[00:00:00] Speaker 04:
is 181348, Innovative Memory Sessions versus Micron.

[00:01:09] Speaker 04:
Please proceed.

[00:01:12] Speaker 02:
Good afternoon again, Your Honors.

[00:01:14] Speaker 02:
Once again, my name is Ed Flynn, representing Appellant Innovative Memory Systems.

[00:01:19] Speaker 02:
On this appeal, there are two primary claim limitations at issue as well.

[00:01:25] Speaker 02:
And the first claim limitation is with respect to claim nine.

[00:01:30] Speaker 02:
The first one that I want to address is claim nine.

[00:01:33] Speaker 02:
And the claim limitation, the row decoder selecting a row of reference cells

[00:01:39] Speaker 02:
to which the analog signal is applied.

[00:01:43] Speaker 02:
And the other set of claim limitations is with respect to claim eight, a counter coupled to count pulses from the sense circuit.

[00:01:53] Speaker 02:
Both of those limitations in the first instance, anyway, rely on an issue of claim construction.

[00:02:01] Speaker 02:
So I would like to start with the claim construction issue regarding claim nine.

[00:02:09] Speaker 02:
And I would point to the petition at appendix page numbers 352 to 353 and Dr. Sabramanian's declaration in support of that petition at appendix page numbers 1086 to 1087.

[00:02:29] Speaker 02:
For the petitioner's assertion as to how the prior art, the combination of Seligson and Yanomaru,

[00:02:40] Speaker 02:
how it meets that claim limitation.

[00:02:43] Speaker 02:
And that sentence, what the petition and what Dr. Sabramanian both do, after describing the operation and the architecture of Yanomaru, state that the encoder and switches of Yanomaru would connect the respective row to the analog signal, the gates of the transistors in that row to the analog signal, thus

[00:03:08] Speaker 02:
By Yanomaru disclosing row decoder, which connects a respective row to the analog to digital path, the combination discloses the row decoder selecting a row of reference cells to which the analog signal is applied.

[00:03:23] Speaker 02:
That is the extent of what is included in the petition and in Dr. Sabramanian's opening declaration as to this claim term and how the Selex and Yanomaru combination satisfy that claim limitation.

[00:03:38] Speaker 02:
I don't think that there can be any confusion that what that statement is meaning.

[00:03:44] Speaker 02:
That the switches, the encoder and switches of Yanomaru, which they equate with the row decoder recited in the claim, selectively connects the analog input voltage, the AIN, to the gates of the transistors in the respective or the selected row.

[00:04:01] Speaker 02:
But it lacks any detail throughout the rest of the petition or Dr. Subramanian's declaration as to how it does that.

[00:04:09] Speaker 02:
how that Selex and Yanomaru row decoder connects AIN to the selected row.

[00:04:15] Speaker 02:
Because in Yanomaru, which discloses a serial to parallel converter that uses comparators instead of transistors, the analog input voltage to that serial to parallel converter is connected to all of the comparators at all times at the same time.

[00:04:31] Speaker 02:
It is not connected selectively to the comparators.

[00:04:36] Speaker 02:
So without any further elaboration in either the petition or in Dr. Baker's declaration, and I hope I said Dr. Baker before and not Dr. Subramanian.

[00:04:44] Speaker 02:
If I said Dr. Subramanian, I got confused from the last one.

[00:04:48] Speaker 02:
But in Dr. Baker's declaration, we asked Dr. Baker at his deposition to explain his combination.

[00:04:57] Speaker 02:
And he explained the combination as a two-step serial to parallel converter.

[00:05:02] Speaker 02:
that uses the transistors of Seligson's parallel converter arranged in the serial-to-parallel arrangement or architecture of Yanomaru's serial-to-parallel converter.

[00:05:15] Speaker 02:
And then he drew that combination.

[00:05:18] Speaker 02:
So he described it, and I can again direct your attention to Appendix page numbers 2822 to 2823, where he was answering and describing this combination.

[00:05:30] Speaker 02:
And I direct your attention to appendix page number 2891, which is the figure that he drew at his deposition depicting the combination that he was describing.

[00:05:41] Speaker 02:
And he specifically confirmed that this combination, as he described it and drew it, is how you would use the Seligson parallel converter in the topology of the Yanomaru serial parallel converter.

[00:06:01] Speaker 02:
And he also specifically confirmed that that Selex and Yanomaru combination is the combination that renders claim nine obvious.

