[00:00:00] Speaker 03:
Cases number 19, 1256, Kingston Technology Company versus SPEX Technologies, Inc.

[00:00:08] Speaker 03:
Mr. Hoffman.

[00:00:12] Speaker 00:
Yes, Your Honor.

[00:00:19] Speaker 00:
May it please the Court, Your Honors.

[00:00:23] Speaker 00:
Looking first to claim 55, I think the first question in this appeal is whether a patent owner can admit

[00:00:30] Speaker 00:
that a claim limitation was taught by industry standard, and its specification rely on that standard, and yet argue that the disclosure of the same standard in the prior art is insufficient to meet the limitation, essentially is what is good for the goose on enablement, also good for the gander on invalidity.

[00:00:49] Speaker 00:
We think that it must be.

[00:00:50] Speaker 00:
We think that the board erred in requiring more detail from the petitioners than was set forth in the supporting specification.

[00:00:58] Speaker 00:
I think you can see this most clearly in some sense on page 24 of the red brief.

[00:01:03] Speaker 00:
On page 24, the patent owner concedes, and I'm quoting, one of ordinary skill in the art seeking to practice the invention of claim 55 with a PCMCA card would know, without undue experimentation, that specific features described in the PCMCA standard must, and they bolded and italicized that,

[00:01:22] Speaker 00:
be implemented in order to practice the claim receiving and providing steps.

[00:01:26] Speaker 00:
This is true even if those features are optional, i.e.

[00:01:30] Speaker 00:
not mandatory under the PCMCA standard.

[00:01:33] Speaker 00:
The feature we're talking about here was optional, right?

[00:01:36] Speaker 00:
I don't believe it was, Your Honor.

[00:01:38] Speaker 00:
Now the features are... Well, didn't the Board find that it was optional?

[00:01:42] Speaker 00:
I don't believe the Board found that the features cited were optional.

[00:01:45] Speaker 00:
The Board's holding on that one section that said May was one small part of

[00:01:51] Speaker 00:
the card insertion process that is part of the PCMSA standard.

[00:01:56] Speaker 00:
Yeah, but isn't it the relevant part of the process?

[00:02:00] Speaker 03:
I mean, receiving a request and providing the type response was an optional feature of the standard, no?

[00:02:11] Speaker 03:
I don't believe it was, Your Honor.

[00:02:12] Speaker 00:
Didn't the board find that that particular feature was optional?

[00:02:16] Speaker 00:
Your honor, I think the board identified some languages as may.

[00:02:20] Speaker 00:
But if you look at the board's language when they cite, what they cite is that is a small portion of the card insertion process.

[00:02:30] Speaker 00:
The card insertion process, which is the event, is not optional.

[00:02:33] Speaker 00:
Oh, sure.

[00:02:33] Speaker 03:
But it's not about a particular part of it here, and whether that particular part is optional or not.

[00:02:40] Speaker 00:
But that, to be clear, that particular part is not the only part that discloses the claim of limitations.

[00:02:46] Speaker 00:
That particular part is, if you look at what they say, this is on Appendix 29 from the board's decision.

[00:02:54] Speaker 00:
They quote this language, card services clients may need to process a PC card interface structure, CIS, to determine if and how they will interact with a card detected in a socket.

[00:03:07] Speaker 00:
And then it says open print.

[00:03:08] Speaker 00:
Some clients may receive all the information they require from the card insertion event.

[00:03:13] Speaker 00:
The card insertion event also has the same process of getting the information and receiving it.

[00:03:20] Speaker 00:
It's just for some clients, there may be a need for an additional step in filling out that information, getting it a little more.

[00:03:29] Speaker 00:
But that feature, first of all, is not optional.

[00:03:32] Speaker 00:
It is part of the standard such that if a client is inserted that doesn't get enough information.

[00:03:38] Speaker 03:
Where does Jones refer to the part of the standard?

[00:03:41] Speaker 03:
that you say is mandatory and that discloses this limitation.

[00:03:47] Speaker 00:
Jones does not have a specific site to this section of the specification, however... And it's a different specification, isn't it?

[00:03:55] Speaker 00:
I don't believe it was, Your Honor.

[00:03:56] Speaker 00:
The board got confused there, and this never came up during the hearing where we were able to clarify for them.

[00:04:01] Speaker 00:
If you look at the standard, it is composed of

[00:04:05] Speaker 00:
a variety of different documents that are up revved at slightly different times, but all published together.

[00:04:11] Speaker 00:
And that's like an offline site for you, your honor.

[00:04:14] Speaker 02:
Do you agree though, that they had different names?

