[00:00:00] Speaker 04:
16 22 83.

[00:00:01] Speaker 04:
Wherever you are ready.

[00:00:40] Speaker 01:
So let me be in honor with the rejection over Stagerwald and Pressman.

[00:00:47] Speaker 01:
It was initially adopted by the examiner and then withdrawn and affirmed by the board.

[00:00:53] Speaker 01:
The issue, of course, is whether you can use switching regulators in Pressman's circuit.

[00:01:00] Speaker 01:
The board found three facts that I think are significant.

[00:01:05] Speaker 01:
First, on appendix page 22 of the decision,

[00:01:12] Speaker 01:
finding specifically that Stagerwald 090 has, quote, un-pulsed biasing and control loads.

[00:01:20] Speaker 01:
The second being on appendix page 21 that the appellant relies on the testimony of Dr. Stagerwald that one of ordinary skill in the art would have understood that non-pulsed voltages in Stagerwald 090 can be implemented with or without inductors in the current path.

[00:01:38] Speaker 01:
It's, of course, a characterization of our argument.

[00:01:41] Speaker 01:
but it's significant, given the arguments the court is making.

[00:01:45] Speaker 01:
And the third relevant finding being on appendix page 22, we are not persuaded under the specific facts of this case that it is erroneous for the examiner to have concluded that Stagerwald 539 itself teaches away from the intentional conclusion of inductance in the current path of pulsed loads.

[00:02:04] Speaker 01:
So the board agrees that there are unpulsed loads

[00:02:08] Speaker 01:
board agrees that ViCOR argued that those unpulsed loads are suitable for using switching regulators, even though they may have inductance.

[00:02:16] Speaker 01:
But the fact that the pulsed loads may not be suitable for that caused the board to decide against the rejection, as it were.

[00:02:26] Speaker 03:
How did the board... Can I just ask you a housekeeping question?

[00:02:28] Speaker 03:
This is how this board decision relates to the other board decision that's coming in about 45 minutes from now.

[00:02:38] Speaker 03:
There was a Starger-Walt-Pressman combination over there, too, where the Board found there would be a motivation to add switching regulators on the pulsed load.

[00:02:52] Speaker 03:
Do you happen to know if the records are essentially the same, or was there some distinction that might have driven the Board in that case to conclude that there would be a motivation to add a switching regulator?

[00:03:05] Speaker 03:
The board found here in this particular re-exam that there wasn't a motivation to add a switching regulator to Stagerwald 090-539.

[00:03:17] Speaker 01:
There are minor differences in the record, Your Honor, but I think it is difficult to escape the conclusion that those are just inconsistent.

[00:03:28] Speaker 01:
The board really only put forward two reasons for reaching this conclusion given the facts that it found.

[00:03:36] Speaker 01:
One was that what it calls the unpulsed voltages were not the primary embodiment.

[00:03:45] Speaker 01:
In fact, it was the pulsed voltage output that was the primary embodiment.

[00:03:50] Speaker 01:
And this, we think, is simply an error of law.

[00:03:52] Speaker 01:
We cited the Henry Mills case for that, because it's very specific on that point.

[00:03:57] Speaker 01:
But the more general point, of course, is that the prior art is available for all that it teaches.

[00:04:02] Speaker 01:
Sinclair didn't cite any contrary case law that would suggest

[00:04:06] Speaker 01:
if you get to a certain threshold of importance of a teaching, it overshadows everything else in the reference.

[00:04:13] Speaker 01:
The second was the board's finding that Dr. Steigerwald had testified that the non-pulsed outputs could be affected by the pulses.

[00:04:25] Speaker 01:
Now, the board never goes from there to the intermediate conclusion, which I would have expected based on its reasoning, which is that that effect

[00:04:36] Speaker 01:
is, in fact, desirable.

[00:04:39] Speaker 01:
It sounds like, from the way they're talking about his testimony, from his testimony to begin with, that that effect is undesirable.

[00:04:46] Speaker 01:
These are not pulsed outputs, as the board has expressly found.

[00:04:50] Speaker 01:
They can be affected by pulses, but do you want that or not?

[00:04:53] Speaker 01:
And that's important, because Sincor's argument about the inductor is it tends to resist the pulses.

[00:05:02] Speaker 01:
In other words, if there is an inductor in the output,

[00:05:05] Speaker 01:
and there is a load that demands a pulse of energy, the inductor will tend to resist that.

[00:05:11] Speaker 01:
So maybe the pulse isn't as fast as it would otherwise be.

