[00:00:00] Speaker 02: Okay. [00:00:01] Speaker 02: The next argued case is number 191890, Hamamatsu Photonics KK against semi-caps proprietary. [00:00:10] Speaker 02: Mr. Newton. [00:00:13] Speaker 05: Thank you. [00:00:13] Speaker 05: May it please the court. [00:00:15] Speaker 05: My name is Jared Newton. [00:00:16] Speaker 05: I am counsel for the appellant, Hamamatsu Photonics. [00:00:19] Speaker 05: Before I begin my argument today, I want to point out that yesterday afternoon, counsel for the appellee semi-caps notified me of an error in the joint appendix. [00:00:28] Speaker 05: It was a clerical mistake for two documents that were included in appendix ranges 215 through 220 and 433 through 438. [00:00:38] Speaker 05: We filed a notice of correction in a corrected appendix last night to fix the error. [00:00:43] Speaker 05: And I want to apologize that we did not catch that error and fix it earlier. [00:00:47] Speaker 02: Okay. [00:00:48] Speaker 02: Thank you. [00:00:50] Speaker 05: I'll proceed to my argument, and there are three independent reasons to reverse or vacate the board's decisions in the IFPR proceedings below. [00:00:57] Speaker 05: The first is that there is no substantial evidence to support the board's decision that the Hamada prior art reference failed to disclose a plurality of samples of a response signal. [00:01:09] Speaker 05: There's a brief background system that's issued in this appeal, or in the field of laser-induced testing, and the system's work, the principle of operation is that [00:01:18] Speaker 05: A laser beam is irradiated on a circuit and that causes a change in resistance and therefore impacts the current or the voltage running through the circuit. [00:01:26] Speaker 05: Those changes are identified and used to detect the location of a fault. [00:01:31] Speaker 05: The 982 pattern and its prosecution history inform us that the prior ARC systems were explained or characterized prior ARC systems as using only a single sample of the measured current per voltage. [00:01:44] Speaker 05: whereas the claimed invention of the 982 patent purports to use a plurality of samples. [00:01:49] Speaker 05: That's the key distinction that the patent and the prosecution history make over the prior art. [00:01:55] Speaker 05: The model reference submitted to the PTAB below discloses this same feature in the embodiment of Figure 2. [00:02:02] Speaker 05: What the embodiment of Figure 2 shows is that current samples are taken in synchronization with the high level interval of the test signal. [00:02:10] Speaker 05: Figure 2 illustrates that test signal and it uses [00:02:13] Speaker 05: the high H and low L designations to specifically identify the test signal, which is shown in Figure 2A. [00:02:21] Speaker 05: Paragraph 24, which is an appendix, page 206 of the Hamada reference, it tells us that the H and L designations are used to synchronize the current measurements so the current is measured for a given test site when the signal is high and not measured when the test signal is low. [00:02:38] Speaker 04: So I have just one question here. [00:02:43] Speaker 04: I understand figure two of AMADA shows the high and the low. [00:02:50] Speaker 04: But what exactly, when we say the high level, is it the high level of what? [00:02:56] Speaker 04: The level of the signal that's being broadcast? [00:02:59] Speaker 05: Yes, and the signal that we see... High level, exactly. [00:03:04] Speaker 05: The high level refers to the high portion of the LSI testing on figure 2A. [00:03:10] Speaker 05: I'm referring to appendix page 212, figure 2. [00:03:13] Speaker 05: And what we see for the test signal is a square wave. [00:03:17] Speaker 05: And it goes from high to low. [00:03:19] Speaker 05: The high level is the block where it's higher up above. [00:03:24] Speaker 04: OK. [00:03:25] Speaker 04: In other words, it has a higher frequency. [00:03:27] Speaker 04: Is that the idea? [00:03:31] Speaker 05: No. [00:03:31] Speaker 05: Because it's a square wave, it likely refers to a on or off. [00:03:35] Speaker 05: So the test signal is being applied to the circuit when it's high. [00:03:39] Speaker 05: And then it's off or zero when it's low. [00:03:42] Speaker 04: OK, thank you. [00:03:43] Speaker 04: That's helpful. [00:03:45] Speaker 01: Counsel, this is Judge Laurie. [00:03:47] Speaker 05: Yes, Your Honor. [00:03:48] Speaker 01: You've got a pretty substantial burden on what the disclosure