[00:04:16] Speaker 02:
I mean, Jones references the PC card standard specification, whereas what's being relied on is that

[00:04:25] Speaker 02:
PCMCIA card services specification.

[00:04:29] Speaker 02:
They have different names, right?

[00:04:31] Speaker 00:
They have different names, Your Honor, but they're all part of the same standard.

[00:04:34] Speaker 02:
I understand it's part of the same standard, but that standard might have multiple specifications, or it appears that it does, right?

[00:04:41] Speaker 02:
So the standard that was expressly referenced by Jones is not the same one that's being relied on here, right?

[00:04:48] Speaker 00:
They're all published together, Your Honor.

[00:04:49] Speaker 00:
They're all part of the same PCMCIA standard.

[00:04:52] Speaker 00:
It's a collection of documents.

[00:04:54] Speaker 00:
They refer and they interpret.

[00:04:55] Speaker 02:
They refer to one of those multiple documents.

[00:04:59] Speaker 02:
And Jones refers to one of those multiple documents, right?

[00:05:03] Speaker 00:
It does, Your Honor, but they're published together.

[00:05:04] Speaker 02:
And then you're citing a different one of those documents, right?

[00:05:08] Speaker 00:
Your Honor, they're published together and they intersect.

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So while we're citing to one of them, we are, Your Honor, we are citing to a different.

[00:05:16] Speaker 00:
I'm having to use the word different because these are a package of specifications that all come together.

[00:05:22] Speaker 00:
And to want to skill in the art would

[00:05:23] Speaker 00:
would, are published together and refer to each other.

[00:05:27] Speaker 03:
So what part of Jones do you rely on is incorporating this mandatory part of the standard?

[00:05:37] Speaker 00:
If you look at appendix 314, it's Jones, Your Honor, and there is in that section, in paragraph starting at line 15, there is a reference directly to the

[00:05:51] Speaker 00:
President Biden intervention conforms the peace.

[00:05:54] Speaker 03:
Sorry, working.

[00:06:17] Speaker 03:
Okay.

[00:06:25] Speaker 02:
You're referring to the present embodiment conforms to the PC card standard specification release 2.01, right?

[00:06:35] Speaker 02:
Yes, your honor That line is different than the specification reference the card services specification release 2.0, right?

[00:06:47] Speaker 00:
It's the same as I had before your honor if you think you look at appendix

[00:06:50] Speaker 00:
1560, those documents are all to one of skill in the art or collective.

[00:06:55] Speaker 00:
But importantly, it's not simply that it references the PCMSA standard.

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It is that in the particular version, it is that this level of detail that's provided with regard to the PCMSA standard in Jones is the same level of detail that is provided in the specification of the 135 patent to support these limitations.

[00:07:16] Speaker 00:
So that if you look at, for example, lines 24 through 30, the functionality that we've all been talking about, the attribute memory, these features are part of the standard that we cited.

[00:07:27] Speaker 00:
The send and receive process that is operational through the hardware and software piece names interface is in that section.

[00:07:35] Speaker 00:
And as we identified and we explained in our opening brief, that is the, they track exactly.

[00:07:43] Speaker 00:
what the patent owner relies on to support these limitations and indeed relies on for enablement to support these limitations.

[00:07:52] Speaker 00:
So without, it's the exact same level of disclosure.

[00:07:55] Speaker 00:
If that disclosure is sufficient to support the claims, then it should be sufficient to, in the same disclosure in Jones, should be sufficient to support the prior art.

[00:08:06] Speaker 00:
And importantly, the board never says that's wrong.

[00:08:09] Speaker 00:
The board jumps directly in its opinion, and if you look

[00:08:14] Speaker 00:
Appendix 27, the board simply, after recounting what happened earlier, their final decision, Appendix 27, after recounting what happened in the institution decision and then recounting the party's positions, the board never says that they adopted their earlier reasoning or that they adopted either party's position.

[00:08:40] Speaker 00:
The board simply declares,

[00:08:44] Speaker 00:
that because Jones does not expressly disclose the receiving and providing steps of claim 55, they had to go to inherency.

[00:08:51] Speaker 00:
There's no explanation from the board why they had to go to inherency.

[00:08:55] Speaker 00:
And any of these issues that have with what?

[00:09:01] Speaker 02:
Sorry, Your Honor.

[00:09:04] Speaker 02:
It's anticipation, right?

[00:09:06] Speaker 00:
It is anticipation, Your Honor.

[00:09:07] Speaker 02:
So your view is that you can use enablement

[00:09:11] Speaker 02:
to infer that there's limitations here, but you don't have to rely on inherency to show that those limitations are necessarily prior.

[00:09:19] Speaker 00:
I think, and we cite, Your Honor, Inray Greaves, the basic concept of you can rely on what one of us still in the art would know.