[00:05:14] Speaker 01:
But if the pulse is disadvantageously affecting the bias outputs, the non-pulsed outputs, then it seems like an inductor would be a good idea.

[00:05:24] Speaker 01:
But the board never draws any of these conclusions for itself.

[00:05:29] Speaker 01:
In the grand scheme of things, I think, in view of Dr. Steigerwald's testimony, it doesn't make a difference because Dr. Steigerwald directly testified that there was not a problem putting switching regulators on the bias outputs.

[00:05:44] Speaker 02:
He says in general in his testimony... And if you still had a system in which V1 remained the pulsed and V2 through N were the non-pulsed, you would then

[00:05:57] Speaker 02:
in that view have switching regulators V2 and down, but a linear regulator on V1.

[00:06:05] Speaker 01:
That's correct.

[00:06:05] Speaker 01:
And there are other things you can do to make an inductor and a switching regulator work.

[00:06:11] Speaker 01:
The idea is that if the load, the machine there, is drawing a lot of current suddenly, you might not get it fast enough because of the inductor.

[00:06:20] Speaker 01:
You could put a capacitor, for example, at the output that would supply that extra current.

[00:06:24] Speaker 01:
But you have to do something there.

[00:06:26] Speaker 01:
or determine that the inductance is too small to really bother the pulse.

[00:06:32] Speaker 01:
But the upshot is, for the bias voltages, as Dr. Steigerwald testified, it's perfectly fine to put switching regulators at those outputs.

[00:06:40] Speaker 01:
It's not going to interfere with the intended purpose.

[00:06:42] Speaker 02:
And your basic point on this is the board just never really addressed that scenario of not having all of the regulators be the same.

[00:06:51] Speaker 01:
Yes, I think that is correct.

[00:06:52] Speaker 01:
There's sort of two basic points.

[00:06:54] Speaker 01:
I'll restate it in my own words, but in general, it's parallel to what you just said.

[00:06:58] Speaker 01:
The first is that I think the board took from the fact that the word pulsed is used a lot in the beginning of the Stagerwald 090 patent.

[00:07:06] Speaker 01:
That was the primary teaching, and it could ignore the other outputs.

[00:07:09] Speaker 01:
And I don't think that's correct as a matter of law.

[00:07:12] Speaker 01:
The second part where we think the board went wrong is to focus on Dr. Stagerwald's, I think, highly ambiguous testimony

[00:07:20] Speaker 01:
that switching regulators or an inductor on the bias outputs could affect those outputs.

[00:07:27] Speaker 01:
And he ignored his much more direct testimony that there wasn't a problem putting switching regulators on those outputs.

[00:07:33] Speaker 01:
So those are the two places we think the board went wrong in terms of that rejection.

[00:07:38] Speaker 02:
Was there testimony?

[00:07:39] Speaker 02:
I don't remember.

[00:07:39] Speaker 02:
Is this a case in which Dr. Schlicht testified also?

[00:07:44] Speaker 01:
Yes, Dr. Schlicht did.

[00:07:45] Speaker 02:
Was there testimony to the effect that because the post

[00:07:50] Speaker 02:
aspects of Steigerwald were so dominant, so much the theme of the contribution in Steigerwald, that one just wouldn't have had a motivation to look at the other things actually shown in Steigerwald.

[00:08:11] Speaker 01:
I think the way you have phrased it exactly, no, not the motivation to ignore it.

[00:08:16] Speaker 02:
There was a highly inexact phrasing.

[00:08:19] Speaker 01:
But I think that's the general thrust of the argument, that the pulsing is so important you don't have to look at anything else.

[00:08:26] Speaker 01:
And I think that that is wrong as a matter of law.

[00:08:30] Speaker 03:
Or maybe another way of putting it is the pulse load is such overwhelmingly the main event in everything else.

[00:08:39] Speaker 03:
The bias voltage lines are so minor and subsidiary.

[00:08:44] Speaker 03:
It just wouldn't make any sense to have a different type of regulator placed on those very, very subsidiary bias voltage lines.

[00:08:54] Speaker 01:
That may be another way to put it, Judge Chen.

[00:08:57] Speaker 01:
As we pointed out, though, especially in the Steigerwald 090 pattern, those bias voltages, the non-pulse voltages, are in fact the main event.

[00:09:09] Speaker 01:
And they are in fact the main event

[00:09:11] Speaker 01:
Because Stagerwald 539, which was the predecessor patent that gets incorporated by reference, is dealing with how you make a converter that serves a load that is demanding these current policies.

[00:09:24] Speaker 01:
Stagerwald 090 takes that, reverses the order, and adds a bunch of bias outputs.

