[00:00:42] Speaker ?:
Okay, cool.

[00:01:34] Speaker 03:
Professor Smith.

[00:01:39] Speaker 03:
I think I didn't say real clear argument in Vicor against Sincor 1578.

[00:01:45] Speaker 03:
Thank you, Your Honor.

[00:01:49] Speaker 00:
May it please the Court, Matthew Smith, for the appellant Vicor Corporation.

[00:01:53] Speaker 00:
I'd like to start off by addressing the anticipation argument towards errors there under.

[00:02:00] Speaker 00:
The Board made three findings.

[00:02:02] Speaker 00:
with regard to the anticipation issue.

[00:02:05] Speaker 00:
The first finding was that the embodiments of figure 1 of Stagerwald 090 are discreet and isolated from the embodiments of figure 4 of Stagerwald 539, which is the incorporated patent.

[00:02:19] Speaker 00:
And therefore, there was no anticipation.

[00:02:22] Speaker 00:
In reasoning to that point, the board found that there was nothing in Stagerwald 090

[00:02:29] Speaker 00:
that urged the swapping around of regulators in figure 4 of Stagerwald 539 from where they are before the capacitance multiplying converter 20 to after the capacitance multiplying converter where they are in fact in Stagerwald 090 figure 1.

[00:02:46] Speaker 00:
And I submit to you that that is actually true.

[00:02:49] Speaker 00:
The Stagerwald 090 doesn't urge that.

[00:02:52] Speaker 00:
Stagerwald 090 just doesn't.

[00:02:54] Speaker 00:
That is the result of Stagerwald 090 figure 1.

[00:02:57] Speaker 00:
That's what's shown there.

[00:02:59] Speaker 00:
And that is what, in fact, SYNCOR has admitted on page 29 of their briefing, where they say, in Steigerwald 090, as you can see from the figure, the regulators aren't in front.

[00:03:08] Speaker 00:
There are multiple regulators downstream in back.

[00:03:13] Speaker 00:
Now, the linchpin of this swapping around, the thing around which the swapping around... I'm sorry, yes, but your point is that the 090 already shows the

[00:03:24] Speaker 03:
order that is claimed in the patent that's at issue here, so they didn't need anything else to show that order.

[00:03:29] Speaker 03:
The only thing that they needed to add to the 090 was the replacement of one kind of rectifier with another.

[00:03:37] Speaker 00:
Yes, the synchronous rectifiers.

[00:03:38] Speaker 00:
That's exactly right, Your Honor.

[00:03:40] Speaker 00:
And that was the rejection that the examiner adopted.

[00:03:42] Speaker 00:
And it's probably good just to reiterate that, because I think it simplifies a lot of the arguments in the briefing if we focus on the rejection that the examiner adopted.

[00:03:50] Speaker 00:
The examiner rejected the anticipated claims

[00:03:54] Speaker 00:
over an alternative to figure 1 of Stagerwald 090.

[00:03:58] Speaker 00:
And the alternative was figure 1 of Stagerwald 090, but replacing the diodes with synchronous rectifiers per that statement in column 4 of figure 539.

[00:04:06] Speaker 00:
Sorry, Stagerwald 539, which creates those alternative embodiments.

[00:04:11] Speaker 00:
And the reason that that alternative embodiment statement applies to the patent into which it has been incorporated is because exactly the same circuit is being used in figure 1 of Stagerwald 090.

[00:04:23] Speaker 00:
That's the capacitance multiplying converter 20.

[00:04:26] Speaker 00:
You'll see it in figure 4, Stagerwald 539.

[00:04:29] Speaker 00:
In figure 6, Stagerwald 539.

[00:04:31] Speaker 00:
And in figure 1, Stagerwald 090.

[00:04:34] Speaker 03:
Can I ask you whether I've misunderstood something?

[00:04:38] Speaker 03:
In the 090 in column 2, there's a reference to capacitors around line 23.

[00:04:44] Speaker 03:
Capacitance multiplying converter 20.

[00:04:47] Speaker 03:
I didn't see the number 20 in either of the two figures in the 090, which suggests to me that it has to be referring to figure four of the 539.