[00:09:25] Speaker 00:
And we have a very unusual situation here in that there really is no doubt the two limitations that we are discussing are in the prior art.

[00:09:33] Speaker 00:
The section I read before from page 24 of their brief, these are things that were known to want to scale in the art and known to want to scale in the art in this exact PC card technology.

[00:09:43] Speaker 02:
I think one of the things the board's decision reflects is the idea that, you know, maybe it would have been obvious.

[00:09:48] Speaker 02:
Maybe one of ordinary scale in the art would have said this would be one of many ways in order to identify what the card is.

[00:09:55] Speaker 02:
But that's not the ground that was asserted.

[00:09:57] Speaker 02:
What was asserted was anticipation, which requires

[00:10:00] Speaker 02:
that every limitation be satisfied, right?

[00:10:03] Speaker 02:
Correct, Your Honor.

[00:10:04] Speaker 02:
And so, you know, I think that the board's decision is recognizing that those limitations have to be taught or be necessarily present under an inherency.

[00:10:15] Speaker 02:
Do you disagree with that?

[00:10:16] Speaker 00:
I disagree with that.

[00:10:17] Speaker 00:
Just my characterization of what the board is saying.

[00:10:18] Speaker 00:
I disagree with that, Your Honor, because I think they are taught.

[00:10:21] Speaker 00:
I think that when you have a reference to the PCMC standard, in this case, we have the fact that everyone admits, and the board doesn't dispute, that one of skill in the art would know that these elements were part of the PCMC standard.

[00:10:33] Speaker 00:
They were within a person's only skills knowledge in the PC card art.

[00:10:39] Speaker 00:
That's not a disputed fact.

[00:10:41] Speaker 00:
And having known that, that they're admitted to be in the prior art,

[00:10:46] Speaker 00:
the person who would have those elements.

[00:10:48] Speaker 00:
So you wouldn't, you wouldn't, there is anticipation because all of the elements that are part of the claim are there between this knowledge versus the art and what's disclosed.

[00:10:57] Speaker 00:
Put another way, I think that the board here, I mean, the patent owner here started with the prior art standard.

[00:11:04] Speaker 00:
And to that standard, they added additional security features.

[00:11:08] Speaker 00:
Those security features, the board found were all in the prior art.

[00:11:13] Speaker 00:
That's not contested here.

[00:11:14] Speaker 00:
So what we're left with is the point of novelty the board found is the prior art card that the patent owner started with.

[00:11:24] Speaker 00:
So everything that was supposedly added to that card to make it novel has been knocked out.

[00:11:30] Speaker 00:
And the only left is where they started, which wasn't novel.

[00:11:33] Speaker 00:
My time is going a little bit.

[00:11:37] Speaker 00:
We do think they used the wrong standard for inherency, though, Your Honor.

[00:11:40] Speaker 00:
Importantly, if you're going to analyze an inherency, the claim limitations

[00:11:45] Speaker 00:
I mean, the PCMCA standard is inherent in the reference.

[00:11:47] Speaker 00:
It requires it.

[00:11:49] Speaker 00:
It says the PCMCA standard is part of it.

[00:11:51] Speaker 00:
It's necessarily part of a PCMCA card.

[00:11:54] Speaker 00:
The board's argument, its rationale here, was one of just speculation.

[00:11:59] Speaker 00:
And in fact, the board even says that.

[00:12:01] Speaker 00:
We submitted all the relevant sections of the standard.

[00:12:04] Speaker 00:
The board says there may have been other pages we didn't submit.

[00:12:07] Speaker 00:
Specs had them all, every page.

[00:12:09] Speaker 00:
If there had been anything that was different, they have the standard as well as we do from the litigation.

[00:12:15] Speaker 00:
They're just speculating.

[00:12:16] Speaker 02:
Can I move you on to claim 57 and just ask you one question?

[00:12:20] Speaker 02:
Sure, Your Honor.

[00:12:20] Speaker 02:
What do you think the standard of review is for the bird's determination of the scope of a petition and then determination of whether an argument raised is a new argument not in the petition?

[00:12:34] Speaker 02:
What is our standard of review that applies?

[00:12:37] Speaker 00:
I think you can review that de novo, Your Honor, because it's simply the language of the petition.

[00:12:41] Speaker 00:
Which you, as well as the board, can do.

[00:12:44] Speaker 02:
But isn't it like we have multiple cases that say that when we are looking at the board's determination of whether something was waived or not, that we review that for an abuse of discretion?

[00:12:59] Speaker 00:
But this is not a situation where the board is applying any of its, I would say, specialized knowledge or there's a factual determination they made here.

