[00:00:00] Speaker 02:
1169, Samsung Electronics versus Price Super Engineering.

[00:00:41] Speaker 02:
We've got some more estoppel issues.

[00:00:43] Speaker 02:
I hope I don't confuse the cases here.

[00:00:45] Speaker 02:
Good morning.

[00:00:51] Speaker 04:
Good morning, Your Honors, and may it please the Court, Richard Graney on behalf of Samsung.

[00:00:56] Speaker 04:
With respect to Samsung's appeal, we submit that the board's holding of unpatentability of claim 11 under section 103 is enough to dispose of this appeal.

[00:01:09] Speaker 04:
The board had no trouble construing the limitations of claim 11, including the digital processing unit limitation.

[00:01:16] Speaker 04:
And the board had no trouble applying the prior art to claim 11 and concluding it was unpatentable.

[00:01:21] Speaker 04:
Yet claims 1 through 4 and 8, which we submit are, for purposes of this appeal, identical to claim 11, were held to not be unpatentable on the basis that the board could not ascertain the proper scope of those claims.

[00:01:38] Speaker 04:
We submit that's an untenable holding in light of its findings to claim 11.

[00:01:42] Speaker 04:
And on that basis alone, the board's decision as to claims 1 through 4 and 8 should be vacated.

[00:01:48] Speaker 04:
And this case should be remanded for application of the prior art to those claims.

[00:01:52] Speaker 02:
But let's just take claim 1 versus claim 11.

[00:01:56] Speaker 02:
Yes.

[00:01:57] Speaker 02:
Claim 1 is an apparatus claim.

[00:01:59] Speaker 02:
Claim 11 is a method claim.

[00:02:01] Speaker 04:
Yes, correct.

[00:02:02] Speaker 02:
And the board said, OK, prior art reads on claim 11.

[00:02:06] Speaker 02:
Yes.

[00:02:06] Speaker 02:
But we can't.

[00:02:08] Speaker 02:
do the same thing for claim one.

[00:02:10] Speaker 02:
So you want to get into the reasons for that.

[00:02:14] Speaker 02:
I mean, you've made the bold claim, which is the two can't be differentiated for purposes of invalidity.

[00:02:19] Speaker 02:
That's correct.

[00:02:20] Speaker 02:
You make a pretty bold argument in your briefs with regard to statutory construction.

[00:02:26] Speaker 02:
Yes.

[00:02:28] Speaker 02:
But you make an alternative argument, which is more grounded in the claim language.

[00:02:32] Speaker 04:
Correct.

[00:02:33] Speaker 04:
So let me start with the claim language point.

[00:02:36] Speaker 04:
of the board's decision to not apply the prior art to claims one through four and eight was based on the digital processing unit limitation.

[00:02:44] Speaker 04:
That exact claim element is in claim 11 as well.

[00:02:49] Speaker 04:
12 pages later in the opinion, the board approaches claim 11, approaches that limitation, construes that limitation, has no difficulty construing it, and says that it's not a 112-6.

[00:03:00] Speaker 04:
Doesn't even mention 112-6 in that context, and applies the prior art and finds that it's met.

[00:03:06] Speaker 04:
Yet 12 pages earlier, it finds that exact same element in claims one through four and eight is unconstruable because it's 112.6 lacking corresponding structure, an argument that neither party raised below and that, in fact, in the appeal of claim 11 to this court is not raised as an issue on appeal.

[00:03:24] Speaker 04:
So we would submit that is an issue that is now decided for purposes of this case.

[00:03:28] Speaker 04:
And given this court's clear mandate that the same claim term

[00:03:32] Speaker 04:
appearing in different claims of patent is presumed to mean the same thing.

[00:03:36] Speaker 04:
There's no argument they mean different things.

[00:03:37] Speaker 05:
But the 112-6 issue and the question of whether indefiniteness means even in the IPXL context that the claim can't be construed are two separate grounds, it seems to me, two separate issues.

[00:03:51] Speaker 05:
So what do you say about the IPXL type indefiniteness

[00:03:56] Speaker 05:
leads to a conclusion that the claim can't be construed.

[00:03:59] Speaker 05:
And if the claim can't be construed, then the board cannot get into the 102-103 issue on IPR.

[00:04:07] Speaker 04:
Yes.

[00:04:07] Speaker 04:
So our position on that is the history of this court's precedent makes pretty clear that an indefiniteness finding does not per se block the court from looking at the claim.

[00:04:17] Speaker 04:
And you mean Collier?

[00:04:18] Speaker 04:
Collier and other cases, Standard Oil versus American Cyanamide.

[00:04:21] Speaker 04:
And there are other cases as well.

[00:04:23] Speaker 04:
and it seems pretty clear that what the court is suggesting.

[00:04:26] Speaker 04:
I'm curious about the other cases.

[00:04:27] Speaker 05:
I saw those two.

[00:04:28] Speaker 05:
Are there others you'd like to call our attention to?

[00:04:31] Speaker 04:
Well, there's also the vibrant media case out of the PTAB.

[00:04:34] Speaker 05:
That's the PTAB case.