[00:09:30] Speaker 01:
That is the point of Stagerwald 090.

[00:09:33] Speaker 01:
It's directed to radar applications in the specific embodiments, certainly.

[00:09:37] Speaker 01:
And one of those has a pulse load.

[00:09:40] Speaker 01:
But the point of that patent was to add the other output voltages in the system, which you didn't get from the earlier Stagerwald 539 patent.

[00:09:48] Speaker 01:
So even on a factual level, I don't think it's proper to say that

[00:09:53] Speaker 01:
The thrust was so pulse-focused in Steigerwald, and I know that it would rise to the level where you could find an exception to the general rule that the prior art is there for all that it teaches.

[00:10:08] Speaker 01:
Let me move on to the second rejection, which is Cobos, Steigerwald, and Pressman.

[00:10:14] Speaker 01:
And here, there were two findings made by the board.

[00:10:18] Speaker 01:
The first is,

[00:10:20] Speaker 01:
the idea that synchronous rectification was not within ordinary skill.

[00:10:24] Speaker 01:
I think this is pretty well laid out in the briefs.

[00:10:28] Speaker 01:
Essentially, we contend there is testimony from Dr. Schlecht saying that synchronous rectification.

[00:10:35] Speaker 03:
Just a curious housekeeping question again.

[00:10:37] Speaker 03:
For this particular category of projections, it's essentially identical to the one we were just talking about, right, except that we're replacing

[00:10:48] Speaker 03:
the 539 with Cobos?

[00:10:52] Speaker 03:
Am I getting it right?

[00:10:53] Speaker 01:
Are we talking about the rejection from the 2282 appeal with Cobos president?

[00:11:00] Speaker 03:
I'm sorry, I'm talking about this appeal 2283.

[00:11:02] Speaker 03:
We were just talking about Steigerwald 090, Steigerwald 539 plus pressman.

[00:11:08] Speaker 03:
I see.

[00:11:09] Speaker 03:
Now we're talking about Steigerwald 090 plus Cobos plus pressman.

[00:11:14] Speaker 04:
Grounds one and two.

[00:11:15] Speaker 01:
Correct.

[00:11:16] Speaker 01:
So it is similar.

[00:11:18] Speaker 01:
Grounds five and six are simpler.

[00:11:21] Speaker 01:
Right.

[00:11:21] Speaker 01:
Now the synchronous rectification portion of it, the front part of the portion of it, is coming from COVOS.

[00:11:29] Speaker 03:
Right.

[00:11:29] Speaker 03:
I'm just trying to figure out if this category of rejection is essentially redundant, given what our court said in 2015 about how Stagerwald 090

[00:11:41] Speaker 03:
It teaches synchronous rectification.

[00:11:45] Speaker 01:
I think if you find that switching regulators can be used on those bias outputs, it is redundant, as a matter of fact.

[00:11:52] Speaker 01:
It will have exactly the same effect.

[00:11:55] Speaker 04:
You want to make a brief comment on your third issue?

[00:11:57] Speaker 04:
You're onto your rebuttal time.

[00:12:03] Speaker 01:
Your Honor, I think a brief comment probably doesn't justify it.

[00:12:07] Speaker 01:
Unfortunately, I'll wait for rebuttal time if it's OK.

[00:12:10] Speaker 01:
Thank you.

[00:12:12] Speaker 04:
Mr. Ryan.

[00:12:14] Speaker 03:
We'll be sure to ask the other side about it so you don't wave it.

[00:12:25] Speaker 00:
May it please the court?

[00:12:28] Speaker 00:
On appeal, Vicor has abandoned its argument that one of skill would substitute switching regulators

[00:12:36] Speaker 00:
for all the linear regulators in Steigerwald, Vicor essentially concedes that one of skill did not use switching regulators to power the pulse loads.

[00:12:46] Speaker 03:
Can I just ask you my housekeeping question that I asked Mr. Smith about this appeal, this rejection of Steigerwald 090539 in view of Pressman?

[00:12:58] Speaker 03:
Yes.

[00:12:58] Speaker 03:
And the mirror proposed grant, which the board affirmed,

[00:13:04] Speaker 03:
for the next appeal that's coming.

[00:13:07] Speaker 00:
I think Your Honor's observation is correct.

[00:13:10] Speaker 03:
The record is essentially the same?

[00:13:12] Speaker 03:
Yes.

[00:13:12] Speaker 03:
The arguments are essentially the same?

[00:13:14] Speaker 03:
The only thing that's not the same is the board's outcome on the motivation to combine the references.

