## United States Court of Appeals for the Federal Circuit

2008-1128, -1136 MONOLITHIC POWER SYSTEMS, INC.,Plaintiff/Counterclaim DefendantCross Appellant, and ASUSTEK COMPUTER, INC., Counterclaim Defendant-Cross Appellant, and ADVANCED SEMICONDUCTOR MANUF ACTURING CORPORATION, LTD., Counterclaim Defendant- Appellee,

v. O2 MICRO INTERNATIONAL LIMITED,Defendant/CounterclaimantAppellant. Dan L. Bagatell , Perkins Coie Brown & Bain P.A ., of Phoenix, Arizona, argued for plaintiff/counterclaim defendant-cross appellant. With him on the brief were Mark A. Flagel and Dean G. Dunlavey , Latham & Watkins LLP, of Los Angeles, California. Thomas J. Friel, Jr. , Cooley Godward Kronish LLP, of Palo Alto, California, argued for counterclaim defendant-cross appel lant ASUSTeK Computer, Inc., and counterclaim defendant-appellee Advanced Semi conductor Manufacturing Corporation Limited. Henry C. Bunsow , Howrey LLP, of San Franc isco, California, argued for defendant-counterclaimant- appellant. With him on the brie f were Korula T. Cherian and Duane H. Mathiowetz , and Henry C. Su and Richard C. Lin , East Palo Alto, California; and Richard Stanley , of Houston, Texas Appealed from: United States District Cour t for the Northern District of California Judge Claudia Wilken

## United States Court of Appeals for the Federal Circuit

2008-1128, -1136 MONOLITHIC POWER SYSTEMS, INC.,Plaintiff/Counterclaim DefendantCross Appellant, and ASUSTEK COMPUTER, INC., Counterclaim Defendant-Cross Appellant, and ADVANCED SEMICONDUCTOR MANUF ACTURING CORPORATION, LTD.,Counterclaim DefendantAppellee,

v. O2 MICRO INTERNATIONAL LIMITED,Defendant/CounterclaimantAppellant. Appeals from the United States District Court for the Norther n District of California in Consolidated Case Nos. 04-CV-2000 and 06-CV-2929, Judge Claudia Wilken.

__________________ _________ DECIDED: MARCH 5, 2009

__________________ _________ Before RADER, PLAGER, and GAJARSA, Circuit Judges

. RADER, Circuit Judge

. In a jury trial, the United States District Court for the Northern District of California appointed an expert witness un der Fed. R. Evid. 706(a) to testify on contested issues.Based on that testimony and co nsiderable other evidence, the jury found all asserted claims of O2 Micro International Limited’ s (“O2 Micro’s”) U.S. Patent No. 6,396,722 (“’722 patent”) obvious under 35 U. S.C. § 103. Because the di strict court did not abuse its discretion in appoi nting an expert under the Federal Rules, and because this court finds no error in the district court’s denial of O2 Micro’s motion for judgment as a matter of law on obviousness, this court affirms the judgment of t he district court. I O2 Micro’s ’722 patent, entitled “High- Efficiency Adaptive DC/AC converter,” relates to power inverter circuitry for lapt op computers. Laptops must be capable of operating on direct current (“DC”) power source s such as batteries. However, the cold cathode fluorescent lamps (“CCFLs”) for backlit laptop screens require high voltage, alternating current (“AC”) power. The di sclosed circuitry converts low voltage DC battery power into higher voltage AC powe r with the help of feedback circuitry that precisely controls the amount of power delivered fr om the battery to the CCFL. Figure 2 of the ’722 patent illustrates the converter circuit in question.

