[00:00:00] Speaker 00:
Innovation is limited.

[00:00:49] Speaker 00:
Mr. Hoffman, you're reserving four minutes of your time for rebuttal.

[00:00:56] Speaker 00:
Yes, your honor.

[00:00:56] Speaker 00:
Is that correct?

[00:00:57] Speaker 00:
Yes, your honor.

[00:00:58] Speaker 00:
OK.

[00:01:00] Speaker 00:
So first, the court wants to address the motion that was filed last week.

[00:01:06] Speaker 00:
And Kingston has moved.

[00:01:10] Speaker 00:
It's filed a contingent motion in view of the court's decision and our threats.

[00:01:15] Speaker 00:
Basically, you're arguing and you want to fall within the Arthrex scope, and you want to argue the constitutionality arguments that we just heard.

[00:01:29] Speaker 00:
We also issued a precedent order last week in custom media technologies, and there we concluded that custom media, in that case, had forfeited its employment clause challenge

[00:01:42] Speaker 00:
on the basis that it did not raise it in its current brief.

[00:01:45] Speaker 00:
We have the same situation in this particular case, and on the basis of the court's decision in the order that I decided, your motion is hereby denied.

[00:01:56] Speaker 00:
So let's go on with the merits of the case.

[00:01:58] Speaker 03:
Thank you, Your Honor.

[00:02:03] Speaker 03:
Your honor, David Hoffman, on behalf of Kingston, may it please the court.

[00:02:07] Speaker 03:
Polaris, in their response to our opening brief, describes KSR as an 11-year-old case and seeks to downplay its relevance throughout the briefing.

[00:02:17] Speaker 03:
But KSR is the binding Supreme Court precedent.

[00:02:20] Speaker 02:
Let's go to the blue brief.

[00:02:22] Speaker 02:
On page 20.

[00:02:24] Speaker 02:
You argue that the PTAB, pardon me, I've got a pet cup, erroneously refused to tie its analogous argument to the claims of the 454 pet.

[00:02:34] Speaker 02:
And you premise this argument on the court statement in KSR that an obvious misdetermination has to be tied to the objective reach of the claim.

[00:02:46] Speaker 02:
Can you cite to any legal authority that specifically narrows the scope of prior

[00:02:52] Speaker 02:
to what's disclosed in a patent's claims.

[00:02:57] Speaker 03:
I believe KSR does, but more specifically Wires, Your Honor.

[00:03:01] Speaker 03:
Wires says that in citing the KSR, and I'll read it, it describes the analogous art analysis as being a

[00:03:16] Speaker 03:
Supreme Court's decision, this is from Wires, Your Honor, 1238, the Supreme Court's decision in KSR and then cites it, directs us to construe the scope of analogous art broadly, stating that familiar items may have obvious uses beyond their primary purposes, and an ordinary person of skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.

[00:03:38] Speaker 03:
I believe that that reflects and

[00:03:40] Speaker 03:
an endorsement of KSR's approach to looking at obviousness that applies not only to do we combine A plus B, but what is analogous art.

[00:03:51] Speaker 02:
If you, as we note in our brief, Your Honor, if you... Is it in permissible hindsight to narrow the scope of priority to what the claims disclose?

[00:04:02] Speaker 03:
No, Your Honor, I don't believe it's impermissible hindsight.

[00:04:05] Speaker 03:
In the same way, it's not impermissible hindsight to narrow the obviousness inquiry, as KSR says, to the scope of the claims.

[00:04:12] Speaker 03:
If you allow the disclosures in the specification to drive what is or is not prior art, you are setting up a dual system where the

[00:04:24] Speaker 03:
Accused infringer can be found infringed for specific details that are present only in the specification, but not in the claims.

[00:04:34] Speaker 03:
And that prevents the fundamental injustice of the system.

[00:04:37] Speaker 03:
The scope of the prior art should not be narrower in scope than the scope of what can invalidate the patent potentially.

[00:04:48] Speaker 03:
Going back to the first principles of analogous art, we believe that KSR really stands for two fundamental propositions with regard to obviousness.

