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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AXONICS MODULATION TECHNOLOGIES, INC.,
`Petitioner,
`v.
`MEDTRONIC, INC.,
`Patent Owner.
`
`
`
`Case IPR2020-00712
`Patent 8,738,148
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`
`
`
`
`Amended Patent Owner’s Sur-Reply1
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`1 Pursuant to the Board’s Order (Paper 64), Patent Owner files this amended sur-
`reply only including citations to the rebuttal declaration in support of certain
`previously submitted arguments in the sur-reply (Paper 34).
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`
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`MEDTRONIC EXHIBIT 2011
`Axonics Modulation Technologies, Inc. v. Medtronic, Inc.
`IPR2020-00712
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`Page 1 of 29
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`I.
`II.
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`C.
`D.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 2
`A.
`The Claims Do Not Support Petitioner’s Construction ........................ 3
`B.
`The Prosecution History Does Not Support Petitioner’s
`Construction .......................................................................................... 5
`The Specification Does Not Support Petitioner’s Construction ........... 6
`Petitioner’s Construction Would Render the First Wherein
`Clause Superfluous ................................................................................ 8
`Petitioner Ignores the Record Evidence Regarding Dependent
`Claims 4, 5, 10, 11, 16, and 17 ............................................................ 10
`III. The Prior Art Does Not Disclose or Suggest All of the Claimed
`Features .......................................................................................................... 11
`A. None of the References Disclose Two Inputs as Required by
`Claims 3-6, 9-12, and 15-18 ................................................................ 12
`Schulman ................................................................................... 12
`Fischell ...................................................................................... 16
`The Fischell-Fischell ’260 Combination .................................. 18
`The Fischell-Fischell ’260 Combination Does Not Render
`Obvious Claims 5, 6, 11, 12, 17, and 18 ............................................. 22
`IV. Conclusion ..................................................................................................... 24
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`E.
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`B.
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010) ............................................................................ 3
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 21
`Homeland Housewares, LLC v. Whirlpool Corp.,
`865 F.3d 1372 (Fed. Cir. 2017) ............................................................................ 3
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 12
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
`933 F.3d 1345 (Fed. Cir. 2019) ............................................................................ 3
`KEYnetik, Inc. v. Samsung Elecs. Co., Ltd.,
`841 Fed. App’x. 219 (Fed. Cir. 2021) ................................................................ 23
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 21
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 4
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) (Reply, 9) ......................................................... 8, 9
`Redline Detection, LLC v. Star Envirotech, Inc.,
`811 F.3d 435 (Fed. Cir. 2015) ............................................................................ 23
`Thorner v. Sony Comput. Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ............................................................................ 4
`Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................................ 8
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`ii
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`Other Authorities
`37 C.F.R. § 42.23(b) ................................................................................................ 12
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`iii
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`Page 4 of 29
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`LIST OF EXHIBITS
`Description
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`Exhibit
`No.
`2001 RESERVED
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`Previously
`Submitted
`X
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`2002 Declaration of Richard Mihran, Ph.D.
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`2003 Curriculum vitae of Dr. Richard Mihran
`2004 Transcript of November 19, 2020 Cross-Examination of
`D. Panescu
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`2005 RESERVED
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`2006 RESERVED
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`2007
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`Statutory Disclaimer of Claims 1, 2, 7, 8, 13, and 14 of
`U.S. Patent No. 8,738,148
`2008 Transcript of February 25, 2021 Cross-Examination of
`Dr. Richard Mihran
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`2009
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`Patent Owner’s Demonstrative Exhibits
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`2010 Rebuttal Declaration of Richard Mihran, Ph.D.
`2011 Redline Comparison of Original Sur-Reply (Paper 34)
`and Amended Sur-Reply
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`X
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`X
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`X
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`X
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`X
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`X
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`iv
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`Page 5 of 29
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`I.