2008-1128, -1136 2Switches A-D define a “full- bridge” switch configurat ion. Diagonally opposing pairs of switches (A and D, B and C) define alternating conduction paths for current to reach the CCFL load (20) from the battery source V1 (12). The full bridge ‘chops up’ direct current into alternating current by requ iring current to alter nately flow through the A-D and B-C paths. By selectively turning on the pairs of switches, the circuitry controls the amount of power delivered to the load. A feedback signal (“FB”) indicates the cu rrent being supplied to the CCFL at any given time. In turn, a reference signal (“REF”) indicates desired load conditions. A comparator (32) compares the feedback signal with the re ference signal to produce a comparison signal (“CMP”). This CMP signal triggers adjustments to the load power by adjusting the amount of overla p between the switches. Thus, the circuit regulates outputted power much as a home thermostat maintains a steady-state temperature. Additionally, the converter circuit incl udes over-voltage protection mechanisms that reduce the power supplied to the CCFL in short-circuit or open-circuit situations. As shown in Figure 2, a current sensing comparator (42) com pares the presently supplied current (FB) with a reference value refl ecting the minimum or maximum current permitted by the system. If FB is within a permissible range, the comparator allows the current to flow unhindered th rough the output switch (38). However, when FB is in an undesirable range, the comparator substitutes a minimum volt age (“Vmin”) at the output switch (38), reducing the CCFL’ s power to a safe level. II In May 2004, Monolithic Po wer Systems, Inc. (“MPS”) f iled suit in the Northern District of California seeking a declaratory judgment finding O2 Micro’s ’722 patent

2008-1128, -1136 3invalid, not infringed, and une nforceable. O2 Micro counter claimed for infringement and added Advanced Semiconductor Manufacturing Co rp. (“ASMC”), MPS’s foundry, as a counter-defendant. O2 Micro’s counterclai m alleged that seve ral models of MPS inverter controllers infringe claims 1, 2, 9, 12, 14 and 18 of the ’722 patent. Five months later, O2 Micro sued MPS in the Eastern District of Texas, accusing MPS of infringing U.S. Pa tent No. 6,804,129 (“the ’129 pat ent”). O2 Micro later amended its complaint to also accuse ASMC of infringing the ’129 patent and to accuse ASUSTeK Computer Inc. (“ASUS”) of infringing U.S. Pa tent No. 6,259,615 (“the ’615 patent”), as well as the ’722 and ’129 patent s. In March 2006, the Texas court transferred O2 Micro’s case to the Northern District of California, which in turn consolidated the two cases. The district c ourt in California then dismissed O2 Micro’s claims regarding the ’129 pat ent with prejudice, and granted summary judgment of noninfringement of the ’615 patent in favor of ASUS. On Oct. 27, 2006, the district court convened a case manage ment conference and set a trial date for Apr. 30, 2007. At the conference, the court expressed its frustration with the technical co mplexities of the ’722 patent. On the technical issues here . . . I find this extremely difficult to understand. And the notion that a jury is going to understand it, to me, is foolishness. You can talk for months and the jury isn’t really going to understand this in the sense of being able to make a reasoned, rational decision about it. They will make a decision, we hope. Maybe they will hang because they’ll say that we can’t possibly understand this, but in my experience, they make a decision. But what is it based on? . . . It is kind of trial by ordeal or by sort of a champion, like a jousti ng contest rather than on the actual scientific merits of who is right and who is wrong.

2008-1128, -1136 4Hr’g Tr. 35:3-8, Oct. 27, 2006. The c ourt entertained the idea of appointing an independent expert under Fed. R. Evid. 706 to testify “on the elec trical engineering aspects” of the case. Id. at 35:22. This expert, in the court’s estimation, “would essentially, I can’t say decide the case, but would testify and [the jury] would be told ‘This is the court’s expert on these points.’” Id. at 36:2-4. O2 Micro objected, while MPS expressed its appr oval of the idea. On Jan. 17, 2007, the district cour t ordered the parties to confer about candidates to serve as the Rule 706 expert. The parties ultimate ly agreed, after a series of disagreements, upon an expert, Dr. Enri co Santi. The district court outlined a protocol detailing what information to provide Dr. Santi and when to complete discovery regarding his opinions. Trial commenced as scheduled in April 2007. MPS and the other appellees presented evidence that the asserted claims of the ’722 patent were obvious under 35 U.S.C. § 103. Further, MPS presented evidence that the ’722 patent was invalid under the on-sale bar of 35 U.S.C. § 102(b). The court-appoi nted expert, Dr. Santi, offered testimony largely consistent with MPS’s t heory of the case, including MPS’s position that it did not infringe O2 Mi cro’s asserted claims. The district court instructed the jury that Dr. Santi was “an independe nt witness retained by the parti es jointly at the court’s direction to assist in explaini ng the technology at issue in this case.” Trial Tr. 96:21-24, Apr. 30, 2007. On May 15, 2007, the jury rendered a verdict favorable to MPS and the appellees. The jury found the asserted claims invalid under both MPS’s obviousness and on-sale bar theories. Additionally, the jury found no literal in fringement of the

