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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`AXONICS MODULATION TECHNOLOGIES, INC.
`Petitioner
`v.
`
`MEDTRONIC, INC.
`Patent Owner
`
`____________________
`
`Case IPR2020-00712
`Patent 8,738,148
`____________________
`
`DECLARATION OF DR. RICHARD T. MIHRAN
`
`
`
`
`
`
`Page 1 of 37
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`MEDTRONIC EXHIBIT 2002
`Axonics Modulation Technologies, Inc. v. Medtronic, Inc.
`IPR2020-00712
`
`

`

`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`BACKGROUND AND QUALIFICATIONS ................................................. 2
`
`III. MATERIALS REVIEWED ............................................................................ 6
`
`IV. LEVEL OF ORDINARY SKILL .................................................................... 7
`
`V.
`
`THE ’148 PATENT ......................................................................................... 9
`
`VI. CLAIM CONSTRUCTION ..........................................................................10
`
`A.
`
`Independent claims 3, 6, 9, 12, 15, and 18 ..........................................11
`
`B. Dependent claims 4, 5, 10, 11, 16, and 17 ..........................................16
`
`VII. OPINIONS ON DR. PANESCU’S APPLICATION OF THE
`REFERENCES TO THE CLAIMS ...............................................................18
`
`A. Opinions on Dr. Panescu’s Application of Schulman in Ground
`1 ...........................................................................................................18
`
`1.
`
`2.
`
`Dr. Panescu’s Analysis Does Not Show How Schulman
`Discloses Independent Claims 3, 6, 9, 12, 15, and 18 ..............19
`
`Dr. Panescu’s Analysis Does Not Show How Schulman
`Discloses Dependent Claims 4, 5, 10, 11, 16, and 17 ...............27
`
`B. Opinions on Dr. Panescu’s Application of The Fischell Article
`in Ground 2 ..........................................................................................28
`
`1.
`
`2.
`
`Dr. Panescu’s Analysis Does Not Show How The
`Fischell Article Discloses Independent Claims 3, 9, and
`15 ...............................................................................................28
`
`Dr. Panescu’s Analysis Does Not Show How The
`Fischell Article Discloses Dependent Claims 4, 10, and
`16 ...............................................................................................30
`
`C. Opinions on Dr. Panescu’s Application of the Fischell Article
`in View of Fischell ’260 in Ground 3 .................................................31
`
`i
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`Page 2 of 37
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
`
`1.
`
`2.
`
`Dr. Panescu’s Analysis Does Not Show How the Fischell
`Article-Fischell ’260 Combination Teaches Independent
`Claims 6, 12, and 18 .................................................................31
`
`Dr. Panescu’s Analysis Does Not Show How the Fischell
`Article-Fischell ’260 Combination Teaches Dependent
`Claims 5, 11, and 17 .................................................................33
`
`VIII. CONCLUSION ..............................................................................................34
`
`
`
`
`
`ii
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`

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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
`
`I, Dr. Richard T. Mihran, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Medtronic, Inc. (“Patent Owner”) as an
`
`independent expert consultant in this proceeding before the United States Patent and
`
`Trademark Office (“PTO”) regarding U.S. Patent No. 8,738,148 (“the ’148 patent”)
`
`(Ex. 1001).1 I understand that Axonics Modulation Technologies, Inc. (“Petitioner”)
`
`is the Petitioner in this proceeding and that it is challenging the patentability of
`
`claims 1-18 of the ’148 patent (“the challenged claims”). I also understand that
`
`Petitioner has submitted a declaration from Dr. Dorin Panescu (Ex. 1003) in support
`
`of its challenge to claims 1-18.
`
`2.
`
`I have been asked to provide my opinion regarding certain issues raised
`
`by Dr. Panescu in connection with references he discussed in his declaration and
`
`claims of the ’148 patent from the viewpoint of a person of ordinary skill in the art
`
`at the time of the invention of the ’148 patent. My opinions are set forth below.2 In
`
`
`1 I understand that the documents I identify herein have been labeled with exhibit
`
`numbers, which I track in this Declaration.
`
`2 To the extent that I do not address certain of Dr. Panescu’s statements or opinions
`
`in this declaration, this should not be construed to mean that I necessarily agree with
`
`them.
