[00:00:06] Speaker 04:
I can still say good morning and please the court.

[00:00:22] Speaker 04:
I'd like to focus my time on the claim construction issue, this case.

[00:00:27] Speaker 01:
Let me just say at the outset, I found the briefs very hard to follow on the technology and I'm sure we're going to have some questions about that, so I hope you both can do a better job explaining it to us orally than... Okay.

[00:00:42] Speaker 01:
Well, let me start there.

[00:00:44] Speaker 01:
I apologize for that.

[00:00:46] Speaker 01:
The speech for myself, it seems to me there are two separate issues here.

[00:00:49] Speaker 01:
One is whether the patentee argued an inconsistent position from the claim construction that was offered in the re-exam.

[00:01:00] Speaker 01:
And that has to do with whether you could set aside under Rule 60B the judgment for past infringement.

[00:01:07] Speaker 01:
But I think there's a separate question

[00:01:09] Speaker 01:
as to whether there is infringement based on the claim construction from the re-exam for the running royalty and future relief, which is a 60b5 question.

[00:01:23] Speaker 01:
So I think one requires a showing of inconsistency in the argument and the infringement case.

[00:01:30] Speaker 01:
The other simply says that if you take this new claim construction from the re-exam, there's no infringement.

[00:01:37] Speaker 01:
which isn't sufficient to set aside the past judgment, but might be sufficient with respect to the law itself.

[00:01:47] Speaker 01:
So go ahead and help us understand what the plane construction was that was offered by the Pat T. and the Reef Plan.

[00:01:56] Speaker 04:
Yes, okay.

[00:01:58] Speaker 04:
There's two major components to that lead-in, and you're right on both.

[00:02:03] Speaker 04:
So 60B3, the fraud

[00:02:06] Speaker 04:
portion of Rule 60 requires that there have been this inconsistency.

[00:02:12] Speaker 04:
And the district court in its... I don't think inconsistency is fraud, but put that aside.

[00:02:17] Speaker 04:
Okay, but the district court focused on that really to the exclusion of any of the other bases for Rule 60.

[00:02:25] Speaker 04:
And so when you look at the district court's order, never actually got into whether a new claim construction was required based on the re-examination or not.

[00:02:35] Speaker 04:
And that is one of the fundamental errors the district court, with all due respect, made.

[00:02:40] Speaker 04:
Because 60B2 and 60B5, you mentioned five goes to prospective relief, right?

[00:02:48] Speaker 04:
Also, 60B2, newly discovered evidence, don't require anything other than the fact that there have been a subsequent newly discovered evidence that affects the scope of the claim.

[00:03:01] Speaker 00:
And so the claim- For 60B5, you have to have a disclaimer, right?

[00:03:05] Speaker 04:
Well, you don't have to have a disclaimer per se.

[00:03:07] Speaker 04:
60B5 is equitable.

[00:03:10] Speaker 04:
You have to make a showing that it would be unjust, inequitable for the court to continue to enforce prospective relief or allow prospective relief.

[00:03:19] Speaker 00:
But you're not saying that during the re-exam that OptiCurrent asked for the actual construction that

[00:03:27] Speaker 00:
that the board adopted, right?

[00:03:28] Speaker 00:
They asked for the same construction that the district court proposed, and that was used in the trial.

[00:03:35] Speaker 00:
But the board disagreed, right?

[00:03:38] Speaker 04:
Well, they did both, Your Honor.

[00:03:40] Speaker 04:
They initially tried to get the board to just use the same construction.

[00:03:45] Speaker 00:
Right, but when the board said no.

[00:03:46] Speaker 04:
The board said no.

[00:03:47] Speaker 04:
Your claim's not limited to that.

[00:03:48] Speaker 00:
So they came up with an alternative argument under the board's construction.

[00:03:52] Speaker 00:
But then they won.

[00:03:53] Speaker 00:
So they had no ability to appeal that first

[00:03:57] Speaker 00:
what they would have viewed as a claim construction mistake, right?

[00:04:01] Speaker 04:
They had no ability to appeal.

[00:04:03] Speaker 04:
I agree with that.

[00:04:04] Speaker 04:
I'm not sure we're disagreeing actually.

[00:04:09] Speaker 04:
But as you say, they had no ability to appeal.

[00:04:11] Speaker 04:
precisely because they persuaded the board by saying that the patent should remain valid by taking a completely different claim construction, a different view of the claim than had applied throughout the trial.