[00:06:11] Speaker 02:
And I direct your attention there to appendix page numbers 2851 to 52 and 2832 to 37.

[00:06:17] Speaker 02:
He also confirmed, after confirming that this is the combination that meets the road decoder

[00:06:26] Speaker 02:
that selects the row of reference cells to which AIN is applied.

[00:06:30] Speaker 02:
He also confirmed that in his combination, AIN is not selectively applied, but that it is applied to all rows at all times.

[00:06:41] Speaker 02:
That the combination that he described, that the switches and the encoder of Yanomaru, they only determined the row in which the switches are closed so as to connect the outputs of the transistors in that row

[00:06:57] Speaker 02:
to their respective column lines.

[00:06:58] Speaker 02:
In other words, it was selecting the row for the outputs of the transistors.

[00:07:04] Speaker 02:
But it did not select the row to receive AIN.

[00:07:13] Speaker 04:
So it's late in the day, and we've gone through a lot of technology in the past two and a half hours.

[00:07:18] Speaker 04:
Can you put what you're arguing in context?

[00:07:20] Speaker 04:
I frankly thought you were going to start off and argue about plain construction.

[00:07:24] Speaker 04:
And now it seems like you're arguing about

[00:07:27] Speaker 04:
the teachings in combination and what their experts said and so can you just sort of put what you're saying into a legal context of what your argument is?

[00:07:37] Speaker 02:
Certainly I will do my best to do so and this is for me anyway this is much more complicated technology so I'm trying to set the stage but where it ties into the claim construction is that when we elicited from Dr. Baker his testimony as to how his combination that he says renders claim nine obvious when we realize

[00:07:56] Speaker 02:
Well, wait a minute, that doesn't meet the claim limitation.

[00:07:59] Speaker 02:
Then they came back and they said, the claim limitation in the way that it was obvious from their own petition and opening declaration that they were construing it, that you had to selectively apply AIN to the selected row.

[00:08:14] Speaker 02:
Then they came back and said, wait a minute, they actually said, we're the ones coming up with a new claim construction in our patent owner response, because in our response, we pointed out that what you described as the combination doesn't meet the claim.

[00:08:27] Speaker 02:
And so they said the real claim construction, the real meaning in this claim term, allows AIN to be applied to all of the rows at the same time.

[00:08:36] Speaker 02:
And that the row decoder simply has to select the row from among those rows that are already receiving AIN just to select the row for something else.

[00:08:47] Speaker 01:
And in the context of what Dr. Baker explained.

[00:08:48] Speaker 01:
So is your beef with this that they shouldn't have been allowed to change their position?

[00:08:54] Speaker 01:
That's part of it.

[00:08:55] Speaker 01:
That's part of it.

[00:08:56] Speaker 01:
I mean, that was a new claim construction that was totally contrary.

[00:08:59] Speaker 01:
And you raised that with the board below, did you not?

[00:09:01] Speaker 04:
Yes, we did.

[00:09:02] Speaker 04:
And they vacated their decision, which is a bit unusual, and they allowed you to file a surreply.

[00:09:07] Speaker 04:
So whether or not you're correct that they did something improper at first, that's very common, the way that they cure what they perceive to perhaps have been violations of your having a proper notice requirement.

[00:09:22] Speaker 04:
So that's where we are.

[00:09:24] Speaker 04:
So they gave you an opportunity to find a surreply.

[00:09:29] Speaker 04:
Assume for a moment that we therefore don't think there was any procedural problem.

[00:09:34] Speaker 04:
Wasn't the best thing, but there was no.

[00:09:37] Speaker 04:
And therefore, their second response, their response to your Patent Owner response holds.

[00:09:44] Speaker 02:
Where are we there?

[00:09:44] Speaker 02:
I'm sorry.

[00:09:45] Speaker 04:
OK, go ahead.

[00:09:46] Speaker 04:
Go ahead.

[00:09:47] Speaker 02:
First of all, the surreply that they allowed us to do was without expert testimony to respond to what

[00:09:52] Speaker 02:
we said was new expert testimony by Micron submitted for the first time in their reply.

[00:09:58] Speaker 02:
But moreover, more importantly, the Sir reply didn't have to do with this particular issue of whether it was a different claim construction.

[00:10:07] Speaker 02:
The Sir reply addressed the issue of what they were now saying based upon their new claim construction that they came up with in reply that

[00:10:16] Speaker 02:
The road decoders simply had to select from among multiple roads already receiving it.