[00:04:56] Speaker 00:
Yeah, I think that's exactly right, your honor.

[00:04:58] Speaker 00:
And I think that was a reasonable thing for Stargerwald to do because he had incorporated the 539 patent to buy a reference.

[00:05:04] Speaker 00:
So the person that was drafting it, I'll just say it with Stargerwald, was able to refer back to those figures when using the reference numeral 20.

[00:05:11] Speaker 00:
But you're right, it doesn't appear in figure one of Stargerwald 090.

[00:05:15] Speaker 00:
And we also know that the topology of the circuit is the same.

[00:05:18] Speaker 00:
The description of it that you find in column two, line 15 to 33 of Stagerwald 090, is the same as it is in Stagerwald 539, down to the reference numerals like transistor, sorry, transformer 24, transformer 26, transistors QA, QB, all of that stuff is the same, with the exception that there are multiple secondaries in Stagerwald 090, so he's taken the secondary side and reproduced it a number of times, but it is the same circuit.

[00:05:44] Speaker 00:
And that is in fact what Sincor argued in the prior Murata re-examination, where Sincor said, Stagerwald 090 has a capacitance multiplying circuit, which is further described in Stagerwald 539.

[00:05:56] Speaker 00:
That's the opposite of the position that Sincor is taking in this case.

[00:06:01] Speaker 00:
And they did that in order to attach characteristics that they liked from the Casey article, which is incorporated in Stagerwald 539, ultimately through two incorporations by reference to Stagerwald 090's embodiments.

[00:06:14] Speaker 00:
Now what Sincor is saying and what the board ultimately found was these are really discrete, separate, isolated embodiments and they don't have that much to do with each other.

[00:06:25] Speaker 00:
If, however, you apply incorporation by reference law correctly, as I think the board did not do, in Stagerwald 539, the text of it is incorporated and integrated into Stagerwald 090.

[00:06:37] Speaker 00:
Person of ordinary is still in the art reading those two together, reads the description of the capacitance multiplying converter,

[00:06:43] Speaker 00:
reads the alternative embodiment statement, and then moves on to figure one of Stagerwald 090, sees exactly the same circuit with exactly the same diode.

[00:06:51] Speaker 00:
There's no way you don't apply that alternative embodiment statement to Stagerwald 090.

[00:06:58] Speaker 03:
The- Can I ask- Yes.

[00:07:00] Speaker 03:
If you were right about the anticipation because of a combination of incorporation by reference and enough understanding

[00:07:13] Speaker 03:
of what the joined documents would teach.

[00:07:17] Speaker 03:
Does that require a reconsideration of the obviousness rulings, either all of them or at least the non-COBOS pressman one?

[00:07:32] Speaker 00:
Yes, I think it does, Your Honor, for a couple of reasons.

[00:07:35] Speaker 00:
The first is that the board denied some of the obviousness rejections

[00:07:39] Speaker 00:
based on the deficiency they found in the underlying Stargawald documents.

[00:07:44] Speaker 00:
So, for example, claims 24 to 26, the board found that there was no motivation to put the synchronous rectifiers from Stargawald 539 in Stargawald 090.

[00:07:54] Speaker 00:
Obviously, if Stargawald 090 as an integrated document with Stargawald 539 teaches all of those elements, then that question of motivation just falls aside.

[00:08:03] Speaker 02:
Also, I think in your brief, you were arguing that we should vacate and remain, let the board or let the examiner make that decision in the first place.

[00:08:14] Speaker 02:
So if we decide that we should combine the two Stiegel orders, right?

[00:08:19] Speaker 02:
And you're telling us that not only do we combine, but that ordinary artisan would have no trouble at all, as the residing judge said, reaching a conclusion with regard to what

[00:08:30] Speaker 02:
the combined AT&T, that you're asking us to reverse on 102, right?

[00:08:37] Speaker 00:
Yes, we are asking you to reverse on 102.

[00:08:39] Speaker 02:
Why do we lack the tools to reverse on the obvious rejections that were built on the misunderstanding of the student model?

[00:08:48] Speaker 00:
Don't get me wrong, I'm fine with you reversing those as well.

[00:08:51] Speaker 02:
But you didn't ask for that in your brief.

