[00:00:00] Speaker 03:
The first argued case this morning is number 18-1106, AVX Corporation against Presidio Components.

[00:00:09] Speaker 03:
Mr. Quillen.

[00:00:13] Speaker 00:
Good morning, Your Honor.

[00:00:15] Speaker 00:
May it please the Court?

[00:00:17] Speaker 00:
I'd like to focus on standing.

[00:00:20] Speaker 00:
Before that, there are a couple of typos in each of our briefs I'd like to correct.

[00:00:25] Speaker 00:
On page 15 of our blue brief,

[00:00:29] Speaker 00:
at line four, we should have omitted the word low.

[00:00:36] Speaker 00:
And on our gray brief at page three, also on line four, we should have omitted the same word, low.

[00:00:45] Speaker 00:
Turning to standing, Your Honor, the Supreme Court has said that the question of standing, quote, is related only to whether the dispute sought to be adjudicated

[00:00:55] Speaker 00:
will be presented in an adversary context and in a form historically viewed as capable of judicial resolution, close quote.

[00:01:03] Speaker 00:
That's from the data processing case.

[00:01:06] Speaker 00:
ABX certainly satisfies those two conditions.

[00:01:11] Speaker 00:
Subsequently, in the Lujan case, the Supreme Court set out the, quote, irreducible minimum, close quote, of constitutional standing in three elements, injury and fact,

[00:01:25] Speaker 00:
causation, and redressability.

[00:01:28] Speaker 00:
ABX is a competitor of Presidio, and ABX's blue brief and its supporting documents show that all three elements are satisfied in this competitor standing case.

[00:01:42] Speaker 02:
Can I just ask this?

[00:01:44] Speaker 02:
It seems to me that in the various competitor standing cases, including, I guess, ours in a trade context and the Supreme Court in some of the older cases,

[00:01:54] Speaker 02:
arising under the APA and the DC circuit, all involve essentially the introduction of, or a government action, almost always about price or new competitors, where there was no question that the aspect of the government action that's challenged

[00:02:19] Speaker 02:
applied to the very offerings of the competitors.

[00:02:25] Speaker 02:
And that's not always true about patents.

[00:02:29] Speaker 02:
Patents are feature-specific government actions.

[00:02:34] Speaker 02:
And if you, for example, are making offerings in competition with your rivals, but have no concrete non-speculative interest in that feature,

[00:02:47] Speaker 02:
then why would those competitor standing cases apply?

[00:02:51] Speaker 00:
Those competitor standing cases bear even in that situation, Ron, or even in the situation here.

[00:03:00] Speaker 00:
For example, there's the notion in patent law of convoyed sales.

[00:03:09] Speaker 00:
We're not saying there's convoyed sales here, but you get the sense that in right height, for example, a patent owner has certain rights, and violating those rights means the patent owner is entitled to damages for competing products that come within the scope of that patent.

[00:03:29] Speaker 00:
But that's not the limit.

[00:03:31] Speaker 00:
under certain circumstances.

[00:03:33] Speaker 02:
I don't recall that you made by declaration or otherwise here a specific showing to essentially connect what you are doing not including the or planning to do some non-spec either existing or non-speculative future use of the patented feature or to something else that would

[00:04:01] Speaker 02:
be a non-speculative tie of what you do to the patent, like convoyed sales or like convoyed sales?

[00:04:15] Speaker 00:
The declaration refers to the

[00:04:21] Speaker 00:
annual report of the client of AVX.

[00:04:25] Speaker 00:
AVX's annual report discusses how it's important for AVX to provide a broad range, a broad array, a broad range of products.

[00:04:36] Speaker 00:
And the declaration also says that when he's aware of at least one situation where a client, a potential customer, a potential customer won't

[00:04:49] Speaker 00:
purchase because there's a threat of being shut down by means of an injunction.

[00:04:58] Speaker 02:
The notion... But that didn't relate specifically to the 639 patent or something covered by the 639 patent, right?