[00:10:20] Speaker 02:
They then came up with new evidence that under our alternative construction, that even if their claim construction that they originally stated in their reply, even if that was incorrect and you went with our more narrow claim construction of having to selectively apply AIN to the respective roads, they came up with new evidence there to say, Dr. Baker redesigned the circuits.

[00:10:44] Speaker 02:
and now he has that, he modified what he described and drew at his deposition and now what he does is he adds more elements to the front end of the circuit that now allows essentially AIN to be applied selectively to the rows.

[00:10:58] Speaker 02:
So he adds these things, these pass transistors so that now in the first pass the AIN is applied to only one row and in the second pass it's only applied to one of the remaining rows.

[00:11:08] Speaker 02:
during the second pass conversion.

[00:11:10] Speaker 04:
So again, I know we have limited time.

[00:11:13] Speaker 04:
Is your complaint that what they were saying was wrong, or is your complaint just simpler than that, that he shouldn't have been allowed?

[00:11:19] Speaker 04:
Well, both.

[00:11:21] Speaker 04:
They weren't allowed to change their mind, or they weren't allowed to change their mind unless you've got an ample opportunity to respond?

[00:11:31] Speaker 02:
I would even chop off the second half of that sentence.

[00:11:33] Speaker 02:
We would say they're not allowed to change their mind.

[00:11:36] Speaker 02:
That is what they did.

[00:11:37] Speaker 02:
They did change their mind from what they said is their claim construction.

[00:11:44] Speaker 02:
They didn't really change their mind because what was originally in their petition says you got to connect AIN selectively to the ropes.

[00:11:53] Speaker 02:
So now what they did was when they came in with new evidence in their reply, it was actually

[00:11:58] Speaker 02:
to go back and meet that claim limitation.

[00:12:01] Speaker 03:
Can I interrupt you for a minute?

[00:12:02] Speaker 03:
My question is this.

[00:12:04] Speaker 03:
Did you explain why their new evidence was wrong?

[00:12:08] Speaker 03:
You said it's both wrong and procedurally incorrect.

[00:12:10] Speaker 03:
We never had a chance.

[00:12:11] Speaker 03:
In your reply, you didn't explain why it was wrong?

[00:12:15] Speaker 02:
In our sure reply, we didn't have a chance.

[00:12:17] Speaker 02:
We were limited to attorney argument.

[00:12:19] Speaker 03:
Yeah, but they said, as I understand it, what I'm getting at is I understand the board credited the things you said.

[00:12:28] Speaker 03:
We know that we're not letting you submit additional evidence, but we're going to credit the factual statements that you've made.

[00:12:37] Speaker 03:
That's what I understood them to be saying in their opinion.

[00:12:41] Speaker 03:
So my question is, in your sir reply, did you make the challenges to the evidence that you would complain about now?

[00:12:50] Speaker 02:
Yes.

[00:12:50] Speaker 02:
So we attempted as best we could, with attorney argument, to respond to that new evidence.

[00:12:56] Speaker 03:
So for example... Why isn't it sufficient then that the board said, we're going to credit your response and accept it as true?

[00:13:05] Speaker 02:
Here's why.

[00:13:06] Speaker 02:
We were only able to come up with some reasons that we were able to think of without the benefit of expert input.

[00:13:11] Speaker 02:
So for example, one of the things that we argued with their new circuit was that it added redundancy.

[00:13:16] Speaker 02:
That the circuit before you added the past transistors already selected rows for their output, so you didn't need to

[00:13:23] Speaker 02:
then add the redundant pass transistors to apply AIN.

[00:13:27] Speaker 03:
Are you suggesting that you didn't talk to your expert in order to come up with this?

[00:13:31] Speaker 02:
No, no, no.

[00:13:32] Speaker 02:
I didn't say that.

[00:13:32] Speaker 02:
I didn't mean to say that.

[00:13:34] Speaker 02:
What I meant was we didn't have the ability to submit expert declaration testimony to explain that point.

[00:13:43] Speaker 02:
What we were not able to do in the limited sur-reply that we had via the expert was specifically to explain why

[00:13:52] Speaker 02:
a person of ordinary skill would not have been motivated or would not have found it obvious to redesign the circuit the way Dr. Baker did by adding all of these new elements.

[00:14:04] Speaker 02:
We didn't have our expert to be able to say, for example, to be able to submit the kind of testimony that would explain why that added redundancy, that would explain why it wouldn't have served one of the primary motivations to combine that they offered, which was to reduce footprint.