[00:08:53] Speaker 00:
No, we didn't mention that in our brief.

[00:08:54] Speaker 00:
And what I was trying to do was be fair about the level of factual inquiry involved.

[00:08:59] Speaker 00:
Because to be fair, there are secondary considerations involved in the obvious case too.

[00:09:04] Speaker 00:
And that is highly factual.

[00:09:05] Speaker 00:
And our complaint about the secondary consideration is the board just didn't consider all of the relevant facts that would have undermined the secondary considerations case.

[00:09:14] Speaker 00:
So I think it is more fair to vacate and remand those obvious things.

[00:09:18] Speaker 03:
And would I be right in thinking that on the secondary considerations, ruling in your favor on the anticipation

[00:09:27] Speaker 03:
would have at least the following effect.

[00:09:29] Speaker 03:
There would be a question whether a commercial success was attributable to what's found in the anticipated claims, and therefore perhaps not much attributable to the other claims, whose validity turns on obviousness, but not anticipation.

[00:09:48] Speaker 00:
Yes, I think that's exactly right, Your Honor.

[00:09:50] Speaker 00:
It was the second point I was going to make, but thank you for bringing me back to that.

[00:09:53] Speaker 00:
we would have a closer, closest reference.

[00:09:58] Speaker 00:
And so the secondary considerations would need to turn on the difference between the closest prior art and the claimed embodiment, in which case, for example, for claims 24 to 26, that would be the voltage levels that were described there.

[00:10:09] Speaker 00:
It would no longer be what SYNCOR claims to be the genesis of surprising results, for example, separating isolation and regulation, which I think you've already seen in Stargolwald and Pressman, but that's what SYNCOR claims.

[00:10:22] Speaker 00:
So you would have a closer piece of closest prior art, and the difference between the two would also become a benchmark with which you address the secondary considerations.

[00:10:31] Speaker 03:
What, if any, effect of, again, by assumption for current purposes, agreeing with you about anticipation, would there be on the last obviousness ruling, the Cobos-Pressman?

[00:10:46] Speaker 00:
That's an interesting question, because I think that the

[00:10:49] Speaker 00:
Steigerwald 090, Steigerwald 594 would actually be closer than the closest prior art in that Cobos-Pressman combination.

[00:10:58] Speaker 00:
So I think for reviewing secondary considerations, you would still need to take the closest prior art into account.

[00:11:04] Speaker 00:
Steigerwald 090 in combination with Steigerwald 594 as an integrated document.

[00:11:10] Speaker 00:
So it would have some effect on it.

[00:11:12] Speaker 00:
All of the underlying claim elements would still be taught by Pressman and by Cobos.

[00:11:16] Speaker 03:
Part of the board's reasoning, if I'm remembering correctly, and correct me if I'm wrong about Kobos-Pressman, was that there was no reason for somebody reading Kobos to look at Pressman because Kobos, that would be shifting to something less efficient.

[00:11:35] Speaker 03:
Did you make an argument that a reason would be found in, for example, space saving at some cost

[00:11:46] Speaker 03:
minor cost and efficiency?

[00:11:49] Speaker 00:
No, we did not make an argument about the tradeoff between space saving and efficiency.

[00:11:54] Speaker 00:
Our argument was that the board actually found that Pressman teaches providing a multiplicity of outputs at high efficiency.

[00:12:03] Speaker 00:
And so that's a fact finding by the board, which is subject to deference like every other fact finding by the board.

[00:12:08] Speaker 00:
And when the board actually finds that, it can't find that there was hindsight, because that is expressed motivation to combine.

[00:12:16] Speaker 03:
Is there something factually baseless about the idea that space saving might have been a motivation to sacrifice a little bit of efficiency?

[00:12:29] Speaker 03:
I guess I'm asking this because I thought in maybe both of the briefs, maybe it's just yours, I'm not sure, there was a backstory of wanting to

[00:12:44] Speaker 03:
save space by not having what I guess you called bricks, many, many bricks, but having smaller components with consolidating, I guess, the isolation piece of it in one box.