[00:04:35] Speaker 04:
Affirmed by this court.

[00:04:36] Speaker 04:
Rule 36.

[00:04:37] Speaker 04:
True.

[00:04:38] Speaker 05:
Are there any other cases?

[00:04:40] Speaker 04:
Off the top of my head, I don't have other cases.

[00:04:43] Speaker 04:
But the point here is, the standard seems to be, are we speculating about the scope of the claim?

[00:04:49] Speaker 04:
There's no speculation needed with respect to an IPXL indefinite as finding as to a claim.

[00:04:55] Speaker 04:
All the court has said there is there's a technical violation with respect to mixing two subject classes.

[00:05:01] Speaker 04:
The board had no trouble finding that the prior Art Citric reference taught the method of claim 11.

[00:05:07] Speaker 04:
It doesn't require any speculation to suggest or to apply that reference.

[00:05:12] Speaker 04:
to the other claims.

[00:05:13] Speaker 05:
But isn't the rationale of the IPXL indefiniteness, if that's what it is, isn't the rationale that an infringer can't tell whether the infringer is infringing?

[00:05:26] Speaker 04:
So the rationale is that the infringer doesn't know whether it is, for example, the possessing of the apparatus or the using of the apparatus that constitutes an act of infringement.

[00:05:37] Speaker 05:
Well, why isn't that a form of making the construction impossible?

[00:05:45] Speaker 05:
Because you can't tell what the proper construction is.

[00:05:48] Speaker 04:
Well, you know that it's one or the other or both.

[00:05:51] Speaker 04:
It's either the apparatus, the method, or some combination.

[00:05:55] Speaker 04:
And I don't think that requires any speculation.

[00:05:57] Speaker 05:
And therefore, your argument is that you can analyze both possibilities and determine if both possibilities would lead to infidelity.

[00:06:06] Speaker 05:
then it's OK to go ahead with invalidity.

[00:06:09] Speaker 05:
But wouldn't it be true in ordinary indefiniteness, if you decided there's a finite number of possible interpretations of a claim, you just tick off all of the different interpretations and you say, OK, voila, I can make an invalidity determination as to all of them.

[00:06:26] Speaker 05:
And then I don't have to worry about indefiniteness.

[00:06:29] Speaker 04:
I think that a finite number of possibilities is exactly what, for example, Collier is talking about.

[00:06:35] Speaker 04:
where the courts said, look, we're going to accept a view of the claim that it is an aggregate claim, and we're going to analyze it that way, and we can conclude it's obvious in view of that.

[00:06:46] Speaker 04:
And I do think there are indefiniteness situations.

[00:06:49] Speaker 04:
where, for example, the claim might be indefinite at the outer edges, but you know what it means in the middle.

[00:06:55] Speaker 04:
And if you have a reference that meets it in the middle, you have perhaps alternative issues.

[00:07:01] Speaker 04:
You have 102, 103, as well as 112, as to that claim.

[00:07:04] Speaker 04:
I don't think it's an impossibility.

[00:07:06] Speaker 04:
And the cases that talk about,

[00:07:09] Speaker 04:
approaching these claims use the term speculation.

[00:07:12] Speaker 04:
Are we speculating?

[00:07:13] Speaker 02:
I think having... You're not drawing the line in saying this case can be resolved limited only to the narrow 112 issues of IPXL.

[00:07:23] Speaker 02:
You're saying that even in the greater number of cases which are based on insolubly ambiguous could also arguably be resolved under 102, 103.

[00:07:33] Speaker 04:
Sure, if you're presented with a finite number of issues where you know what they are, I think that's right.

[00:07:37] Speaker 02:
So what does that do to the estoppel we were talking about in the prior case?

[00:07:41] Speaker 02:
If you've got indefiniteness claims before a district court, is a defendant arguably going to be stopped from not having raised that as an IPR if they could have been played in as part of the 102, 103 analysis?

[00:07:57] Speaker 04:
Well, I think that's in part going to depend on what the holding of the ultimate outcome of this issue is, for example, in this case or other cases that may be coming up.

[00:08:07] Speaker 04:
I mean, is 112 indefiniteness a viable issue on which the board can rule in an IPR?

[00:08:13] Speaker 04:
We submit that it is.

[00:08:15] Speaker 05:
But if that's true, then doesn't that, as the chief judge has asked, doesn't that mean that we've suddenly expanded the scope of potential estoppel rather dramatically?

[00:08:27] Speaker 04:
Our argument is not that every issue is on the table.

[00:08:30] Speaker 04:
Our argument is, in this case, the board, through its claim construction power to analyze 102 and 103 on its own, found two 112 indefiniteness issues with respect to claims one through four and eight.

[00:08:45] Speaker 04:
If the board has the power to reach those issues, which it seems to in connection with its claim construction powers, then it should have the power to cancel the claims on those bases.

[00:08:54] Speaker 01:
If that's true.

[00:08:55] Speaker 01:
Are you arguing that it's a matter of power?

[00:08:57] Speaker 01:
or a matter of obligation?

[00:08:59] Speaker 04:
It's both.

[00:09:01] Speaker 04:
They have the power to do it through their power to construe the claims.