[00:13:08] Speaker 00:
It is undeniable what the specification says.

[00:13:11] Speaker 00:
I mean, sorry, what the petition said.

[00:13:13] Speaker 00:
The board simply, and for whatever reason, doesn't address it.

[00:13:16] Speaker 02:
Let me just back up.

[00:13:17] Speaker 02:
Even if there's an abuse of, even when we review for an abuse of discretion, if there's a legal error, that can be an abuse of discretion.

[00:13:25] Speaker 02:
If there's a factual error, clearly erroneous fact finding, that can be reviewed for an abuse of discretion, right?

[00:13:32] Speaker 02:
I mean, that is an abuse of discretion.

[00:13:34] Speaker 02:
So I'm wondering,

[00:13:36] Speaker 02:
What's your authority for saying that we review the board's determinations of whether there's waiver or not de novo?

[00:13:44] Speaker 02:
Do you have any case law to support that?

[00:13:47] Speaker 00:
I don't have one.

[00:13:47] Speaker 00:
I don't have no your honor.

[00:13:48] Speaker 00:
I don't have I don't believe we cited any case off that particular proposition, but I think even under a abusive discretion standard if you look at what was cited in the in the in the petition what you see is is that we

[00:14:04] Speaker 00:
Cited, for example, this is on Appendix 1882, that what we cited was a data transfers and operations with memory card 100 in between the card and the host computer.

[00:14:18] Speaker 00:
So data transfers with a memory card.

[00:14:21] Speaker 02:
What the board said is that we... Did you say 1825 you're looking at?

[00:14:25] Speaker 00:
1822, Your Honor.

[00:14:27] Speaker 02:
But that's not even the right limitation, right?

[00:14:30] Speaker 00:
Well, there's two limitations at issue, so it could also, the next limitation is 1825 to 26, Your Honor.

[00:14:38] Speaker 00:
Right.

[00:14:39] Speaker 02:
You're relying on the fact that you referenced data storage 150 to mean that you were referring to storing.

[00:14:46] Speaker 00:
Yes, but also if you look at 1825, there's a section there where it says at the bottom of 1825, the defined interaction, open print, i.e.

[00:14:56] Speaker 00:
The transfer of data between the host computer and the data storage 150 is affected.

[00:15:01] Speaker 02:
Yeah, but if that's talking about transfer of data, communication, it's not talking about storing.

[00:15:08] Speaker 02:
The best you've got, I think, here is that it does refer to data storage 150.

[00:15:13] Speaker 02:
And so you would infer from that because it's

[00:15:16] Speaker 02:
storage that you meant storing as being the defined interaction.

[00:15:21] Speaker 00:
I don't think it's an inference, Your Honor.

[00:15:23] Speaker 00:
There's no requirement for an Ipsis-Verbus test.

[00:15:25] Speaker 00:
If you transfer data to storage, you are storing it.

[00:15:30] Speaker 00:
There's nothing else in transferring data to storage than storing the data.

[00:15:36] Speaker 02:
What about above, where you say it's on the prior page, 1824, where you say the defined interaction here, very clearly,

[00:15:44] Speaker 02:
is the exchange of data between the host computer and the target module memory.

[00:15:48] Speaker 02:
You're talking about the exchange of data, not the storing of data.

[00:15:52] Speaker 00:
Yes, but that's actually a reference to the patent in suit, not to the prior art.

[00:15:57] Speaker 00:
If you look at that paragraph, the 135 patent describes security operations performed on exchange data.

[00:16:03] Speaker 00:
And then there's a reference to the exhibit 1301.

[00:16:06] Speaker 03:
You're saying that the transfer of data is the same as storing the data.

[00:16:10] Speaker 00:
The transfer of data to memory, Your Honor, is the same as storing it, because if you transfer it to memory, you're putting it in the memory.

[00:16:16] Speaker 00:
I mean, looking back at it now, yeah, I wish I'd said storage, but that word wasn't the word that was being used at the time we submitted the petition.

[00:16:22] Speaker 00:
That was a word that came out during the case that the board started using.

[00:16:26] Speaker 00:
But the transfer of data to memory, that is the definition of what storage is, because it doesn't just hang out in a

[00:16:33] Speaker 00:
Spot outside of the memory.

[00:16:35] Speaker 02:
It's a question for you even if you were in the above Paragraph that on page 12 1824 even if you're referring to the 135 patent There when you say the divine interaction is the exchange of data What does it matter?

[00:16:53] Speaker 02:
I mean you're still saying that you think that?

[00:16:56] Speaker 02:
The claim is requiring the exchange of data You know between the host and the target

[00:17:03] Speaker 02:
to satisfy the claim limitation, right?