[00:04:25] Speaker 00:
And that's the issue.

[00:04:25] Speaker 00:
But there was the board who adopted that different claim construction.

[00:04:29] Speaker 04:
The board, well, yes.

[00:04:31] Speaker 00:
So they had to live with a proposed alternative argument, right?

[00:04:35] Speaker 04:
That's right.

[00:04:36] Speaker 04:
That's right.

[00:04:37] Speaker 04:
So look, at the highest level.

[00:04:38] Speaker 01:
Their argument is that they have to live with the construction that they urged on the board and that the board adopted.

[00:04:44] Speaker 04:
That's all this case is about.

[00:04:46] Speaker 04:
This is a garden variety disclaimer case.

[00:04:50] Speaker 00:
Let me get this right.

[00:04:52] Speaker 00:
They didn't ever urge this construction on the board.

[00:04:55] Speaker 00:
They urged the same construction that the district court had used.

[00:04:59] Speaker 00:
Right?

[00:05:00] Speaker 00:
No.

[00:05:00] Speaker 04:
No.

[00:05:00] Speaker 04:
Yes, they did.

[00:05:01] Speaker 04:
They did both.

[00:05:02] Speaker 04:
They did both here.

[00:05:03] Speaker 00:
No.

[00:05:03] Speaker 00:
Once the board said, I don't agree with you, then they said, OK, even under your construction, we could still win.

[00:05:10] Speaker 04:
Right?

[00:05:11] Speaker 00:
Yes, but in- OK, but they didn't urge that other construction.

[00:05:14] Speaker 04:
They lived with it.

[00:05:15] Speaker 04:
In their- I actually don't agree with that.

[00:05:19] Speaker 04:
Unless we're talking past one another, in their December,

[00:05:22] Speaker 04:
2019 response to the office action where the board said, hey, that first argument you tried about three terminals versus four terminals, that's not working.

[00:05:32] Speaker 04:
Okay.

[00:05:32] Speaker 04:
Doesn't matter.

[00:05:33] Speaker 04:
Not concerned about number of terminals and where the power is coming in.

[00:05:37] Speaker 04:
Then they pivoted in December and said, okay, well, there's this additional feature that's disclosed in the specification.

[00:05:45] Speaker 04:
That's not about terminals.

[00:05:47] Speaker 04:
It's about how the inverter is connected inside the chip.

[00:05:52] Speaker 04:
And that whole submission, this is appendix 289 to 291, they go on for pages about how that specific special connection that's described in column six of the patent, that exists as affirmative claim limitation.

[00:06:08] Speaker 04:
So they affirmatively argued repeatedly, and their expert argued in a supporting declaration,

[00:06:14] Speaker 04:
That is what this invention really is.

[00:06:17] Speaker 04:
That is why the prior art is different.

[00:06:20] Speaker 04:
And they actually used the language.

[00:06:21] Speaker 04:
I can direct the court to it.

[00:06:25] Speaker 04:
And they said, the language in column six, this unconventional use of CMOS exists as claim limitations.

[00:06:36] Speaker 04:
That's appendix 390.

[00:06:38] Speaker 04:
So they absolutely urged this construction, and they succeeded.

[00:06:42] Speaker 04:
And so this, in its simplest form, is a simple disclaimer case.

[00:06:47] Speaker 04:
Now, Judge Dyke, to come back to your question about the technology and it being confusing, and again, I apologize.

[00:06:54] Speaker 04:
The disclaimer they won on has to do with the inside of the chip.

[00:06:59] Speaker 01:
Whether there's a VDD power rail inside the chip as opposed to connected to the fourth terminal of the chip.

[00:07:06] Speaker 01:
Correct.

[00:07:07] Speaker 01:
Correct.

[00:07:08] Speaker 01:
But even if we were to assume that that was the construction that they urged on the board and that

[00:07:17] Speaker 01:
that would disclaim any VDD power rail configuration even inside the chip.

[00:07:23] Speaker 01:
I have two questions.

[00:07:25] Speaker 01:
One is I'm not sure that they urged a different claim construction during the infringement trial.

[00:07:36] Speaker 01:
For them at the infringement trial, the question of whether there was a VDD power rail within the chip was kind of irrelevant.

[00:07:44] Speaker 04:
Well, two different things.

[00:07:46] Speaker 04:
They did not urge a different construction explicitly because there was no construction of this issue in the trial the first time around.

[00:07:56] Speaker 04:
Correct.