[00:05:02] Speaker 03:
The obvious analysis is not narrow in its concept.

[00:05:07] Speaker 03:
and it should focus objectively on one of skill in the art and what is claimed as opposed to being subjective of what the inventor himself believed was his invention.

[00:05:21] Speaker 03:
For example, I said KSR tells us that in determining what the subject matter of a patent is obvious, neither the particular motivation nor the avowed purpose of the patentee controls, and yet that is specifically what the board did here.

[00:05:33] Speaker 03:
They looked

[00:05:35] Speaker 03:
to the specification for, as they say, the subjective belief of the inventor and what the inventor believed was his invention, as opposed to looking at the objective claims and what they're directed to.

[00:05:48] Speaker 03:
And we believe this is legal error.

[00:05:52] Speaker 03:
There's no basis for

[00:05:55] Speaker 03:
further constricting the scope of prior art narrower than what KSR provides in the scope of analogous art.

[00:06:02] Speaker 03:
Analogous art is contrary to what my...

[00:06:07] Speaker 03:
My friend would assert in his brief, analogous art is not a separate test from obviousness.

[00:06:13] Speaker 03:
It doesn't come before.

[00:06:16] Speaker 03:
Analogous art is a legal construct that is part of determining the scope and content of the prior art.

[00:06:22] Speaker 03:
So you do not first determine analogous art and then somehow separately then apply KSR.

[00:06:28] Speaker 03:
KSR applies to the whole kit and caboodle, your honors.

[00:06:31] Speaker 02:
On page 40 of the blue brief,

[00:06:34] Speaker 02:
You say that the board also implied that Kingston may have waived its argument about Keel's disclosure of the pinwheel and your finite number of solutions argument.

[00:06:49] Speaker 02:
And you say those were proper reply.

[00:06:52] Speaker 02:
Can you cite any legal authority to support your assertion that those arguments are proper reply?

[00:07:00] Speaker 02:
They seem pretty new to me.

[00:07:02] Speaker 03:
I think it's important to put those in context, Your Honor.

[00:07:04] Speaker 03:
And again, this is switching off the analogous art.

[00:07:07] Speaker 03:
The purpose of those, of replying, the proper reply arguments, and I don't have a particular case, but I think if I explain them in context, you'll see, Your Honor, that they were about reply and not about new arguments.

[00:07:19] Speaker 03:
What happened is we asserted it was obvious there was a finite number of solutions.

[00:07:23] Speaker 03:
Notably, to this point, no one has identified any more than really the four finite solutions, both top, both up and down, both side to side, alternating or pinwheel.

[00:07:34] Speaker 03:
In response to that, the patent owner asserted that this pinwheel pattern appeared nowhere in chips at all.

[00:07:43] Speaker 03:
Notably, in their assertion and their patent owner response, they didn't say memory chips.

[00:07:47] Speaker 03:
They simply said in chips in general.

[00:07:50] Speaker 03:
And then properly in reply, we came back and said, no, if you look at even Kiel reference, again, we're not asserting his anticipatory.

[00:07:57] Speaker 03:
But here, it contradicts and simply replies to their statement that there doesn't exist anything in the art where any chips have been placed in a pinwheel formation.

[00:08:07] Speaker 03:
And that was the purpose of the reply.

[00:08:09] Speaker 03:
It wasn't to put in a new argument about, you know,

[00:08:13] Speaker 03:
that this is a teaching of a pinwheel in the context of memory chips, it was to show that their assertion that it never happened before was a flawed one, and I believe it was a proper reply.

[00:08:27] Speaker 05:
If you had better prior art using the pinwheel design in memory chips, why didn't you put it in there?

[00:08:38] Speaker 03:
Well, in order to be clear, we didn't have another reference that showed a panel of memory chips.

[00:08:44] Speaker 05:
Now, maybe we could have made an argument of obviousness based on... I mean, you came up with the ceramic tile reference.

[00:08:52] Speaker 03:
Yes, Your Honor.