[00:13:20] Speaker 00:
Well, the only difference, I mean, first of all, both references turn on Steigerwald and switching regulators from Pressman and injecting them.

[00:13:31] Speaker 00:
So those issues are exactly the same.

[00:13:33] Speaker 00:
The additional issue that's raised by the second set of rejections or proposed rejections is that they use CABOs as synchronous rectifications.

[00:13:43] Speaker 03:
No, but I'm sorry.

[00:13:44] Speaker 03:
I'm talking about the next appeal that I assume you're going to be standing up here for in about 40 minutes.

[00:13:51] Speaker 00:
Yes.

[00:13:52] Speaker 00:
The answer to that is that the result here is correct based on the record before it.

[00:13:59] Speaker 00:
The result there is incorrect, but the rationale

[00:14:03] Speaker 00:
that the board used in that other appeal was different than the rationale here.

[00:14:08] Speaker 00:
And therefore, you can't reconcile the results, but you can say that the rationales weren't inconsistent because they were entirely different, which I'll explain when we get to the next appeal.

[00:14:19] Speaker 00:
So here, on the Steigerwald-based rejections, the key is for them to get the switching regulators to substitute in for the linear regulators.

[00:14:30] Speaker 00:
And they've abandoned that argument for the pulsed loads.

[00:14:33] Speaker 00:
They say that the substitution would only be made here for the non-pulsed loads.

[00:14:40] Speaker 02:
And if they're right about that, that's enough.

[00:14:43] Speaker 00:
If they're right about that, that would be enough.

[00:14:45] Speaker 00:
However, they're not right about that.

[00:14:47] Speaker 00:
And the board actually did address that issue, so did the examiner, and found that one of skill would not substitute switching regulators for the non-pulsed rule.

[00:14:57] Speaker 03:
Where did the board say that?

[00:14:59] Speaker 00:
The board did say that.

[00:15:00] Speaker 00:
So first of all, I should say that the examiner and the board.

[00:15:05] Speaker 03:
Where did the board say that?

[00:15:07] Speaker 00:
OK.

[00:15:07] Speaker 00:
So the board adopted.

[00:15:11] Speaker 00:
adopted the examiner's rationale, as you may recall.

[00:15:15] Speaker 00:
And the examiner did say that because the examiner.

[00:15:20] Speaker 03:
Can you just point me to something in the board's opinion that allows you to run back to the examiner's answer?

[00:15:27] Speaker 00:
Sure.

[00:15:28] Speaker 00:
Appendix 021-22 is one place that you can look.

[00:15:34] Speaker 02:
I'm sorry, appendix what?

[00:15:36] Speaker 00:
021-22.

[00:15:41] Speaker 02:
In the board, I thought we were starting with the board opinion.

[00:15:46] Speaker 02:
That should have very, very low numbers.

[00:15:48] Speaker 00:
If we start with the board opinion, which is appendix 022, the board noted, first of all, the board noted Vicor's argument about putting in switching regulators in front of the non-pulse loads.

[00:16:01] Speaker 00:
It completely understood the issue.

[00:16:05] Speaker 00:
And then it went on and said that, among other things,

[00:16:09] Speaker 00:
the bias loads do not necessarily stay constant and could be affected by the pulses.

[00:16:15] Speaker 00:
That is one thing that the board said.

[00:16:17] Speaker 00:
And as a consequence, the bias loads, just like the pulse loads, could require relatively quick bursts of power, which is not achievable with an inductor in the conduction path.

[00:16:32] Speaker 00:
So that is the fact that they are effective.

[00:16:34] Speaker 03:
I'm a little lost.

[00:16:35] Speaker 03:
What's your

[00:16:37] Speaker 03:
What's the sentence you want me to read from the board's opinion?

[00:17:06] Speaker 00:
So if you start on 021, you'll see that the board notes that the argument about non-pulse voltages

[00:17:27] Speaker 00:
The appellant relies upon the testimony of Dr. Steigerwald that one of ordinary skill in the art would have understood that non-pulse voltages in Steigerwald can be implemented with or without inductors.

[00:17:37] Speaker 00:
And the board recognizes that SYNCOR disagrees, observing that including inductors in the current path would frustrate the principal purpose of Steigerwald.

[00:17:47] Speaker 00:
Pat Oehner also challenges Dr. Steigerwald's memory and lack of experience.

[00:17:52] Speaker 00:
And then it goes on and says, on balance, there are facts supporting each viewpoint.

[00:17:56] Speaker 00:
It's a close call.