[00:05:10] Speaker 02:
Or even arguably covered.

[00:05:11] Speaker 02:
It was just a different... That's correct.

[00:05:13] Speaker 02:
I know both companies make a large variety of capacitors and compete and sue each other all the time.

[00:05:19] Speaker 00:
They're very much direct competitors, Your Honor.

[00:05:20] Speaker 00:
There's no dispute that they're competitors.

[00:05:23] Speaker 00:
The red brief acknowledges as much.

[00:05:26] Speaker 00:
This court, in a different Presidio case, has acknowledged that capacitors of a subsidiary of AVX, quote, compete with capacitors from Presidio.

[00:05:41] Speaker 00:
That's the other Presidio case that's cited in our blue brief.

[00:05:46] Speaker 00:
There's no question that they're competitors.

[00:05:51] Speaker 02:
So why is this case on its facts different from, I guess, our recent set of cases?

[00:06:01] Speaker 02:
Most, probably most close would be JTect.

[00:06:07] Speaker 02:
Others are in the same family.

[00:06:09] Speaker 02:
Phigenics, the more recent Momenta one.

[00:06:11] Speaker 02:
But JTect seems to be the one that says,

[00:06:16] Speaker 02:
Being a competitor is not by itself enough without some existing or non-speculative plan for an activity involving a feature arguably covered by the patented issue.

[00:06:33] Speaker 00:
With respect, Your Honor, I know I'm not new to the Court, but Article 3 is not limited, not confined to patent infringement.

[00:06:45] Speaker 00:
the data processing case, the Supreme Court's data processing case, presents a situation of which this is the flip side, if you will, in data processing.

[00:06:56] Speaker 00:
There was one incumbent who was providing services, and there came a ruling from the government agency that ruling permitted many other competitors to compete.

[00:07:11] Speaker 00:
And that was

[00:07:12] Speaker 00:
and economic harm that was sufficient to satisfy standing.

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This situation, as it were, is the flip side of that.

[00:07:20] Speaker 00:
Under our view of the law, under our view of the facts, excuse me, this technology was in the public domain.

[00:07:27] Speaker 00:
It was freely available and wrongly taken out of the public domain by the grant of the patent and the upholding by the board.

[00:07:34] Speaker 00:
So in our view of the facts, there were potentially many competitors who were

[00:07:42] Speaker 00:
The technology was available to be used by competitors.

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Then came a ruling by the Patent Office in the grant of the patent and an upholding by the board.

[00:07:53] Speaker 00:
And that ruling said, no, no, from now on, no other competitors.

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No one can make, use, or sell a device that comes within the ambit of these claims.

[00:08:04] Speaker 00:
That's economic harm.

[00:08:05] Speaker 00:
That's injury.

[00:08:07] Speaker 00:
And that's sufficient, in our view, to satisfy Article III, Your Honor.

[00:08:11] Speaker 03:
But let's move to the merits.

[00:08:16] Speaker 03:
For the sake of this argument, let us assume that there is standing.

[00:08:20] Speaker 03:
We appreciate the complexities, the aspects of estoppel, and so on, the intent of Congress.

[00:08:27] Speaker 03:
This is not a simple question, and we need to sort it out.

[00:08:32] Speaker 03:
But let's talk about the merits.

[00:08:35] Speaker 00:
Well, Your Honor, it's our view that the patent is no good and that the board erred in not striking down the patent.

[00:08:49] Speaker 00:
The board had accepted, as it were, purported teaching away without evaluating all the evidence.

[00:09:03] Speaker 00:
What, in our view, what the board has done is to say that that Presidio, by accepting the known disadvantages in the art and proceeding along that route, nevertheless, was able to get a patent.

[00:09:25] Speaker 00:
And we say that's not, that's not a correct view of the law in USV Adams.