[00:08:53] Speaker 05:
Which has nothing to do with memory chips, and the board found it non-analogous.

[00:08:57] Speaker 05:
Isn't that a substantial evidence question?

[00:09:00] Speaker 03:
I don't believe it's a substantial evidence question here, Your Honor, because if you look at the reason the board came to that conclusion is by looking at the test for analogous art and what is reasonably pertinent to the problem.

[00:09:13] Speaker 03:
If you look at the institution decision, the board originally found that the

[00:09:17] Speaker 03:
geometric patterns.

[00:09:18] Speaker 03:
They call them tiles.

[00:09:19] Speaker 03:
But initially, they're just geometric patterns of small rectangles.

[00:09:23] Speaker 03:
The geometric patterns in the bridge reference were reasonably pertinent to the problem of claim one, which is the geometric placement of chips.

[00:09:32] Speaker 03:
It's only when you change that problem do you get into the issue with whether or not it's a factual problem.

[00:09:40] Speaker 03:
You have to analyze properly.

[00:09:41] Speaker 05:
They can change their mind from the institution decision, though, and say,

[00:09:47] Speaker 05:
a reference showing the arrangements of ceramic tile is not regionally pertinent to chip design?

[00:09:55] Speaker 03:
I think they can, Your Honor, but they did not do that.

[00:09:57] Speaker 03:
If they had kept the problem correct and said that the problem was directed just to geometry and then it reached a different factual finding, Your Honor, I would definitely agree that is when they're purviewed.

[00:10:09] Speaker 03:
But their factual finding is premised on

[00:10:11] Speaker 03:
an incorrect evaluation of the problem.

[00:10:13] Speaker 03:
It's only when they added the additional requirements of the shortest possible track lengths and inductive wires, when they only added those, did they then get to the factual question.

[00:10:37] Speaker 03:
So I think it's, Your Honor, if we move ahead to, we talked a little bit about whether or not single reference obviousness would apply.

[00:10:46] Speaker 03:
I think it's significant as I noted to point out that the board made no finding or identified no option besides the four that have been identified.

[00:10:58] Speaker 03:
And as we note in our brief,

[00:11:00] Speaker 03:
The simple rearrangement of components, a component's position, has been held to be legally obvious.

[00:11:06] Speaker 03:
And here you have a limited number of top and bottom, and there is no sort of rational argument.

[00:11:12] Speaker 01:
I don't know how you've taken this into ceramic tiles.

[00:11:14] Speaker 01:
We could have an entire terrazzo mosaic.

[00:11:18] Speaker 03:
No, Your Honor, but I think going back to the ceramic tiles, again, as a note in our brief, and I'll switch over to that, this is not out of nowhere.

[00:11:26] Speaker 03:
There is a reference that was cited to the board, the Giacomo reference, which calls the placing of chips on a board the tile-fitting problem, and that would be within the knowledge of a person of skill in the art.

[00:11:40] Speaker 03:
Ultimately, what you're doing whenever you place chips on a board is you're fitting rectangles into a confined space.

[00:11:47] Speaker 03:
and a person of skill in the art would understand or have an understanding of those tile patterns.

[00:11:53] Speaker 03:
Yes, they're from ceramics, but as so KSR councils, when you look at what a person of skill in the art would apply, you can look at things like their own experiences and their common sense.

[00:12:06] Speaker 03:
A person of skill in the art obviously works in offices.

[00:12:08] Speaker 00:
There's got to be a reason why a poster would look in a do-it-yourself

[00:12:14] Speaker 00:
booklet on placing ceramic tiles.

[00:12:18] Speaker 03:
I think there is a good reason.

[00:12:19] Speaker 03:
Again, Giacomo points to this being the tile-fitting problem.

[00:12:23] Speaker 03:
But also, I think contrary to what Polaris would assert, you don't need to go to a library looking for a particular book.

[00:12:31] Speaker 03:
One of Steel in the Yard would have this knowledge, this hypothetical knowledge, within their head already.