2008-1128, -1136 5claims, but found infringement under the doctrine of equivalents as to claims 12 and 14. The district court denied O2 Micro’s motions for a new trial and for judgment as a matter of law. Monolithic Power Sys., Inc. v. O2 Micro Int’l Ltd. , No. C 05-2000 CW, 2007 WL 3231709, at *7 (N.D. Cal. Oct. 30, 2007). This court has jurisdiction over O2 Micro’s timely appeal under 28 U.S.C. § 1295(a)(1).
III The Federal Rules of Evidence allow a co urt to appoint an expe rt either “on its own motion or on the motion of any party.” Fed. R. Evid. 706( a). Rule 706(a) provides: The court may appoint any expert wit nesses agreed upon by the parties, and may appoint expert witnesses of it s own selection . . . A witness so appointed shall be informed of the witness’ duties by t he court in writing, a copy of which shall be f iled with the clerk, or at a conference in which the parties shall have opportunity to parti cipate. A witness so appointed shall advise the parties of the witness’ fi ndings, if any; the witness’ deposition may be taken by any party; and the witness may be called to testify by the court or any party. The witness shall be subject to cross-examination by each party, including a party calling the witness. Id. The appointment of an in dependent expert is a procedural ruling reviewable under regional circuit law. See TechSearch L.L.C. v. Intel Corp. , 286 F.3d 1360, 1376- 77 (Fed. Cir. 2002) (stating standard of review regarding the appoint ment of a non-Rule 706 technical advisor). The United States C ourt of Appeals for the Ninth Circuit reviews the decision to appoint a Rule 706 expert for an abuse of discretion. Walker v. Am. Home Shield Long Term Disability Plan , 180 F.3d 1065, 1071 (9th Cir. 1999); see also Daubert v. Merrell Dow Pharms. Inc. , 509 U.S. 579, 595 (1993) (stating in dicta that “Rule 706 allows the c ourt at its discretion to procure t he assistance of an expert of its own choosing.”).

2008-1128, -1136 6While commentators have obser ved that district courts rarely make Rule 706 appointments, see, e.g. , 4 Jack B. Weinstein & Margaret A. Berger, Weinstein’s Federal Evidence § 706.02[2] (2d ed. 2005) (“It is indis putable that court a ppointment of experts is a rarity.”); 29 Charles Alan Wright et al., Federal Practice and Procedure § 6304 (2d ed. 2002) (“The exercise of Rule 706 powers is rare under virtually any circumstances.”), this court acknowledges t hat the Federal Rules do authorize those appointments. See, e.g. , United States v. Green , 544 F.2d 138, 145 (3d Cir. 1976) (“[T]he inherent power of a trial judge to appoint an exper t of his own choosing is clear.”); Wright, supra , § 6302 (“The provision is a specif ic application of the general power of judges under Rule 614 to ca ll and interrogate witnesses.”); 1 Charles McCormick, McCormick on Evidence § 8 (4th ed. 1992) (discussing a judge’s “ancient power to call an expert . . . to give impartial testimony to aid him or the jury in resolving a scientific issue.”); Fed. R. Evid. 706 advisory committee’s note (“The inherent power of a trial judge to appoint an expert of hi s own choosing is virtually unquestioned.”). O2 Micro argues that the district c ourt’s appointment of Dr. Santi as an independent expert unduly burd ened its Seventh Amendment right to a trial by jury. According to O2 Micro, the district court app ointed Dr. Santi because it believed that the technical issues were too complex for a jury , in violation of es tablished Ninth Circuit precedent that there is no “complexity exc eption” to a litigant ’s Seventh Amendment rights. See, e.g. , In re U.S. Fin. Sec. Litig. , 609 F.2d 411, 432 (9th Cir. 1979) (“[W]e do not believe any case is so ov erwhelmingly complex that it is beyond the abilities of a jury.”). This court’s review of this record , however, detects no deni al or encumbrance of O2 Micro’s jury demand or Se venth Amendment rights. Al though the district court’s