[00:09:04] Speaker 04:
And 318A is a grant by Congress to the board to rule on patentability of any, in fact, as the Supreme Court has said, all challenge claims in the final decision.

[00:09:16] Speaker 01:
So does your argument, does your appeal turn on our agreeing with you that 318A is a broader scope

[00:09:24] Speaker 04:
So we have offered alternative positions.

[00:09:27] Speaker 04:
The position I started with was that the invalidity finding as to claim 11 means that the decision to not reach 102 and 103 on claims 1 through 4 and 11 must be vacated and remanded.

[00:09:41] Speaker 04:
That does not depend on the second issue, the second argument, which is, alternatively, the board here found these claims to have two indefiniteness defects.

[00:09:53] Speaker 04:
Those additional defects.

[00:09:54] Speaker 01:
So it must be vacated and remanded as a matter of claim construction?

[00:09:59] Speaker 04:
Well, as a matter of claim construction on the digital processing unit limitation, the board never actually said it couldn't reach the IPXL issue.

[00:10:07] Speaker 04:
It merely said because there's this

[00:10:09] Speaker 04:
1, 12, 6 issue, we can't reach claims 1 through 4.

[00:10:13] Speaker 01:
I don't understand that distinction.

[00:10:15] Speaker 01:
They said they couldn't do it because they couldn't figure out the limits.

[00:10:19] Speaker 04:
The digital processing unit limitation was the sole basis for the reason not to reach 1 through 4 and 8.

[00:10:26] Speaker 04:
So that is a claim construction issue.

[00:10:27] Speaker 04:
And we would argue it's settled by virtue of what happened with claim 11.

[00:10:31] Speaker 04:
And this matter should be sent back.

[00:10:32] Speaker 04:
But there is an alternative argument, which is given the board's findings of indefiniteness here,

[00:10:38] Speaker 04:
this court should vacate, send the case back, and instruct the board to find those claims unpatentable under section 112 by virtue of section 318A.

[00:10:52] Speaker 05:
Now, you've argued that claim 11 essentially answers the question with respect to 112-6, because that's inconsistent with the board's analysis of claims 1 and then 4 through 8.

[00:11:03] Speaker 05:
But even if they're inconsistent, and they may well be,

[00:11:08] Speaker 05:
That doesn't necessarily mean the claim 11 analysis was correct and the claim 1 analysis was wrong.

[00:11:14] Speaker 05:
Why isn't it the case that one of them may be wrong, but it may be claim 11?

[00:11:19] Speaker 05:
I mean, you have to win on the question, on the substantive question of whether this is really a 1, 12, 6 claim, right?

[00:11:26] Speaker 05:
I mean, you can't win simply by pointing to claim 11 and saying, aha, we win.

[00:11:30] Speaker 04:
Two points, but actually three.

[00:11:32] Speaker 04:
One.

[00:11:32] Speaker 05:
But you would agree with that, right?

[00:11:34] Speaker 05:
with what I just said.

[00:11:36] Speaker 04:
Well, not now, because there was an appeal as to claim 11, and the patent owner hasn't challenged the construction of digital processing units.

[00:11:42] Speaker 04:
So I would argue that this matter is settled in this case.

[00:11:47] Speaker 04:
So that's response one.

[00:11:48] Speaker 04:
Response two, we've briefed this issue.

[00:11:50] Speaker 04:
We do not think that the board's finding that digital processing unit is a means plus function element is supported in the record here.

[00:11:59] Speaker 04:
No one raised that issue.

[00:12:01] Speaker 04:
The only evidence the board had was the testimony

[00:12:04] Speaker 04:
And the argument by patent owner that the digital processing unit connoted structure was known to those of skill in the art.

[00:12:12] Speaker 04:
Means was not used in this particular element, so there's a presumption it doesn't apply.

[00:12:17] Speaker 04:
And means, in fact, was used with respect to other elements in the claim, which would suggest the patent owner here knew how to use the term when they wanted to.

[00:12:24] Speaker 04:
So under any number of possibilities here, I would argue that the holdings on one through four and eight cannot stand.

[00:12:34] Speaker 02:
I'm not sure if that's the case.

[00:12:50] Speaker 02:
insolubly ambiguous.

[00:12:52] Speaker 02:
And your answer to that seemed to be, well, if it's insolubly ambiguous, you might say, there's a finite, there are 30 different ways.

[00:13:00] Speaker 02:
So how does the board approach that?

[00:13:03] Speaker 02:
There are 30 different ways that this claim could arguably construed, and we have to analyze each of those against the prior art?

[00:13:11] Speaker 02:
That just doesn't seem to me what was contemplated in terms of 102, 103 analysis.

[00:13:17] Speaker 02:
Because that's what the board would have to do, right?

[00:13:19] Speaker 02:
Am I missing something?

[00:13:20] Speaker 02:
If there are 20 ways you can say it's, we all agree it's insolidly ambiguous, but there are 20 alternatives that could be in claimed scope.

[00:13:30] Speaker 02:
You have to analyze each one of those?