[00:12:36] Speaker 00:
And so the question is, when they look at... That's true, but that's if it's analogous.

[00:12:39] Speaker 00:
If it's not analogous, and if that's the issue, then the question is, you know, should it have been in his head, and if not,

[00:12:46] Speaker 00:
Why would he look elsewhere, especially in a situation like this, in a booklet on do-it-yourself placement of ceramic tiles when you're talking about a poser that's struggling with the placement of memory chips inside of an array.

[00:13:04] Speaker 03:
I absolutely agree, Your Honor, and I think that that is the issue.

[00:13:07] Speaker 03:
But we believe it is analogous.

[00:13:08] Speaker 03:
So if the art is analogous because it is under KSR, directed to the scope of the claims, the problem in the claims, then those patterns are within a person of one who's building art tech.

[00:13:22] Speaker 05:
designs and placement of geometric designs is relevant here, and that it would have been obvious for people to go out and search it.

[00:13:31] Speaker 02:
I don't think it's as broad as that, Your Honor.

[00:13:37] Speaker 03:
Again, there's not a reference in the art which describes it as bricklaying.

[00:13:40] Speaker 03:
Bricklaying is not a

[00:13:42] Speaker 03:
The series of rectangles in a two-dimensional pattern is a three-dimensional construct.

[00:13:48] Speaker 05:
That's not true if you're laying out a patio brick.

[00:13:51] Speaker 05:
It's the same thing.

[00:13:52] Speaker 05:
It's a geometric design.

[00:13:53] Speaker 03:
In that case, Your Honor, a patio brick, I would agree.

[00:13:55] Speaker 03:
It's a similar issue.

[00:13:56] Speaker 03:
And if you were laying out your patio with bricks, one of skill in the art would appreciate, just like the tiles, that there are a limited number of patterns that you can fit into a particular shape of fixed dimension.

[00:14:08] Speaker 00:
Okay, you're in your rebuttal time.

[00:14:09] Speaker 03:
Thank you, Your Honor.

[00:14:13] Speaker 00:
Councillor Lowenstein.

[00:14:19] Speaker 04:
Please the court.

[00:14:20] Speaker 04:
Nathan Lowenstein on behalf of Polaris.

[00:14:22] Speaker 02:
You agree claim one is representative.

[00:14:24] Speaker 02:
I'm sorry?

[00:14:25] Speaker 02:
You agree claim one is representative.

[00:14:27] Speaker 04:
Not particularly.

[00:14:29] Speaker 04:
I think claims four through six, as we said in our brief, are materially different.

[00:14:33] Speaker 04:
Because let's suppose we went through this theory that we should completely disagree with, that you're somehow limited to the scope of the claims.

[00:14:40] Speaker 04:
Claims four through six specifically refer to how the line track should be arrayed.

[00:14:45] Speaker 04:
There are three different proposals.

[00:14:46] Speaker 04:
So I don't agree with respect to the issues in this case that claim one is, in fact, representative.

[00:14:52] Speaker 02:
On page 40 of the RedBerry,

[00:14:54] Speaker 02:
You argue that neither Keele nor any other prior art reference teaches memory chips in a row with alternating orientations.

[00:15:04] Speaker 02:
On page 18 of the Graybrade, Cainston says the argument sets the bar for the hypothetical obvious inquiry too high by requiring evidence of actual artisans having combined references so that you confuse anticipation with obviousness.

[00:15:21] Speaker 02:
Does your position confuse anticipation with obvious?

[00:15:26] Speaker 04:
I don't believe so.

[00:15:27] Speaker 04:
Certainly, it's not our position that they can only show anticipation in nothing but.

[00:15:31] Speaker 04:
They could have tried to show obviousness over a single reference.

[00:15:34] Speaker 04:
I think you're referring to their kill group.

[00:15:36] Speaker 04:
And I think that really raises the issues that are present in Narendi and DSS and other decisions from this court, where you have obviousness over a missing limitation, not just that missing limitation that goes to the core of the invention.

[00:15:47] Speaker 04:
The heart of the invention, I think, is the phrase that's used in Narendi.