2008-1128, -1136 7extemporaneous comments at the case management conf erence suggested a belief that the independent ex pert would greatly influence the jury ’s determination, the district court properly administered the standards set by Rule 706. In accord with Rule 706(a) , the court allowed the parties to show cause why an expert witness should not be ap pointed, and over O2 Micro’s objections, instructed the parties to nominate candidates and confer upon a mutually agreeable witness. Order Concerning Court-Appointed Expert, Jan. 17, 2007. Further in accord with 706(a), the district court provided detailed written instructions to Dr. S anti regarding his duties, and ordered Dr. Santi to make himself available fo r depositions and for exam ination at trial. Monolithic Power Sys. Inc. v. O2 Micro Int’l Ltd. , No. C 04-2000 CW (N.D. Cal. Mar. 12, 2007) (order concerning duties and instructions for court-appoi nted expert). In accord with 706(b), the court instructed the parties to share Dr. Santi’s reasonable fees and expenses. Id. And as per 706(d), the c ourt did not limit in any way the parties’ ability to call their own experts, and allowed these exper ts to attack, support, or supplement the testimony of Dr. Santi. The record shows that the trial court gave Dr. Santi only thirty-five days to review all relevant materials and prepare a report. The strictures of this time frame, however, do not amount to an abuse of di scretion. Dr. Santi testif ied repeatedly that he had enough time to complete his analysis. See, e.g. , Trial Tr. 345, May 1, 2007. Dr. Santi spent over 75 hours on his analysis, in addition to the time he spent writing a 27-page report including several detailed claim charts. Id. at 245. Further, he made himself available for depositions and met with counsel for both sides before trial to prepare a technology tutorial for the court.

2008-1128, -1136 8This court does not perceive an abuse of discretion in the district court’s disclosure of Dr. Santi’s indepe ndent status to the jury. The framers of the Federal Rules expressly contemplated: “[I]n the exercise of its discretion, the court may authorize disclosure to the jury of the fact that the cour t appointed the expert witness.” Fed. R. Evid. 706(c). The distri ct court properly exercised th is discretion, taking care to instruct the jury that it should not assign Dr. Santi’s opinion great er inherent weight on accord of his independent status. You should not give any great er weight to Professor Santi’s opinion testimony than to the testimony of any other wit ness simply because the court ordered the parties to retain an independent witness. In evaluating his opinion, you should carefully assess the nature of and basis for Professo r Santi’s opinion just as you would do with any other witness’ opinion. Trial Tr. 96:23-97:4, Apr. 30, 200 7. Of note, the jury’s verd ict did not entirely track Dr. Santi’s opinions. Whereas Dr. Santi opined that only claim 12 of the ’722 patent was obvious, the jury found all claims obvious. Moreover, whereas Dr. Santi opined that only claim 12 was infringed under the doctrine of equivalents, t he jury found both claims 12 and 14 infringed under the doctrine. Ultimately, O2 Micro’s argum ents that Dr. Santi’s testimony relieved the jury of its tasks are policy arguments against Rule 7 06. However, Congress entertained and rejected these arguments during the fr aming of Rule 706. See, e.g. , Hearings on Proposed Rules of Evidence Befo re the Subcomm. on Criminal Justice of the H. Comm. On the Judiciary (Supp.), 93d Cong., 1st Sess., ser. 2, 142 (1973) (Position Paper of Ass’n of Trial Lawyers of Am .) (“Perhaps the most fundam ental flaw in the proposed rule is its willingness to depar t from fundamental belief in t he efficacy of the jury system as such.)”; id. at 238 (Letter from Thomas A. Wallace ) (“This is contrary to the advocacy