`
`1
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`arriving at these opinions, I have considered various materials associated with this
`
`proceeding (which are discussed and/or listed below in Section III).
`
`3.
`
`I am being compensated for my work in this proceeding. However, my
`
`compensation is in no way contingent on the nature of my findings, the presentation
`
`of my findings in testimony, or the outcome of this or any other proceeding. I have
`
`no other interest in this proceeding.
`
`4.
`
`I understand that I may be asked to provide additional opinions or
`
`explain or expand on my opinions in this declaration, and thus reserve the right to
`
`supplement my opinions regarding the ’148 patent upon consideration of other
`
`arguments, evidence, materials, testimony, and/or information that may be presented
`
`to me.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`5. My qualifications are stated more fully in my curriculum vitae (Ex.
`
`2003). Here, I provide a brief summary of my qualifications.
`
`6.
`
`I am a Professor Adjunct in the Department of Electrical, Computer and
`
`Energy Engineering at the University of Colorado at Boulder, where I have been on
`
`the faculty since 1990. I have taught and performed research in both academic and
`
`industrial settings pertaining to the development of electronic, optical and ultrasonic
`
`devices and systems for medical and other applications for over 35 years. Included
`
`among the courses I teach is an upper-level and graduate course which focuses on
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`
`
`2
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`implantable devices that interface with the human central and peripheral nervous
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`system. Systems and devices addressed in this course include a variety of
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`implantable medical devices which are the subject of this Declaration, including
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`spinal cord stimulation (SCS) devices, cochlear and visual system implants, and
`
`syringe-implantable microstimulators used in a variety of neuromodulation
`
`applications, including SCS and functional electrical stimulation (FES). Many of
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`these implantable medical devices utilize rechargeable battery power sources in
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`conjunction with transcutaneous external charging systems.
`
`7.
`
`I also teach additional graduate level courses in the area of biomedical
`
`engineering
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`that
`
`focus on
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`the design of
`
`implantable pacemakers and
`
`cardioverter/defibrillators, and have previously taught graduate-level courses
`
`covering the generation, propagation and processing of neural signals. I have also
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`taught a wide variety of classes at the undergraduate and graduate level covering
`
`more general electrical and computer engineering theory and practice, including
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`circuit theory, microelectronics, power electronics, communications, and signal
`
`processing.
`
`8.
`
`I received a BS in Electrical Engineering and Applied Physics from
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`Case Western Reserve University, Cleveland, Ohio in 1982. I further received an
`
`MS in Electrical and Computer Engineering and a Ph.D. in Electrical Engineering
`
`from the University of Colorado at Boulder in 1988 and 1990, respectively.
`
`
`
`3
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`9. My doctoral dissertation and early academic research focused on the
`
`modulation of neural and cardiac cell excitability generally, and the interaction of
`
`electrical and mechanical stimuli on nerve cells to modulate excitability, in
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`particular. I have authored numerous publications addressing cardiac and nerve cell
`
`electrophysiology, including the behavior of these cell types in response to electrical
`
`stimuli applied with both intracellular and extracellular electrodes, and the
`
`modulation of these responses by combinations of electrical and mechanical stimuli.
`
`10. As part of my faculty role at the University of Colorado, I participate
`
`in the supervision of doctoral research performed by graduate students as part of
`
`obtaining their doctoral degrees.
`
`11. Since obtaining my Ph.D. in 1990, I have actively consulted in industry
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`in many areas of technology development, analysis and assessment, directed to both
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`product development and analysis of intellectual property portfolios, patent
`
`infringement and validity.
`
` In the area of spinal cord stimulation and
`
`neuromodulation, I have served as a technical expert consultant on behalf of BSC
`
`during the due-diligence phase of their acquisition of Advanced Bionics in 2004.
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`My role was to assist outside counsel handling the technical due-diligence for this
`
`acquisition, and, in particular, to evaluate Advanced Bionics rechargeable SCS
`
`technology and related intellectual property within the context of competing SCS
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`systems manufactured by major competitors of the time, including Medtronic and
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`
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`4
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`Advanced Neuromodulation Systems
`
`(ANS).