[00:15:49] Speaker 04:
And this is, if anything, it's the heart of the invention.

[00:15:53] Speaker 04:
And I'm not saying that they couldn't have shown obviousness, I'm just saying that they didn't.

[00:15:59] Speaker 04:
If there's nothing else, I'll just make a few brief points.

[00:16:02] Speaker 04:
I think Your Honor's questions in opening were addressing a lot of the issues that I was going to touch upon.

[00:16:09] Speaker 04:
But just to sort of take a step back, I think Bridge is the quintessential art that the analogous art test is meant to exclude.

[00:16:15] Speaker 04:
I think Judge Raina described it aptly.

[00:16:17] Speaker 04:
It's not really a ceramic tile reference.

[00:16:19] Speaker 04:
It's a book, a 226-page book for a do-it-yourselfer who's going to go to Home Depot and then lay bathroom towels in their home.

[00:16:27] Speaker 04:
And the question you should ask yourself is, would a memory module designer at Samsung or Intel or one of those companies, would they go to that reference to solve this problem?

[00:16:36] Speaker 04:
I don't think so.

[00:16:38] Speaker 04:
Their expert didn't think so.

[00:16:39] Speaker 04:
Our expert didn't think so.

[00:16:40] Speaker 04:
The board didn't think so.

[00:16:41] Speaker 04:
There's no evidence that anyone would think that.

[00:16:44] Speaker 04:
It's not our point that KSR is an 11-year-old case.

[00:16:47] Speaker 04:
Our point is that KSR was decided 11 years ago, and if it was meant to spur some sea change in the law of analogous art, it would have been felt by now.

[00:16:55] Speaker 04:
We cited six cases from this court in the wake of KSR, each of which applied the analogous art test, much as it has been for years.

[00:17:03] Speaker 04:
I submit that if you read every single analogous art case that this court has ever decided or that its predecessor court has ever decided, you will never find any reference as far afield as Bridge to have ever been

[00:17:13] Speaker 05:
Even setting aside BRIT, which I think you have a pretty good argument on, why isn't this just obvious to try and why isn't Keel good enough alone?

[00:17:23] Speaker 05:
I mean it does seem like memory chips have a fairly finite number of ways to arrange these things.

[00:17:30] Speaker 05:
I mean, is it just, is the problem just that they didn't get a good enough expert opinion to convince the board that that was true?

[00:17:37] Speaker 04:
Well, I believe in intelligent biosystems, and if I'm not mistaken, I believe two of you were judges in that case.

[00:17:43] Speaker 04:
What your honors held was that the petitioner must make its case in the petition.

[00:17:48] Speaker 04:
So what did appellant now, what did they say in their opening petition?

[00:17:53] Speaker 04:
They said, there are a finite number of ways to do this full stop.

[00:17:56] Speaker 04:
They didn't say what they were.

[00:17:57] Speaker 04:
They didn't say, provide any evidence that there's a finite number of ways.

[00:18:01] Speaker 04:
They provided a rubber stamp declaration that verbatim copied the same exact thing.

[00:18:05] Speaker 04:
So yes, they could have said there are a finite number of ways and they could have proved it and they could have shown why it would have been obvious to try, but they didn't do that.

[00:18:11] Speaker 04:
Or they could have attempted to do that, is what I'm saying.

[00:18:15] Speaker 04:
So I believe, unless there's something else that you really want to hear from me on, I think you're seeing it the right way and I'm happy to address anything else.

[00:18:23] Speaker 00:
Okay.

[00:18:24] Speaker 00:
Thank you very much.

[00:18:32] Speaker 00:
We'll put you back.

[00:18:33] Speaker 00:
Thank you, your honor.

[00:18:34] Speaker 03:
If you need us.

[00:18:36] Speaker 03:
Addressing the points that my friend raised, we don't believe this.

[00:18:41] Speaker 03:
We're asking for a seed change in the law of KSR.