[00:13:32] Speaker 04:
So first,

[00:13:33] Speaker 04:
We are operating now under the nautilus regime, which is an even broader regime, not the narrow or insolubly ambiguous regime.

[00:13:42] Speaker 04:
In that regime, I think it's much harder to make the argument, because I think there, just by saying insolubly ambiguous, would suggest that there is no meaning conceivable to that claim.

[00:13:53] Speaker 04:
We're now in a different regime where, in fact, you may have claim terms that the meaning may be plainly understood in the center,

[00:14:02] Speaker 04:
And there may be some debate about the outer edges of the claim.

[00:14:05] Speaker 04:
I think that's an example where there wouldn't be speculation, which seems to be the standard the courts and the PTAB are applying.

[00:14:11] Speaker 04:
Am I being required to speculate here as to the scope of that claim?

[00:14:15] Speaker 04:
I think the IPXL example is a simple one, because it doesn't require any speculation, especially in this case.

[00:14:22] Speaker 04:
You're talking about two options, and that's it.

[00:14:25] Speaker 04:
It's an apparatus or a method of using the apparatus.

[00:14:27] Speaker 04:
So we don't have to reach the other question.

[00:14:29] Speaker 04:
I don't think you have to reach that here, no.

[00:14:31] Speaker 04:
And that's why I started with, in this case, the finding of invalidities to claim 11 is dispositive, we would submit.

[00:14:38] Speaker 04:
But I do understand the court's concern of jumping out into how many is enough.

[00:14:47] Speaker 04:
But I mean, that may be something that's left to the development of the law.

[00:14:52] Speaker 04:
I think it's a fair point here to say, in this case, there's nothing that would have precluded the board from applying the prior art under the IPXL side of this.

[00:15:03] Speaker 04:
If the court has no further questions, I'd like to reserve the remainder of my time for a vote.

[00:15:07] Speaker 02:
Thank you.

[00:15:24] Speaker 03:
Good morning, and may it please the court.

[00:15:28] Speaker 03:
Your Honor, the IPR statute, section 311B, states, quote,

[00:15:33] Speaker 03:
a petitioner in an inner party's review may request to cancel as unpatentable one or more claims of a patent only on a ground that could be raised under Section 102 or Section 103 and only on the basis of prior art consisting of patents and printed publications."

[00:16:00] Speaker 03:
Samsung, rather

[00:16:01] Speaker 03:
boldly, I would even say blatantly, has, I mean, that's a very clear prohibition on what a petitioner can ask to be canceled as unpatriotic.

[00:16:09] Speaker 02:
No, but let's assume we are not talking about including 112 issues under what the board can, you can raise in your petition as being the basis for the validity.

[00:16:19] Speaker 02:
Let's assume we're talking about a narrower scope, which I think was what most of the discussion between us and Mr. Rainey was, right?

[00:16:27] Speaker 02:
So we're talking about where you use the 112 as a prohibition saying that you can't reach, while doing it onto 102 and 103, as happened with claim 11.

[00:16:38] Speaker 02:
We're just deciding whether the board was correct to say we can't reach that issue because we've got a 112 problem.

[00:16:45] Speaker 02:
That's a little bit different, not as nearly a broad swath of statutory regime, right?

[00:16:51] Speaker 03:
Well, Your Honor, what I wanted to start with was just that

[00:16:56] Speaker 03:
we observe here that the statute clearly prohibits what a petitioner in an IPR can request to cancel is unpatentable regarding.

[00:17:09] Speaker 02:
But let's assume we're talking about 102 and 103 here, and it's just whether the path includes something in the nature of the endeavor.

[00:17:19] Speaker 03:
But they've also requested completely separately

[00:17:21] Speaker 03:
that these claims be canceled under 112 only.

[00:17:24] Speaker 03:
And that violates the clear wording of the statute.

[00:17:27] Speaker 03:
I'm willing to move on from that.

[00:17:29] Speaker 03:
They did it below, and they're doing it here.

[00:17:33] Speaker 03:
So with respect to the application of the art, the problem with Samson's argument, I believe, on this point, is they want to say that there is a class of indefiniteness called IPXL indefiniteness.

[00:17:47] Speaker 03:
And that is a special kind of indefiniteness

[00:17:50] Speaker 03:
that you can apply the art to.

[00:17:53] Speaker 03:
There may be other kinds of indefiniteness, according to them, that you can apply art to, but with this particular kind of indefiniteness, you can.

[00:18:00] Speaker 03:
This is the gist of their argument on this point.

[00:18:05] Speaker 03:
And the problem, here's the problem.

[00:18:10] Speaker 03:
iPixel was the first case, IPXL, from where this court addressed the issue of whether mixing apparatus elements and method steps in a single claim renders a claim indefinite.

[00:18:23] Speaker 03:
In fact, if you look at the iPixel decision on this point, it noted when it started its discussion that it was an issue of first impression for the court.

[00:18:32] Speaker 03:
And it said, but it's not an issue of first impression for the board.

