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1557 Smart Modular Technologies.

[00:01:05] Speaker 04:
May it please the court.

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The primary issue in this appeal, particularly of the Patent Office and the board's obviousness conclusion, is the Patent Office and the intervener's treatment of claim one's limitation of generating second set of chip select signals.

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In particular, that limitation states, generates a set of second chip select signals based at least in part upon values of said first chip select signals

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and a portion of the address signal.

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Now, the primary problem we have here is that the patent office and then the intervener apply the wrong claim construction standard.

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There is no explicit claim construction of the limitation generates.

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But here, the patent office and the intervener are applying the broadest reasonable interpretation.

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But the correct standard is the broadest reasonable interpretation in light of the specification.

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Now, the patent office found that on this memory circuit, essentially that if this first set of chip select signals was present at the input, they were necessarily used to generate the second set.

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In fact, they argued that one of ordinary skill in the art would know that just the mere presence, you could mix them into any combination you wanted.

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Now, Intervenor changed that interpretation slightly.

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And Revener argued that as long as the first chip select signals have some involvement in generating the second chip select signals, this limitation is satisfied.

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Continuing, it is enough to conclude that the second chip select signals are based at least in part upon the values of S0 and S2, as the second chip select signals may be generated only when S0 and S2 are set to specific values.

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Now, this is incorrect and is apparent

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from the specification of the 295 patent.

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Figure one, which is reproduced in the reply brief, page seven, shows what is labeled as a prior art device.

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This is not prior art that was produced as a reference.

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This is prior art that the inventors acknowledged and then said they were making an improvement upon.

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And that prior art, and there's a call out on page seven, shows a first set of chip select signals as inputs.

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The rest of the patent, excuse me, that would fulfill the interpretation of the patent office and the intervener.

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But the specification continues with figures two through eight and with text on the inventor's improvement upon the prior art.

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And that improvement was specifically using the chip slick signals with the address signals to determine, to generate

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the second set of chip select signals.

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Now this, we can go to the patent office and the intervener's argument with an analogy of a store.

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The decision to purchase a product is a logical decision.

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But a condition precedent is a store being open.

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You would never say that the decision to purchase an object is based upon the store being open.

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A condition precedent is not a basis for a decision.

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In electronics, we can analogize to a television set.

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The decision to change the channel of the television set from four to seven is based upon the inputs from the viewer with remote control and the circuit of the TV.

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It is not based upon the power supply from the wall.

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Although that power supply is a necessary condition precedent and is an input to that television, but it is not a part of the logical decision.

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Now here, the inventors identified the prior art, described the prior art in column one, described the uses of the chipslets in the prior art in column one, and then described their invention, the improvement.

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And what distinguishes claim one from that prior art is the combination, the inseparable combination that the input chipslets must have different values based upon values

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and the generating step, that the Chipsalettes are actually a part of the Boolean logic, a part of the decision on the second set of Chipsalettes.

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Of course, what a reference discloses is a question of fact.

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And we owe the Patent Office deference on that, don't we?

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Claim interpretation is a question of law, which is reviewed to know it.

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Are we talking about what Takeda discloses, the reference?

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No.

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I'm talking about what the 295 patent discloses.

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In page seven of the reply brief, we've reproduced figure one from the 295 patent.

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And figure one is identified as prior art.

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It is described as prior art.

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And the specification describes it in the background of the invention, not in the detailed description or the description of the invention or the summary of the invention.

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So here are the inventors.

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This is completely separate from Takeda.

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Here the inventors didn't simply produce articles and patents, which they knew about.

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They wrote a section that says, here is the prior art.

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So to interpret the claim, which is a question of law, reviewed de novo, you must do so, broadest reasonable interpretation, yes, but in light of the specification.

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So I submit that a proper interpretation must, if possible, exclude that prior art.

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And the language here, the critical language of claim one,

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that excludes that prior art is a set of chip select signals, the values of the chip select signals, and generates based upon, based at least in part upon, the values of those chip select signals.

[00:07:19] Speaker 01:
So you're saying an inventor in his application can characterize the prior art in such a way as to remove the deference that we give to the prior art as determined by the PTO.