[00:17:06] Speaker 00:
I don't think we're there.

[00:17:07] Speaker 00:
We're just describing what the 135 patent describes.

[00:17:11] Speaker 00:
When we describe what the priority meets the claim limitation, that's later on, on 1825, where we talk about the transfer.

[00:17:17] Speaker 00:
Maybe we could have more artfully described what the 135 patent teaches.

[00:17:21] Speaker 02:
I mean, exchange of data is still- What's the difference between exchange and transfer, anyway?

[00:17:26] Speaker 00:
I'm sorry, Your Honor.

[00:17:26] Speaker 02:
What is the difference between exchange and transfer?

[00:17:31] Speaker 00:
Think I would the transfer would be one directional and exchange would be two transfers both ways I think transfer if it says transfer of data between Wasn't that two-way?

[00:17:43] Speaker 00:
I don't you have a I don't know your honor on some of these terms.

[00:17:48] Speaker 00:
I think that it's Whether it's two-way or not whether as long as data is being moving from the

[00:17:56] Speaker 00:
host to the memory, you are storing data, which is what the board found the definer action to be and what in the litigation the specs has argued meets that claim limitation.

[00:18:08] Speaker 00:
And I'm way over time here, so just really quickly, would you think there's a fundamental problem in the fact that- I think we're out of time.

[00:18:15] Speaker 03:
We'll give you two minutes for rebuttal.

[00:18:21] Speaker ?:
Davis.

[00:18:34] Speaker 01:
Please the court the board allowed Kingston to submit.

[00:18:38] Speaker 03:
Let's talk about point 57 and Why when they argued?

[00:18:44] Speaker 03:
that the defined Interaction was the transfer of data from the host to memory.

[00:18:51] Speaker 03:
Why isn't that?

[00:18:53] Speaker 01:
Talking about storing it in memory Well, I don't think I think as the board found the

[00:19:05] Speaker 01:
An issue with what Kingston did in its mapping of Claim 57 is mapping the same disclosure in Jones to two different separate distinct limitations, the communicating and the performing steps.

[00:19:19] Speaker 03:
Well, not really because the performing step requires a security operation, which is not the same thing as the communicating step.

[00:19:31] Speaker 01:
Well, it's performing the defined interaction on the exchange data.

[00:19:35] Speaker 01:
That's right.

[00:19:39] Speaker 03:
I mean, what I'm saying is the performing step is going to be different from the communication step, even if you both, if you consider that the transfer of data to storage satisfies the communicating step and the other part of the performing step.

[00:19:56] Speaker 01:
I agree with that, Your Honor, in that they are distinct steps.

[00:19:59] Speaker 01:
And that was actually the issue that the board had with Kingston's mapping to Claim 57, that they were mapping the same aspect of Jones to the both.

[00:20:09] Speaker 03:
It sounded to me as though what they were saying was that storing and the transfer of data to storage are two different things.

[00:20:20] Speaker 01:
I'm sorry, that transfer of data and storage are two different things?

[00:20:23] Speaker 03:
Correct, which seems to me to be pretty

[00:20:28] Speaker 03:
technical reading of what the argument is.

[00:20:32] Speaker 01:
That's not how I understand the institution decision.

[00:20:37] Speaker 02:
But how do you understand the petition?

[00:20:39] Speaker 02:
So what we're doing here is we're trying to figure out if the board erred in reading the petition the way it did.

[00:20:48] Speaker 02:
So looking at the petition, why is it that the language transfer of data between the host computer and the data storage isn't referring to storing?

[00:21:01] Speaker 01:
Well, I think because the only mention, as the board found, the only mention of the word storage in the discussion of the steps in the petition, it's a parenthetical statement that identifies those physical components.

[00:21:17] Speaker 03:
Maybe the use of the word is only in the parenthetical, but the description of what's happening is a description of storage, transferring data from the host to memory.

[00:21:28] Speaker 03:
That's storage, isn't it?

[00:21:31] Speaker 01:
We don't agree with that interpretation.

[00:21:33] Speaker 01:
Why not?

[00:21:35] Speaker 01:
That the transfer of data in theory, it could involve storage, but what the board found, and we of course need to give deference to their factual findings, the board found that Kingston was improperly mapping this element to, I'm sorry, this same disclosure to the transfer of data to both the communicating and performing steps.

[00:21:59] Speaker 03:
Right.

[00:21:59] Speaker 03:
They're saying,

[00:22:01] Speaker 03:
that the transfer of data from host to storage satisfies both of those limitations.

[00:22:08] Speaker 03:
But that's not the same as saying that the communicating and the performing steps are the same since the performing step has this additional feature to it of performing a security operation.