[00:13:01] Speaker 03:
That, I guess, raised a question in my mind, whether there was a space-saving motivation or would have been to go to add, for somebody reading Kovos, to add Pressman

[00:13:12] Speaker 03:
even recognizing that that might be walking away from a little bit or maybe some efficiency.

[00:13:19] Speaker 03:
Is that just off on a, I know I'm making that up since you said you didn't argue it, but I guess I'm trying to understand if there's a factual problem or just that you didn't argue that.

[00:13:29] Speaker 00:
No, I don't think there's a factual problem with that necessarily.

[00:13:32] Speaker 00:
As soon as you have the Pressman post-switching regulators that are not isolated, you save the isolation stage.

[00:13:41] Speaker 00:
And that's perfectly well disclosed in Pressman.

[00:13:44] Speaker 00:
Pressman has... The question is why would somebody with Cobos look at Pressman?

[00:13:48] Speaker 00:
Well, somebody with Cobos would look at Pressman because Pressman provides a two-stage architecture with a multiplicity of outputs.

[00:13:55] Speaker 00:
And that's key because sometimes you want multiple outputs.

[00:13:57] Speaker 00:
It's a little bit different than the single output stage.

[00:14:00] Speaker 00:
But Pressman doesn't actually tell you how to implement that first stage.

[00:14:05] Speaker 00:
And Cobos provides an implementation for that first stage, which Cobos says is very efficient.

[00:14:10] Speaker 00:
So if you're taking Preston and you say I want a multiplicity of outputs, as in figure three, four B, Preston says that's highly efficient.

[00:14:16] Speaker 00:
Now I need to implement that first stage.

[00:14:18] Speaker 00:
That's what Cobos tells you how to do in 1994.

[00:14:20] Speaker 03:
If you'd like to save your rebuttal.

[00:14:26] Speaker 00:
I will save my rebuttal time.

[00:14:27] Speaker 00:
Thank you, Your Honor.

[00:14:34] Speaker 01:
Mr. Trellis.

[00:14:37] Speaker 01:
Thank you, Your Honor.

[00:14:38] Speaker 01:
May it please the court

[00:14:40] Speaker 01:
The board decided this case on the basis of a voluminous evidentiary record, extensive briefing, and a lengthy oral argument.

[00:14:49] Speaker 01:
Based on all of that, the board found as a factual matter that SYNCOR's 190 patent was not anticipated, and it was not obvious in light of the cited prior art.

[00:15:00] Speaker 01:
That decision is supported by substantial evidence in this record.

[00:15:04] Speaker 01:
The anticipation argument relied on really an attempt to piece together

[00:15:10] Speaker 01:
from different parts of the Steigerwald patents, an embodiment that neither one expressly teaches.

[00:15:16] Speaker 01:
And the obviousness arguments relied on the assertion that a person of ordinary skill would have been motivated to combine various references in a way contrary to their teachings to produce a device that was inferior to the devices that they actually taught.

[00:15:31] Speaker 03:
I think as the earlier discussion indicated, at least in my mind, that the central issue here is

[00:15:40] Speaker 03:
what the board did and could fairly do on the evidence with the two Steigerwald patents.

[00:15:47] Speaker 03:
Can you focus specifically on that?

[00:15:49] Speaker 03:
And the other side's point is 090.

[00:15:53] Speaker 03:
Did you agree, first of all, 090 shows everything except the swapping of the diodes?

[00:15:59] Speaker 01:
Yes.

[00:15:59] Speaker 01:
We have not argued to the contrary.

[00:16:03] Speaker 03:
So why is it not simply compelled by

[00:16:10] Speaker 03:
the 090s express incorporation of reference of a very small reference with, in fact, what numeral numbers that appear to refer to a figure in the incorporated document.

[00:16:28] Speaker 03:
Why doesn't that essentially mean that the board's contrary conclusion is lacking in substantial evidence support?

[00:16:35] Speaker 01:
Here's why, Your Honor.

[00:16:36] Speaker 01:
First of all,

[00:16:37] Speaker 01:
There was an incorporation by reference.

[00:16:40] Speaker 01:
But as the board found, and Vicor doesn't really challenge, the board said that for purposes of discussion, it was assuming that the incorporation was sufficient to incorporate the text of Steigerwald 539 in the 090.

