guide post
`to Figure 3 of the patent. You see the charging unit which provides the
`guidance and the electricity, the power, to the primary coil 54 which creates
`an inductive couple connection with the secondary coil at 34, which
`generates a current that, as shown in this block diagram, to a charge
`regulation module to battery, the system electronics, the implanted system
`electronics, and finally, to the therapy module that provides the stimulation
`to the tissue.
`But it is clear looking at Figure 3 that this is merely a block diagram.
`There are no detailed circuits. There are no schematics from which one
`could tell exactly how the wiring of this particular structure is created. As
`we note on Slide 7, each of these blocks that we’ve labeled in Figure 3 is
`acknowledged by the patent to be conventional. The patent is very clear that
`there is no effort to claim invention of a charging device that transmits
`energy transcutaneously to the implanted device that provides tissue
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`stimulation. The, if you will, “secret sauce” that’s described in the claim
`does differ from one patent to the other, so let me start with the ’069 patent.
`The ’069 patent is specifically about alignment. Now if you can imagine
`looking at Figure 3 of the patent, if the primary coil is not aligned
`superimposed over the secondary coil, the energy transfer will be
`ineffective. Your efficiency goes down. There are a variety of other issues.
`So the ’069 patent claims an alignment indicator, and the alignment
`indicator operates by making the current through the internal energy source.
`There are dependent claims that further describe the actual
`relationship between that current and the performance of the device. The
`’758 and ’148 patents, the other end, are not so concerned in their claims
`with alignment, but rather the automatic adjustments of the power, for
`whatever reason. So, the first component that I think is important in all of
`those ’758 and ’148 patent claims is that you determine the value associated
`with the current through the internal energy source, the battery. And by the
`way just to save words I’m going to refer to it as batteries. I don’t think
`there’s any dispute as to whether there is a difference between a battery and
`an internal energy source. And then based upon those value or values, there
`is an automatic adjusting of the charging power delivered by the external
`power unit. So, that’s the distinction between the ’069 patent on the one
`hand and the ’758 and ’148 patents on these.
`JUDGE JESCHKE: Mr. Isbester, just as a reminder please try to say
`what slide you’re talking about. I think you’re on Slide 10 right now.
`MR. ISBESTER: Yes.
`JUDGE JESCHKE: But just for the court reporter more than anyone,
`just try to do that. Okay, thanks.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`
`MR. ISBESTER: I will, Your Honor. I look forward to the day we
`can be back in person, and I can refer to these slides before the Bench.
`JUDGE JESCHKE: As do I.
`MR. ISBESTER: And turning to Slide 10, I would like to note that
`the three Petitions all rest primarily on the same three references. There’s
`the fourth reference that we can address in connection with ’148 patent, but
`these three references, Schulman, U.S. Patent No. 3,942,535; the Fischell
`Article, “A Long Lived, Reliable, Rechargeable Cardiac Pacemaker”; and
`Baumann, 6,227,204, those three references constitute the foundation of
`each of the three Petitions. Now all of these references are prior art under
`102(b). So, there are no prior inventions concerned here. But we’re not just
`talking about a one year prior. In the case of Schulman, the patent was
`issued in 1976. The Fischell article is of similar vintage; and Baumann,
`issued May 8, 2001.
`So, we’re talking about several years to several decades in advance of
`the market. In short this field was well developed and mature before the
`three patents we’re addressing today were even first contemplated. I am
`going to walk through each of those three references at least a little bit in
`detail unless the Bench feels that they adequately understand this technology
`and would prefer that I move on.
`JUDGE JESCHKE: I think we probably have a handle on that. It
`may be best to move to Slide 14, I think, the key issues, because I think
`we’re pretty well versed on the background of the art.
`MR. ISBESTER: Good, thank you, Your Honor. Then I think as
`indicated in Slide 14, the key issues are going to be claim construction.
`There are really two claim construction issues that I think require the court’s
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`attention. The first arises from the ’069 patent, and that is the role of the
`word “as.” We’ve had the famous litigation over the meaning of the word
`“is.” Here we get to address the meaning of the word “as.” The second
`claim construction issue arises with respect to the ’758 and ’148 patents, and
`the question here is: do two “wherein” clauses, one after the other, present
`two separate independent requirements of the claim that can only be met by
`two separate structures or features; or is this a genus/species structure to the
`claim in which the second “wherein” clause merely identified with greater
`specificity the first “wherein” clause. Past claim construction, the key
`question we believe with respect to the ’069 patent is whether the Schulman
`reference and the Fischell article teach measuring the current through the
`battery as required by the claim. And, of course, that the ’148 and ’758
`patents, the key question is whether those two “wherein” clauses are met.
`Do the references teach automatic variation of power in response to some
`values or measurements received from the implanted devices?