[00:18:37] Speaker 03:
And this court went straight to the board

[00:18:40] Speaker 03:
the board's decision in ex parte Lyle ex parte Lyle had found in 1990 Apparently for the first time ever had found a claim to be indefinite for mixing in one claim apparatus elements and method elements so when this court in IPXL Enunciated that claims could be found indefinite on this

[00:19:07] Speaker 03:
basis, the primary legal foundation, the precedential support for this court's decision in IPXL was ex parte lio.

[00:19:16] Speaker 03:
That's the number one and primary case cited in this court's reasoning on that subject.

[00:19:20] Speaker 03:
Now, if we go to ex parte lio, what we see there is that it has a discussion.

[00:19:26] Speaker 03:
Ex parte lio was an appeal to the board of an examiner rejection.

[00:19:32] Speaker 03:
There was a rejection on indefiniteness, and there was a rejection on anticipation.

[00:19:36] Speaker 03:
The board addressed the rejection on indefiniteness first, and there it announced that claim was indefinite because it mixed apparatus and method steps.

[00:19:47] Speaker 03:
And then it turned to the anticipation rejection.

[00:19:50] Speaker 03:
And I'm going to quote from Ex parte Lyle's treatment of that.

[00:19:54] Speaker 03:
It's very short.

[00:19:56] Speaker 03:
Quote, with regard to the examiner's rejection of appealed claims, blah, blah, blah, under 35 USC 102B as anticipated by

[00:20:06] Speaker 03:
prior reference, it is our view that since the appealed claims are indefinite and indeterminate in scope for the reason stated supra, it is not possible to apply the prior art to these claims in deciding patentability without disregarding portions of the express wording of the claims and thus resorting to speculation and conjecture.

[00:20:26] Speaker 02:
Can I just ask you about that?

[00:20:27] Speaker 02:
I could understand the argument if, I take Mr. Rainey's point, we're no longer in solubly ambiguous land.

[00:20:34] Speaker 02:
But if the court can't construe it because these terms in claim one have five different potential meanings and we don't know which one, I get that.

[00:20:42] Speaker 02:
But I'm looking at blue brief six through seven, which has a chart comparing claims one and claims 11.

[00:20:50] Speaker 02:
So this is a kind of pedestrian question.

[00:20:53] Speaker 02:
But if I'm just sitting there as the board trying to do the analysis I did at claim 11, why couldn't I do the same analysis and application of the prior art to claim one?

[00:21:04] Speaker 02:
Just looking at these claim language in both of those, it doesn't

[00:21:11] Speaker 02:
seem hard or certainly not impossible to, notwithstanding that there might be problems on indefiniteness because it mixes this stuff out because of the confusions of infringement, why, if you're a board examiner or a PTAP judge, why couldn't you apply the same analysis with regard to Prior Art Claim 11 to Claim 1?

[00:21:34] Speaker 03:
First of all, Your Honor, there are distinct and material differences between claim 11 and claim 1.

[00:21:40] Speaker 03:
Claim 1 has an additional limitation that's completely not present in claim 11.

[00:21:44] Speaker 03:
And then claims 2 through 4 and 8 are dependent on claim 1.

[00:21:48] Speaker 03:
They add a series of additional limitations that aren't in claim 11.

[00:21:53] Speaker 03:
So the idea that these are identical is just not true.

[00:21:59] Speaker 03:
If you look at the chart, for example, on page 6 of the brief, you see that

[00:22:03] Speaker 03:
Halfway on the page, there's a claim one limitation to an image display device that's not present in claim 11.

[00:22:09] Speaker 02:
OK, but the board made none of that analysis.

[00:22:11] Speaker 02:
They weren't differentiating claim one and claim 11 based looking at the prior art and saying, well, these claims are different and so forth.

[00:22:19] Speaker 02:
They didn't go there, right?

[00:22:21] Speaker 02:
The board didn't do that.

[00:22:23] Speaker 03:
Well, they did not apply the art to claim one, because they held that

[00:22:30] Speaker 03:
Samsung did not meet its burden of giving them a satisfactory claim construction for claim one.

[00:22:37] Speaker 03:
Now respectfully, I want to get back to my point about Ex parte Lyle, because this is the case.

[00:22:41] Speaker 03:
This is the seminal case that created, that this court in IPXL followed for creating IPXL indefiniteness.

[00:22:50] Speaker 03:
This is the seminal case.

[00:22:51] Speaker 03:
In that case, they reversed the examiner's rejection on anticipation, because they said they couldn't reach it because of the indefiniteness problem.

[00:23:00] Speaker 03:
So the idea that they're advancing, that IPXL is a special type of indefiniteness that you can't apply the art to and do a 102 or 103 analysis, is completely at odds with the first case ever on the subject that created the IPixel rule.

[00:23:18] Speaker 05:
Now, even if that's correct characterization of the Lyle case, it seems to me one of the problems for us is that that's not

[00:23:29] Speaker 05:
the analysis that the board used in this case.

[00:23:32] Speaker 05:
Because the board in this case, and I'm looking at appendix 20, said that we disagree with petitioner that we're able to address patentability of claim one.

[00:23:43] Speaker 05:
And the reason they give is because of the 112-6 problem that the board perceived, at least at this portion of the opinion, with the language of the digital processing unit limitation.