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Claim construction must be in light of the prior art.

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So in claim construction, which is a question of law.

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Claim construction is the plain language of the claim in light of the patent specification.

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Yes, in light of the specification.

[00:07:49] Speaker 01:
But here you're talking about the specification characterizing the prior art.

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Yes, that's right.

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And you're saying that overrides what the patent office interprets the prior art to say.

[00:08:04] Speaker 04:
Yes, it does, because the inventors in their application conceded that the prior art was the prior art, and they had no right to claim that prior art.

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So there's no question of fact there.

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The inventors have said this prior art that we're describing here, that we've put in Figure 1, is prior art.

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So there's no finding of fact there.

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And this is just completely established.

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The claim interpretation, which must be in view here of the specification, is a question of law.

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which is review de novo.

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Now, if I may move to the second significant point, and that is the burden shifting.

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MPEP 706 requires that in an examination, the standard is a preponderance of the evidence.

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There are two burdens.

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There's the burden of production, which may shift.

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But there is the burden of persuasion.

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And it's established in re-examination.

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Please remember, this is an inter-partisan re-examination.

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It was filed the day before IPR became effective.

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The burden of persuasion may never shift.

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Now, here in the record, there is no finding, there is no statement from the Patent Office of establishment of unpatentability by proponents of the evidence.

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They never said that.

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But they did make statements.

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of burden shifting.

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For example, appendix 84, smarts expert provides no persuasive rebuttal.

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Not no rebuttal, no persuasive rebuttal.

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Appendix, page 7.

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I don't understand.

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So if they had said, provides no rebuttal, that would have been OK?

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I don't understand what you're putting.

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I mean, if you establish a private patient case, you assume the burden of production, therefore, shifts.

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So does not the burden of production require that the rebuttal

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the rebuttal be persuasive?

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There are two parts to answer that.

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The first, the establishment of the prima facie case does not mean that it's been established by proponents of the evidence.

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Second, the burden of production may shift, but that's not what the patent office said.

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They didn't say, Smart's expert did not provide rebuttal.

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They said persuasive

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So you're saying that they shifted the burden and therefore if the patent owner provides rebuttal, even if it's not persuasive, that should carry the day because the burden is on the office?

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If the patent owner has produced rebuttal, they have carried the burden of production.

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And then the decision maker says, yeah, you carried the burden of production, but you weren't very convincing.

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The prima facie case overwhelms the response that you made to it.

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And so you get to sit down.

[00:11:03] Speaker 04:
Well, they're the problems of prima facie case.

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What it should be is it should be, yes, assuming that the patent owner has come forward.

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Next step should be, you have come forward.

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We look at what the patent office has said, what the petitioner has said.

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We now look at what you came back with.

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we now find, because and give reasons, by a preponderance of the evidence.

[00:11:29] Speaker 04:
But they didn't say that.

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There's more instances.

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Patent owner has not been- What did the board say after the board said you didn't provide a convincing rebuttal?

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That is- What was the next conclusion on the issue?

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The burden is never on the patent owner to burden persuasion.

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I understand.

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The burden is on the challenger.

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The challenger made a challenge.

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The decision-maker said, OK, your duty now is to respond to the challenge.

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You respond to the challenge.

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What did the decision-maker say next?

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The decision-maker says this in review.

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And the challenger was insufficient.

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They would say that in view of all the evidence presented by a preponderance of the evidence, which had not been sent.

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Is that what said missing sentence?

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Is that what was missing?

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Well, you know, the missing sentence is critical.

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It's critical for two reasons.

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Number one, that's the first instance we have of language.

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And you agree that it's a missing sentence that didn't describe what happened.

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What happened is the missing sentence.

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The sentence is missing.

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The result was the rejection of your attempt to overwhelm the prima facie case means that the decision maker decided that your response was not meritorious.

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I don't, that was a long question and there's a critical point where I disagree.

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There's no duty to overcome the prima facie case because the prima facie case is not establishment by proponents of the evidence.

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Now it's not directly on point.