[00:09:30] Speaker 00:
You can't just

[00:09:33] Speaker 00:
adopt a new use for an old device and get a patent on that.

[00:09:36] Speaker 00:
That's not appropriate.

[00:09:39] Speaker 00:
We say that what has happened here is that there's a teaching in these two references and those two teachings, the teachings are being combined.

[00:09:52] Speaker 00:
The board and Presidio focus on the invention of Leibowitz

[00:10:02] Speaker 00:
And as we know, a reference's teaching is not limited to its claims.

[00:10:08] Speaker 00:
It's not even limited to its preferred embodiment.

[00:10:10] Speaker 00:
A reference is available for everything it teaches.

[00:10:14] Speaker 00:
And here, part of what Leibowitz's teaching is available, in combination with Deveau, to render the claims unpatentable.

[00:10:30] Speaker 03:
Well, we're listening.

[00:10:32] Speaker 02:
Can you focus, and first you'll have to clarify my question before you answer it.

[00:10:41] Speaker 02:
You had some point to the effect that the subject of the discouragement in Leibowitz is only as to part of what the claims here at issue in the C-639 cover, that that discouragement wouldn't

[00:11:01] Speaker 02:
discourage the, let's call it, implanting of the metalization that you get from De Vaux.

[00:11:14] Speaker 02:
As to some of what's covered by the 639 claims and therefore the analysis of the board erroneously narrowed its focus

[00:11:31] Speaker 02:
about, by an effect, ignoring part of the coverage of the current claims.

[00:11:39] Speaker 02:
Yes, Your Honor.

[00:11:40] Speaker 02:
Yeah.

[00:11:41] Speaker 02:
Can you explain to what extent I just said is A is your argument and B is true?

[00:11:45] Speaker 02:
Yes, Your Honor.

[00:11:48] Speaker 00:
I think that's an accurate presentation of what we're trying to say.

[00:12:00] Speaker 02:
but is this does this have to do with what high inductance not always being required or that that's what if you could get to that level of detail.

[00:12:07] Speaker 00:
Right, so Liebowitz is concerned with inductance at high frequencies.

[00:12:14] Speaker 00:
The claims of a patent that's under attack now, those claims are not limited to high frequencies.

[00:12:25] Speaker 00:
So even if you were to accept that there was a teaching away with regard to high frequencies in Leibowitz, nevertheless, the claims are not limited.

[00:12:35] Speaker 00:
And it's error in our view to expand, as it were, that teaching away, that teaching of Leibowitz, and treat it as a teaching away for the scope of the claims.

[00:12:50] Speaker 00:
The argument from

[00:12:51] Speaker 00:
Presidio and the Board's analysis aren't commensurate with the scope of the claims, the way to view it.

[00:12:57] Speaker 00:
Another error on another part of the merits has to do with the Board's choosing not to consider our reply arguments and our evidence in reply.

[00:13:06] Speaker 00:
We think that's error under belted in other cases that this Court has presented.

[00:13:12] Speaker 00:
The Board has turned a blind eye.

[00:13:15] Speaker 00:
Certainly, what we did in the reply brief was directly responsive.

[00:13:19] Speaker 00:
It was replying to

[00:13:20] Speaker 00:
arguments in the patent owner response.

[00:13:26] Speaker 03:
Let me just ask you some more about Leibowitz.

[00:13:29] Speaker 03:
Leibowitz said that the high inductance would have been unattractive and therefore is viewed as teaching away.

[00:13:43] Speaker 00:
That's the way that Presidio is presenting it, Your Honor.

[00:13:48] Speaker 03:
Well, that's what the board found.

[00:13:51] Speaker 03:
Is it not?

[00:13:55] Speaker 00:
Over broadly, that's what the board found.

[00:14:00] Speaker 00:
But inductance in Leibowitz is only related, the concern with inductance is only related to high frequencies.

[00:14:09] Speaker 00:
And these claims don't have a limitation on frequency.

[00:14:12] Speaker 00:
There are many applications.