[00:14:22] Speaker 02:
how the redesigned circuit increased the footprint.

[00:14:26] Speaker 02:
We didn't have the ability to have expert testimony to be able to come in and say what Dr. Baker did with his new evidence was wrong.

[00:14:35] Speaker 02:
But I will also say that we shouldn't have been forced to be in the position of submitting a sur-reply with or without expert declaration testimony because the law is clear under the intelligent biosystems line of cases

[00:14:50] Speaker 02:
The law is clear that it is up to the petitioner.

[00:14:54] Speaker 02:
It is the obligation of the petitioner under Section 312A3 to include with particularity in the petition the grounds for each challenge and the evidence that supports the grounds.

[00:15:05] Speaker 03:
So in the petition when it was limited to a conclusory couple of sentences... I do agree though that while that's true that you have to have the grounds in your petition.

[00:15:15] Speaker 03:
Are you suggesting that there can't be any evolution at all of the arguments by the petitioner during the proceeding?

[00:15:23] Speaker 02:
I am not suggesting that, but the evolution has to be fair rebuttal.

[00:15:27] Speaker 02:
The evolution that occurs in reply has to fairly rebut what we say in our response.

[00:15:33] Speaker 02:
And what we are disagreeing with is Micron's assertion that their reply was fair rebuttal, because really what they were saying in their reply is everything that they could have said in their petition to begin with

[00:15:45] Speaker 02:
to support the single disclosure in their petition and Dr. Baker's declaration that the switches and encoder of Yanomaru connect AIN to the respective row.

[00:15:58] Speaker 02:
So the additional evidence actually goes back and supports that.

[00:16:03] Speaker 02:
But none of that evidence, not even a hint of that evidence, was in the petition.

[00:16:09] Speaker 02:
So that evidence that came in for the first time in reply

[00:16:13] Speaker 02:
was not a fair evolution in rebuttal to what we said in our response.

[00:16:16] Speaker 04:
What is your view about the standard of review when we apply dealing with your contentions that we've just been talking about for five or ten minutes?

[00:16:27] Speaker 04:
Is it an abuse of discretion?

[00:16:29] Speaker 04:
I mean, the PTF judges have a gatekeeper role that's sort of like district court judges, right?

[00:16:36] Speaker 04:
Do you agree that there's a differential standard of review we apply to evaluating whether or not this was error?

[00:16:46] Speaker 02:
You mean with respect to procedural compliance?

[00:16:49] Speaker 02:
Yes.

[00:16:49] Speaker 02:
It is an abusive discretion standard, but we would submit that when the board ignores the statutory mandate that the petition include with particularity, the grounds for its challenges, and the evidence that supports those grounds, that if the board allows them to

[00:17:06] Speaker 02:
abrogate that responsibility, that obligation, then by definition that is an abuse of discretion.

[00:17:15] Speaker 04:
Thank you.

[00:17:16] Speaker 04:
We'll restore a couple minutes of rebuttal.

[00:17:17] Speaker 04:
Let's hear from the other side.

[00:17:19] Speaker 02:
Thank you.

[00:17:41] Speaker 00:
May it please the court?

[00:17:49] Speaker 00:
My name is Mel Bostwick.

[00:17:51] Speaker 00:
I'm representing Micron.

[00:17:54] Speaker 04:
Chief Judge Prost, you asked for context on this issue of Claim 9 and... But before you get to that, just because it's easier for... I want to... Can we respond to where we left off with your friend, which is the procedural arguments and the statutory requirement for particularity, et cetera?

[00:18:11] Speaker 04:
and how that got messed up according to him here.

[00:18:14] Speaker 00:
Yes, that's exactly what I intended to address.

[00:18:16] Speaker 00:
I apologize for not making that clear.

[00:18:18] Speaker 00:
In the petition, we did not take a position on the construction of this limitation of claim nine.

[00:18:26] Speaker 00:
We did not say that it must be construed as select and then apply, or apply and then select.

[00:18:31] Speaker 00:
Our position has been all along that it encompasses both.

[00:18:34] Speaker 00:
What the petition said was that the combination of Seligson and Yonemaru discloses

[00:18:41] Speaker 00:
the row decoder under what IMS insists is the correct construction, the more limited construction, which is that you first select the row or rows and then apply the analog signal.