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It is an IPR, but in the Ray Magnum world product.

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It's rules of engagement.

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If a person makes a prima facie argument and the person to whom the argument made

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defaults, doesn't respond.

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Yes.

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What happens then?

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Failure to carry the burden, the shifted burden of production.

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Now what happens in an instance where prima facie case is made and no response is given?

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Doesn't the prima facie case survive?

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That was because there was no attempt at the at the burden of production, which we concede may shift.

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So what's the difference between no attempt at the burden of production and a failed attempt?

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The difference is, well, if it is precedent, you must make an attempt at the production.

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But if the total evidence does not rise to a preponderance of the evidence, then the case has not been made.

[00:14:06] Speaker 00:
We're into your rebuttal, so why don't we hear from the government?

[00:14:19] Speaker 03:
May it please the court?

[00:14:21] Speaker 03:
On the first issue that Consul spoke about, the claim language requires that the second chip select signals are generated based at least in part upon the values of the first chip select signals.

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If you look at Takeda's Figure 2, it shows that the first chip select signals, S0 and S2, are input into the bank control unit

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and are part of the generation of the second control signals, second chip select signals.

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So I don't really understand how you could say that the first chip select signals don't have a part in the generation.

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While it's true that Takeda shows that S0 and S2 must be low for the second chip select signals to be generated,

[00:15:14] Speaker 03:
That still means that the second chip selected signals are based at least apart on the values of S0 and S2.

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They have to be low.

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Both signals have to be low for the generation of the second signals.

[00:15:26] Speaker 03:
So that's enough in the PTO's view to find that the based at least in part upon language in claim one is satisfied.

[00:15:38] Speaker 03:
And I really don't think that this is a claim construction case.

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surprised me to hear opposing counsel couch this whole case in terms of claim construction.

[00:15:46] Speaker 02:
If you look at the briefs... Was that a new twist on... I didn't recall that particular characterization of the issue in his brief.

[00:15:56] Speaker 03:
Yes.

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I mean, it shows up a little, I guess, in the reply brief on page seven, which he cited too.

[00:16:02] Speaker 03:
But this has not been a claim construction case before the board.

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It wasn't a claim construction case in his opening brief.

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So this is really just a case about what the prior art discloses and whether the board's decision is supported by substantial evidence.

[00:16:17] Speaker 03:
And I think that the board cited portions of the reference itself, the board cited to the expert testimony, and the board cited to these other technical documents, the JEDEC documents to support its decision.

[00:16:31] Speaker 03:
On the second point about the burden shifting, as Judge Clevenger spoke about, this is just

[00:16:39] Speaker 03:
the prima facie case, you know.

[00:16:41] Speaker 02:
Don't you think the board could be a little more articulate, a little more careful in the way it writes its opinions so as not to alarm the patentees the way they've done it in this case?

[00:16:53] Speaker 03:
I mean, I think the board could always, you could always find things.

[00:16:57] Speaker 02:
You've got some boilerplate language for starters.

[00:17:00] Speaker 02:
A little paragraph that said, you know, there's a prima facie case and we're not shifting burdens.

[00:17:05] Speaker 02:
There's a production comes back and

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When we decide that the burden of production wasn't sufficient, the response wasn't sufficient, that means that substantial evidence supports the yada yada.

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I mean, the board opinions are pretty skinny when it comes down to explaining how this all functions.

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I would agree that in an ideal world, the board could lay the prima facie case out in perfect clarity.

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That doesn't always happen, and I don't think that's necessary in this case.

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I think it was clear from reading the decisions that the board looked at the evidence offered by the requester.

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We have opinions of this court, presidential opinions, where we have taxed the board for shifting the burden.

[00:17:53] Speaker 03:
Correct.

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And I don't think the ultimate burden of persuasion was shifted here.

[00:18:00] Speaker 03:
The board looked at the evidence offered by the requester, found that the prima facie case was satisfied.

[00:18:05] Speaker 02:
I don't think you did either, but I just think we have a sort of an institutional relationship with the board, because this is the only place the board comes to get reviewed.