[00:16:54] Speaker 01:
But it went on to hold, and Vicor doesn't dispute, that there was no specific direction to incorporate any particular part of the 539 into any particular part of the 090.

[00:17:05] Speaker 01:
So essentially, it's like the two of them are stapled together.

[00:17:08] Speaker 01:
with no express guidance.

[00:17:10] Speaker 03:
But this is partly why at least I have focused on the reference in the 090 to an embodiment with a numerical, a number 20, that doesn't appear in the 090 figures unless I've missed something, which is possible.

[00:17:30] Speaker 01:
Well, let me say a couple of things about that, Your Honor.

[00:17:32] Speaker 01:
First of all, in the 539,

[00:17:35] Speaker 01:
I think it's important to look at exactly what this alternative embodiment statement, which is really the focus of Vicor's case, actually says.

[00:17:43] Speaker 01:
It says in other alternative embodiments, and this is A61 column 4, in other alternative embodiments, pardon me, such as those of figures 7 to 9,

[00:17:52] Speaker 01:
synchronous rectifiers, SRA and SRB, are used instead of diodes CRA and CRB of figures four and six.

[00:17:59] Speaker 01:
So it's directly saying you can modify the embodiment in figures four and six and you can produce what we've got in seven to nine.

[00:18:06] Speaker 01:
It's not saying anything about, obviously it's not saying anything about the embodiment in the 090 patent.

[00:18:12] Speaker 01:
It's also not suggesting that you can go ahead and drop in synchronous rectifiers in place of diodes whenever you feel like it.

[00:18:18] Speaker 01:
It's talking about a very specific embodiment where you can make this switch.

[00:18:22] Speaker 03:
Now, as for the... But then, I'm sorry, when that same sentence says, and we're showing this in figure seven, right?

[00:18:30] Speaker 03:
Figure seven through nine?

[00:18:31] Speaker 01:
Yes.

[00:18:32] Speaker 03:
And those figures show only the isolating stage.

[00:18:36] Speaker 03:
They don't repeat.

[00:18:37] Speaker 03:
essentially the regulating stage on the left side of figure four?

[00:18:41] Speaker 03:
That's correct.

[00:18:42] Speaker 03:
Suggesting that that's really pretty irrelevant to the substitution that's being contemplated.

[00:18:47] Speaker 01:
Well, it's irrelevant for those, I think you can assume it's irrelevant for those embodiments, but not necessarily for other embodiments, your honor.

[00:18:55] Speaker 01:
And let me say a couple of other things.

[00:18:58] Speaker 01:
First of all, these capacitive multiplying circuits, notwithstanding the numeral 20, they're not identical.

[00:19:03] Speaker 01:
If you look at the one in the 090,

[00:19:06] Speaker 01:
It, in fact, provides positive and negative voltages.

[00:19:10] Speaker 01:
You see the plus V1, plus V1, plus V2, minus V1, minus V2.

[00:19:15] Speaker 01:
You don't see that in Steigerwald 539.

[00:19:18] Speaker 01:
So these circuits, whether the numeral applies to them or not, they are not identical.

[00:19:24] Speaker 01:
The other thing, Your Honor, is you can't ignore it.

[00:19:28] Speaker 03:
Is there any chance of your explaining in a way I would understand why what you just said about the plus and the minus

[00:19:35] Speaker 03:
matters.

[00:19:37] Speaker 03:
I know that depends on your knowledge of what I would understand, but can you take a crack at it?

[00:19:43] Speaker 01:
All I can say, Your Honor, is just looking at the two, they're different.

[00:19:49] Speaker 01:
So I don't think you can just, and my point is just that I think that just underscores that the reference in the 539 is dealing with a specific embodiment, namely the embodiment of figures four and six.

[00:20:01] Speaker 01:
And you can't just automatically translate that to the 090 because they're not identical.

[00:20:06] Speaker 01:
And I think it's important, while there is this focus on this capacitance multiplying circuit.

[00:20:12] Speaker 03:
But the board didn't provide any kind of explanation of why it would somehow affect the 090 to drop in the synchronous.

[00:20:29] Speaker 03:
Oh, I think it did, Your Honor.