[00:22:22] Speaker 01:
They're saying that the, I'm sorry, could you say that again, Your Honor?

[00:22:26] Speaker 03:
So it may be that the transfer of data from host

[00:22:31] Speaker 03:
to memory satisfies both the communicating limitation and the defined interaction.

[00:22:39] Speaker 03:
But that doesn't mean that the two limitations are the same because the communicating step requires transfer of data, but the performing step also requires performing a security operation.

[00:22:54] Speaker 01:
Yes, the limitations are distinct and the performing step does have that additional requirement.

[00:23:01] Speaker 01:
I think what the board concluded is that Kingston's mapping did not satisfy, did not provide sufficient evidence that both were met.

[00:23:09] Speaker 02:
Can I ask a question?

[00:23:09] Speaker 02:
Has anyone disputed, either you or your adversary, challenged or unappealed the board's reasoning that the same disclosure cannot meet these two claim limitations?

[00:23:20] Speaker 01:
No, Your Honor, I don't believe so.

[00:23:22] Speaker 02:
I don't believe so either.

[00:23:24] Speaker 03:
I also, if I may, want to make sure I address... This sounds as though what the board is saying is that transferring data to storage is somehow different from storing.

[00:23:37] Speaker 03:
That seems like a kind of hyper-technical interpretation of this.

[00:23:43] Speaker 03:
Isn't it true that transferring data to storage means storing?

[00:23:50] Speaker 01:
In the context of

[00:23:52] Speaker 01:
of the 135 patent.

[00:23:55] Speaker 01:
I'm not sure, Your Honor, but I think what we need to be clear about is that the board made its factual finding and that it needs to be given death grants.

[00:24:07] Speaker 03:
We have the documents here, and we have some obligation to see whether their view that this was a new argument is hyper-technical.

[00:24:17] Speaker 03:
They've had a bit of a tendency to do that.

[00:24:19] Speaker 03:
I don't know whether you're familiar with our recent

[00:24:25] Speaker 03:
be tweaking of arguments, sometimes a little bit different language.

[00:24:29] Speaker 03:
And that the fact that there's a change in that respect between the petition and later articulations of the theory doesn't mean it's not the same theory.

[00:24:42] Speaker 03:
I mean, we constantly have the same

[00:24:47] Speaker 03:
set of problems in connection with reviewing district courts where people, you know, tweak their argument from the district court up here.

[00:24:55] Speaker 03:
And, you know, there's got to be some room for tweaking.

[00:24:58] Speaker 03:
And it seems as though here there hasn't been a basic change in the argument.

[00:25:04] Speaker 03:
They argued that

[00:25:05] Speaker 03:
this aspect of the performing step was satisfied by the transfer of data to storage, and now they're saying it's satisfied by storage.

[00:25:16] Speaker 03:
Those seem to be basically the same thing.

[00:25:19] Speaker 03:
And for the board to be saying, oh, no, they're so different that your barb from articulating it differently seems wrong, no?

[00:25:30] Speaker 01:
Well, Your Honor,

[00:25:31] Speaker 01:
We agree with the board that this was a new invalidity theory for the reasons.

[00:25:35] Speaker 03:
I said a new invalidity theory if the only difference is they've now characterized transfer of data to storage is stored.

[00:25:45] Speaker 01:
Well, I think, you know, we fleshed this out a bit in our patent owner's response to the supplemental brief.

[00:25:53] Speaker 01:
But, you know, I think the fact of the matter is

[00:25:59] Speaker 01:
The board made a call as to whether this was a new invalidity theory.

[00:26:03] Speaker 01:
And I disagree with that.

[00:26:04] Speaker 02:
OK, but we want to know why.

[00:26:05] Speaker 02:
You keep on referring to the board's finding as if we're not supposed to look behind it.

[00:26:11] Speaker 02:
We are supposed to look at whether it's reasonable, whether it's supported by substantial evidence, right?

[00:26:16] Speaker 02:
So why is there a view of the language, the transfer of data between the host computer and the data storage?

[00:26:26] Speaker 02:
They view that.

[00:26:28] Speaker 02:
is just being transferring information, not storing.

[00:26:32] Speaker 02:
Why is that reasonable?

[00:26:35] Speaker 02:
Why is it supported by substantial evidence?

[00:26:37] Speaker 02:
That's the question.

[00:26:38] Speaker 01:
Well, I think it's not necessarily the case that if data is transferred between a data storage and a host, that necessarily there is storage taking place.

[00:26:53] Speaker 01:
It could be reading, for example, if it were transferring out.

[00:26:57] Speaker 01:
as one example.

[00:27:01] Speaker 03:
But normally, that would be what you'd mean by transferring data to storage.