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`Introduction
`Patent Owner Medtronic, Inc. (“PO,” “Patent Owner,” or “Medtronic”)
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`respectfully submits this Sur-Reply to the Reply (Paper 19) filed by Axonics
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`Modulation Technologies, Inc. (“Petitioner” or “Axonics”)1. In its Reply, Petitioner
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`attempts to inject new arguments and evidence to remedy deficiencies in its Petition
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`that are fatal to its invalidity positions. For example, having failed to previously
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`address automatic power variation based on two inputs as required by the plain
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`language of the claims, Petitioner now scrambles to argue and support a contention
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`that each of the prior art references discloses two such inputs. But Petitioner’s failure
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`to address the plain language of the claims in its Petition cannot be remedied with
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`such untimely arguments and evidence, which deserve no consideration. Moreover,
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`even if considered, Petitioner’s newly-minted theories as to the two inputs in each
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`of the references are meritless on their face.
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`Similarly, Petitioner failed to adequately present its obviousness combinations
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`in the Petition, thereby leaving it to the Board and PO to guess as to what the
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`combinations actually involve. In response to PO’s showing that Petitioner failed to
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`provide any evidence or even argument as to a reasonable expectation of success for
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`the proposed combinations, Petitioner is unable to point to anything whatsoever in
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`1 See Paper 32 (Axonics notifying of name change to Axonics, Inc.).
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` 1
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`its Petition. Instead, Petitioner (1) attempts to rely on the Board to remedy
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`Petitioner’s non-existent showing of a reasonable expectation of success, and (2)
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`attempts to shift the burden by arguing that PO fails to demonstrate a lack of a
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`reasonable expectation of success in the suggested combinations.
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`The new arguments and evidence that Petitioner attempts to impermissibly
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`introduce into this proceeding demonstrate that the Petition failed to provide the
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`necessary arguments and evidence to support a finding that any of claims 3-6, 9-12,
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`and 15-18 are invalid. In any event, Petitioner’s new arguments and evidence lack
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`merit.
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`II. Claim Construction
`Comparing Petitioner’s claim construction position in its Petition with that
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`presented in the Reply demonstrates that Petitioner’s Petition missed the mark by
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`arguing for a claim construction that is contrary to the plain and ordinary meaning
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`of the claim language, i.e., there are two separate clauses requiring two inputs for
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`automatic variation of the power output. In the Petition, Petitioner’s basis for its
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`construction was a now-admitted misreading of the specification that ignored the
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`plain and ordinary meaning of the claim terms, where that plain meaning is
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`supported by embodiments where two inputs are used to vary the power output of
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`the external power source. Petitioner now claims that its new arguments and
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`evidence are justified based on PO’s claim constructions, but PO does not propose
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`2
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`to limit the claim language beyond its plain and ordinary meaning. As Petitioner’s
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`Petition makes clear, Petitioner chose to ignore the ordinary meaning and rely
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`exclusively on its incorrect belief that only single-input embodiments existed. As
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`such, it is Petitioner’s own fault that its Petition did not include the arguments and
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`evidence it now seeks to introduce, and such untimely arguments and evidence
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`should not be considered. As demonstrated below, Petitioner’s attempt to resuscitate
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`its invalidity allegations is both untimely and ineffective.
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`A. The Claims Do Not Support Petitioner’s Construction
`The starting point for any claim construction analysis is the language of the
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`claims. See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1375
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`(Fed. Cir. 2017); Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345,
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`1350 (Fed. Cir. 2019) (“We begin with the language of the claims.”) Claims 3, 6, 9,
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`12, 15, and 18 recite separate clauses where an external power source/charging unit
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`automatically varies its power output based on 1) “a value associated with said
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`current” and 2) “a signal proportional to said current” or “measured voltage
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`associated with said current.” The ordinary and customary meaning of such claim
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`language requires both a “value” and either of a “signal proportional to said current”
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`or a “measured voltage associated with said current” be used to vary the power
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`output. (Ex. 2002, ¶¶28-35; Paper 15 (PO’s Response, “Response”), 6-9.) See also
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`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1253-57 (Fed.