`So, with that let me jump to the ’069 patent. The instituted ground as
`shown in Slide 17, Ground 1 is the Schulman reference challenging
`independent Claim 5 and dependent Claim 8. In Ground 3 we add the
`Baumann reference to the three dependent claims. The exact same structure
`with respect to Grounds 2 and 4 by using Fischell. So, the only independent
`claim here is Claim 5. Let me start with that then with independent Claim 5
`in Slide 18. And as you can see, the first element, the implantable device;
`the second element is the external power source. Those two elements I’ve
`greyed out, in Slide 19, and I think that’s because nobody contends that
`those elements add patentability to this claim. They’re simply the context in
`which the two elements, the alignment indictor is relevant.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`Now, I’ve also greyed out, on Slide 19, the last element “wherein said
`external power source automatically varies its power output.” I don’t
`believe -- Mr. Modi may correct me, but I don’t believe that that is disputed,
`that that element is taught by both Schulman and Fischell. When we look at
`Claim 5, I think one of the first questions we have to answer is what is the
`“said current” in that alignment indicator element as set forth in Slide 21.
`The “said current” refers back to the previous elements in which the
`secondary coil of the implanted device generates a current through said
`internal power source. That current created by the secondary coil is the
`“said current” of the alignment indicator element.
`So what is that current as shown in the Specification? Well, there’s
`really not that much shown in the Specification about the electronic specifics
`of this. So if you look at Slide 22, you see Figure 2 shows a rechargeable
`power source. Presumably that’s the same thing as an internal power source
`or battery, and there isn’t an input coming into that. There’s no evidence of
`a recharging current, but there must be somewhere or it wouldn’t be labeled
`a rechargeable power source. Similarly, in Figure 3, as shown on Slide 22,
`the battery, the internal energy source, receives currents apparently from the
`charge regulation module, but specifics are not provided. The Specification,
`as recounted in Slide 23, is not significantly more detailed. The
`Specification states that the alignment indicator is based on the amount of
`current actually flowing through the rechargeable power source. But then it
`goes on to say that it’s not necessarily the power current through the battery,
`rather “an alignment may be made by measuring a value, for example,
`current or voltage, associated with, proportional to, the current passing
`through the rechargeable power source.”
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
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`JUDGE JESCHKE: Mr. Isbester, though, aren’t those last two
`sentences, I mean the claimed “said current” which refers back to the
`element that says “through said internal power source.” So it’s possible,
`isn’t it, that those last two sentences in Slide 23 just relate to something
`that’s unclaimed, right?
`MR. ISBESTER: Exactly, Your Honor, and I think what we’ll see in
`the ’758 and ’148 patents are claim terms that are directed to analog or
`proxies for the current through the battery. What I’d like to conclude on the
`meaning of current and I don’t think this is disputed, Petitioner proposes that
`the current through the internal power source be understood to be the actual
`current through the battery. In the Institution Decision, the Board felt that
`that construction of that term was not necessary and the plain ordinary
`meaning of the term was sufficient for today’s purposes, and that Petitioner
`is quite content to proceed on that basis.
`JUDGE JESCHKE: One question on that issue, Mr. Isbester, is do
`you see any difference at all between the Petition’s construction, in other
`words, measuring the actual current through the internal power source and
`the construction now proposed by Patent Owner in the response, which
`essentially just doesn’t have the word “actual”? Do you see any distinction
`between those two proposed understandings of the claim language issue?
`MR. ISBESTER: The distinction that I think arises is that by saying
`“actual” we were trying to identify specifically where the current is
`measured, and I think that it’s under Patent Owner’s interpretation, the exact
`location of the measurements is less specific. In other words, if there is a
`current that is the current that goes through the battery but is passing through
`several other stages before it gets to the battery, I believe the Patent Owner
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`is saying that is still current through the battery whereas our understanding
`was that the current required by the claim was the current at the inlet to the
`battery. Does that distinction make sense?
`JUDIGE JESCHKE: I believe so, yes. Is the distinction between the
`specific value or you said going through various stages? I’m not sure what
`stages means in electronic, you know, architecture type setting.
`MR. ISBESTER: Well one could imagine, for example, measuring a
`current that is equal to the current through the battery but is actually current
`that is used to power something else and controlled by a micro controller or
`some other control mechanism so as to be equal.
`JUDGE JESCHKE: Sure, but I think that’s not really what, I mean
`the claim doesn’t say measuring a value equal to the amount going. It says
`measuring the current. So, okay, I think I understand your position on that.