`
`
`
`I also evaluated other
`
`neuromodulation technologies of Advanced Bionics, including their cochlear
`
`implant and microstimulator (BION) technologies, some of which also employed
`
`rechargeable battery systems. I also served as an expert witness on behalf of BSC
`
`in another district court litigation between BSC and Nevro Corp. (“Nevro”), Nevro
`
`Corp. v. Boston Scientific Corp. et al., No. 3:16-cv-06830 (N.D. Cal.).
`
`12.
`
`I have also served as a technical consultant in the area of implantable
`
`spinal cord stimulation devices and systems for St. Jude Medical, as well as
`
`Greatbatch’s QIG Group (Nuvectra), during the early development of their spinal
`
`cord stimulation system.
`
`13.
`
` I have consulted extensively in the area of inductively-powered RFID
`
`devices and networks for over twenty-five years, including various forms of
`
`implantable RFID devices using both near-field and far-field wireless power transfer
`
`and communication technologies, and further including incorporation of sensors to
`
`provide monitoring of a variety of different physical parameters of devices to which
`
`they are attached or embedded, including measurement of temperature, pressure, and
`
`chemical analytes.
`
`14.
`
`I have served as an expert witness in many patent litigation matters in
`
`the areas of implantable medical devices, including spinal cord stimulation, vagal
`
`nerve stimulation, pacemakers, implantable cardioverter/defibrillators (ICDs),
`
`
`
`5
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`syringe-implantable RFID devices, orthopedic implants, RF tissue ablation, and
`
`stereotactic medical imaging. I have also served as an expert witness in other
`
`technology areas, including wired and wireless telecommunications, radio frequency
`
`identification systems, power management in portable devices, computers and
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`computer networks, and others.
`
`15. As part of this expert witness activity, I have been admitted and
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`recognized in U.S. District Courts as a technical expert in seven District Court patent
`
`trials, as well as at two patent trials before the International Trade Commission
`
`(ITC).
`
`16.
`
`I am an inventor on three issued U.S. patents and one Canadian patent
`
`associated with some of these activities, two involving computer-based Doppler
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`radar signal processing and data analysis, and two involving data telemetry utilizing
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`spread spectrum wireless links and database analysis systems for agricultural
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`management.
`
`17. Additional information about my professional and educational
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`background, as well as a listing of other matters on which I have provided consulting
`
`and/or provided testimony as a technical expert, are detailed in Ex. 2003.
`
`III. MATERIALS REVIEWED
`
`18. The opinions contained in this Declaration are based on the materials I
`
`reviewed, my professional judgment, as well as my education, experience, and
`
`
`
`6
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`knowledge regarding methods and components used for charging of batteries in
`
`portable devices, including implantable medical devices.
`
`19.
`
`In forming my opinions expressed in this Declaration, I reviewed the
`
`’148 patent (Ex. 1001), the file history of the ’148 patent (Ex. 1002); the Declaration
`
`of Dr. Dorin Panescu (Ex. 1003); U.S. Patent No. 3,942,535 to Schulman
`
`(“Schulman”) (Ex. 1005); A Long-Lived, Reliable, Rechargeable Cardiac
`
`Pacemaker, by R.E. Fischell et al. (“Fischell Article”) (Ex. 1006); U.S. Patent No.
`
`3,888,260 to Fischell (“Fischell”) (Ex. 1007); and any other materials I refer to in
`
`this Declaration in support of my opinions.
`
`20. My opinions contained in this Declaration are based on the documents
`
`I reviewed and my knowledge and professional judgment. My opinions have also
`
`been guided by my appreciation of a person of ordinary skill’s understanding of the
`
`state of the art at the time of the invention for the ’148 patent, which I have been
`
`asked to assume is around and including early 2005 (including April 29, 2005, which
`
`is the filing date of U.S. Application No. 11/119,361 from which the ’148 patent
`
`claims priority).
`
`IV. LEVEL OF ORDINARY SKILL
`
`21. Based on my knowledge and experience, I understand what a person of
`
`ordinary skill in the art would have known at the time of the invention of the ’148
`
`patent. In my opinion, based on my review of the ’148 patent, the technology, the
`
`
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`educational level and experience of active workers in the field, the types of problems
`
`faced by active workers in the field, the solutions found to those problems, the
`
`sophistication of the technology in the field, and drawing on my own experience, a
`
`person of ordinary skill in the art at the time of the claimed invention would have
`
`had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or
`
`biomedical engineering) with at least two years of experience with the design of
`
`components (e.g., circuitry) for implantable medical devices and associated external
`
`devices (e.g., a charging unit). More education can substitute for practical
`
`experience and vice versa. For example, graduate level education could supplement
`
`relevant work experience and significant work experience could supplement
`
`education experience.