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`3
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`Cir. 2010) (rejecting district court’s construction which sought to conflate two
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`separately recited claim elements into one).
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`Petitioner argues that the recited “value” in the first clause can be satisfied by
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`the “measured current” of the second clause, thereby conflating the two inputs into
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`a single “measured current” input. Petitioner construction is at odds with the plain
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`language of the claims, renders the first clause superfluous, and Petitioner cannot
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`provide any justification to support a departure from the ordinary meaning.
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`(Response, 9-11.) Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365-
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`67 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
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`2005) (en banc)) (holding that “claim terms must be given their plain and ordinary
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`meaning to one of skill in the art” in the absence of a definition, disavowal or
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`disclaimer in the intrinsic evidence.) In fact, the testimony of Dr. Mihran, who
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`testified from the perspective of a person of ordinary skill in the art (“POSITA”),
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`supports PO’s reading of the claims. (See, e.g., Ex. 2008, 107:14-110:25 (Dr.
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`Mihran explaining that “[t]he fact that there are two wherein clauses that are recited
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`separately – when read in view of the specification and in the file history, it’s my
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`opinion that, yes, these are two separate inputs that are used to control or
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`automatically vary the power output of the external power source” and “that the
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`second wherein clause is not simply narrowing or further defining recitation of the
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`first wherein clause, but that these are actually separate…[inputs] that are provided
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`to automatically vary the power of the external power source”).)
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`B.
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`The Prosecution History Does Not Support
`Petitioner’s Construction
`The prosecution history cuts against Petitioner’s construction as there was no
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`clear disavowal or disclaimer by Applicant during prosecution that would justify a
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`departure from the plain and ordinary meaning. Petitioner points to a rejection by
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`the Examiner during prosecution of a parent application and speculates as to what
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`the Examiner and Applicant allegedly understood. (Reply, 7.) Petitioner then
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`postulates that what Applicant did not do during prosecution should be the basis for
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`reading the two wherein clauses as a single limitation. (Id., 7 (“Applicant never
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`distinguished Gord by suggesting that the claims require two inputs . . . .”).) Such
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`arguments are both meritless and irrelevant. Absent a clear and unmistakable
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`statement by the Applicant that would constitute a disavowal or disclaimer, the
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`prosecution history cannot force a departure from the plain and ordinary meaning of
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`the claim language. Moreover, the fact that Applicant did not merge the two wherein
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`clauses into a single wherein clause with only a single input during prosecution
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`supports the opposite of Petitioner’s argument, i.e., it actually supports the
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`conclusion that two separate inputs are intentionally specified in the claims.
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`(Response, 13; see also, e.g., Ex. 2008, 109:4-13, 109:24-110:25, 119:14-120:8.)
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`C. The Specification Does Not Support Petitioner’s Construction
`Petitioner does not contend that the specification includes any lexicography,
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`disavowal, or disclaimer that would support reading the two separate clauses as a
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`single limitation. Instead, Petitioner presents a new position that is an untimely
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`attempt to inject previously unmade arguments into the proceeding. Petitioner’s
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`Petition presented the very limited position that the “only difference between this
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`[second] ‘wherein’ clause and the one immediately preceding it (element 3.3) is the
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`change from ‘based on a value associated with’ to ‘based on a signal proportional
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`to,’’ and then Petitioner pointed to the same current/voltage associated with resistor
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`R8 in Schulman that it relied upon for satisfying the first wherein clause to satisfy
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`the second wherein clause. (Pet., 22-23; see also id., 19-22.) Petitioner provided no
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`justification for ignoring the plain meaning of the claim language and reducing two
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`clauses to one. (Id.)