[00:17:57] Speaker 00:
But we find the requester has not pointed to reversible error in the examiner's determination regarding this issue.

[00:18:04] Speaker 00:
And it also then goes on to say, it is evident that Steigerwald's 090 is principally directed to pulsed loads.

[00:18:13] Speaker 00:
And we'll talk about the implication of that.

[00:18:15] Speaker 00:
It's very important, even though it has unpulsed biasing and control loads.

[00:18:20] Speaker 00:
And then it also says,

[00:18:21] Speaker 00:
However, the principal descriptions and teaching of energy delivery of Steigerwald is that of a pulsed power converter and the ability to miniaturize the equipment.

[00:18:33] Speaker 00:
Then going on to the next paragraph, it talks about how the bias loads do not necessarily stay constant.

[00:18:42] Speaker 00:
It notes that as being an attribute of these bias loads.

[00:18:48] Speaker 00:
And then it says,

[00:18:49] Speaker 00:
Accordingly, on the present record in this proceeding, we are not persuaded that the examiner erred in withdrawing this rejection for the reasons noted in the RAM.

[00:19:00] Speaker 00:
And in the RAM, the examiner noted the reasons that the board in the Morata case noted.

[00:19:06] Speaker 00:
And in that decision, it specifically addressed the bias load issue.

[00:19:13] Speaker 00:
So this issue was considered by this board.

[00:19:16] Speaker 00:
It was also considered by the examiner.

[00:19:18] Speaker 00:
Now, as I said, why is it that it matters that the bias loads can vary?

[00:19:24] Speaker 00:
Well, because what an inductor does is it slows down the ability to deliver power when it's needed quickly.

[00:19:32] Speaker 00:
And to the extent that these bias loads are effective, and they too could require, they don't necessarily have to, but they could require a very prompt burst of power.

[00:19:43] Speaker 00:
And that's what an inductor interferes with.

[00:19:45] Speaker 00:
And that, therefore, would discourage

[00:19:48] Speaker 00:
one of skill from putting a switching regulator in front of these bias loads.

[00:19:53] Speaker 00:
The second point, the board recognized the importance of how this... The bias loads are unpulsed though.

[00:20:00] Speaker 03:
We all agree with that.

[00:20:02] Speaker 00:
But they also vary.

[00:20:03] Speaker 00:
They are not constant.

[00:20:05] Speaker 00:
And so as a consequence, they could have a pulse-like quality in the fact that they vary.

[00:20:11] Speaker 00:
And they could vary in accordance with, although perhaps not as sharply as the biased loads.

[00:20:16] Speaker 00:
And so as a consequence, you have to deliver power to those unpulsed loads or those biased loads when it is needed.

[00:20:25] Speaker 00:
And that's the important thing that an inductor interferes with.

[00:20:28] Speaker 00:
And that would discourage the combination.

[00:20:31] Speaker 00:
The other point, as Judge Chen pointed out, as the board found, the Segerwald reference is teaching pulse loads, the whole point of the application.

[00:20:46] Speaker 00:
is to deliver pulse loads for a radar array while miniaturizing the equipment that needs to go into the array, twin purposes.

[00:20:55] Speaker 00:
Deliver those pulse loads and make it small.

[00:20:58] Speaker 00:
And Vycor has argued that the reason for putting in switching regulators in front of these bias loads is to add efficiency.

[00:21:09] Speaker 00:
But Vycor hasn't even attempted to quantify what the efficiency gain would be when these bias loads

[00:21:16] Speaker 00:
put out, as the board found, de minimis power.

[00:21:20] Speaker 00:
So what would be the incentive to try to improve efficiency when the load is putting out de minimis power?

[00:21:27] Speaker 00:
On top of that, what Pressman actually teaches is that at frequencies of 20 kilohertz.

[00:21:34] Speaker 02:
What you just said about the insufficient motivation to gain efficiency, I don't remember

[00:21:42] Speaker 02:
any sentences that you were reading from the board that adopted that, did that?

[00:21:46] Speaker 00:
I think that's implicit in the board's finding that the reference is directed at the delivery of pulsed power, the general description and teaching of energy delivery and the conclusion.

[00:22:00] Speaker 02:
Well, I guess it's a little hard to know what those sentences are.

[00:22:03] Speaker 02:
One interpretation of those sentences is what Mr. Smith says is the simple legal error that

[00:22:10] Speaker 02:
You look at the prior art for the main theme, but not for the rest of what it teaches.

[00:22:16] Speaker 00:
I don't think that's a fair conclusion here.