[00:27:07] Speaker 01:
It normally means you're storing it, right?

[00:27:09] Speaker 01:
If the direction we're talking about is from a host device to a data storage, if the direction is the other direction, then that wouldn't be the case, right?

[00:27:18] Speaker 02:
What about it says between?

[00:27:20] Speaker 02:
It says the transfer of data between the host computer and the data storage.

[00:27:27] Speaker 02:
You're saying that's one-way communication?

[00:27:31] Speaker 01:
No, not necessarily, Your Honor.

[00:27:32] Speaker 01:
I think it's unclear exactly which direction the transfer would take place.

[00:27:40] Speaker 03:
Let's assume that we read it as referring to transfer of data from the host to memory.

[00:27:47] Speaker 03:
Let's assume that that's what we understand it to be.

[00:27:49] Speaker 03:
Isn't that the same thing as storage?

[00:27:54] Speaker 01:
If a host transfers data to a memory and stores it, that is storage.

[00:28:00] Speaker 01:
I agree with you.

[00:28:00] Speaker 02:
Oh, you said and stores it.

[00:28:02] Speaker 02:
That wasn't the question.

[00:28:04] Speaker 02:
The question was whether transferring data to the memory includes storage, means storage.

[00:28:14] Speaker 01:
I'm not sure if the board had something else in mind that the data could be done.

[00:28:18] Speaker 01:
I'm not aware of.

[00:28:19] Speaker 01:
I can't articulate anything to you right now as to

[00:28:23] Speaker 01:
what the data storage would do besides store the data.

[00:28:29] Speaker 03:
The transfer of data to from the host to memory is normally the way you describe storage, right?

[00:28:39] Speaker 01:
Yes, I agree with that, Your Honor.

[00:28:42] Speaker 01:
And I also just wanted to clarify that I disagree with Mr. Hoffman that de novo review applies to this determination on claim 57.

[00:28:50] Speaker 01:
I think it's more appropriate to apply

[00:28:52] Speaker 01:
an abuse of discretion standard because the board was applying its procedures in holding the petitioner to its petition and the theories therein.

[00:29:02] Speaker 01:
I also want to address the argument about Jones anticipating because it mirrors the enabling disclosure of the 135 specification.

[00:29:15] Speaker 01:
This argument is based on an improper comparison, we believe,

[00:29:18] Speaker 01:
And it's factually wrong.

[00:29:19] Speaker 01:
Kingston is conflating the enablement standard with the anticipation standard.

[00:29:25] Speaker 01:
Those are different inquiries subject to different legal standards.

[00:29:28] Speaker 01:
And of course enablement was not at issue in the IPR and is not at issue here.

[00:29:34] Speaker 01:
Kingston says that specs admitted in its brief that a bare reference to the PCMCIA standard in the 135 patent was sufficient to enable the claim receiving and providing steps.

[00:29:46] Speaker 01:
We never said that.

[00:29:47] Speaker 01:
We disagree with that.

[00:29:50] Speaker 01:
As one example of the distinction between these disclosures, we pointed to Claim 55, the language there, because that's a very clear distinction.

[00:30:01] Speaker 01:
We pointed out that the specification and the mandatory language of Claim 55, which requires receiving and providing,

[00:30:08] Speaker 01:
make clear to a person of ordinary skill what features within PCMCIA would need to be implemented in order to practice those steps.

[00:30:19] Speaker 01:
And that's true even if those features are considered optional in the standard.

[00:30:26] Speaker 01:
Kingston also argued, I wanted to clarify that,

[00:30:29] Speaker 01:
the board did not adopt this, the board's rat, that the board did not adopt its prior rationale on automatically identifying in its final written decision, we disagree with that.

[00:30:43] Speaker 01:
Kingston, I'm sorry, in reality, the board actually repeated the exact same discussion that it had in the institution decision about automatically identifying.

[00:30:54] Speaker 01:
It never said it was persuaded by Kingston that the word automatically was unimportant

[00:30:59] Speaker 01:
And at appendix 27, the final written decision expressly linked Jones's disclosure of automatically identifying to the lack of evidence showing that Jones's memory card necessarily functions with the receiving and providing steps.

[00:31:15] Speaker 01:
And so that's all in one sentence, automatically identifying linked specifically to the receiving and providing steps in the final written decision.

[00:31:24] Speaker 01:
We don't agree at all that that was not carried into the final written decision.

[00:31:30] Speaker 01:
As to inherency, Your Honor, I won't belabor the point, but I agree that there's an issue of the linkage between what Jones expressly points to, which is a different document than the one that actually contains the commands that they use to map to the receiving and providing steps.