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`But, as Petitioner’s Reply makes clear, the specification describes two
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`separate measurements, thereby leaving Petitioner with no basis for ignoring the
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`plain meaning of the claim language. (Reply, 8 (“Petitioner does not dispute that
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`there are embodiments where two inputs associated with a current passing
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`through the internal battery would be used.”).) Indeed, Petitioner accuses PO of
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`“improperly read[ing] into the claims a requirement that the two wherein clauses are
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`only met by two separate, independent inputs, based only upon its understanding of
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`a single, alternative embodiment in the specification.” (Reply, 8.) But PO is not
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`reading limitations into the claims. The two-input requirement is already present
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`based on the plain and ordinary meaning of the two wherein clauses. (Ex. 2002,
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`¶¶28-34; see also, e.g., Ex. 2008, 109:24-114:9 (Dr. Mihran explaining with
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`reference to Figure 19 and its corresponding description that “inputs, such as the
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`battery voltage, block 328; charging current block, 332; and, charge less than 5
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`milliamps, decision block 340…would be examples of information that is coming
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`from the implant.”), 114:10-120:8 (explaining variation of the power output being
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`controlled additionally based on “the temperature measurement and the power level
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`being dissipated by the external primary coil during the recharging process.”).) It is
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`now undisputed that such multiple-input embodiments are included in the
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`specification to support the plain and ordinary meaning of the claim language. (Ex.
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`2002, ¶35.) (See also Response, 11-13.)
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`Indeed, as demonstrative above, the record evidence includes only PO’s
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`expert providing his opinions regarding the understanding from the perspective of a
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`POSITA of the two wherein clauses under their plain and ordinary meaning in light
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`of the specification disclosing multiple-input embodiments. On the other hand,
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`Petitioner’s expert’s testimony regarding the interpretation of these claim terms is
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`limited to the now admittedly wrong understanding that the specification did not
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`disclose such multiple-input embodiments. (Ex. 1003, 88 (stating that his
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`understanding of these two clauses “is consistent with the specification, which does
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`not describe two separate measurements”) (emphasis added).)
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`D.
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`Petitioner’s Construction Would Render
`the First Wherein Clause Superfluous
`No longer able to contend that a single-input is the only possible reading of
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`the two wherein clauses, Petitioner now argues for the first time that a single-input
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`can still satisfy both of the wherein clauses. (Reply, 6-7.) But Petitioner’s argument
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`that one value that is a signal proportional to the current or a measured voltage
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`associated with the current can satisfy both limitations would render the first wherein
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`clause that recites the “value” input superfluous. Wasica Fin. GmbH v. Cont'l Auto.
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`Sys., Inc., 853 F.3d 1272, 1288 (Fed. Cir. 2017) (“It is highly disfavored to construe
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`terms in a way that renders them void, meaningless, or superfluous.”) As Petitioner
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`acknowledges, if the two wherein clauses are read as proposed by Petitioner, then
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`the first wherein clause is meaningless because it would always be met by the “signal
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`proportional to”/“measured voltage” terms in the second wherein clause. (Reply, 6
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`(“Thus, when the second species wherein limitation is met, it necessarily meets the
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`first genus wherein limitation.”).)
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`Petitioner reliance on PPC Broadband, Inc. v. Corning Optical Commc’ns
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`RF, LLC, 815 F.3d 747 (Fed. Cir. 2016) (Reply, 9), is misplaced. In PPC
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`Broadband, Corning argued that PPC Broadband’s construction should be rejected
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`because it excluded multiple embodiments disclosed in the patent, and further
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`argued, just as Petitioner argues here, that Corning’s broader reading should be
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`adopted because it would include all of the disclosed embodiments. PPC
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`Broadband, Inc., 815 F.3d at 754-55. The Court rejected the notion that the broadest
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`reasonable interpretation (“BRI”) is the interpretation that would include as many
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`disclosed embodiments as possible, and explained that each and every claim need
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`not be interpreted to cover each and every embodiment. Id. at 755-56.2 Here it is
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`undisputed that there are multiple embodiments, and it is also undisputed that the
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`ordinary meaning is supported by and covers more than one such embodiment.