[00:18:53] Speaker 00:
In their preliminary patent owner response, they likewise did not seek a construction.

[00:18:58] Speaker 00:
They also did not suggest that we had failed to make out a prima facie case of obviousness under the idea that you select then apply.

[00:19:08] Speaker 00:
What happened then was at Dr. Baker's deposition, they asked him to draw out by hand the combination of Selexin and Yonemaru, putting the Selexin floating-gate transistors into the serial-to-parallel arrangement of Yonemaru.

[00:19:24] Speaker 00:
The example he drew had the analog signal connected to all of the rows at all times.

[00:19:32] Speaker 00:
And they asked him, you know, is that connected all the rows at the same times?

[00:19:35] Speaker 00:
And he said, yes.

[00:19:35] Speaker 00:
What he did not say was that's the only way to do it.

[00:19:38] Speaker 00:
He didn't say this is what I was talking about in my original declaration and only this.

[00:19:44] Speaker 00:
And they didn't ask him, could you draw another circuit where the analog signal is not applied to all rows at all times?

[00:19:50] Speaker 04:
Were you there at the deposition?

[00:19:51] Speaker 04:
Did you have an opportunity to cross-examine the witness?

[00:19:56] Speaker 04:
Or to rebut, to have rebuttal in the deposition?

[00:20:00] Speaker 04:
And you say they didn't ask him.

[00:20:03] Speaker 04:
Did your side have an opportunity to clarify that with him?

[00:20:06] Speaker 00:
We would have, but they also, it was not clear.

[00:20:08] Speaker 00:
Nobody at that point had raised any claim construction dispute about the ordering between selecting and then applying the signal.

[00:20:14] Speaker 00:
The board hadn't, well this is even before that, but the issue just wasn't in the case.

[00:20:21] Speaker 00:
It's not that it was clear where they were going.

[00:20:23] Speaker 00:
They just asked him these questions.

[00:20:26] Speaker 00:
And then in their patent owner response, then they came back and tried to limit our position to what Dr. Baker had drawn in his deposition, that one example.

[00:20:39] Speaker 00:
And they said that that did not meet the claim as properly construed.

[00:20:43] Speaker 00:
And they raised a new claim construction argument at that point.

[00:20:47] Speaker 00:
And that's what we responded to in our reply and in Dr. Baker's reply declaration.

[00:20:53] Speaker 00:
is this new argument that, first of all, the claim is limited to select, then apply, and that the particular one drawing from the deposition did not show that.

[00:21:06] Speaker 00:
And so that's how this developed.

[00:21:12] Speaker 00:
So as the board found, the board had two reasons why everything was proper here.

[00:21:18] Speaker 00:
The first was

[00:21:19] Speaker 00:
that this was proper rebuttal evidence to a new argument raised in the patent owner response.

[00:21:24] Speaker 00:
And I think this case is very much like the Anacor decision in which the petition makes a particular assertion about what's obvious in light of the prior art.

[00:21:34] Speaker 00:
The patent owner response comes back with an argument about why that's not the case.

[00:21:38] Speaker 00:
And then the reply includes additional expert declaration to respond to that argument.

[00:21:43] Speaker 00:
The board found that that's what happened here.

[00:21:46] Speaker 00:
The board also found that even if there were some problem, because there was this confusion about whether they had actually requested a surreply or not, the board withdrew its original decision, let them file the surreply.

[00:21:59] Speaker 00:
Now, it is correct, Judge Stoll, that the board treated anything in that surreply as endorsed by IMS's expert.

[00:22:07] Speaker 00:
And so this argument that they didn't have an opportunity to actually provide expert testimony responding substantively to what Dr. Baker had said.

[00:22:16] Speaker 00:
It doesn't get them anywhere.

[00:22:18] Speaker 02:
Were they prohibited from presenting that type of evidence in the surreply?

[00:22:22] Speaker 00:
They were not allowed to submit an expert declaration, but anything that they said in the surreply was treated as though it had been endorsed by the expert.

[00:22:32] Speaker 00:
And importantly, again, this is an issue on which... When did they know though?

[00:22:36] Speaker 03:
When did they know that whatever they said was going to be taken as true?

[00:22:40] Speaker 00:
I don't believe that was indicated until the final written decision.

[00:22:44] Speaker 00:
That said, as the board explained,

[00:22:46] Speaker 00:
at appendix 858, they had not, when they finally requested a surreply, they had not actually renewed their request to submit an expert declaration at that point.