[00:14:14] Speaker 00:
for the capacitors that don't involve high frequencies, involve low frequencies.

[00:14:18] Speaker 00:
And for those, there should not be any teaching away.

[00:14:21] Speaker 00:
And the claims shouldn't be able to take that away from the public.

[00:14:29] Speaker 03:
Thank you.

[00:14:29] Speaker 03:
We'll save you the rebuttal time.

[00:14:39] Speaker 01:
Good morning, Your Honors.

[00:14:41] Speaker 01:
Mr. Ahrens.

[00:14:43] Speaker 01:
Greg Ahrens on behalf of the Patent Owner Presidio.

[00:14:46] Speaker 01:
I'd like to also address the issue of standing as that's predicate to this appeal going forward.

[00:14:52] Speaker 01:
Presidio asserts that the petitioner has not met its burden of coming forward, burden of production on showing that standing is applicable in this case and as Judge Toronto pointed out the most directly relevant recent case I'd say is the JTEC case as well.

[00:15:11] Speaker 03:
Is your position that if there is no standing to appeal, nonetheless, estoppel should apply?

[00:15:18] Speaker 01:
I'm sorry, Your Honor.

[00:15:21] Speaker 01:
If there is no standing to appeal, oh, Presidio would still be estopped, or the patent owner would be estopped, or petitioner?

[00:15:30] Speaker 03:
Why?

[00:15:31] Speaker 03:
Why?

[00:15:31] Speaker 03:
The whole concept of the legislative structure includes estoppel.

[00:15:38] Speaker 03:
Of course.

[00:15:39] Speaker 03:
a critical factor during the evolution of this procedure.

[00:15:44] Speaker 03:
And it also included the opportunity and right to appeal.

[00:15:49] Speaker 03:
So now, for reasons which seem to me to comport with the Constitution, at least in some situations, perhaps not this one, we say there's no standing to appeal.

[00:16:02] Speaker 03:
Therefore, why should the prohibition on raising the argument

[00:16:09] Speaker 03:
in litigation apply?

[00:16:12] Speaker 01:
Well certainly if there were, if the question is were there to be subsequent litigation by Presidio against AVX on this particular patent and this court were to find that at this appeal

[00:16:27] Speaker 01:
there had been no standing, would it be appropriate in the future to say that because of the finding of lack of standing and standing not being supported by the estoppel provision, which is the prevailing case law from the panels of this court, that's a question to be decided in the future.

[00:16:48] Speaker 01:
It's not on the table here.

[00:16:50] Speaker 03:
That's what it's all about, isn't it?

[00:16:52] Speaker 03:
There's no standing to appeal.

[00:16:53] Speaker 03:
Nonetheless, the estoppel provision

[00:16:57] Speaker 03:
falls into place, and they mention the stopper.

[00:17:00] Speaker 01:
Sure.

[00:17:00] Speaker 01:
I mean, if, again, in the hypothetical where Presidio were to sue under the 639 patent against AVX, should AVX actually come out with a product

[00:17:12] Speaker 01:
that is implicating the 639 patent, which as we know from the declaration of Mr. Flavitt.

[00:17:19] Speaker 02:
But just focus on the estoppel question.

[00:17:21] Speaker 02:
Has this court held that when there is no available appeal because the petitioner having lost before the board lacks standing, that nevertheless 315E, the estoppel provision,

[00:17:38] Speaker 02:
bars that petitioner from later raising a ground either raised or that could have been raised in the board proceeding.

[00:17:47] Speaker 01:
I don't think this court has addressed that question.

[00:17:49] Speaker 03:
Well here we are.

[00:17:51] Speaker 01:
Well actually I beg your pardon your honor but I don't think we are there yet because if this court finds that there is no standing for this appeal to proceed and then at some

[00:18:04] Speaker 01:
future point, AVX actually comes out with a product, Presidio actually sues them, AVX raises, or Presidio raises the estoppel provision, and then AVX says, wait a minute, we shouldn't be estopped because we couldn't rely upon the estoppel provision for purposes of standing, so we shouldn't, it shouldn't be a sword and a shield as to us.