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`(Reply, 8.)
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`2 Recognizing that it was applying the BRI standard and not the standard set forth in
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`Phillips (which is being applied in this proceeding), the Court also noted that “it is
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`possible to have two different forums construing the same term in the same patent
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`in a dispute involving the same parties but using different standard.” Id. at 756. The
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`Phillips standard reinforces PO’s interpretation of the claims, which is consistent
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`with the claim language, specification, and prosecution history, as discussed above
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`and in the Response.
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`E.
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`Petitioner Ignores the Record Evidence
`Regarding Dependent Claims 4, 5, 10, 11, 16, and 17
`PO explained that dependent claims 4, 5, 10, 11, 16, and 17 require a separate
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`input (e.g., a current or voltage proportional to the current passing through the
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`internal battery). (Response, 13-14.) Petitioner does not dispute that the terms set
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`forth in the last two clauses of the independent claims (e.g., claim 3) and the
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`dependent claims (e.g., claims 4-5) have different meanings. (Reply, 10.) But
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`Petitioner alleges that “the dependent claims that add yet a third wherein clause must
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`describe a system in which the external power source varies the power based on three
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`separate inputs” and that “Medtronic nowhere suggests that the specification teaches
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`this.” (Id., 11.) Not true.
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`PO explained that the plain language of the claims and the specification
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`support its understanding of claims 3-5, 9-11, and 15-17. (Response, 14; Ex. 2002,
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`¶38.) Moreover, Petitioner ignores Dr. Mihran’s testimony that Petitioner’s counsel
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`elicited during cross-examination. When asked, Dr. Mihran explained that the ’148
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`patent describes an external charger which varies its power output based on at least
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`three inputs. (See, e.g., Ex. 2008, 114:10-120:8 (explaining variation of the power
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`output being controlled based on “the temperature measurement and the power level
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`being dissipated by the external primary coil during the recharging process” in
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`addition to the “battery voltage input” and the “charging current input”); see also
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`infra Section II.C.) Petitioner was aware of this testimony from Dr. Mihran
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`regarding the specification’s support for multiple-input embodiments, yet chose not
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`to address it in its Reply or submit any evidence to the contrary. Thus, Petitioner’s
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`suggestion that PO’s interpretation of dependent claims 4, 5, 10, 11, 16, and 17 is
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`unsupported is contradicted by the record evidence. Indeed, the claim language and
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`specification confirm that these dependent claims require a separate input.
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`III. The Prior Art Does Not Disclose or Suggest All of the Claimed Features
`PO demonstrated in the Response that Petitioner has not shown that the
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`claims-at-issue are invalid. PO fails to rebut PO’s arguments and evidence. Instead,
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`Petitioner shifts its theories and raises new arguments and evidence. Petitioner’s
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`belated attempt to bring in such evidence and arguments confirms the inadequacy of
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`the positions set forth in the Petition.
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`For instance, it is undisputed that Petitioner did not argue or provide evidence
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`in the Petition that Schulman, Fischell, and the combination of Fischell and Fischell
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`’260 disclose two inputs as required by claims 3, 6, 9, 12, 15, and 18 and that
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`shortfall in the Petition is fatal to all of the grounds raised with respect to these
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`claims. But Petitioner now shifts its theories and presents new arguments and
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`evidence (see, e.g., Sections III.A-V.B of the Reply). See, e.g., Consolidated Trial
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`Practice Guide (November 2019) (“Consolidated TPG”) at 73 (“Petitioner may not
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`submit new evidence or argument in reply that it could have presented earlier, e.g.
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`to make out a prima facie case of unpatentability.”), 74 (“‘Respond’ in the context
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`of 37 C.F.R. § 42.23(b) does not mean proceed in a new direction with a new
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`approach as compared to the positions taken in a prior filing.”), 74 (“While replies
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`and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises
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`a new issue or belatedly presents evidence may not be considered.”) (citing
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed.