[00:22:56] Speaker 00:
The board went back to a prior reference to expert testimony.

[00:23:00] Speaker 00:
The board, and I think the concurring judge's opinion makes this absolutely clear, the many ways in which the board was exceptionally generous with IMS and its ability to address this argument, and when they finally filed their surreply,

[00:23:14] Speaker 00:
They spent half of that sir reply, as the board points out, not addressing the substance of what we had said and what Dr. Baker had said, but just complaining again about the procedure.

[00:23:24] Speaker 00:
And the standard of review on that is abuse of discretion.

[00:23:27] Speaker 00:
It's abuse of discretion as to both aspects of this.

[00:23:31] Speaker 04:
But what are the rules of the game here?

[00:23:33] Speaker 04:
Is it entirely within the board's discretion?

[00:23:37] Speaker 04:
I mean, they came in, the board, fairly unusual for them to withdraw their opinion.

[00:23:43] Speaker 04:
And we're unclear.

[00:23:44] Speaker 04:
We think that they were told, yes, you can file a surreply.

[00:23:48] Speaker 04:
Did they understand they could submit expert evidence?

[00:23:52] Speaker 04:
Were they told they couldn't?

[00:23:54] Speaker 04:
And you just responded to Judge Stoll that even though the board at the end of the day said, we're going to treat this as expert, they weren't kind of on notice of that.

[00:24:03] Speaker 04:
And you as an advocate must know, that may influence your behavior and how you handle things if you know at the beginning or at the end.

[00:24:11] Speaker 04:
that what you're going to say is going to be counted and considered as expert statements, right?

[00:24:17] Speaker 00:
Yes, they didn't ask for clarification at that point.

[00:24:20] Speaker 00:
And again, they hadn't actually, at that point in the procedure, they hadn't asked to submit expert testimony.

[00:24:26] Speaker 03:
The board was... Why did they ask to submit expert testimony?

[00:24:29] Speaker 03:
And, you know, I mean, obviously, it seems to me kind of unusual that the board or any tribunal would say, hey, just so you know,

[00:24:37] Speaker 03:
Or somebody would say, hey, board, you're not going to let me submit an expert declaration.

[00:24:41] Speaker 03:
But you're going to take everything I say is true, right?

[00:24:43] Speaker 03:
I've never seen anybody make that kind of request.

[00:24:47] Speaker 00:
Certainly.

[00:24:47] Speaker 00:
I believe that the request for expert testimony had come up at this.

[00:24:53] Speaker 00:
This was discussed at the hearing.

[00:24:54] Speaker 00:
And I understand the transcript of the hearing is not in the joint appendix.

[00:24:57] Speaker 00:
The parties didn't cite it.

[00:24:58] Speaker 00:
It is in the record.

[00:25:00] Speaker 00:
And it's at the very end of the transcript.

[00:25:01] Speaker 00:
So it's after the merits of the case are discussed and then the merits of one

[00:25:06] Speaker 00:
other appeals before he was discussed, the board went back to this issue because it was concerned about whether IMS had been afforded the proper procedure here.

[00:25:15] Speaker 00:
And there was a discussion about whether they wanted a surreply or not, whether they might submit expert testimony with that surreply.

[00:25:21] Speaker 00:
And at the end of the day, it was left unresolved at the hearing.

[00:25:25] Speaker 00:
IMS said it would consider whether it actually wanted a surreply and would get back to the board on Monday.

[00:25:29] Speaker 00:
That is the email that they then followed up with and sent.

[00:25:33] Speaker 00:
and which the board did not initially receive, but I believe that is when the expert testimony was requested.

[00:25:40] Speaker 00:
I don't believe it was renewed in the actual reconsideration request that they filed, you know, 30 days after the final written decision came out saying, hey, you never sent us the response you said you were going to send us about whether you wanted us to reply in the first place.

[00:25:59] Speaker 00:
I would also say

[00:26:01] Speaker 00:
Mr. Flynn said he was going to start out talking about claim construction.

[00:26:05] Speaker 00:
If the board's claim construction is affirmed, none of this matters.

[00:26:09] Speaker 00:
Because as the board found, and I don't think there's any dispute, this procedural issue solely goes to Dr. Baker's testimony and circuit drawings under IMS's more narrow reading of claim nine's rotocoder limitation, which requires a rotocoder to first

[00:26:30] Speaker 04:
In your petition, did you propose the claim construction that the board ultimately rested on in this case?