[00:18:29] Speaker 01:
Then that question would be raised and germane then, but that's only in

[00:18:34] Speaker 01:
this hypothetical world that doesn't exist right now.

[00:18:37] Speaker 03:
Well, it doesn't seem to me to be hypothetical.

[00:18:39] Speaker 03:
We're talking about legislative intent.

[00:18:41] Speaker 03:
You raised the issue that they don't have standing.

[00:18:44] Speaker 03:
And here they are.

[00:18:48] Speaker 01:
Correct.

[00:18:49] Speaker 01:
And I guess I would suggest that if this Court wants to address what I think is a hypothetical question in the future, whether the estoppel provision would apply to AVX,

[00:19:02] Speaker 01:
I'm not sure.

[00:19:03] Speaker 01:
I haven't actually considered whether it should apply.

[00:19:05] Speaker 02:
You've made one kind of suggestion as to the kind of argument that AVX might make against the stop hole, which is unfair because we didn't get a right to appeal.

[00:19:18] Speaker 02:
But they might also say in normal issue and claim preclusion law, it's standard law from Kerscher against Putnam and in this case, Skyhawk

[00:19:28] Speaker 02:
that the absence of a right to appeal generally makes preclusion unavailable.

[00:19:34] Speaker 02:
So there would be a question whether the language of 315e when read together with the right of appeal of 319 might be understood implicitly to incorporate that long-standing restriction on preclusion or on the other side, the language is what the language is.

[00:19:52] Speaker 01:
Correct.

[00:19:53] Speaker 01:
And under all of these scenarios that we're currently discussing, I think

[00:19:58] Speaker 01:
When I say they're hypothetical, they only would come into play, again, if AVX comes out with a product which it currently has indicated no plans to do.

[00:20:09] Speaker 03:
That's the only reason that they're here.

[00:20:12] Speaker 03:
The whole situation arose because of the possibility of conflict between competitors.

[00:20:20] Speaker 03:
I think that they complain that they haven't been assured that they wouldn't be sued.

[00:20:28] Speaker 01:
Well, that is what they have said.

[00:20:30] Speaker 01:
In their briefs, they've argued that.

[00:20:32] Speaker 01:
But I would suggest that if you look at the evidence in the record, which is the declaration of Mr. Slavitt, all he has said is that AVX and Presidio are competitors.

[00:20:44] Speaker 01:
That's true.

[00:20:45] Speaker 01:
That was true in JTEC, where standing was not found to be applicable.

[00:20:52] Speaker 01:
And they make no statement that they have a product that

[00:20:56] Speaker 01:
uses vias, and the 639 patent claims require vias.

[00:21:00] Speaker 01:
So they've made no allegation that they even have a product that has the feature in question.

[00:21:05] Speaker 01:
They make no allegation that they're even intending to have a product that incorporates vias.

[00:21:12] Speaker 01:
And there's certainly been litigation between Presidio and one of the subsidiaries of AVX, which is known as ATC, American Technical Ceramics.

[00:21:23] Speaker 01:
There's actually no pending litigation

[00:21:26] Speaker 01:
brought by Presidio on any Presidio patents against AVX itself.

[00:21:31] Speaker 01:
So they make it seem like they're very fearful, you know, this small family-owned San Diego company.

[00:21:37] Speaker 02:
Does AVX as such participate in the marketplace, or does it merely hold subsidiaries that do?

[00:21:45] Speaker 01:
No.

[00:21:46] Speaker 01:
AVX has products.

[00:21:47] Speaker 01:
They have capacitor products.

[00:21:49] Speaker 01:
And there are, as you pointed out yourself, Your Honor,

[00:21:51] Speaker 01:
a myriad of capacitor products.