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`Cir. 2016). Indeed, allowing Petitioner to raise such new arguments and evidence at
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`this late stage is highly prejudicial to PO given it does not get an opportunity to rebut
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`such new allegations with its own evidence (e.g., expert testimony), which PO would
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`have submitted if it were allowed to do so. The Board simply should not consider
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`Petitioner’s improper new arguments and evidence.
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`In any event, as demonstrated in the Response and below, Petitioner’s original
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`arguments and new arguments (even if considered) fail.
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`A. None of the References Disclose Two Inputs
`as Required by Claims 3-6, 9-12, and 15-18
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`Schulman
`Schulman does not disclose that an external power source automatically varies
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`its power output based on two inputs, where one input is a value associated with said
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`current passing through the internal battery and the other input is a signal
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`proportional to the current or measured voltage associated with the current passing
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`through the internal battery, as required by independent claims 3, 6, 9, 12, 15, and
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`18. (Ex. 2010, ¶¶3-8.)
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`As an initial matter, Petitioner has altogether changed its unpatentability
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`theories by way of its Reply in light of PO demonstrating Petitioner’s unclear
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`mapping in the Petition. As PO noted, while Petitioner appears to point to a value
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`related with resistor R8 for the second input (a signal proportional to said current or
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`measured voltage associated with said current), it is unclear whether Petitioner is
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`pointing to a value related to the resistor R9 or a value related with resistor R8 for
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`the first input (a value associated with said current). (Response, 20-21.) Because
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`any value related to resistor R8 is not an input to the external charger that is then
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`used to automatically vary the power output, and thus, Schulman does not disclose
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`the claim limitations at-issue. (See, e.g., Response, 23.)3
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`3 Notably, Petitioner does not rebut the record evidence and arguments that the
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`current through or the voltage across resistor R8 is not used by the external charger
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`to automatically vary the power output. (See generally Reply, 11-14.) Thus, based
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`on Petitioner’s surrendering of the theory advanced in the Petition, the Board should
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`find based on the undisputed evidence and argument that Petitioner has not met its
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`burden to show independent claims 3, 6, 9, 12, 15, and 18 are unpatentable.
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`13
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`Page 18 of 29
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`Now, in its impermissible attempt to show that Schulman discloses two inputs
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`
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`as required by the claim, Petitioner completely abandons its reliance on the value
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`related to resistor R8 (which it appeared to rely on for both inputs in the Petition)
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`and shifts its reliance to the value related to resistor R9 for both claimed inputs.
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`(Reply, 12 (“To the extent, as Medtronic contends, R8 is not considered an ‘input,’
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`Schulman discloses that the current through R9 can increase…”).) Such a shift in
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`theory is not just impermissible as reflected by the above-noted portions of the
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`Board’s Consolidated TPG, it is highly prejudicial to PO. For example, at this late
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`stage in the proceeding PO is not permitted to submit any evidence (including expert
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`testimony) to address Petitioner’s new arguments and evidence.
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`In any event, even if the Board were to consider Petitioner’s new arguments
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`and evidence, which it should not, Petitioner still has not shown that Schulman
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`discloses the requirements of the two distinct wherein clauses of independent claims
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`3, 6, 9, 12, 15, and 18.
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`For example, Petitioner’s new argument points to “the voltage across the
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`output leads 51 and 52” as the “value” corresponding to the first input. (Reply, 12.)
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`But Petitioner does not show that the voltage across those leads is ever provided to
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`the external power source, and therefore the external power source cannot vary its
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`power output based on that voltage. (Ex. 2010, ¶4.) The limited explanation
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`provided by Petitioner, which is new and improper, does not change the fact that the
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`14
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`Page 19 of 29
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`current through R9 is the only measurement provided to the external power source.