`
`22. My analysis of the ’148 patent and my opinions in this declaration are
`
`from the perspective of one of ordinary skill in the art, as I have defined it above, at
`
`the time of the invention.
`
`23.
`
`I understand that Dr. Panescu proposes that a person of ordinary skill
`
`at the time of the invention would have had at least a bachelor’s degree in electrical
`
`engineering or equivalent as well as at least five years of experience in the industry
`
`working with implantable medical devices such as cardiac pacemakers or
`
`defibrillators. (Ex. 1003, ¶ 40.)
`
`
`
`8
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`24. While I do not fully agree with Dr. Pansecu’s definition of a person of
`
`ordinary skill, my opinions, discussed below, remain the same even under Dr.
`
`Panescu’s definition of ordinary skill. By 2005, I qualified as a person of ordinary
`
`skill under both my and Dr. Panescu’s definitions of such a person.
`
`V. THE ’148 PATENT
`
`25.
`
`It is my understanding that the ’148 patent has a priority date of April
`
`29, 2005. (Ex. 1001 at Cover.) At the time, implantable medical devices, such as
`
`drug infusion pumps and neurostimulators, sometimes included rechargeable
`
`batteries as a source of power. (Ex. 1001 at 1:25-28, 60-61.) These batteries are
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`typically recharged transcutaneously using inductively-transferred energy between
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`an external source of power and the implant. While it is desirable to complete the
`
`charging as quickly as possible, transfer of energy across the skin may result in
`
`heating, particularly if the rate of energy transfer is high. The ‘148 Patent teaches
`
`that there was a need for a system and method to more efficiently transfer energy
`
`transcutaneously for charging these batteries in order to limit potentially deleterious
`
`heating of the surrounding body tissue and to limit the charging time required to
`
`achieve a desired charge. (Id. at 3:3-36.) It further describes the importance of
`
`proper alignment of the external charger and implantable device in achieving
`
`maximum charging efficiency, explaining that prior systems did not make it easy to
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`
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`properly align the coils in the external charger and the implantable device. (Id. at
`
`3:37-52.)
`
`26. The ’148 patent discloses addressing these problems through a system
`
`including an external power source that, among other things, automatically varies
`
`the power output of the external charging device as a function of parameters
`
`associated with the current passing through the internal power source. (Id. at 3:56-
`
`4:15; 20:65-22:18, FIG. 19.)
`
`27.
`
`In particular, the ’148 patent discloses that the automatic variation of
`
`the power output of the external charging device could be more precisely controlled
`
`by utilizing multiple inputs relating to the current passing through the internal power
`
`source. The ‘148 Patent describes the use of multiple inputs to the external charging
`
`device, as opposed to a single input, so as to provide more precise control over, and
`
`thus more safety and efficiency during, the charging process. (Ex. 1001 at 14:18-
`
`43; 21:27-57, FIG. 19.)
`
`VI. CLAIM CONSTRUCTION
`
`28.
`
`I have been informed and understand that claim terms are typically
`
`given their ordinary and customary meanings, as would have been understood by a
`
`person of ordinary skill in the art at the time of the invention. In considering the
`
`meaning of the claims, however, I understand that one must consider the language
`
`of the claims, the specification, and the prosecution history of record.
`
`
`
`10
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`Page 13 of 37
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`

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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
`
`A.
`
`Independent claims 3, 6, 9, 12, 15, and 18
`
`29. Each of independent claims 3, 6, 9, 12, 15, and 18 recite limitations of
`
`both (1) “a value associated with said current” and (2) “a signal proportional to said
`
`current” or “measured voltage associated with said current.” For example, claims 3
`
`and 9 of the ’148 patent include two distinct “wherein” clauses, reproduced below,
`
`with two separate inputs to the external power source that serve as a basis for
`
`automatic variation of the power output:
`
`wherein said external power source automatically varies its power
`
`output based on a value associated with said current passing through
`
`said internal battery; and
`
`wherein said external power source automatically varies its power
`
`output based on a signal proportional to said current passing through
`
`said internal battery.