[00:18:43] Speaker 03:
In fact, if you look in the law of NALGUSR, if you look back at the last 11 years of cases, what you see is rulings that are consistent with KSR, they just don't use KSR as the basis.

[00:18:55] Speaker 03:
For example, they rely on the specification.

[00:18:58] Speaker 03:
But as we pointed out in seven to eight of our gray brief,

[00:19:01] Speaker 03:
that's the same scope between the specification and the claims.

[00:19:05] Speaker 03:
There hasn't been a case that we've seen where this issue specifically of having a difference in scope between the specification and the claims was an issue.

[00:19:15] Speaker 03:
And in fact, recognizing this wouldn't require a change in any of the prior cases that were decided.

[00:19:21] Speaker 03:
It simply explains in a situation where the scope of the claim is broader than the scope of the specification that the KSR rule applies.

[00:19:30] Speaker 03:
So it doesn't require change to what happened in the past.

[00:19:33] Speaker 03:
I do believe that there is a sliding scale in the amount of disclosure and evidence required to make

[00:19:42] Speaker 03:
a simplistic geometric argument regarding obviousness to try.

[00:19:45] Speaker 03:
That was an argument made in the opening brief that it would be obvious.

[00:19:51] Speaker 03:
As we've noted that there has been no more than four patterns identified by either the board or Polaris in this case.

[00:20:00] Speaker 03:
Certainly when we were called upon to identify what those were and reply as I noted we did.

[00:20:05] Speaker 03:
In this situation what you have is whether you look at it through

[00:20:10] Speaker 03:
The patterns in a tile book, which we believe show basic geometry, are just what one of us in the art would know.

[00:20:16] Speaker 03:
Ultimately, when you look at claim one, there is no real dispute that that's a memory module where everything on that module was known in the prior art, save the way you organize little rectangles.

[00:20:27] Speaker 03:
There's no requirement in claim one for any specific wiring or anything beyond placing rectangles.

[00:20:33] Speaker 03:
And so the question for the board and

[00:20:35] Speaker 03:
was whether or not that mere arrangement of parts where you only have so many ways you can do that.

[00:20:42] Speaker 03:
Even playing with brooks on a patio or tiles or legos, there are only so many ways in which that can be done.

[00:20:49] Speaker 03:
And a personal skill in the art would readily come upon the pinwheel pattern when they are required to place these small rectangles in a confined space and allowing

[00:21:00] Speaker 03:
a patent to go forth on this essentially allows a petitioner, a patent owner, excuse me, to get a patent on basic geometry.

[00:21:10] Speaker 00:
But the problem was more than just placement, right?

[00:21:12] Speaker 00:
I mean, it also dealt with placement in a manner where you had greater economy and the circuitry involved.

[00:21:20] Speaker 03:
It did in the specification, Your Honor, but claim one does not require a greater economy in the circuitry.

[00:21:27] Speaker 03:
And indeed, an accused infringer could be found to infringe, even if they didn't have greater economy.

[00:21:32] Speaker 00:
In that situation, you have the specification driving the claim.

[00:21:37] Speaker 03:
Informing the claim, Your Honor, yes.

[00:21:38] Speaker 00:
You have the specification defining the claim.

[00:21:41] Speaker 03:
But I don't believe there's been an argument here that any element of the specification defines a term in the claim in such a way that a particular wiring would be required to practice that claim.

[00:21:54] Speaker 03:
Indeed, I expect that this goes back to litigation, that Polaris will be taking the position that irregardless of whether or not the signals arrive as soon as possible or the track lengths are as short as possible, that a

[00:22:09] Speaker 03:
a memory module infringes by virtue of solely its geometry.

[00:22:14] Speaker 03:
And so the only issue here is whether or not geometry in the face of prior reference as everything else makes something patentable.

[00:22:23] Speaker 00:
I'm out of time, sir.

[00:22:24] Speaker 00:
Thank you very much for your argument.

[00:22:26] Speaker 00:
Thank you.

[00:22:27] Speaker 00:
We thank the parties for their arguments this morning.

[00:22:30] Speaker 00:
Our next case