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`(Id., ¶5.) The single measurement for resistor R9 cannot satisfy the requirement of
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`two inputs. (Response, 21-23.) Moreover, Petitioner does not explain how the
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`voltage across leads 51 and 52 can be determined from the current through resistor
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`R9 and simply alleges that the current through resistor R9 will be increased if the
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`zener diode turns on. (Reply, 12-13.) Therefore, even with its new arguments and
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`evidence, Petitioner has not established that Schulman discloses two inputs as
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`required by claims 3, 6, 9, 12, 15, and 18. (Ex. 2010, ¶8.)
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`Petitioner asserts that there is no requirement in the claims that “the external
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`charging circuity receive a measurement of an input separate from the current
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`through R9” and that “the ’148 patent does not require telemetry of two separate
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`measured values.” (Reply, 13.) It is undisputed that the current through R9 is the
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`only measurement provided to the external power source (id., 14), and Petitioner
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`new argument is nothing more than a re-packaged version of its contention that the
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`two wherein clauses should be read as one. Indeed, Petitioner’s argument that the
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`claims do not require two values to be telemetered is simply a red herring attempting
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`to shift the focus away from the fact that Petitioner has not established that the
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`voltage across leads 51 and 52 is ever used as a basis for automatically varying the
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`power output of the external power source. From the standpoint of external power
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`source, the only value that is being used to vary the power output in Schulman is the
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`15
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`Page 20 of 29
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`current through resistor R9, as acknowledged by Petitioner’s own declarant, Dr.
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`Panescu, and confirmed by the record evidence. (Ex. 1003, ¶75; Ex. 2002, ¶46; Ex.
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`1005, 6:35-38; Ex. 2010, ¶¶4-7.)4
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`Fischell
`Fischell also does not disclose that an external power source automatically
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`varies its power output based on two inputs. To the extent it can be understood,
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`Petitioner’s argument appears to be that the pulse rate of the telemetry in Fischell
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`varies with the current, and because “the values of charging current and of charging
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`voltage are strongly correlated” the telemetry “can be understood to be capable of
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`controlling the charging energy of the external charger based on the charging
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`voltage….” (Reply, 17 (emphasis added).) But Petitioner’s new argument, even if
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`considered, fails to demonstrate that Fischell discloses that the power output is
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`automatically varied based on two separate inputs (a “value” and “a signal
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`proportional to said current”), as required by independent claims 3, 9, and 15. (Ex.
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`2010, ¶¶9-12.)
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`4 Petitioner’s arguments regarding dependent claims 4, 5, 10, 11, 16, and 17 not
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`requiring a separate input (Reply, 15) should be rejected for reasons similar to those
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`explained above in Section II.E.
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`16
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`Page 21 of 29
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`Moreover, Petitioner’s argument appears to purport that if the current
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`Patent Owner’s Sur-Reply
`Case IPR2020-00712
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`
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`measurement is sent, then the voltage could be (not is) derived from that current
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`measurement because those values are “strongly correlated.” (Reply, 17.) Such an
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`argument does not even rise to the level of anticipation based on inherency and
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`instead is no more than an unsupported obviousness contention. (Reply, 17 (“The
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`charge voltage can regulate ….”); id. (“Fischell teaches how to employ circuit
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`components … that can be used to [convert] charging current to charging voltage
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`values, or vice versa.”).)
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`The inability of Petitioner to conjure up a new anticipation argument for
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`Fischell is clear from the testimony of Petitioner’s declarant: “Fischell’s telemetry
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`circuit can be indirectly understood to be capable of controlling the charging
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`energy of the external charger based on the charging voltage….” (Ex. 1012,
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`¶[0027].) Perhaps recognizing that an indirect capability to do something does not
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`amount to actually doing what is required to show anticipation, Petitioner’s Reply
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`makes a similar allegation, but removes “indirectly” from the statement. (Reply, 17
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`(“Fischell’s telemetry circuit can be understood to be capable of controlling the
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`charg
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