of Hamada is. [00:03:55] Speaker 01: That's a substantial evidence burden. [00:03:57] Speaker 01: It seems to me the question of quah as a printed publication is a stronger point for you. [00:04:09] Speaker 01: But the board found that there was sort of a gap in the evidence. [00:04:14] Speaker 01: And your client failed to produce a CD-ROM that contained QUA. [00:04:21] Speaker 01: Why don't you talk about that? [00:04:24] Speaker 05: Sure. [00:04:24] Speaker 05: I'm happy to do that. [00:04:26] Speaker 05: And the issue with QUA, we disagree that there is a gap in the evidence. [00:04:30] Speaker 05: What the case call tells us about this question of whether a reference qualifies as a printed publication, whether it was publicly accessible, is that we look at the facts and circumstances in each case separately. [00:04:41] Speaker 05: In this case, we have three declarations from three different witnesses all talking about the same paper, the CLAW paper. [00:04:48] Speaker 05: We have Mr. Tan's declaration who said, [00:04:51] Speaker 05: attached the paper to his declaration and said, I received this paper. [00:04:54] Speaker 05: It's a true and correct copy of what I received on a CD-ROM that was passed out at this industry conference, which is the ITFA 2006 conference. [00:05:03] Speaker 02: But didn't the board find that there was no indication as to the date on the copy of the paper that was submitted? [00:05:14] Speaker 05: What the board said was that Mr. Tam did not [00:05:19] Speaker 05: draw a sufficient tie between the paper and the CD-ROM. [00:05:23] Speaker 02: Indeed, exactly so. [00:05:25] Speaker 02: And I believe that gap... I didn't see where that gap was plugged, was it? [00:05:31] Speaker 05: Yes, it was plugged in Mr. Tan's testimony where he said, the paper that I'm attaching to my swarm declaration as an exhibit, this is a true and correct copy of the paper that was disseminated at the conference. [00:05:44] Speaker 02: But he didn't say what the copy was made. [00:05:47] Speaker 02: whether that was the IEEE publication copy or whether it was a copy of something that was handed out at the conference. [00:05:55] Speaker 02: Wasn't that a distinction that was drawn? [00:05:58] Speaker 05: The board made that observation, but there's not a case from this court that says the actual paper, it's the physical copy that was handed out at the conference. [00:06:12] Speaker 02: But it's a question of date? [00:06:14] Speaker 02: It's a question of proving that it was handed out and the date of the paper, not a copy of something that was available online a few months later. [00:06:31] Speaker 02: The impact of the problem, a failure of proof. [00:06:36] Speaker 05: No, I don't see that as a failure proof at all, Your Honor. [00:06:39] Speaker 05: And if we look at the totality of the evidence that's submitted here, we have three witnesses talking about the exact same paper. [00:06:46] Speaker 05: Mr. Tan said, I received it on a CD-ROM. [00:06:49] Speaker 05: Here is a true and correct copy of what I received. [00:06:51] Speaker 05: But no CD-ROM was... That's not cross-examined. [00:06:54] Speaker 02: But didn't the board also point out that no CD-ROM was produced in evidence? [00:07:01] Speaker 05: That's correct. [00:07:02] Speaker 05: The board found that the CD-ROM was not produced, but we're talking about the paper itself, which is the prior art reference. [00:07:07] Speaker 05: And we have Mr. Tan's testimony saying, this is the paper that was on the CD-ROM I received. [00:07:12] Speaker 02: He says there's a copy of the paper, but he didn't say when the copy was produced. [00:07:21] Speaker 02: And isn't that the question? [00:07:23] Speaker 02: There's a few months gap. [00:07:26] Speaker 05: I don't think it's a question based on the fact of the case or under this court's precedent. [00:07:31] Speaker 05: I'll refer to the Microsoft versus Parallel Networks, I'm sorry, I'll refer to the Suffolk Technologies versus AOL case, which is 752 F-1358. [00:07:46] Speaker 05: And there, what we had was a reproduction of a user, online user group post. [00:07:54] Speaker 05: And the evidence was disputed by the other side because they said that the post was a secondhand, quote, secondhand reproduction of an internet news group. [00:08:05] Speaker 05: But the court said that didn't defeat the printed publication of the public accessibility requirement because there was witness testimony