2008-1128, -1136 9system of justice which has pr evailed in our country. Such experts tend to become in the eyes of the jury anointed, not appointed .”). Furthermore, the Supreme Court has long recognized the constitutionality of court-appointed experts. See, e.g. , Ex parte Peterson , 253 U.S. 300, 312-13 (1920). The predicaments inherent in court appoi ntment of an independent expert and revelations to the jury about the expert’s neutral status trouble this court to some extent. Courts and commentators alike have remarked that Rule 706 should be invoked only in rare and compelling circumstances. In re Joint E. & S. Dists. Asbestos Litig. , 830 F. Supp. 686, 693 (E.D.N.Y. 1993) (noting that “u se of Rule 706 should be reserved for exceptional cases in which the ordinary adver sary process does not suffice”); Wright,
supra , § 6302 (“Rule 706 powers are properly in voked where the issues are complex and the parties’ experts have presented conflicting testimony that is difficult to reconcile or have otherwise failed to provide a suffici ent basis for deciding the issues.”). However, under Ninth Circuit law, district courts enjoy wi de latitude to make these appointments. This court perceives no abuse of discretion in this case where the district court was confronted by what it viewed as an unusually complex case and what appeared to be starkly conflicting expert testimony. See, e.g. , Walker , 180 F.3d at 1071 (finding no abuse of discretion in Rule 706 appointment where the scientific evidence was “confusing and conflicting” and the appointment “assist[ed] the court in evaluating contradictory evidence about an elus ive disease of unknown cause”).
IV The jury found all asserted claims of O2 Micro’s ’722 patent obvious under 35 U.S.C. § 103. When reviewi ng a district court’s decision to deny JMOL as to

2008-1128, -1136 10obviousness, “this court reviews a jury’s conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence.” LN P Eng’g Plastics, Inc. v. Miller Waste Mills, Inc. , 275 F.3d 1347, 1353 (Fed. Cir. 200 1). Such underlying factual questions include the scope and content of the pr ior art, the differences bet ween the prior art and the claims at issue, and the level of ordinary skill in the art. Dippin’ Dots, Inc. v. Mosey , 476 F.3d 1337, 1343 (Fed. Cir. 2007) (c iting Graham v. John Deere Co. , 383 U.S. 1, 17 (1966)). On appeal, O2 Micro disputes the underlying factual findings implicit in the jury’s obviousness verdict. In particular, O2 Micro argues that substantial evidence does not support the jury’s finding that U. S. Patent No. 5,923,129 (the “Henry” patent) discloses various features of the ’722 patent’s claims. The Henry patent carries the title, “Apparatus and Method for Starting a Fluorescent Lamp.” Like the ’722 patent, Henry teaches a power conversion circuit for driving a CCFL load. Henry patent col.2 ll. 6-10. Like the feedback functionality of the ’722 patent, Henry teaches a “feedback circuit which detects the total current passing through the CCFL . . . so that the controller may control t he current passing through the CCFL.” Id. at col.2 ll.33-37. Further, like the ’ 722 patent’s full-bri dge inverter, Henry discloses “generat[ing] two output signals to drive a pair of switching transistors connected to opposite terminals of the center tapped primary of a tr ansformer.” Id. at col.2 ll.38-41. O2 Micro’s appeal disputes whether Henry teaches three specific elements of its asserted claims, namely, the “flow-through switch” of claims 2 and 9; the “second state” limitation of clai ms 1, 2, 9, and 18; and the “only if” limitation of claims 12 and 14.