[00:22:18] Speaker 00:
I think we're talking about a reference that the board found is virtually 100% of the power is coming from these pulse loops.

[00:22:27] Speaker 00:
And so they noted that.

[00:22:29] Speaker 00:
They noted that the power comes from the pulse loads, and there's de minimis power coming from these bias loads.

[00:22:35] Speaker 00:
That's what the board is noting here.

[00:22:37] Speaker 00:
And it's not just the board.

[00:22:38] Speaker 00:
In this opinion, the board is also adopting the conclusions that the examiner reached.

[00:22:44] Speaker 00:
And here's what the examiner said, noting or referencing what the Morata board said.

[00:22:52] Speaker 02:
What page are you about to read?

[00:22:54] Speaker 00:
Appendix 3400, which is from the Morata board,

[00:22:57] Speaker 00:
decision that is incorporated by the examiner in his decision multiple times, both in the right of appeal notice and in the action closing prosecution.

[00:23:10] Speaker 00:
And that would be appendix 418 and appendix 438.

[00:23:13] Speaker 00:
There, the Morata board said that Requestor notes that not all the output voltages of Steyr-Walb are pulse voltages.

[00:23:23] Speaker 00:
Patent owner maintains that the outputs that are not pulsed are bias voltages that do not draw substantial power.

[00:23:31] Speaker 00:
And then the board went on and agreed with that.

[00:23:33] Speaker 00:
That was the examiner's conclusion, as adopted by the board here, that these bias loads do not draw substantial power.

[00:23:41] Speaker 00:
And so I think it's implicit that the board here was saying that when you've got loads that are responsible for de minimis

[00:23:51] Speaker 00:
power.

[00:23:52] Speaker 00:
That would discourage anybody from adding switching regulators based on the purported justification that they add efficiency when any efficiency gain for the entire system would be negligible or de minimis.

[00:24:09] Speaker 00:
The other important point is that switching regulators are indisputably larger.

[00:24:16] Speaker 00:
They have more components.

[00:24:18] Speaker 00:
And the board in its decision here also emphasized

[00:24:21] Speaker 00:
the importance in Steigerwald of miniaturizing the equipment needed for energy storage.

[00:24:28] Speaker 00:
So what VICOR is proposing would not increase efficiency in any material way, and it indisputably would increase the size, which is also contrary to the goal of miniaturizing the equipment.

[00:24:44] Speaker 00:
And that's a goal that the board noted.

[00:24:48] Speaker 00:
And lastly,

[00:24:50] Speaker 00:
Pressman doesn't say that switching regulators are always going to improve efficiency.

[00:24:57] Speaker 00:
Pressman also says it depends on the frequency level.

[00:25:01] Speaker 00:
And Pressman teaches that at the frequency levels that are at play at Steigerwald, there would be no efficiency gain.

[00:25:09] Speaker 00:
And that was all evidence that was before the board and before the examiner.

[00:25:14] Speaker 00:
The board found that one of skill would have no incentive

[00:25:19] Speaker 00:
to add switching regulators in front of any of the loads.

[00:25:23] Speaker 00:
And by the way, Steigerwald said that himself in his patent claims and during prosecution.

[00:25:31] Speaker 00:
Steigerwald, in both the claims and the prosecution, emphasized that there should be no switching regulators at all.

[00:25:40] Speaker 00:
He didn't just say in front of the pulse outputs.

[00:25:46] Speaker 00:
He said no switching regulators at all.

[00:25:49] Speaker 00:
And so what FICOR is arguing here is, respectfully, the epitome of hindsight.

[00:25:55] Speaker 00:
It's looking at the prior art of the claims as a template.

[00:26:00] Speaker 00:
And they are suggesting modifications that one of skill would not make.

[00:26:04] Speaker 00:
There'd be no incentive to add switching regulators for bias loads that put out de minimis power.

[00:26:10] Speaker 00:
There'd be certainly a disincentive to add something that's larger when the reference teaches to keep everything small.

[00:26:19] Speaker 00:
And as I say, the frequency in Steiger-Wall would result in there being no efficiency gain anyway.

[00:26:27] Speaker 00:
And I think it also brings you back to the secondary consideration evidence.

[00:26:31] Speaker 00:
And the board found in this case that there were secondary considerations that are significant and a nexus to these specific claims.

[00:26:43] Speaker 03:
How can there be a nexus in light of what this court said in 2015

[00:26:50] Speaker 03:
which said basic IBA structure was known in the prior art.

[00:26:56] Speaker 03:
And so therefore, that can't really be a basis for establishing a nexus between any claim and any alleged commercial success, copying, praise, et cetera.