saying, this is a copy of the post that I created and that was on the website. [00:08:21] Speaker 05: And that's what we have in this case. [00:08:22] Speaker 05: We have Mr. Tan saying, this is a copy of the paper I received. [00:08:26] Speaker 05: And it's corroborated by testimony not only from Mr. Grenier, the IEEE representative, who said, yes, this paper was made available no later than the last day of the conference, and from Dr. Kwa himself, who is the lead author of the paper, and who said, same thing, same paper. [00:08:47] Speaker 05: I presented this paper at the conference, [00:08:50] Speaker 05: And this paper was published as part of the conference proceedings. [00:08:54] Speaker 05: And what the board did was it looked at these three declarations in isolation. [00:08:59] Speaker 05: And frankly, the board did not factor in Mr. Kwa's declaration. [00:09:04] Speaker 05: But it looked at Mr. Tan and Mr. Grainier in isolation and said, oh, well, here's a problem we have with Mr. Tan. [00:09:11] Speaker 05: He did not provide us with the CD-ROM itself. [00:09:14] Speaker 05: But it didn't then look at Mr. Tan's undisputed testimony in the context of what Mr. Pfau said and what Mr. Grainier said, which is the exact same paper. [00:09:24] Speaker 05: Again, all three witnesses talking about the exact same paper. [00:09:27] Speaker 05: This is what was presented and made available to participants at the conference. [00:09:33] Speaker 05: And I want to reiterate, Judge Schall here. [00:09:36] Speaker 04: Getting back to the discussion you were having with Judge Newman and Judge Lurie on this point, this [00:09:44] Speaker 04: Qua issue really strikes me as a situation where a careful, good faith, trier of fact could look at this and come out either way. [00:09:55] Speaker 04: I think an argument could be made for what you're saying that when you put everything together, the reasonable conclusion is that the reference was at the conference and that it was there. [00:10:14] Speaker 04: On the other hand, one could also say, well, you know, there is this gap there. [00:10:21] Speaker 04: And can we really step in as an appellate court and say the board was wrong to take one view, namely the gap, as opposed to the other view, a reasonable inference on the other hand? [00:10:39] Speaker 05: Yes. [00:10:41] Speaker 05: We believe and respectfully request that the court does step in. [00:10:44] Speaker 05: And the key reason why is that this testimony from Mr. Tan, Mr. Grenier, and Dr. Quah, it's undisputed. [00:10:53] Speaker 05: These witnesses were not cross-examined or deposed. [00:10:57] Speaker 05: Their credibility was not called into question. [00:10:59] Speaker 05: And CIMICAPS did not put forward any evidence that would suggest what all three witnesses are saying about this same paper, that it was presented and made available at the conference. [00:11:09] Speaker 05: CIMICAPS did not introduce evidence [00:11:11] Speaker 05: to show that they were wrong or suggest that they were wrong in any way. [00:11:16] Speaker 05: And so I respectfully disagree that looking at the totality of that evidence, a reasonable trial or effect could determine that the paper was not handed out at this conference proceeding and included among the conference proceedings that were put on the CD-ROM and given to conference participants at the time. [00:11:39] Speaker 05: And with that, I'll reserve the rest of my time for rebuttal unless there's any other questions. [00:11:43] Speaker 02: OK. [00:11:44] Speaker 02: Any more questions at the moment for Mr. Newton? [00:11:47] Speaker 01: No. [00:11:48] Speaker 02: OK. [00:11:48] Speaker 02: No. [00:11:49] Speaker 02: We'll hear from Ms. [00:11:50] Speaker 02: Chen. [00:11:53] Speaker 00: May it please the court? [00:11:54] Speaker 00: Thank you, Your Honors. [00:11:56] Speaker 00: I think we hit the, I think it was Judge Shaw that hit the point on the head, which is when we're asking whether there is substantial evidence [00:12:08] Speaker 00: We have to look at that through the lens of what the burden of proof was in the IPR proceedings. [00:12:16] Speaker 00: And here it was Hamamatsu that bore the burden of proof on invalidity. [00:12:20] Speaker 00: It bore the burden of coming forth with evidence to prove that the Hamada, that the quad reference that they are relying on was in fact published before the critical date. [00:12:34] Speaker 00: So if I can turn the court's