`
`
`(Ex. 1001 at 22:65-23:3 (claim 3), emphasis added, 24:1-6 (claim 9) (same).) Dr.
`
`Panescu refers to these limitations in claim 3 as limitations 3.3-3.4 and in claim 9 as
`
`limitations 9.4-9.5. (Ex. 1003, Ex. B at 70-71, 79-80.)3
`
`
`3 Dr. Panescu cites to Exhibit B of his declaration in various portions of his
`
`declaration. (See, e.g., Ex. 1003 at ¶¶ 54, 59, 64.) When citing to Exhibit B in my
`
`declaration, I cite to the page numbers assigned to Exhibit 1003 (Dr. Panescu’s
`
`declaration). (See, e.g., Ex. 1003, Ex. B at 61 (first page of Exhibit B).)
`
`
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`30. Claim 15 of the ’148 patent similarly includes two distinct clauses,
`
`reproduced below, with two separate inputs used by the charging unit as a basis for
`
`automatic variation of the power output:
`
`said charging unit automatically varying its power output based on a
`
`value associated with said current passing through said internal battery;
`
`and
`
`wherein said automatically varying step automatically varies its power
`
`output based on a signal proportional to said current passing through
`
`said internal battery.
`
`
`(Ex. 1001 at 24:62-67, emphasis added.) Dr. Panescu refers to these limitations in
`
`claim 15 as limitations 15.2-15.3. (Ex. 1003, Ex. B at 94-95.)
`
`31. As another example, claims 6 and 12 of the ’148 patent include two
`
`distinct “wherein” clauses, reproduced below, with two separate inputs to the
`
`external power source used as a basis for automatic variation of the power output:
`
`wherein said external power source automatically varies its power
`
`output based on a value associated with said current passing through
`
`said internal battery; and
`
`wherein said external power source automatically varies its power []
`
`output based on a measured voltage associated with said current
`
`passing through said internal battery.
`
`
`
`
`
`12
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
`
`(Ex. 1001 at 23:27-33 (claim 6), emphasis added, 24:29-34 (claim 12) (same).) Dr.
`
`Panescu refers to these limitations in claim 6 as limitations 6.3-6.4 and in claim 12
`
`as limitations 12.4-12.5. (Ex. 1003, Ex. B at 72-73, 82-84.)
`
`32. Claim 18 of the ’148 patent similarly includes two distinct clauses,
`
`reproduced below, with two separate inputs used by the charging unit for automatic
`
`variation of the power output:
`
`said charging unit automatically varying its power output based on a
`
`value associated with said current passing through said internal battery;
`
`and
`
`wherein said automatically varying step automatically varies its power
`
`output based on a measured voltage associated with said current
`
`passing through said internal battery.
`
`
`(Ex. 1001 at 25:19-25, emphasis added.)
`
`33. A person of ordinary skill in the art would have understood that each of
`
`the claims above requires two separate inputs to the external power source (or
`
`charging unit) used as a basis for automatically varying the power output. For
`
`example, limitations 3.3/3.4, 9.4/9.5, and 15.2/15.3 each require both (1) a value
`
`associated with said current; and (2) a signal proportional to said current). For
`
`example, limitations 6.3/6.4, 12.4/12.5, and 18.2/18.3 each require both (1) a value
`
`associated with said current; and (2) a measured voltage associated with said
`
`
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`13
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`current). As discussed below, both the claims and the specification support this
`
`understanding of the claims.