[00:20:32] Speaker 03:
In a way that it wouldn't affect the 539 figure 4 to swap out.

[00:20:38] Speaker 01:
Well, what the board explained, Your Honor, was that there would be an efficiency hit if you tried to translate the 539 embodiment into the 090 embodiment.

[00:20:55] Speaker 01:
And the reason is,

[00:20:57] Speaker 01:
The 090 uses linear regulators and expressly disclaims any inductors, which means it can't use switching regulators.

[00:21:08] Speaker 01:
And this was explained in detail in Dr. Schlicht's declaration before the board.

[00:21:13] Speaker 01:
If you made that substitution, there's no point to it, because you actually end up losing efficiency.

[00:21:19] Speaker 01:
Because whatever efficiency you gain by dropping the synchronous rectifiers into the 090 embodiment, you lose because of the linear regulators.

[00:21:27] Speaker 01:
You can't use switching regulators there, because the 090 patent expressly states you can't have inductance in the current path, and that's what you'd have.

[00:21:36] Speaker 01:
And that's why the 539 is very different.

[00:21:38] Speaker 01:
The 539, because it uses the pre-regulator, it doesn't have that same issue, because having a switching regulator out there doesn't induce inductance into the current path, because the energy storing capacitor

[00:21:55] Speaker 01:
is at a different location in the 539 embodiment, unlike the 090, where it's right at the input pins, which means that any inductance is going to be right in the current path.

[00:22:05] Speaker 01:
So that's why the board found, Your Honor, that these are discrete and separate embodiments.

[00:22:12] Speaker 01:
And you can't just take a direction, a suggestion, or teaching, whatever you want to call it, in the 539 that says you can substitute synchronous rectifiers for diodes in the embodiment in Figure 4.

[00:22:25] Speaker 01:
and then automatically apply that to the embodiment in the 090.

[00:22:29] Speaker 03:
Are there other aspects of what's in the 539 that the 090's express incorporation might more plausibly be referring to?

[00:22:43] Speaker 01:
Frankly, Your Honor, I think if you look at the express incorporation,

[00:22:47] Speaker 01:
It's in the very first section of that patent.

[00:22:50] Speaker 01:
It's related applications.

[00:22:52] Speaker 01:
You think it's pro forma?

[00:22:53] Speaker 01:
I think it's absolutely pro forma, your honor.

[00:22:56] Speaker 01:
I don't think there's any indication anywhere in the 090 patent that that was an incorporation that was done for any specific purpose or to teach anything about the 090 invention or to suggest any modifications to the 090 invention.

[00:23:11] Speaker 01:
It was absolutely pro forma.

[00:23:12] Speaker 01:
It was basically, I've got these other applications.

[00:23:15] Speaker 01:
they deal with the same kind of stuff on incorporating them by reference here.

[00:23:19] Speaker 01:
And that really ties into, and we're not disputing that there was incorporation here, but again, as the board found, there's no specific incorporation.

[00:23:29] Speaker 01:
It doesn't say, you can look at the synchronous DIO teaching in the 539 and that has relevance to the 090 or anything like that, which is usually the case in incorporation by reference cases.

[00:23:40] Speaker 01:
There's usually some specific link between

[00:23:44] Speaker 01:
the incorporating reference and the one being incorporated.

[00:23:48] Speaker 01:
Now, if I could touch on a couple of other points that Mr. Smith made.

[00:23:53] Speaker 01:
On the obviousness point, first of all, if there's no anticipation by the combined Steigerwald references, then there's really not much to say about the non-obviousness finding based on

[00:24:14] Speaker 01:
on those references.

[00:24:17] Speaker 01:
But even with that, the board did find, and this is at Appendix 18 and also Appendix 22 dealing with the two different obviousness rulings, non-obviousness rulings, that the secondary considerations evidence was sufficient standing alone.

[00:24:34] Speaker 01:
Even if the examiner had established obviousness, the secondary considerations evidence was enough standing alone

[00:24:43] Speaker 01:
to require a finding of non-obviousness.

[00:24:46] Speaker 03:
So, although we obviously don't think that... That way of putting it wouldn't quite take care of how you would do an obviousness analysis on the assumption that they were right about their anticipation, because then you would have a certain kind of arrangement with the synchronous rectifiers in the prior art.