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And from time to time, we comment on how things, the system might be improved.

[00:18:23] Speaker 03:
I understand, Your Honor, and I'll be happy to go back to the board and make the request that the

[00:18:28] Speaker 00:
That's okay, but there is one misstep that you seem to recognize and try to gloss over or explain away in the brief, and that's with the use of the language equally plausible.

[00:18:39] Speaker 00:
Yeah.

[00:18:40] Speaker 00:
Because that clearly suggests in our nomenclature that the evidence is an equipoise, and if that were the case, this case shouldn't have gone the direction exactly it went.

[00:18:52] Speaker 00:
So you explain that, and I may or may not be satisfied with that explanation, but there's

[00:18:57] Speaker 00:
a little bit of a specific misstep there, right?

[00:19:00] Speaker 03:
Sure.

[00:19:00] Speaker 03:
I think that the use of equally plausible is just a misstatement here.

[00:19:05] Speaker 03:
This is specifically talking about the two experts describing the nomenclature of signals.

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So the question here is whether S0 and S2 are just two copies of the same signal.

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And both experts agree that when you have two copies of the same signal, you want to give them different names

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various reasons, but that's agreed upon.

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And so the patentee's expert says, well, OK, you give them different names like S0 and S2.

[00:19:36] Speaker 03:
And now the other expert, the requester's expert said, no, actually there's a kind of standard in the industry where you give them the same name with a different suffix.

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And so the 295 patent actually has an example of that, where there's a signal

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titled RCS0A and RCS0B.

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And those are two separate lines, but just copies of the same signal.

[00:20:03] Speaker 03:
And so the board is looking at those two things, and it finds that Dr. Sayre, the requester's expert on this point, finds his testimony is more persuasive.

[00:20:16] Speaker 03:
Now, it uses this language equally plausible, but it's not saying that it finds the evidence

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you know, an equipoise on this specific issue.

[00:20:26] Speaker 03:
If you read it, you know, the bottom of page, appendix page 85 to the top of appendix page 86, it's clear the board is buying Dr. Sayers' opinion over Mr. Slimmer's opinion.

[00:20:40] Speaker 03:
There's nothing further?

[00:20:42] Speaker 03:
Thank you.

[00:20:46] Speaker 04:
Thank you.

[00:20:46] Speaker 04:
Two points.

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First, on Takeda,

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You know, counsel said that the chip selects were present at the input.

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But the problem is that contradicts the language of Takeda.

[00:20:58] Speaker 04:
Takeda says, appendix 192, the third line.

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It says decodes A12, A13, performs bank selection.

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It bases the determining step on address signals only.

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That is the critical difference between the 295 patent claim one and Takeda.

[00:21:21] Speaker 04:
does not at any point disclose using the chip select signals to decode the second set of chip select signals.

[00:21:29] Speaker 04:
And intervener's argument requires ignoring the explicit language of DECADA.

[00:21:36] Speaker 04:
Now, Judge Proce raised the equipoise issue.

[00:21:43] Speaker 04:
Here, the critical issue is that the board patent office did not make a finding, an explicit finding,

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of establishment of unpatentability by clear, excuse me, preponderance of the evidence.

[00:21:57] Speaker 04:
When coupled with the instances, the equipoise, we discussed persuasive rebuttal, there's also patent owner has not demonstrated the decadence S0 and S2 are a single drive signal.

[00:22:11] Speaker 04:
The failure to find by preponderance of the evidence and state that coupled with burden shifting language is indicative that the

[00:22:21] Speaker 04:
did, in fact, shift the burden and does not require us to try to read the minds of the examiner and the ALJs.

[00:22:30] Speaker 04:
Thank you.

[00:22:31] Speaker 00:
Thank you.

[00:22:32] Speaker 00:
We thank both sides.

[00:22:33] Speaker 00:
Please submit if that concludes our proceedings.

[00:22:36] Speaker 02:
All rise.

[00:22:39] Speaker 02:
The Honorable Court is adjourned for 12 more morning.

[00:22:42] Speaker 02:
It's an o'clock AM.