[00:31:55] Speaker 01:
But in addition to that,

[00:31:57] Speaker 01:
The fact of the matter is that the board found, made a factual determination that those commands were not necessarily required.

[00:32:09] Speaker 01:
Picking up from the quotation that Mr. Hoffman read, the one that included the word may in it a couple of times, the very next sentence, Your Honors, says that the complete quotation suggests

[00:32:22] Speaker 01:
that the described functions that follow, including later in the same paragraph, the use of the get tuple data command relied upon by petitioner are not necessarily required.

[00:32:32] Speaker 01:
That is a factual determination that Kingston has not shown that these commands are required and therefore there cannot be inherency.

[00:32:48] Speaker 01:
I also just want

[00:32:50] Speaker 01:
wanted to address very briefly the alleged admissions of Spex's litigation expert.

[00:32:59] Speaker 01:
There's a dispute in the briefs that you see, obviously, about whether the board considered those admissions.

[00:33:07] Speaker 01:
And I think the answer is clear, that the board very clearly considered those admissions.

[00:33:12] Speaker 01:
At appendix 14,

[00:33:13] Speaker 01:
The board explicitly said it considered Kingston's supplemental briefing and evidence that included those admissions.

[00:33:20] Speaker 01:
The final written decision cited every single one of the pieces of testimony that Kingston had identified that summarized in the red brief on page 34.

[00:33:31] Speaker 01:
And Dr. Ryan's testimony was repeatedly discussed during the oral hearing, including at appendix 1741, 1769-70, 1772, and 1787.

[00:33:44] Speaker 01:
The board did not ignore or dismiss those alleged admissions.

[00:33:47] Speaker 01:
They were fully considered.

[00:33:48] Speaker 01:
They just weren't found persuasive.

[00:33:50] Speaker 02:
There's no challenge to their admissibility here.

[00:33:53] Speaker 02:
All of that is admissible evidence and nobody argues otherwise.

[00:33:57] Speaker 01:
That's correct, Your Honor.

[00:33:59] Speaker 01:
Yes, that is entered into the record.

[00:34:01] Speaker 01:
I think we're out of time.

[00:34:02] Speaker 03:
Thank you, Mr. Hayden.

[00:34:03] Speaker 01:
Thank you.

[00:34:09] Speaker 00:
Mr. Hoppin, you have two minutes.

[00:34:12] Speaker 00:
I'll be quick, Your Honors, and I'd like to start where my colleague ended.

[00:34:18] Speaker 00:
As we set forth in the brief, we do think there's an APA violation with regard to Dr. Ryan's admissions.

[00:34:24] Speaker 00:
They were not addressed in any substantive way.

[00:34:28] Speaker 00:
And I'm looking to UltraTech to sign in the brief.

[00:34:32] Speaker 00:
The board is required to provide a satisfactory explanation for its actions.

[00:34:36] Speaker 00:
The deposition happened after the filing of the petition in the course of the litigation.

[00:34:41] Speaker 00:
It directly applies to all the questions that you were asking, Your Honor, about what one of skill in the art, what does the prior, what we know about PCMCA and about the standard.

[00:34:50] Speaker 00:
And yet the board does list it in the evidence.

[00:34:54] Speaker 00:
But despite it being four pages of a 10-page supplemental brief we were given and allowing us to submit all this evidence into the record,

[00:35:02] Speaker 00:
and argued at the hearing, the board is completely silent in the decision about why the experts' testimony about the fact that those two limitations, 55A and B, which he says were known in the art, they never address why that is not in any way persuasive to the questions here.

[00:35:22] Speaker 00:
They essentially just ignore it.

[00:35:25] Speaker 00:
And we believe that's an APA violation.

[00:35:28] Speaker 00:
Specs asserts a minor item.

[00:35:31] Speaker 00:
It's not a single line throwaway.

[00:35:33] Speaker 00:
It was a major point of briefing and a major point of argument that is just simply not addressed by any substance.

[00:35:41] Speaker 00:
And then lastly, with regard to 57, what we're reading from the petition is by definition not a new ground, not a new argument, not a new theory.

[00:35:52] Speaker 00:
Discretion is not a whim.

[00:35:55] Speaker 00:
There has to be some rational basis.

[00:35:58] Speaker 00:
for it and we believe that the Board doesn't provide one and specs didn't provide one in its briefing or its argument.

[00:36:05] Speaker 00:
Okay.

[00:36:05] Speaker 00:
Thank you, Your Honor.

[00:36:06] Speaker 00:
Thank you.

[00:36:07] Speaker 00:
Thank you, Mr. Allen.

[00:36:10] Speaker 03:
The case is submitted.

[00:36:11] Speaker 03:
Thank both counsel.