[00:25:11] Speaker 01:
I understand that point.

[00:25:13] Speaker 01:
I would note though that the claims that were found to have been infringed in the litigation and all of the commercial success and secondary considerations evidence pertinent there too were claims that are narrower than the claims that would be hypothetically found anticipated.

[00:25:35] Speaker 01:
So I think there still would be the nexus.

[00:25:38] Speaker 01:
It may well be true, Your Honor, that you would still want to do the analysis.

[00:25:42] Speaker 01:
But I think the analysis would come out the same place because of the difference in the fact that the claims that were found infringed are narrower than the claims that hypothetically would be found anticipated.

[00:25:54] Speaker 01:
Now, if I could turn briefly to the Cobos and Pressman issue that Mr. Smith talked about, the primary basis for the board's ruling there was that

[00:26:07] Speaker 01:
there would be absolutely no motivation for one of ordinary skill to modify Cobos by adding the Pressman non-isolated switching regulators onto it.

[00:26:19] Speaker 01:
The supposed motivation that BICOR had offered was somebody who's confronting Cobos would want to consider a way of providing multiple output voltages.

[00:26:30] Speaker 01:
Pardon me, Your Honor.

[00:26:32] Speaker 01:
But Cobos, as the board explained, already disclosed how to do that.

[00:26:36] Speaker 01:
in its own figure, 14A, and it was in a way much more efficient, 92% efficiency, compared to doing it the Pressman way, which isn't just slightly less efficient, but it's only got efficiency of 59%.

[00:26:49] Speaker 01:
So there would be absolutely no motivation for one of ordinary skill.

[00:26:54] Speaker 01:
Looking at these references to say, oh, I need multiple output voltages.

[00:26:59] Speaker 01:
I'm just going to take Pressman and staple it onto

[00:27:03] Speaker 01:
to the Cobos isolation stage and do it that way.

[00:27:07] Speaker 01:
Cobos taught a better way to do it right from the start.

[00:27:10] Speaker 03:
Can I ask you the same question I asked your opposite number?

[00:27:15] Speaker 03:
This idea of motivation from space-saving, which I do not recall having seen, but why would it be wrong?

[00:27:23] Speaker 01:
Well, it would be... I'm not sure whether it would be wrong.

[00:27:28] Speaker 01:
I do know it wasn't argued, so it's not in the record.

[00:27:32] Speaker 01:
Also, there's no indication in either, well, as you'd be looking at Pressman, there's no indication in Pressman that space-saving would have been a motivation to take the huge efficiency hit that a two-stage process, that Pressman taught a two-stage process would have entailed.

[00:27:56] Speaker 01:
Pressman in several places says that single-stage solutions, that is the combined

[00:28:02] Speaker 01:
isolation and regulation are much more efficient than the two-stage processing, because you have to handle the voltages twice and all of that.

[00:28:10] Speaker 01:
And there's no suggestion anywhere in that text, or in Cobos for that matter, that you would save board space.

[00:28:18] Speaker 01:
And in fact, if you think about it, Pressman's from 1977, so it's an old reference.

[00:28:24] Speaker 01:
Cobos is 17 years later.

[00:28:26] Speaker 01:
Cobos is 17 years later, and obviously the patents, the 190 patents even later than that.

[00:28:31] Speaker 01:
And it's not even clear, certainly it's not clear on this record, that space saving back in the Pressman era was even an issue, because you didn't have in that era, you didn't have the multiple different kinds of processes on a board.

[00:28:45] Speaker 03:
I'm not sure which way that cuts, because it could be by that time 1997 comes along and your inventors are doing what they're doing.

[00:28:56] Speaker 03:
The demand for saving space is now much

[00:29:00] Speaker 03:
greater, and at that point, somebody thinking about Cobos would say, that's actually worth buying, buying some space at some cost of efficiency.

[00:29:10] Speaker 01:
That's possible.

[00:29:12] Speaker 01:
I think on this record, it's speculative.

[00:29:14] Speaker 01:
And certainly, there's no teaching.