[00:27:08] Speaker 00:
Well, there is a nexus.

[00:27:09] Speaker 00:
And of course, the sport remanded back to the TV.

[00:27:11] Speaker 03:
Right.

[00:27:12] Speaker 03:
But the import, to me, is clear that

[00:27:16] Speaker 03:
The two-stage architecture of a non-regulating isolation stage coupled with a non-regulating isolation stage with controlled rectifiers, synchronous rectifiers, that basic architecture was in the prior art.

[00:27:29] Speaker 03:
It was known.

[00:27:30] Speaker 03:
It was known through the Steigerwald references.

[00:27:32] Speaker 03:
So now you're left as the patent owner with needing to establish a nexus to something else.

[00:27:40] Speaker 00:
Let me address that.

[00:27:41] Speaker 00:
First of all, what was known in Steigerwald

[00:27:45] Speaker 00:
was a two-stage architecture, as you mentioned, that has a non-regulating isolation stage, as this court found, that has synchronous rectification, but feeding linear regulators, not switching regulators.

[00:28:00] Speaker 00:
What these claims have are numerous features that are not present in those claims that this court found were anticipated.

[00:28:08] Speaker 03:
Isn't this the board decision that relied on

[00:28:11] Speaker 03:
the Morata Board decision, which was based on the 190 patent, which this court found multiple claims anticipated in 2015.

[00:28:21] Speaker 03:
So there is a problem now with the connection that your side has made between this patent claims and the 190 patent claims, when a number of the 190 patent claims have been found to be anticipated.

[00:28:37] Speaker 00:
Your Honor, respectfully, I don't think there's a problem at all.

[00:28:39] Speaker 00:
I think Vicor has suggested there's a problem based on, I think, crop quotes.

[00:28:44] Speaker 00:
The analysis, first of all, the trial claims of the 190, none of those claims were found to be anticipated by this court.

[00:28:53] Speaker 00:
The trial claims included claim two of the 190 patent that the board found here closely maps to the 290 claims at issue.

[00:29:04] Speaker 00:
Those claims include switching regulators.

[00:29:07] Speaker 00:
There are also claims that include other elements such as the voltage levels that are at issue here that tie the claims very closely to the types of systems that were commercially successful and that distinguish the Steigerwald system.

[00:29:22] Speaker 00:
But the switching regulator point alone is quite important, because Steigerwald does not have switching regulators.

[00:29:30] Speaker 00:
And yes, because there was a claim out there that did not call for switching regulators, there was anticipation.

[00:29:37] Speaker 00:
But there are lots of claims, including these, that require switching regulators and other elements that are absent from Steigerwald.

[00:29:44] Speaker 00:
The issue for nexus is, as the court held in- Please finish your thought, Mr. Ryan.

[00:29:50] Speaker 00:
Yes.

[00:29:50] Speaker 00:
And we'll probably get this to this in the 021.

[00:29:52] Speaker 00:
The issue of nexus is whether there is a close link, a reasonably commensurate link, between the claims on the one hand and the commercially successful products and other secondary consideration evidence.

[00:30:05] Speaker 00:
The board looked at that very specific question.

[00:30:07] Speaker 00:
And it found that there is a link in this case, not to the anticipated claims, but to the claims in this patent.

[00:30:15] Speaker 00:
And that was a factual finding that was correct.

[00:30:18] Speaker 00:
Ficor had the obligation in this proceeding.

[00:30:20] Speaker 04:
Thank you, Mr. Ryan.

[00:30:22] Speaker 04:
We'll hear some rebuttal from Mr. Smith.

[00:30:27] Speaker 04:
You've got three and a half minutes.

[00:30:30] Speaker 01:
Thank you, Judge Lurie.

[00:30:37] Speaker 01:
Allow me to address a background point on switching regulators and the assertion that using them is the epitome of hindsight.

[00:30:46] Speaker 01:
This is a citation from Pressman Appendix, page 762.

[00:30:49] Speaker 01:
It's right in the preface.

[00:30:51] Speaker 01:
He says, switching regulators, which are in the process of revolutionizing the power supply industry because of their low internal losses, small size, weight, and costs, competitive with conventional series pass or linear power supplies, are covered fully.

[00:31:06] Speaker 01:
So this is, in the background, a component which is well known to people of ordinary skill.

[00:31:12] Speaker 02:
Pressman was what, 1977?

[00:31:13] Speaker 02:
1977.