`
`34. First, the plain language of claims 3, 6, 9, 12, 15, and 18 supports that
`
`each claim requires two separate inputs. For example, the second wherein clause of
`
`claims 3 and 9 (i.e. limitations 3.3 and 9.4) does not refer back to the “value” in the
`
`first wherein clause. Nor do the recited “a signal proportional to” or “a measured
`
`voltage associated with” in limitations 15.3, 6.4, 12.5, and 18.3 refer back to the
`
`“value” in the preceding limitation. (Id.) Moreover, as can be seen from its frequent
`
`use throughout the claims of the ’148 Patent, Patent Owner was clearly aware of
`
`how to refer back to terms, but chose not to as it relates to “value” in limitations 3.3,
`
`6.3, 9.4, 12.4, 15.2, and 18.2. (See generally Ex. 1001 at 22:28-25:25.) This
`
`distinction is readily observable in limitations 3.3/3.4, 6.3/6.4, 9.4/9.5, 12.4/12.5,
`
`15.2/15.3, and 18.2/18.3 themselves, which demonstrate the consistent use of
`
`referring back to a previously recited claim element (e.g., “said external power
`
`source” referring to previously recited “an external power source,” “said current”
`
`referring to previously recited “a current,” and “said internal battery” referring to
`
`previously recited “an internal battery”). (Ex. 1001 at 22:65-23:3, 23:27-33, 24:1-
`
`6, 24:29-34, 24:62-65, and 25:19-25.)
`
`35. This understanding of the claims is also supported by the specification,
`
`which describes that the power source can automatically vary its power output based
`
`
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`14
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`on multiple inputs, where each input is associated with or proportional to “said
`
`current passing through said internal battery.” In one example, the specification
`
`describes an example in which two separate inputs are utilized in determining how
`
`to vary the power output of the external power source 50: (1) the voltage across
`
`rechargeable power source 24; and (2) the charging current through rechargeable
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`power source 24:
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`If no over temperature condition exists, charging unit 50 checks (328)
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`to determine if the voltage across rechargeable power source 24 is over
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`a voltage at which the charging rate should begin to decrease, e.g., 4.05
`
`volts. If the voltage across rechargeable power 24 is greater than 4.05
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`volts, then charging unit 50 begins to taper charging power (330).
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`If the voltage across rechargeable power source 24 is not over 4.05
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`volts, charging unit 50 checks (332) to determine whether the charging
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`current through rechargeable power source 24 is over a current rate that
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`is not desirable, e.g., 50 milliamperes. If the charging current is over 50
`
`milliamperes, then the charging power level is decreased (334) by an
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`appropriate, e.g., by 35 milliwatts.
`
`
`(Ex. 1001 at 21:58-22:3.) As described in the passage above, both a voltage across
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`the rechargeable power source and a current through the rechargeable power source
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`are utilized to control the operation of the external charging device. A person of
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`ordinary skill in the art would have understood that each of these two inputs is
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`associated with or proportional to a current passing through the internal power
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`
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`15
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`source. (See also Ex. 1001 at 20:65-21:6.) Thus, a person of ordinary skill in the
`
`art would have understood that the specification provides support for the use of
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`multiple inputs as a basis to vary the power output of the power source as claimed
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`in independent claims 3, 6, 9, 12, 15, and 18 (and in dependent claims 4, 5, 10, 11,
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`16, and 17 as discussed below).
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`B. Dependent claims 4, 5, 10, 11, 16, and 17
`
`36.
`
`In my opinion, the analysis presented by Dr. Panescu does not give
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`effect to all claim terms in dependent claims 4, 5, 10, 11, 16, and 17. Specifically,
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`Dr. Panescu’s analysis does not distinguish between the terms “signal” (in claim
`
`elements 3.4, 9.5, and 15.3) and “current” (in dependent claims 4, 10, and 16). (See
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`Ex. 1003, Ex. B at 70-71, 80-81, 95-96, 107-109, 115-116, 124-125.) Similarly, Dr.
`
`Panescu’s analysis does not distinguish between the terms “signal” (in claim
`
`elements 3.4, 9.5, and 15.3) and “voltage” (in dependent claims 5, 11, and 17). (See
`
`Id.)
`
`37. For example, limitation 3.4 in claim 3 and its dependent claims 4 and 5
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`recite the following::
`
`[Limitation 3.4]
`
`wherein said external power source automatically varies its power
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`output based on a signal proportional to said current passing through
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`said internal battery.
`
`[Dependent claim 4]
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`
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`16
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`wherein said external power source automatically varies its power
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`output based on a current proportional to said current passing through
`
`said internal battery.
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`[Dependent claim 5]
`
`wherein said external power source automatically varies its power
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`output based on a voltage proportional to said current passing through
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`said internal battery.