[00:29:16] Speaker 01:
And for the reasons I was explaining, there's no teaching anywhere like that in either Cobos or Pressman.

[00:29:22] Speaker 01:
And so basically, you'd have to say on the basis of nothing in the record that somebody, a person of ordinary skill, would have been willing to take

[00:29:30] Speaker 01:
what Cobos and Pressman teach is a pretty substantial efficiency hit for the possibility of picking up some space saving.

[00:29:39] Speaker 01:
I see that I am out of time if the court has any further questions.

[00:29:44] Speaker 00:
Thank you.

[00:29:57] Speaker 00:
A few brief points.

[00:29:58] Speaker 00:
First of all, my counterpart talked about an efficiency hit that the board found in the anticipation case.

[00:30:05] Speaker 00:
As we pointed out in our briefing, they didn't actually find that.

[00:30:08] Speaker 00:
The board didn't find that.

[00:30:09] Speaker 00:
There's no explanation that it would be inefficient to combine the synchronous rectifiers of Steigerwald 539 with Steigerwald 090 in the anticipation case.

[00:30:18] Speaker 00:
In fact, that would be an obviousness argument.

[00:30:20] Speaker 00:
So if they did find that, it would be a further reason to reverse.

[00:30:23] Speaker 03:
Can you address Mr. Trela's

[00:30:27] Speaker 03:
explanation that the 539 suggestion to replace the diodes with the synchronous rectifiers made sense when the regulation was done before getting to that stage.

[00:30:45] Speaker 03:
Not necessarily when the regulation is done afterwards.

[00:30:50] Speaker 00:
Yes, I think that explanation is completely wrong.

[00:30:53] Speaker 00:
And it's wrong because in Stargobalt ONI know

[00:30:56] Speaker 00:
What it's based on, that argument is based on the linear regulators at the end.

[00:31:00] Speaker 00:
And what they're basically saying is there's two down conversions.

[00:31:04] Speaker 00:
Okay, one from let's say 48 volts to 12 volts, and then one from 12 to five.

[00:31:09] Speaker 00:
And that last one from 12 to five, because they're linear regulators, you essentially just burn off that extra seven volts.

[00:31:16] Speaker 00:
Then what they're saying is if you put synchronous rectifiers into the first stage, and that increases your efficiency, your transformation in the first stage will be 48 down to 13.

[00:31:26] Speaker 00:
But when you regulate it, again, it goes 13 down to five, and you just burn that off.

[00:31:29] Speaker 00:
That's why they're saying there's no efficiency.

[00:31:31] Speaker 00:
But that doesn't make any sense.

[00:31:33] Speaker 00:
Because if you could increase the efficiency of the first stage, you would still have your intermediate bus voltage be the same voltage.

[00:31:39] Speaker 00:
So it would still be 48 down to 12.

[00:31:41] Speaker 00:
But done in a more efficient way, the first stage would put out less heat.

[00:31:46] Speaker 00:
And you can do that very simply as a person of ordinary skill in the art by just changing the number of turns in the transformer, changing the transformer turns ratio

[00:31:53] Speaker 00:
which is discussed in column one of Stagerwald 539 and in column two, I think of Stagerwald 090.

[00:31:58] Speaker 00:
Both of them discuss how the turns ratio affects the voltages on the input and output side.

[00:32:04] Speaker 00:
So I think technically that argument is just wrong.

[00:32:07] Speaker 00:
In the 15 seconds I have left, I just wanted to point out in the secondary considerations argument, I don't think the board found all of the secondary considerations arguments that

[00:32:20] Speaker 00:
SYNCOR actually made.

[00:32:21] Speaker 00:
The only thing the board found was commercial success.

[00:32:23] Speaker 00:
They left a lot of disputed evidence on the table.

[00:32:26] Speaker 00:
And the problem with that is among those disputes are an explanation of why the commercial success happened that does not lead to an inference of non-obviousness and also a dispute which indicates that if FICOR is correct on that evidence, the inventions are actually obvious.

[00:32:42] Speaker 00:
So we have secondary considerations that point to obviousness as well.

[00:32:44] Speaker 00:
Thank you.

[00:32:45] Speaker 03:
Thank you very much.