attention to, [00:12:37] Speaker 00: Appendix 215. [00:12:41] Speaker 00: This is the QAW paper that Hamamatsu is relying on. [00:12:47] Speaker 00: And this is why we have had Hamamatsu correct the appendix, because if you notice in the bottom of Appendix 215, there is no publication footer on it. [00:12:58] Speaker 00: The original and proper document that should be in here should have an IEEE publication footer on it. [00:13:05] Speaker 00: And so what we talk about in the evidence that Mr. Newton keeps saying, he keeps saying that all the declarations from Mr. Tan, Mr. Grenier, and Mr. Quah all say that this document, the one that should have the IEEE letter was the exact one that was available at a conference in July 2006. [00:13:29] Speaker 00: But what we actually look at when we look at the evidence is [00:13:32] Speaker 00: There is no testimony and there is no evidence that, and that's what the board found, that there was this evidentiary gap that this document that's Appendix 215, when corrected, that will have the IEEE filter on it. [00:13:46] Speaker 00: There is no evidence, no witness testifying that that exact document, the one that's being relied on for validity in this case, was available and was distributed prior to the critical date. [00:14:00] Speaker 02: The other side of the argument is that I think that there was no dispute on either side that this paper was presented at the conference. [00:14:13] Speaker 02: So the question is, when did it become a printed publication under the law? [00:14:20] Speaker 00: I think what is not disputed is that Quatt is a paper at the conference. [00:14:28] Speaker 00: What we need to have proof of and what the board was looking for proof of is that this particular publication that Hamamatsu is relying on as the prior art reference, that that was somehow made publicly available or published either at the conference or sometime before the November 5th critical date. [00:14:50] Speaker 00: The only evidence we have [00:14:52] Speaker 00: publication of the document that Homomatsu is relying on is the Grineer Declaration where if you look at Appendix 421, this is Mr. Grineer attaching a copy of this QAW paper to his declaration and this one has the proper IEEE footer on it. [00:15:19] Speaker 00: And in the rest of his declaration, he says, this was published by IEEE. [00:15:24] Speaker 00: And if you look at the abstract, the publication date is November 30, 2006. [00:15:28] Speaker 00: So the only publication date for the paper that Hamamatsu is relying on is on November 30, 2006 date. [00:15:39] Speaker 00: Mr. Newton keeps saying that the TAN declaration, that Mr. TAN in his declaration says, [00:15:44] Speaker 00: the document I attached here is a true and correct copy of what I received at the conference. [00:15:49] Speaker 00: And that is not what he said. [00:15:51] Speaker 00: And that is the problem that the board found. [00:15:55] Speaker 00: Again, if you look at the TAN declaration at Appendix 428, Paragraph 8, he says, attached to Exhibit B is a true and correct copy of, and he says, title of a document. [00:16:09] Speaker 00: And so if you look at what he actually attaches, [00:16:13] Speaker 00: on Appendix 433. [00:16:15] Speaker 00: And again, this will have to be the corrected document that has the footer. [00:16:19] Speaker 00: It is the document, again, with the IEEE publication footer. [00:16:24] Speaker 00: So again, the one true and correct copy that Mr. Tan attaches to his declaration is a true and correct copy of a document that has evidence of a publication date of November 30th. [00:16:37] Speaker 00: He does go on to say there was, you know, I received the CD-ROM [00:16:43] Speaker 00: And at a conference with a quad paper, but he never makes that connection. [00:16:47] Speaker 00: That's where [00:16:49] Speaker 00: the evidentiary agape. [00:16:51] Speaker 00: He never said that the true and correct copy of Exhibit B is exactly what I printed from the CD-ROM or I checked in is exactly what was on the CD-ROM that I received in July of 2006. [00:17:04] Speaker 00: And in fact, he couldn't say that because if you look at, if we looked at the proper, the corrected appendix 433, you'll see that it has the IEEE publication date again, which is November 30th, 2006, which is late. [00:17:18] Speaker 00: So everything that we have has a statement about what we know to be true, which is the IEEE paper that Hamamatsu is relying on