`
`
`(Ex. 1001 at 23:1-11, 24:4-15 (emphasis added); see also id., 24:4-15 (limitations
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`9.5, 10, and 11), 24:65-25:8 (limitations 15.3, 16, and 17).)
`
`38. A person of ordinary skill in the art would have understood that each
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`wherein clause requires a separate respective input (a signal, a current, and a
`
`voltage). For reasons similar to those I discussed above with respect to independent
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`claims 3, 6, 9, 12, 15, and 18, the plain language of the claims and the specification
`
`support this understanding of claims 3-5, 9-11, and 15-17. I understand Dr.
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`Panescu’s rationale for not identifying separate inputs in the references for the
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`above-noted separate claim limitations is based on his view that dependent claims
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`4-5, 10-11, and 16-17 further limit the term “a signal proportional to” in independent
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`claims 3, 9, and 15. (See, e.g., Ex. 1003, Ex. B at 71-72, 81-82, 96-97.)
`
`39. Dr. Panescu’s analysis does not, in my opinion, support the proposition
`
`that the dependent claims further limit the term “a signal proportional” of
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`independent claims 3, 9, and 15. Dr. Panescu’s analysis, for example, does not
`
`
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`17
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`provide any analysis of the plain language of the claims or the teachings of the ’148
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`patent specification relevant to his characterization of the dependent claims. In my
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`opinion, Dr. Panescu’s conclusion is inconsistent with both the plain language of the
`
`claims and the teachings in the specification for at least reasons similar to those
`
`discussed above with respect to independent claims 3, 6, 9, 12, 15, and 18. (See
`
`supra Section VI.A.).
`
`VII. OPINIONS ON DR. PANESCU’S APPLICATION OF THE
`REFERENCES TO THE CLAIMS
`
`40.
`
`In this section, I provide my opinions regarding various aspects of the
`
`references discussed in Dr. Panescu’s declaration (Ex. 1003). Dr. Panescu takes the
`
`position that certain references or combinations of references teach the combination
`
`of features recited in claim 3-6, 9-12, and 15-18. I disagree for at least the reasons
`
`provided below. While I may only discuss certain features of the claims below, that
`
`does not necessarily mean I agree with Dr. Panescu with respect to his analysis for
`
`other claim features given that the claims recite a combination of features.
`
`A. Opinions on Dr. Panescu’s Application of Schulman in Ground 1
`
`41. With respect to Ground 1, Dr. Panescu opines that Schulman discloses
`
`all the features of Dr. Panescu opines that claim 3-6, 9-12, and 15-18. (Ex. 1003 at
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`¶¶ 68-91; Id., Ex. B at 61-99.) I disagree with Dr. Panescu for at least the reasons
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`discussed below.
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`
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`18
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`Declaration of Dr. Richard Mihran
`U.S. Patent No. 8,738,148
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`1.
`
`Dr. Panescu’s Analysis Does Not Show How Schulman
`Discloses Independent Claims 3, 6, 9, 12, 15, and 18
`
`42. As discussed above, a person of ordinary skill in the art would have
`
`understood independent claims 3, 6, 9, 12, 15, and 18 to require two separate inputs
`
`used as a basis to vary the power output of the external power source (limitations
`
`3.3/3.4, 6.3/6.4, 9.4/9.5, 12.4/12.5, 15.2/15.3, and 18.2/18.3, hereinafter “two input
`
`claim limitations”). (See supra Section VI.A.) Although required by the claims, Dr.
`
`Panescu’s analysis does not show that Schulman teaches more than one input used
`
`to vary the external power source for at least two reasons.
`
`43. First, Dr. Panescu’s mapping of Schulman with respect to the two input
`
`claim limitations is not entirely clear. For example, Dr. Panescu appears to map a
`
`value related to resistor R8 (e.g., current through or voltage across resistor R8) to
`
`the second input (“a signal proportional to said current” or “measured voltage
`
`associated with said current.”) in the two-input claim limitations. (See, e.g., Ex.
`
`1003, Ex. B at 70-71 (limitation 3.4), 73 (limitation 6.4), 80 (limitation 9.5), 83
`
`(limitation 12.5), 95 (limitation 15.3), 98 (limitation 18.3).) However, Dr. Panescu’s
`
`mapping to the first input in the two-input claim limitations appears to discuss both
`
`the value related to resistor R8 (e.g.,