[00:23:58] Speaker 05:
It would seem to me that we would be departing from or adding to the analysis of the board if we were to say, and moreover, quite apart from 112.6 and quite apart from the correctness or non-correctness of that analysis, there is a problem with the indefiniteness of the IPXL type indefiniteness that prohibits the board from reaching

[00:24:26] Speaker 05:
the 102 and 103 issues.

[00:24:30] Speaker 05:
How can we do that without the boards having already told us that that was the basis for the ruling?

[00:24:35] Speaker 03:
Well, Your Honor, I believe that you were right when you said in your earlier question that there were two reasons that the board said it couldn't construe claim one.

[00:24:45] Speaker 03:
One, it was the ipixel issue, and the second was the means plus function issue.

[00:24:50] Speaker 05:
Well, if I said that, I don't recall saying it, but if I said that, then I misspoke because I read

[00:24:55] Speaker 05:
The board is having only decided this on the 1-12-6 issue.

[00:25:00] Speaker 05:
Now, if there's a place where the board has gone on and discussed and has made the point that you are citing the Lyle case for, I didn't see it.

[00:25:10] Speaker 03:
Well, Your Honor, they spent five pages here in this.

[00:25:15] Speaker 03:
You're looking at appendix 20.

[00:25:17] Speaker 03:
This is the final written decision.

[00:25:18] Speaker 03:
The previous four or five pages are all going over the iPixel discussion.

[00:25:23] Speaker 05:
Right.

[00:25:23] Speaker 03:
And then they conclude.

[00:25:25] Speaker 03:
that they disagree with the petitioner that we are able to address patentability of claim one.

[00:25:30] Speaker 05:
And the reason they give is because of the 112-6.

[00:25:32] Speaker 03:
Well, they say both, I believe, Your Honor.

[00:25:33] Speaker 03:
They say even if one were to contend that claim one is an apparatus claim whose limitations are merely written in functional language, the petition lacks the analysis required by the regulation.

[00:25:43] Speaker 03:
For example, as we stated in the decision on institution,

[00:25:46] Speaker 03:
the digital processing unit limitation invokes 112.6.

[00:25:50] Speaker 05:
So you're hanging your argument on the for example?

[00:25:54] Speaker 03:
The even if.

[00:25:55] Speaker 03:
They're saying both.

[00:25:56] Speaker 05:
But the even if is not directed, as I read it, to the IPXL issue.

[00:26:04] Speaker 05:
I don't see where the tie-in there is, because they refer to the regulation, but that's not specific to IPXL.

[00:26:11] Speaker 03:
Your honor, it's also not just me saying it.

[00:26:14] Speaker 03:
Their whole appeal was predicated on asking the court to have the board cancel these claims as indefinite under 112 because of the I-Pixel finding.

[00:26:26] Speaker 03:
So their appeal interprets this as the board making.

[00:26:30] Speaker 03:
And my colleague referred to two.

[00:26:34] Speaker 03:
He said the board found two indefiniteness defects, as he put it, I-Pixel being one.

[00:26:39] Speaker 03:
and the digital processing unit 112-6 being the second.

[00:26:42] Speaker 03:
So their whole appeal is saying there are two problems that the board found, and this court should authorize the board to cancel the claims for those two indefinite problems.

[00:26:54] Speaker 02:
So you're reading, are you with us on page appendix 20?

[00:26:58] Speaker 03:
Yes, Your Honor.

[00:26:59] Speaker 02:
So you're reading that first sentence as sort of being, should have been really at the end of the paragraph preceding, because that was their wrap up with their conclusion of the IPXL issue.

[00:27:11] Speaker 02:
And then in particular, you're kind of reading of in the alternative.

[00:27:16] Speaker 03:
That's a very fair characterization of how I believe it's properly understood.

[00:27:21] Speaker 03:
And that's how, if you read their brief, their brief is predicated on saying, issue number one, board found the claims ipixel indefinite.

[00:27:29] Speaker 03:
Board should be able to cancel under 112.

[00:27:31] Speaker 02:
What happens if we conclude that the board was incorrect on the 112-6 means plus function, that this was not a means plus function?

[00:27:39] Speaker 03:
Well, I think for them to win, they have to,

[00:27:43] Speaker 03:
They have to win both arguments.

[00:27:45] Speaker 03:
They don't win by just winning the DPU argument, because as they've acknowledged, the board's determination that they failed to carry their burden was based upon two grounds.

[00:27:57] Speaker 03:
One, they didn't show how the board could construe the claim because of the apparatus method issue that the board raised, and the second being the DPU issue.

[00:28:08] Speaker 03:
So they have to over-

[00:28:13] Speaker 03:
And this is the key point.

[00:28:17] Speaker 03:
With respect to DPU, they've come in here and said, well, the board got it all wrong about the DPU being a means plus function claim.

[00:28:22] Speaker 03:
But they have not done that with respect to the first what they call indefinite as a defect.

[00:28:28] Speaker 03:
They have not said the board got it wrong on iPixel.

[00:28:31] Speaker 03:
In fact, they've latched onto that and want cancellation under 112 because of that.