`MR. ISBESTER: And I think the Petitioner takes the Board’s point
`that for the purposes of today’s exercise, the distinction between Patent
`Owner’s position and Petitioner’s position is probably good. So, does
`Schulman teach measuring current through the battery? We believe it’s
`undisputed that the current generated by the secondary coil, as shown in
`Slide 25, passes through resister R9 and then through diode CR5 into the
`cathode of the battery and -- but its issue is not so much whether that is the
`current flow, but whether all the current that goes through R9 ends up at the
`battery. The current through R9 governs the frequency of the telemetry
`signals being sent back to the charging unit, then is used to control the
`amount of power that is provided to the implantable device at the primary
`coil through the secondary coil and so forth. And the telemetry signal
`provides that that signal, in order to allow the charging device to drive the
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`current through R9 up to but not past 40 milliamps. When the signal
`indicates a current less than 40 milliamps, the alignment indicator on the
`charging device alerts the patient that there is improper alignment, so the
`patient can realign the head of the charger and make sure that there is proper
`alignment resulting in sufficient transfer of energy and the current from the
`transistor, excuse me the current from the resistor increasing to 40
`milliamps.
`As I mentioned just a moment ago, the question with respect with
`Schulman as listed on Slide 26 is: does it actually disclose measuring a
`current through the battery? And the Patent Owner’s position is that it does
`not, and that it does not because current is diverted from the -- out the back
`of R9 to various other purposes. Now it’s not clear entirely what those other
`purposes are. In a Preliminary Patent Owner’s Response, the Patent Owner
`cited transistor Q6 which is a biasing transistor that’s part of the oscillator
`that creates the signal that communicates to the external device.
`JUDGE JESCHKE: So, I had a question about that actually, Mr.
`Isbester. In column 4 of Schulman at lines 31 to 36, it talks about a small
`amount of current is permitted to flow through transistor Q6. So why should
`we not take that into account when we’re talking about the amount of current
`that is coming as you said out of R9? If it says there’s a small amount of
`current, wouldn’t that indicate that the amount of current coming out of R9
`is in fact not going to be all sent to battery 15?
`MR. ISBESTER: So, I have two replies in response to that. The first
`is that that was an argument that was presented in the Preliminary Patent
`Owner’s Response and presented without any quantification. And the
`Institution Decision notes that there is no reason to think that that is an
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
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`appreciable amount of power. It’s a small amount of power. That’s all we
`know about it. Is it such a small amount of power -- let me put it the other
`way. Is it a sufficient amount of power that the purpose for which you are
`measuring the current is no longer effective? We’re talking about if it’s --
`the battery is hitting that maximum charging current of 40 milliamps, and if
`not move the head on the implanted unit. If the amount of current that
`passes through Q6 is insufficient to prevent the patient from finding that
`right alignment, then it is for the purpose of this exercise or the extension of
`this particular patent, irrelevant.
`JUDGE JESCHKE: What’s the -- can I ask the support for that point
`in the claims themselves? I mean the claim that we’re talking about,
`element 5.3B says “measuring said current,” in other words the current
`through the internal power source. And I’m just trying to understand you
`are discussing -- and I understand that the DI had this “appreciable effect”
`statement in there, but I’m trying to understand what allows us at this stage
`to have that type of leeway. I think in the top of Slide 27 of yours, you use
`the term “irrelevant” here for a certain aspect of the current going through
`admittedly a different part, the shunt through Q7. And I’m trying to
`understand the basis for -- what you are saying is essentially if the current is
`going out of R9 to the two locations that we’re talking about, in other words
`Q7 or Q6, are negligible or non-appreciable, that we shouldn’t consider
`those. And what is the basis for that position?
`MR. ISBESTER: Well, I think it’s fairly standard in reference here to
`recognize there are line losses, leakages there, and inefficiencies
`everywhere. Indeed, the heating patents that we’re going to talk about later
`today is all about the key energy loss in the coils and resulting in the heating.
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`IPR2020-00678 (Patent 7,774,069 B2)
`IPR2020-00680 (Patent 8,457,758 B2)
`IPR2020-00712 (Patent 8,738,148 B2)
`
`There is going to be, in any electrical system, some difference between the
`current measured at one end and another, but the question you ask, where in
`the claim do we find support for this? With all respect, Your Honor, you
`skipped when you quoted from the claim language, “measuring said current
`and reporting an alignment between said primary coil and said secondary
`coil based on said current.” So, the reason that current is being measured
`and the only use being made of that current in that element of the patent of
`the claim is to report the alignment in the primary and the secondary coils.
`JUDGE JESCHKE: But Mr. Isbester, doesn’t that conflict with your
`original proposed construction of this term which is the actual current?
`MR. ISBESTER: Well, and again I go back to what we were
`intending to reflect by the actual current is that when you look at the output
`of the resistor, it goes through one diode into the battery. It’s not a current
`from somewhere else.
`JUDGE JESCHKE: Okay. It’s Slide 27 I think still.
`MR. ISBESTER: Yes. I’d like to point out that in their initial -- in
`their Preliminary Patent Owner’s Response --
`