2008-1128, -1136 11A. The “Flow-through Switch” Limitation Claims 2 and 9 require a flow-through switch coupled to sa id error amplifier and having first conduction state wherein the output of said switch comprises a DC signal indicative of said first state of sa id second pulse signal, and a second conduction state wherein the output of said switch comprises a DC signal indicative of said second state of said second pulse signal. ’722 patent col.11 ll.33-39. The ’722 patent’s specification describes a “switch 38” for regulating current provi ded to the CCFL. Id. at col. 8 ll.7-33. The circuitry generates a comparison signal CMP, which reflects th e difference between re ference signal REF (desired current to flow th rough the lamp) and the feedback signal FB (indicating actual current flowing through the lamp). Id. at col.8 ll.4-6. When CMP is within a permitted range (normal operation), switch 38 permits CM P to “flow through,” delivering power to the load in proportion to t he feedback signal. Id. at col.8 ll.17-22. However, when CMP is outside the permitted range (e.g., an open circ uit or short circuit), switch 38 blocks CMP from flowing through to th e load, instead supplying a mi nimal voltage “Vmin” until permissible current is onc e again flowing. Id. col.8 ll.22-31. In accordance with this disclosure, the district court defined a flow -through switch as “a switch which passes a selected voltage signal to its output mode.” Appellees relied exclusively on the Henry patent as showing the claimed flow -through switch in the prior art. Substantial evidence is “more than a me re scintilla” and is “such relevant evidence as a reasonable mind mi ght accept as adequate to su pport a conclusion.” Z4 Techs., Inc. v. Microsoft Corp. , 507 F.3d 1340, 1353 (Fed. Cir. 2007). Substantial evidence supports the conclusion that the H enry patent teaches a flow-through switch. MPS’s expert, Dr. Horenstein, testified that “comparator 740” in Fi gure 8B of the Henry

2008-1128, -1136 12reference teaches a flow-through switch as claimed in the ’722 patent. Trial Tr. 1200:13-19, May 9, 2007. Despite O2 Micr o’s current assertions that Henry’s comparator 740 only output s predetermined states, ra ther than passing through voltages, O2 Micro did not cro ss-examine Dr. Horenstein on his assertion as to this point, and O2 Micro’s own expert did not testify on this subject at all. Thus, the record stands unrebutted with evidence showing that Henry included a flow-through switch. O2 Micro’s attorney arguments on appeal cannot create an evidentiary gap. See Johnston v. IVAC Corp. , 885 F.2d 1574, 1581 (Fed. Cir. 1989) (noting that “Attorneys’ argument is no substitute for evidence.”).
B. The “Second State” Limitation Claims 1, 2, 9, and 18 require an inverter with a second pulse signal having a first state which overlaps said first pulse signal to deliver an amount of power to said load det ermined by said feedback signal, and a second st ate which overlaps th e first signal with a predetermined minimum overlap to deliver a predetermined minimum power to the load. ’722 patent col.11 ll.22-27 (e mphasis added). The claimed “second state” relates closely to the function of the flow-thr ough switch. When CMP is outside a permissible range, (e.g., during an overvoltage or open lamp condition), the disclosed circuitry enters into the second state–shutting off feedback control and instead supplying minimum power to the CCFL load until permi ssible current once again flows through the CCFL. Id. at col.8 ll.22-31. O2 Micro challenges, on subs tantial evidence grounds, whether the Henry patent discl oses this second state. O2 Micro does not appear to challenge whether Henry has a non-feedback-controlled second state, but more

2008-1128, -1136 13specifically, whether Henry teaches a second state that delivers a predetermined minimum amount of power to the load. MPS’s expert Dr. Horenstein testified that the “sawtooth generator” of the Henry patent teaches the claimed “second state.” The Henry patent itself states that this sawtooth generator produces a “reduced duty cycle . . . to prevent overvoltage and overheating of the transformer . . . .” Henr y patent col.14 ll.37-39. Dr. Horenstein testified that during startup or fault conditions, Henry shut s off feedback and reverts to a “minimum power output state” produced by the sawtooth generator. Tr ial Tr. 1196:8-13, May 9, 2007. Horenstein further testif ied that when the He nry patent detects an overvoltage condition, “it grounds the input of the comp pin, which leads to the minimum possible pulse that the controller can produce.” Id. at 1196:3-5 (emphasis added). O2 Micro’s expert Dr. Rhyne provided co nflicting testimony. He testified that Henry’s second state out puts a minimal zero voltage only half the time: [The] sawtooth generator . . . does not disable under an open-lamp condition the operation of this inverter all the time. Instead, it does it only 50 percent of the time . . . It just says, ‘Hey, I don’t want to get too much voltage, so I am going to just turn this thing off, which would be very much like some of these claims require. But then the other half of the time it just turns it right back on. So it is not something that completely turns off the operation if you detect the open-lamp condition. It just sort of cripples it, but it al lows it to run half of the time as it would otherwise. Id. at 1299:25-1300:13. Dr. Horenstein’s testimony provides s ubstantial evidence for the jury to have found the “second state” limitation in the prior art. Indeed, Dr. Horenstein acknowledged and seems to have embraced Dr . Rhyne’s characterization of Henry’s sawtooth generator as consistent with the claimed second state:

2008-1128, -1136 14The sawtooth is used for part of t he reaction of the system to the open lamp, but the output of that sawtooth generator is a logical signal, a one or a zero, a high or a low which sets t he controller into a minimum output state. Id. at 1198:4-7. Thus, the jury was entitl ed to credit Dr. Horenstein’s testimony regarding Henry’s “reduced duty cycl e” over Dr. Rhyne’s differing testimony. This court finds no reason to disturb that implicit factual finding. C. The “Only If” Limitation Claims 12 and 14 of the ’722 patent require a feedba ck circuit which delivers power to the CCFL load “only if said feedback signal is above a predetermined threshold.” ’722 patent col.12 ll.49-50. Dr. Santi and Dr. Ho renstein concurred that the Henry patent teaches this lim itation because it teaches di sengaging feedback and going into a fixed minimal volt age output state when the f eedback signal drops below a predefined threshold. Trial Tr. 338 (May 1, 2007) (Santi); Trial Tr. 1202 (May 9, 2007) (Horenstein). The specification of the H enry patent corroborates their testimony by teaching that power is delivered to the CCFL only when the current feedback signal is above “VREF,” which is defined as a “stable re ference voltage.” Henr y patent col.13 ll. 38-57, col.10 ll.48-51. Accordingly, substantial evidence s upports a finding that Henry teaches the claimed “ only if” limitation. In sum, substantial evidence supports t he factual underpinnings implicit in the jury’s verdict. This court “presume[s] t hat the jury resolved the underlying factual disputes in favor of the verdict winner and l eave[s] those presumed findings undisturbed if they are supported by substantia l evidence.” Jurgens v. McKasy , 927 F.2d 1552, 1557 (Fed. Cir. 1991). However, O2 Micro ar gues that even if substantial evidence supports the finding that every element of the asserted claims was in the prior art, the
2008-1128, -1136 15verdict must fail as a matter of law becaus e Drs. Santi and Hor enstein articulated no reasons for combining the cited references. To the contrary, upon review of the entire record, this court finds convincing the testim ony of Drs. Santi and Ho renstein that one of ordinary skill in the art would have had ample motivation to combine known elements in the claimed manner. These experts opined that inverter circuit designers routinely mix and match bridge topologies, over-voltage safety protections, and feedback methods – all elements of the asserted cl aims and all conceded by O2 Mi cro to be well known in the art. For example, Dr. Horenstein test ified that a skilled artisan would have been motivated to combine the full bridge inverter shown in Figur e 2 of the Henry patent with the sawtooth generator in Henry’s Figure 8, which implements the claimed open lamp control because whether one implements this kind of open lamp control with a full bridge or a half-bridge is immaterial. The sele ction of the bridge is like picking a lego out of a lego box. You can implement the safety functions pertinent to open lamp with a full bri dge, or a half bridge. An d, in fact, this patent talks about doing it with both full bri dge and half-bridge. So tying this controller to a full bridge is not a great leap of faith. Trial Tr. 1196:20-1197 :2 (May 9, 2007). Section 103 of Title 35 requires this cour t to inquire “whether the improvement is more than the predictable use of prior-art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc. , 127 S. Ct. 1727, 1740 (2007). Applying the law to the facts in the record, this cour t answers the inquiry in the negative and concludes that the asserted cl aims of the ’722 patent are obv ious as a matter of law. IV Because this court finds that the dist rict court did not abuse its discretion in appointing Dr. Santi as an indep endent expert under Federal Ru le of Evidence 706, and
2008-1128, -1136 162008-1128, -1136 17 because this court affirms the district court’ s denial of O2 Micro’s JMOL motion as to obviousness under § 103, this court need not reach the other issues raised by O2 Micro’s appeal. Accordingly, this court a ffirms the judgment of the district court.

AFFIRMED

NO COSTS