[00:31:14] Speaker 01:
So 40 years ago, switching regulators were in the process of revolutionizing the power supply industry to assert that a person of ordinary skill in the art wouldn't know that those two things which are mentioned in this paragraph together, hand in hand, seriously.

[00:31:28] Speaker 03:
But it competes with Dr. Steigerwald's express statements in the claims that they don't want any inductors in the conduction path.

[00:31:37] Speaker 01:
I interpret that, Your Honor, as a way to distinguish over prior art.

[00:31:41] Speaker 01:
In other words, there is a patent that Dr. Stagerwald is trying to get.

[00:31:47] Speaker 01:
There's prior art that does use switching regulators, and Dr. Stagerwald is amending the claims to get around that prior art.

[00:31:53] Speaker 01:
But that doesn't impede the person of ordinary civilian arts.

[00:31:57] Speaker 01:
It doesn't take away the knowledge of switching regulators or the ability to use them.

[00:32:01] Speaker 01:
And Dr. Starger-Walt himself testified, as we covered before, directly that switching regulators could have been used.

[00:32:07] Speaker 01:
There's motivation to do it because of what Preston says in connection with figure 3-4-B on appendix B. What is the evidence on this question

[00:32:22] Speaker 02:
there's actually some reason not to use inductors on the bias lines, either because it's inefficient or because it might inhibit getting enough power when needed in a pulse-like fashion, a spiky fashion.

[00:32:42] Speaker 01:
Right.

[00:32:42] Speaker 01:
So that specific argument, I don't think Sincor made in the briefs, the specific connection

[00:32:49] Speaker 01:
to the examiner's right of appeal notice, back to the Morata decision where the board in the Morata decision made a comment on the power coming out of the bias.

[00:32:58] Speaker 01:
Well, I don't think that was made in the briefs.

[00:33:00] Speaker 01:
I'm certain the board didn't make a finding about the power level coming off the bias voltages.

[00:33:05] Speaker 01:
I don't think that's in there at all.

[00:33:06] Speaker 01:
So all of that was certainly new.

[00:33:08] Speaker 01:
The evidence is Dr. Stagerwald's declaration testimony

[00:33:13] Speaker 01:
about inductors, and to the extent one can infer anything about that from the claim language of one of the Stagerwald references, that would also play into the evidence.

[00:33:25] Speaker 01:
And the evidence on the other side, of course, is what Pressman says about switching regulators in connection with Figure 34B, that you can use them with DC voltage outputs, which is essentially what we have here.

[00:33:38] Speaker 01:
for Steigerwald, that doing so can allow you to have multiple outputs with high efficiency.

[00:33:43] Speaker 01:
The quote I just read to you and Dr. Steigerwald's testimony on that point.

[00:33:53] Speaker 03:
Secondary considerations.

[00:33:54] Speaker 01:
Yes, in terms of the secondary considerations argument, thank you, Judge Chen.

[00:34:00] Speaker 01:
I think the point that the board got wrong was the lack of any discussion

[00:34:07] Speaker 01:
in the context of the prior art.

[00:34:10] Speaker 01:
And there's a lot of evidence that would come to bear on that point if the board had properly evaluated Nexus.

[00:34:16] Speaker 01:
There's all of the prior art teaching the core concept of having two separate stages followed by multiple outputs.

[00:34:25] Speaker 01:
And certainly in Preston, as this was found, it is in the Steigerwald reference.

[00:34:29] Speaker 01:
Even this separation of stages is found in the Cobos reference.

[00:34:33] Speaker 01:
As SYNCOR pointed out in its brief on the prior case, it's found in Jovanovich.

[00:34:38] Speaker 01:
It's really all over the prior, this division of the claims into stages that we find in the Schlecht patents.

[00:34:46] Speaker 01:
And to the extent SYNCOR has ever characterized the

[00:34:51] Speaker 01:
Secondary considerations as deriving from a feature was this separation of stages.

[00:34:56] Speaker 01:
If you read the first few pages of their brief, this radical idea that you can have two different stages of down conversion.

[00:35:01] Speaker 01:
But it's found in Preston.

[00:35:02] Speaker 01:
It's found in Stargardt World.

[00:35:04] Speaker 01:
That's the key feature that SYNCOR has always advocated to the extent they advocated anything at all.

[00:35:09] Speaker 02:
And so your point is what the board didn't do was to filter that out and see if there was anything left.

[00:35:14] Speaker 01:
That's correct.

[00:35:15] Speaker 01:
They did it correctly in the next case, but not in this case, Your Honor.

[00:35:20] Speaker 04:
Thank you.

[00:35:21] Speaker 04:
Mr. Smith, this case is submitted.