[00:26:38] Speaker 00:
We did not propose any claim construction.

[00:26:40] Speaker 00:
We believe that the claim encompasses both orders.

[00:26:44] Speaker 00:
It encompasses a row decoder that first selects a row and then applies the analog signal input to that row.

[00:26:53] Speaker 00:
It also encompasses a situation in which the analog signal is always being applied to all rows.

[00:26:59] Speaker 04:
So maybe you didn't ask for claim construction.

[00:27:01] Speaker 04:
Was that statement in how you construed the claims in your petition?

[00:27:09] Speaker 00:
No.

[00:27:09] Speaker 00:
And the opening argument today is the first I've heard of them suggesting that we changed our claim construction position.

[00:27:15] Speaker 00:
That is a new argument, so we haven't had an opportunity to respond to that.

[00:27:19] Speaker 04:
But your position is you didn't change your claim construction, that you didn't offer a claim construction the first instance.

[00:27:25] Speaker 00:
And neither did they, and neither did the board.

[00:27:27] Speaker 00:
Claim construction only became an issue after they saw this one exemplary circuit that they asked our expert to draw it as deposition.

[00:27:35] Speaker 00:
That's when in their patent owner response they came back and said,

[00:27:38] Speaker 00:
This broad language, which they admit, they have no argument under the plain language of the claim that it applies to both.

[00:27:45] Speaker 00:
That is applied can either mean already is applied or will be applied.

[00:27:50] Speaker 00:
No argument on the plain language.

[00:27:51] Speaker 00:
And the Patent Owner Response is the first time they address that.

[00:27:54] Speaker 00:
Now, they're wrong about that.

[00:27:55] Speaker 00:
And the board is correct.

[00:27:57] Speaker 00:
Not only does the plain language encompass both orders, but also their only argument for limiting it is this one highly specific embodiment

[00:28:07] Speaker 00:
in the specification.

[00:28:08] Speaker 00:
This is at figures 7a and 7b.

[00:28:11] Speaker 00:
And as the patent explains, figures 7a and 7b relate to one particular embodiment in which you can use the same array of cells for both an analog to digital conversion and a digital to analog conversion.

[00:28:28] Speaker 00:
I would direct the court's attention, if I can,

[00:28:35] Speaker 00:
Appendix 887 to 888.

[00:28:38] Speaker 00:
This is starting at column 8, line 66 of the 503 patent.

[00:28:50] Speaker 00:
And this is where it describes, in accordance with another aspect of the invention.

[00:28:54] Speaker 04:
I'm sorry, what line are you on?

[00:28:56] Speaker 00:
I am at the very bottom of column 8 at line 66.

[00:29:03] Speaker 00:
In accordance with another aspect of the invention, an ADC and a DAC can use the same conversion array.

[00:29:11] Speaker 00:
And then they go on to talk about figure 7a and figure 7b.

[00:29:15] Speaker 00:
And that's the specific embodiment shown in those two figures, is this combination ADC, DAC using the same array for both conversions.

[00:29:25] Speaker 00:
None of that is in claim nine.

[00:29:29] Speaker 00:
Claim 9 is not limited to this embodiment shown in Figures 7a and 7b.

[00:29:34] Speaker 00:
There's none of these other requirements.

[00:29:35] Speaker 00:
It's not a requirement of Claim 9 to do the conversion both ways.

[00:29:39] Speaker 00:
Nothing else about Figures 7a and 7b is in Claim 9.

[00:29:42] Speaker 03:
Can I make sure I understand your claim construction argument?

[00:29:45] Speaker 03:
You're saying that this claim, because it says the row decoder selecting a row of reference cells to which the analog signal is applied, it could encompass a situation where the reference cells all in every row

[00:29:58] Speaker 03:
have an analog signal applied, or it could encompass something in which only the selected row has the analog signal applied.

[00:30:06] Speaker 03:
Do I understand that correctly?

[00:30:08] Speaker 00:
That's correct.

[00:30:09] Speaker 00:
Because in either case, you are selecting which row or rows is going to be used for the conversion.

[00:30:15] Speaker 00:
But nothing about that language is applied that requires

[00:30:19] Speaker 00:
you know, again, apply the signal first and then select versus select and then apply the signal.

[00:30:27] Speaker 03:
Because it says the row decoder selecting a row to which the analog signal is applied, so it's the two which the analog signal is applied, is not limited to just that row.