[00:28:37] Speaker 05:
How do you square the treatment of the

[00:28:40] Speaker 05:
DPU limitation as you call it in claims 1 and claim 11.

[00:28:46] Speaker 03:
Well, claim 11... Can you square the two?

[00:28:51] Speaker 03:
I believe they can be squared.

[00:28:53] Speaker 05:
How would you do that?

[00:28:54] Speaker 03:
I believe that claim 11 is a method claim and the claim language where you find that DPU limitation is one of several recited steps and the claim language recites using the DPU.

[00:29:08] Speaker 03:
It's not expressed

[00:29:10] Speaker 03:
as in a apparatus claim where it's a structural component.

[00:29:15] Speaker 03:
Means plus function is a structural component.

[00:29:17] Speaker 03:
You typically have the word for in there.

[00:29:20] Speaker 03:
And you don't have that.

[00:29:23] Speaker 03:
You don't have it in claim one.

[00:29:25] Speaker 03:
You don't have the word for in claim one.

[00:29:27] Speaker 03:
The board is sort of implying it.

[00:29:30] Speaker 03:
But in claim 11, where it's just a method claim, you don't have that.

[00:29:34] Speaker 03:
The step is using the DPU.

[00:29:40] Speaker 03:
I think for that reason, they're not identical issues.

[00:29:45] Speaker 03:
They're not identical issues.

[00:29:50] Speaker 03:
And another problem I think that they have is when you look at the board's discussion of DPU on claim 11, Samsung has a number of shifting positions here in this whole case.

[00:30:06] Speaker 03:
In claim 11, the board recites that

[00:30:10] Speaker 03:
The board was, they say when they discuss the claim 11 discussion of digital processing unit, they say that petitioner.

[00:30:23] Speaker 02:
Will you want to give us the page?

[00:30:25] Speaker 03:
I'll find it for you.

[00:30:38] Speaker 03:
Okay.

[00:30:41] Speaker 03:
on appendix 35.

[00:30:46] Speaker 03:
Here you have the board discussing the petitioner's argument on this term in claim 11.

[00:30:59] Speaker 03:
And they say at the second full paragraph, petitioner counters that the digital processing unit is not defined in the 591 patent has no special meaning.

[00:31:10] Speaker 03:
But now they're coming in here saying, well, the patent owner, the inventor testified at deposition, I believe is what the reference is to, that digital processing unit does have a special meaning to those of skill in the art and connotes sufficient structure.

[00:31:27] Speaker 03:
And that's why we didn't think it was means most function.

[00:31:30] Speaker 03:
So now they want to say in this court,

[00:31:33] Speaker 03:
Patent owner was right.

[00:31:34] Speaker 03:
It has a special meaning.

[00:31:35] Speaker 03:
But when they briefed this to the board and claimed the context of claim 11, they said it didn't have a special meaning.

[00:31:41] Speaker 03:
So they're hard to follow, exactly, because the positions shift so frequently here.

[00:31:50] Speaker 03:
They're not consistent.

[00:31:51] Speaker 02:
Well, they could have taken it.

[00:31:52] Speaker 02:
If they haven't appealed that position below, they're free to argue.

[00:31:57] Speaker 02:
So you're saying they're somehow foreclosed from making some argument here on appeal?

[00:32:03] Speaker 03:
I'm just saying they're arguing now that because the DPU was not found to be means plus function in claim 11, it shouldn't be found that way in claim 1.

[00:32:12] Speaker 03:
But yet they argued in connection with claim 11 that the term had no special meaning.

[00:32:18] Speaker 03:
And now their argument for the error on claim 1 is that it has a special meaning and connotes sufficient structure to want to skill in the art and wouldn't be a means plus function subject to 112-6 treatment.

[00:32:30] Speaker 03:
So they argue.

[00:32:33] Speaker 03:
different things when they see an advantage.

[00:32:38] Speaker 03:
I don't think that these issues really, the issue of whether or not, the board doesn't have the power to cancel under 112.

[00:32:51] Speaker 03:
So just like in the Google case from this court, this court said the board cannot declare patents

[00:33:02] Speaker 03:
indefinite in an IPR, so we express no view on it.

[00:33:06] Speaker 03:
In the very recent Neptune generics case, a party argued that the board ought to be empowered to cancel the claim that an IPR is impassable under section 101.

[00:33:19] Speaker 03:
And this court, this is from May of this year I believe, didn't get into whether it was or was not subject matter eligible under 101.

[00:33:29] Speaker 03:
It just said,

[00:33:29] Speaker 03:
We accordingly can't go there.

[00:33:32] Speaker 03:
We express no view on it.

[00:33:35] Speaker 03:
This court doesn't need to get into whether or not there's the 112 issues in this case.

[00:33:43] Speaker 03:
They're arguing that the board had the power to cancel under 112.

[00:33:47] Speaker 02:
Yeah, but I think this is where we started, where they have pressed what I understand to be an alternative argument that even if they can't get a cancellation based on indefiniteness before the board, the board should not have not relied on indefiniteness in not reaching the issue of 102 and 103.