[00:21:54] Speaker 01:
The catalogs of each of the companies have literally hundreds of capacitor products.

[00:21:59] Speaker 01:
The 639 patent claims have a specific feature, that being the incorporation of vias, which are not found in any product of AVX.

[00:22:09] Speaker 01:
I mean, if you look at the Slavut Declaration, nowhere does he say that they have a product with that feature, and nowhere does he say that they're intending to have a product with that feature.

[00:22:20] Speaker 01:
Unlike the DuPont case, Your Honor, where DuPont actually had a plant that was ready to manufacture a product that was covered by the patent that was involved in the IPR.

[00:22:35] Speaker 01:
And the court found, and practitioners now refer to it as DuPont standing, because they met the requirements of having an actual immediate concrete plan to take action, which would likely result in a charge of infringement.

[00:22:50] Speaker 01:
We have no such allegations in this case.

[00:22:52] Speaker 02:
Can I turn to the merits?

[00:22:55] Speaker 02:
Yes.

[00:22:55] Speaker 02:
Yes, I'm sorry for the merits.

[00:22:57] Speaker 02:
Can you address the argument that I was discussing with Mr. Quillen toward the end of his argument about how, and I'll summarize it this way and then you can correct me, that the scope of the discouragement in Leibowitz is more limited than the scope of the claims here at issue and therefore

[00:23:20] Speaker 02:
the discouragement idea cannot itself be enough to find no motivation to combine to arrive at some of what's in the claims attitude.

[00:23:35] Speaker 01:
Of course.

[00:23:36] Speaker 01:
And in the framework of your question, of course, we understand that this Court is looking at the determination of non-obviousness of the claims de novo, and yet the

[00:23:47] Speaker 01:
uh... the factual findings including the teaching away finding by the board is reviewed for substantial evidence so with that framework i would suggest that if we look at the uh... the Leibowitz teaching well ABX again in their brief what can you tell me what I should be looking at I'm sorry that's akin to what you're looking at I apologize your honor column one of the Leibowitz patent which is found at

[00:24:18] Speaker 02:
503, 504.

[00:24:21] Speaker 01:
Correct.

[00:24:22] Speaker 01:
502, 503.

[00:24:26] Speaker 01:
So the particular column is column one.

[00:24:29] Speaker 01:
And as we get to the teaching away that's been cited by all the parties, the high inductance drawback also applies to devices with a sink.

[00:24:39] Speaker 01:
This is line 45 and beyond.

[00:24:42] Speaker 01:
with a single dielectric layer and one or more electrodes buried within a multi-layer structure in which electrical contacts to said bury layers are brought to the surface through vias.

[00:24:52] Speaker 01:
The present invention, so there's case law to the effect that when somebody talks about the present invention they're talking broadly about all aspects of the invention.

[00:25:00] Speaker 01:
It's not just a preferred embodiment, it's the present invention, avoids any of these inductance increasing methods and in fact makes practical a classic single layer dielectric

[00:25:12] Speaker 01:
ceramic capacitor with such and such thickness.

[00:25:15] Speaker 01:
There's actually no specific reference in here to a high frequency limitation.

[00:25:22] Speaker 01:
If you look to the next paragraph down around line 56.

[00:25:25] Speaker 02:
Is there anything about high frequency and the claims of the Liebowitz patent?

[00:25:31] Speaker 01:
No.

[00:25:32] Speaker 01:
The claims of Liebowitz aren't limited to high frequency, nor are the claims, and I think this is

[00:25:38] Speaker 01:
While opposing counsel made it seem as though because the 639 patents don't have any mention of a frequency range, that somehow therefore they could cover any frequency range, if the teaching away in Liebowitz was somehow limited to the high frequency portion of the spectrum, then because the claims cover more than that, that the teaching away is only teaching away from a portion of the scope of the claim.