with publishers. [00:17:30] Speaker 04: Can I ask you a question, please? [00:17:31] Speaker 04: Judge Shaw here? [00:17:35] Speaker 04: Please. [00:17:35] Speaker 04: This, I think, seems to me to be a close question. [00:17:38] Speaker 04: And I'm going to sort of turn it around a little bit. [00:17:41] Speaker 04: If the board had come out the other way and had said, [00:17:48] Speaker 04: We recognize that there is this gap here, which you've just focused on understandably. [00:17:55] Speaker 04: Yet we feel that in the totality of the circumstances and looking at all the evidence, we can conclude as an inference that in fact the article was on the CD-ROM that was distributed in July of 2006. [00:18:14] Speaker 04: Would that be a conclusion that would be lacking in substantial evidence? [00:18:22] Speaker 00: It would, again, depend on the totality of the circumstances, but I will point out that there is a slight difference when you switch the situation because when we talk about substantial evidence on the appellate court level, [00:18:35] Speaker 00: and you're reviewing the board's decision at the appellate court on substantial evidence, you're asking whether a reasonable fact finder could have arrived at the board's decision. [00:18:46] Speaker 00: But you're also asking, could they have arrived at that decision through the underlying burden of proof? [00:18:53] Speaker 00: And the underlying burden of proof rests with Hamamatsu. [00:18:57] Speaker 00: So all things being equal, Hamamatsu has to tip the scale one direction. [00:19:04] Speaker 00: So even, I think, if the board found it was equal evidence but they decided to go with Hamamatsu, perhaps in this situation there wouldn't be substantial evidence because Hamamatsu bore the burden of proof. [00:19:17] Speaker 00: In our situation here, FEMECAPS did not have the burden of proof. [00:19:22] Speaker 00: It could submit no evidence and say that it is absolutely Hamamatsu's burden to come forth with evidence. [00:19:28] Speaker 00: And if it doesn't, and it doesn't meet the weight of a preponderance of evidence, [00:19:32] Speaker 00: then it failed as an evidentiary matter. [00:19:35] Speaker 00: And I think that's exactly what happened here. [00:19:38] Speaker 00: And since we do have a harsh situation, I think with the burden of proof and with the substantial evidence standard being that a reasonable fact finder could have arrived, we're asking whether looking at all the evidence in the record, a reasonable mind could, as the board concluded, say there was not enough evidence to show that [00:19:58] Speaker 00: this exact copy of the QAW paper that's being relied upon with the IEEE letter was available, publicly available before the critical date. [00:20:11] Speaker 04: Thank you. [00:20:14] Speaker 00: And unless the panel has any questions specific to the Hamada reference or anything else regarding QAW, I have nothing further. [00:20:27] Speaker 02: Okay. [00:20:28] Speaker 02: Any more questions from the panel? [00:20:30] Speaker 02: Judge Schall? [00:20:31] Speaker 02: No. [00:20:32] Speaker 02: Judge Lurie? [00:20:33] Speaker 01: No. [00:20:33] Speaker 02: Okay. [00:20:34] Speaker 02: Thank you, Ms. [00:20:34] Speaker 02: Chang. [00:20:36] Speaker 02: Okay. [00:20:36] Speaker 02: We'll hear from Mr. Newton on rebuttal. [00:20:40] Speaker 05: Thank you, Judge Newman. [00:20:42] Speaker 05: So first, I want to talk about the burden of proof and standard of review. [00:20:46] Speaker 05: The ultimate decision of whether a prior publication like HWA qualifies under 102B as a printed publication is a legal question that gets de novo review on appeal. [00:20:57] Speaker 05: And the burden of proof, as counsel mentioned, was in the proceeding below, was a preponderance of the evidence. [00:21:04] Speaker 05: And when you think about that and you look at that standard in the context of the evidence that was presented below, there's no question in my mind that the preponderance of evidence standard was satisfied because what we have, again, are three declarations from three witnesses talking about the same paper giving consistent testimony and no evidence going the other way. [00:21:26] Speaker 05: So it's not even a 51% versus 49% question. [00:21:31] Speaker 05: It's all of the evidence is going to show that this paper was presented at the conference. [00:21:37] Speaker 05: And there's nothing in the record to show that it wasn't. [00:21:40] Speaker 