[00:34:07] Speaker 02:
So they preserved, certainly, an alternative argument to the one you're responding to.

[00:34:13] Speaker 03:
Well, they've argued that.

[00:34:15] Speaker 03:
Ex parte Lyle shows that for ipixel indefinite, where those issues are there, that you do not reach the 102-103 analysis.

[00:34:29] Speaker 03:
So there is not a special class of ipixel indefiniteness issues that

[00:34:34] Speaker 03:
should be treated differently than every other kind of indefinite issues.

[00:34:38] Speaker 03:
They're opening a can of worms with that argument, I believe.

[00:34:41] Speaker 02:
OK.

[00:34:41] Speaker 02:
Well, we've far exceeded your time.

[00:34:43] Speaker 02:
My understanding is you did not raise your cross appeal, which is absolutely fine.

[00:34:47] Speaker 02:
We can rely on the briefs, right?

[00:34:49] Speaker 02:
Yes, Your Honor.

[00:34:49] Speaker 02:
And therefore, we won't have to have you get up again to respond to that.

[00:35:02] Speaker 04:
A few quick points, Your Honors.

[00:35:04] Speaker 04:
First, on this issue of IPXL versus 112-6, the point we made is the board made two findings about indefiniteness, IPXL and 112-6.

[00:35:18] Speaker 04:
However, its rationale for not applying the prior art to claims 1 through 4 and 8 was based solely on the 112-6 finding.

[00:35:26] Speaker 05:
And so then what was the point of the discussion of the indefiniteness?

[00:35:34] Speaker 05:
question that precedes page 20 of the appendix.

[00:35:39] Speaker 05:
What's the point that they were getting at with that?

[00:35:41] Speaker 04:
I think the point they were getting at was they saw two defects in the claim.

[00:35:45] Speaker 04:
They saw an IPXL defect, and they saw a 112.6 defect in the claim.

[00:35:49] Speaker 05:
But the discussion of the first defect then was just sort of by the by.

[00:35:54] Speaker 05:
It was not something that had an effect on their ultimate decision not to

[00:36:01] Speaker 05:
Not to adjudicate the 102, 103 issues.

[00:36:04] Speaker 04:
So yes, but the reason for my answer is simple.

[00:36:12] Speaker 04:
We pressed them that they could apply the prior art to the IPXL indefiniteness issue.

[00:36:17] Speaker 04:
And their reason for not doing that was, well, there's this other problem with 112.6.

[00:36:21] Speaker 04:
Because you haven't satisfied us on that, we don't need to reach the other analysis that we just rendered with respect to IPXL.

[00:36:30] Speaker 05:
That's a much more succinct and specific statement than the board made.

[00:36:40] Speaker 05:
The language such as for example left me wondering what it was an example of coming from a larger class.

[00:36:48] Speaker 04:
We certainly don't know from that four pages why they couldn't apply the prior arc to the claims.

[00:36:53] Speaker 04:
They never provided any reasoning or analysis as to whether there was some

[00:36:59] Speaker 04:
ambiguity, even under ideas.

[00:37:01] Speaker 04:
Maybe they were just invoking the Lyle case.

[00:37:04] Speaker 04:
Except that they don't say that.

[00:37:05] Speaker 04:
In administrative law, we don't read into opinions things that are not there.

[00:37:09] Speaker 04:
On the Lyle case, well, if we're going to be talking about board decisions in this area, in the PTAB world, we have hybrid media, which is a much more recent pronouncement in the area, where they do analyze the issue and found no issue with reaching.

[00:37:24] Speaker 04:
It was not speculation.

[00:37:27] Speaker 04:
I would also add, in the Lyle case, the board found the claims unpatentable under 112.

[00:37:32] Speaker 04:
And here, we have this weird situation where the patentee is standing here, standing there, saying, our claims have these defects in them.

[00:37:41] Speaker 04:
Don't construe them and find that the claims are actually patentable, which is ultimately the effect here of what they're arguing.

[00:37:50] Speaker 04:
They can't possibly be what Congress had in mind when it passed the AIA.

[00:37:56] Speaker 04:
One final point with respect to claims 1 through 4 and 8 compared to 11.

[00:38:02] Speaker 04:
If you look at the petition in this case that Samsung filed, I point to, for example, A213.

[00:38:11] Speaker 04:
We say claim 11 includes the same limitations as claim 1, but has written a method claim instead of an apparatus claim.

[00:38:17] Speaker 04:
So see our analysis for claim 1 when looking at claim 11.

[00:38:22] Speaker 04:
That was never disputed before the institution of the act, frankly never disputed at any point in time.

[00:38:27] Speaker 04:
And the board, in its final written decision, if you look at page 830 and note 8, it notes this and uses the analysis of claim 1 in finding claim 11 unpatentable.

[00:38:39] Speaker 04:
So plainly, the finding of claim 11 is unpatentable.

[00:38:44] Speaker 04:
Using the analysis of claim 1 is pretty powerful evidence that they were not speculating about what the elements of claim 1 were.

[00:38:53] Speaker 04:
If the court has no further questions, that's all I have.

[00:38:58] Speaker 04:
Thank you.