[00:26:08] Speaker 01:
defies logic to me and I hope it does to you as well, particularly when you look at the passage that's being cited, which is line 56, column one of Liebowitz, true single layer capacitors have lower inductance and thus higher resonance frequencies than their multi-layer counterparts and are useful at higher frequencies.

[00:26:31] Speaker 01:
Okay, so that's it.

[00:26:32] Speaker 01:
It says are useful at higher frequencies.

[00:26:35] Speaker 01:
It doesn't tie the

[00:26:38] Speaker 01:
high inductance drawback of buried electrodes and vias to only the high frequency spectrum.

[00:26:48] Speaker 01:
It just simply doesn't do that.

[00:26:49] Speaker 01:
So AVX's argument is really trying to piggyback from a very sort of generic comment about the usage of these products, tie it to

[00:27:01] Speaker 01:
the teaching away, which I think counsel or in their brief state, essentially their expert had to admit that Liebowitz actually says what it says.

[00:27:10] Speaker 01:
It actually is telling a postita not to use vias.

[00:27:15] Speaker 01:
And it's not just in the specification here in column one.

[00:27:21] Speaker 01:
If you look at the file history,

[00:27:23] Speaker 01:
And I apologize, I just noticed this the other day, the portion of the appendix that has the file history and the appendix page numbers are cut off.

[00:27:32] Speaker 01:
And I felt sick.

[00:27:34] Speaker 03:
I thought it was mysterious.

[00:27:35] Speaker 03:
The file history is considered part of the published prior art?

[00:27:41] Speaker 01:
Well, certainly it's within the scope of what a posita would be aware of when they are looking at what a prior art reference teaches.

[00:27:49] Speaker 03:
And because what I was going to say, Your Honor, is that the claims of Leibowitz specifically- What difference does it make what Leibowitz argued in order to obtain his claims isn't what counts, what turns out to be in the published patent?

[00:28:08] Speaker 01:
It counts the most.

[00:28:09] Speaker 01:
And one of the things that's in the published patent are the claims of the published patent.

[00:28:14] Speaker 01:
And the Leibowitz claims specifically exclude vias.

[00:28:17] Speaker 03:
We use Leibowitz's claim construction rather than the claim construction of what a person of ordinary skill would take away from those claims?

[00:28:27] Speaker 01:
Your Honor, I'm not arguing about a claim construction of Leibowitz.

[00:28:31] Speaker 03:
We want a claim interpretation then.

[00:28:33] Speaker 01:
Sure.

[00:28:35] Speaker 01:
My point is simply that the claims of Leibowitz say specifically that that invention in Leibowitz is without a via.

[00:28:46] Speaker 01:
So that's a second place in the Liebowitz published patent specification in the claims where it says, no via.

[00:28:56] Speaker 02:
Mr. Quillen did make reference, I think, near the beginning of his discussion of the merits that, of course, Liebowitz, the purposes of its use as prior art is not limited to the claims of Liebowitz, but what includes everything taught in the document.

[00:29:12] Speaker 01:
Sure.

[00:29:13] Speaker 02:
And one of the things that's... Which would include things that in the prosecution, for example, it may have given up by amending its claims.

[00:29:21] Speaker 01:
Of course.

[00:29:22] Speaker 01:
But the fact remains that I'm not sure there's case law that says there has to be some number of alleged statements of teaching away beyond one in a patent.

[00:29:35] Speaker 01:
Some cases certainly find that there's a teaching away just sort of in the overall

[00:29:41] Speaker 01:
scheme of a specification in the prior, and I see that my time is up.

[00:29:46] Speaker 03:
No, please finish the thought.

[00:29:48] Speaker 01:
Just finishing the thought.

[00:29:49] Speaker 01:
And that is that, so there's not a requirement of multiple instances of teaching away.

[00:29:56] Speaker 01:
Here you have what, to me, seems like one of the most explicit teaching away, which is in the specification in column one, as we've seen, where it says, we don't use vias.