[00:30:39] Speaker 03:
Is that correct?

[00:30:39] Speaker 03:
Do I understand that correctly?

[00:30:41] Speaker 00:
Right.

[00:30:42] Speaker 00:
So it's the painted house analogy in our brief.

[00:30:45] Speaker 00:
If you say that I'm going to pick a house that is painted red, or you can make it closer to which red paint is applied, you could be talking about picking a house that is already red, and it's just you're not picking a blue house.

[00:31:01] Speaker 00:
You can also be talking about picking a house and then painting it red.

[00:31:06] Speaker 00:
So that's the natural language of is applied.

[00:31:08] Speaker 00:
It can mean both, will be applied, already is applied.

[00:31:11] Speaker 00:
That's what the board said.

[00:31:12] Speaker 00:
IMS doesn't dispute that plain language.

[00:31:14] Speaker 00:
Their only argument for limiting the claim to a row decoder that first selects a row and then applies the analog signal only to that row is this embodiment, figure 7A, figure 7B, which, going back to what we started the day with, it's a basic principle of claim construction that you can't limit the claims

[00:31:36] Speaker 00:
to specific embodiments.

[00:31:37] Speaker 00:
When the specification talks about rotocoders in general, in the summary of the invention, for example, it says using a conventional rotocoder.

[00:31:46] Speaker 00:
And it talks about doing this during a conversion, which suggests that the analog signal may already be applied.

[00:31:55] Speaker 00:
I understand that claim eight did not come up in the opening presentation.

[00:31:59] Speaker 00:
The court has no questions on that.

[00:32:04] Speaker 03:
Thank you.

[00:32:05] Speaker 00:
Ask that the board be affirmed.

[00:32:25] Speaker 02:
Members, I would simply start out by saying that when

[00:32:29] Speaker 02:
My colleague suggests that the petition did not limit the claim construction in the way that the claim limitation is met.

[00:32:38] Speaker 02:
My response is, yes, it did.

[00:32:40] Speaker 02:
It only had a couple of conclusory statements in it.

[00:32:43] Speaker 02:
But at least with those conclusory statements, it made it very clear that the way they met the claim construction or intended their combination of prior art to meet the claim construction was to have AIN selectively connected to the respective road.

[00:32:57] Speaker 02:
They are limited to that.

[00:32:58] Speaker 02:
They didn't say in their petition, this is only one way of doing it.

[00:33:01] Speaker 02:
They wouldn't have been able to do that anyway.

[00:33:03] Speaker 02:
That's the only thing they said in their petition.

[00:33:05] Speaker 02:
So they are limited to that.

[00:33:07] Speaker 02:
And then very quickly, on the last point, whether or not we are using only a single embodiment in the specification to limit or to import limitation from the specification, I point out that in the specification of the 503 patent,

[00:33:26] Speaker 02:
Row decoder is used 11 times in the specification.

[00:33:31] Speaker 02:
And if you want, I can tell you all the appendix page numbers to go to for those 11 times.

[00:33:35] Speaker 02:
But it's used 11 times in the specification.

[00:33:38] Speaker 02:
And whenever it talks about a row decoder in the specification, it talks about the row decoder selecting a row to receive AIN.

[00:33:47] Speaker 02:
In at least two of those instances, the language in the specification matches the language in the claim.

[00:33:53] Speaker 02:
And here I will direct your attention

[00:33:55] Speaker 02:
to appendix page number 887, column 7, lines 14 to 17, where the specification talks about instead of simultaneously applying analog input voltage AIN to all of the reference cells, it says, for this embodiment, bias and select circuits include a row decoder to select the reference cell or row of reference cells to which signal AIN is applied.

[00:34:22] Speaker 02:
In the appendix page number 888, column 10, lines 56 to 59, it says, in particular, after a column address to column decoder 722 counts across a row, row decoder 712 changes the row line to which analog input signal AIN is applied.

[00:34:44] Speaker 02:
That's the same language that's in the claim, and in both of those instances,

[00:34:48] Speaker 02:
It is specifically talking about the road decoder selecting a road to receive the AIN, not selecting from among roads already receiving AIN.

[00:34:58] Speaker 01:
Thank you.

[00:34:58] Speaker 01:
We thank both sides.

[00:34:59] Speaker 01:
The case is submitted.

[00:35:00] Speaker 01:
That concludes our proceeding for this session.

[00:35:03] Speaker 02:
Thank you.