05: And counsel said... Well, there's a copy in the record. [00:21:44] Speaker 02: If that's the IEEE copy, doesn't that go the other way? [00:21:50] Speaker 05: I don't think it does because one critical thing that counsel said during her argument is that it's not, she was asked, is it disputed that this paper, whether it's a copy pulled off the IEEE database, is there a dispute that this paper was presented at the conference? [00:22:05] Speaker 05: And she did not dispute that. [00:22:06] Speaker 05: And that's not an issue that was disputed below. [00:22:09] Speaker 02: Well, we know, we're accepting that it was orally presented. [00:22:14] Speaker 02: But there was, that the witnesses who said they heard the paper and they even said that they have a CD-ROM. [00:22:23] Speaker 02: Whether a CD-ROM copy is a printed publication is a different question. [00:22:29] Speaker 02: But the board said, all right, where is it? [00:22:33] Speaker 02: Where's your evidence? [00:22:34] Speaker 02: Nobody had the CD wrong. [00:22:37] Speaker 05: But the undisputed evidence closes that gap. [00:22:40] Speaker 05: And what the evidence says is that this same paper, we can look at Mr. Kwa's declaration. [00:22:45] Speaker 05: This is Appendix 604, and Mr. Kwa said, this same paper that I presented was part of the conference proceedings. [00:22:52] Speaker 05: We read that in context with Mr. Gramier's declaration, who said, same paper, part of the conference proceedings, made available on the last day of the conference. [00:23:01] Speaker 05: And then we also read Mr. Kwa's testimony in connection with Mr. Tan's testimony. [00:23:06] Speaker 05: And Mr. Tan said, again, undisputed, the CD-ROM that I received included copies of the papers presented at the conference, which counsel admits includes this paper, the Kwa paper, including Kwa. [00:23:20] Speaker 05: And so I dispute with respect, I dispute what counsel said that Mr. Tan doesn't draw this link between the paper he received and the paper [00:23:30] Speaker 05: that was on the CD-ROM, he says expressly that. [00:23:33] Speaker 05: He says, here's the paper attached as Exhibit D. This is Qua. [00:23:38] Speaker 05: The CD-ROM that I received had all of the papers presented at the conference, including Qua. [00:23:43] Speaker 02: But you're asking us to hold that this is a printed publication and there's no copy of the printed, there's no printed publication in evidence. [00:23:55] Speaker 02: I respectfully disagree, Your Honor. [00:23:58] Speaker 05: I respectfully disagree. [00:23:59] Speaker 05: The copy that he received, he said this is what was on the CD-ROM. [00:24:03] Speaker 05: And there may be some confusion about whether it has a publication date listed on it. [00:24:08] Speaker 05: It doesn't have the November 30 publication date that it was added to the, and I'm referring to the corrected version that we submitted last night. [00:24:16] Speaker 05: It doesn't have this November 30 date. [00:24:18] Speaker 05: I believe that was an error and counsel misspoke. [00:24:21] Speaker 05: It says copyright 2006. [00:24:24] Speaker 05: The conference was in 2006, and it was also published to the website on 2006. [00:24:29] Speaker 05: But when Mr. Tan attached that copy, the correct copy, to his declaration, he said, this is what was on the CD-ROM. [00:24:37] Speaker 05: There's no evidence in the record that CineCaps could point to, or that the board could point to, to contradict or undermine that undisputed testimony. [00:24:47] Speaker 05: And so when we're asking, is the... With that, Your Honor, I'll respectfully stop. [00:24:52] Speaker 02: Well, I think you can finish your thought if you need to. [00:24:57] Speaker 05: Yes, I just want to tie it back to the preponderance of the evidence. [00:25:00] Speaker 05: When we look at Mr. Tan's statement referring to that exact paper, the one with the footer saying, this was on the CD-ROM, and we look at that in connection with Mr. Grignard and Mr. Claus talking about the same paper, the preponderance of the evidence clearly establishes that this paper was publicly accessible. [00:25:18] Speaker 02: Anything else you need to tell us in rebuttal? [00:25:21] Speaker 05: No, Your Honor, I appreciate your time. [00:25:24] Speaker 02: Okay, any more questions from the panel? [00:25:27] Speaker 02: No. [00:25:29] Speaker 02: Okay, all right. [00:25:31] Speaker 02: Thanks to Council, the case is submitted.