[00:30:06] Speaker 01:
Vias are bad.

[00:30:08] Speaker 01:
Don't use them.

[00:30:09] Speaker 01:
You look to the claims, that's yet another place in the specification where it excludes VIAs specifically.

[00:30:15] Speaker 01:
And then as a follow-up, if the postita were to look at the file history, they would see that the claim was amended to exclude VIAs and Liebowitz specifically distinguished from the DeVoe 443 patent and said, whereas that one mandates VIAs, I don't use VIAs, don't use VIAs.

[00:30:34] Speaker 03:
Anything else you want to ask Mr. Harris?

[00:30:35] Speaker 03:
Thank you very much.

[00:30:40] Speaker 03:
No, the rebuttal time, please.

[00:30:44] Speaker 03:
Okay, Mr. Cohen.

[00:30:45] Speaker 00:
Thank you, Your Honor.

[00:30:46] Speaker 00:
Let me start where we just left off.

[00:30:52] Speaker 00:
As counsel says, the Leibowitz claims were amended to include no vias.

[00:30:56] Speaker 00:
In other words, this reference in column one to the present invention included, when the application was filed,

[00:31:08] Speaker 00:
a claim and invention that did include vias.

[00:31:11] Speaker 00:
They had to be excluded in the claim one during prosecution to get the Leibowitz claims allowed.

[00:31:19] Speaker 00:
On page 28 of our blue brief, with regard to high frequency, 28 of our blue brief, we say that Presidio's expert repeatedly admitted that Leibowitz's preference for low inductance only applied to high frequency applications, not

[00:31:37] Speaker 00:
that the prior art as a whole forbade the proposed combination.

[00:31:43] Speaker 00:
And turning on the estoppel, it's not hypothetical, your honor.

[00:31:48] Speaker 00:
It's not hypothetical.

[00:31:51] Speaker 00:
Two points.

[00:31:52] Speaker 00:
One is that it's statutory.

[00:31:54] Speaker 00:
I'd be surprised if the law was that we could just

[00:32:03] Speaker 00:
not apply it, even though it may be statutory.

[00:32:06] Speaker 00:
Second, it's not hypothetical.

[00:32:07] Speaker 00:
It's not in the future.

[00:32:10] Speaker 00:
The estoppel effect is effective now.

[00:32:14] Speaker 00:
Right now, we're a-stopped.

[00:32:17] Speaker 00:
We, for example, could not go into the patent office and try to file another IPR on other art.

[00:32:27] Speaker 00:
We are a-stopped.

[00:32:29] Speaker 00:
We are a-stopped.

[00:32:30] Speaker 00:
And that's a current harm to us.

[00:32:33] Speaker 02:
Well, but it's a current harm to you only if you are now or have non-speculative plans to engage in behavior that would be affected by the 639.

[00:32:49] Speaker 02:
Article 3, I understand Your Honor, is not... Even assuming that a stopple applies, and I think, at least, is your understanding that we have determined that

[00:33:02] Speaker 02:
estoppel under 315e applies even when, for constitutional reasons, there's no right of appeal?

[00:33:09] Speaker 00:
I don't believe the court has actually said that.

[00:33:14] Speaker 00:
Perhaps this will be an occasion that the court will be able to visit that.

[00:33:18] Speaker 03:
I think you're right.

[00:33:18] Speaker 03:
We have not actually said that.

[00:33:20] Speaker 03:
But it seems to me that that's an issue in this case.

[00:33:24] Speaker 03:
Your friend says it's not.

[00:33:27] Speaker 00:
Well, I will.

[00:33:29] Speaker 03:
We'll see.

[00:33:30] Speaker 00:
We'll see, Your Honor.

[00:33:32] Speaker 03:
Any more questions?

[00:33:33] Speaker 03:
Okay, thank you.

[00:33:34] Speaker 03:
Thank you both.

[00:33:35] Speaker 03:
The case is taken under submission.