[00:07:58] Speaker 04:
But the second part, and this is critical, is they affirmatively had to rely on the connection between the inverter and VDD to make out their infringement case.

[00:08:09] Speaker 04:
And I think this is the fundamental issue that may have gotten obscured.

[00:08:14] Speaker 05:
Can I just stop you a minute and help because these terms are I'm struggling with these terms, too Okay, what do you mean when you say VDD power rail inside the chip?

[00:08:24] Speaker 05:
Is that in in contrast to a VDD power rail?

[00:08:29] Speaker 05:
That's connected through a fourth element to a direct power supply.

[00:08:32] Speaker 04:
You know those are those are different things so VDD is a

[00:08:37] Speaker 04:
circuit structure inside the chip.

[00:08:40] Speaker 04:
It is a network of wires that distributes power inside the chip and a particular component in the chip can connect to VDD or not connect to VDD.

[00:08:53] Speaker 04:
It's not the only way to get power inside the chip.

[00:08:56] Speaker 04:
The issue of where power comes in outside the chip, that was what the first trial was about.

[00:09:02] Speaker 05:
And we're not, let me just, because I can't keep all these thoughts in my head at once.

[00:09:06] Speaker 05:
We're not talking about any of that fourth element stuff here.

[00:09:09] Speaker 05:
You have a three element chip.

[00:09:11] Speaker 05:
They're saying their patent is a three element chip.

[00:09:14] Speaker 05:
None of this VDD power stuff is talking about the prior art that had a direct power source to the inverter.

[00:09:24] Speaker 04:
Well, it is,

[00:09:28] Speaker 04:
If I understand your question correctly, yes, the prior art distinguished during prosecution.

[00:09:33] Speaker 04:
Right.

[00:09:34] Speaker 04:
Right.

[00:09:35] Speaker 05:
It had the fourth element directly connected to power.

[00:09:38] Speaker 04:
It had the CMOS inverter was connected to VDD inside the chip.

[00:09:46] Speaker 05:
But that VDD was connected to direct power.

[00:09:50] Speaker 04:
It wasn't powered internally within the chip.

[00:09:52] Speaker 04:
VDD is not powered internally.

[00:09:54] Speaker 04:
That's correct.

[00:09:55] Speaker 04:
I mean, ultimately.

[00:09:55] Speaker 04:
In the prior art.

[00:09:57] Speaker 04:
In the prior art.

[00:09:58] Speaker 04:
Right.

[00:09:59] Speaker 04:
In all these devices.

[00:10:00] Speaker 01:
Let me just, this goes to the... I think there's a bit of a confusion here because there are two connections one's talking about.

[00:10:07] Speaker 01:
One of the terminals of the chip that are connected to outside and then within the chip there are four connections for the CMOS inverter.

[00:10:16] Speaker 01:
And I got those two things confused a lot.

[00:10:20] Speaker 01:
And I think, as I understand it, they're quite different.

[00:10:23] Speaker 01:
And what nobody is contending now is that your chip was like the prior R, which had four terminals connected to a VDD power supply.

[00:10:37] Speaker 01:
The question is, did your chip have within it

[00:10:40] Speaker 01:
a VDD power supply internal to the chip connected to the CMOS inverter.

[00:10:47] Speaker 04:
Is that a fair statement?

[00:10:48] Speaker 04:
It is correct.

[00:10:50] Speaker 04:
And in that last respect, where our chip, all the accused chips, and this is admitted by OptiCurrent, there's a direct connection between the inverter and VDD that was also true in the prior art that was disclaimed.

[00:11:03] Speaker 04:
And that's the very thing that OptiCurrent disclaimed to save this patent.

[00:11:08] Speaker 04:
Judge Hughes, I want to come back to your... Yeah, I want you to point to me to something in the record.

[00:11:13] Speaker 05:
Would it help to point to any of your product information sheets in the diagram where you can show me where your inverter is and what it's connected to and what you're calling that?

[00:11:25] Speaker 05:
Because look, let me tell you, I don't want to pull the punches.

[00:11:28] Speaker 05:
Here's the way I understand their argument.

[00:11:31] Speaker 05:
Their argument is

[00:11:33] Speaker 05:
our inverter is connected to a voltage stabilizer and we get power because the current builds up at the voltage stabilizer and that's enough to power the CMOS inverter which requires a higher level of power than you usually get through the chip.

[00:11:50] Speaker 05:
Tell me if that's not your understanding of their argument, but that's my understanding of their argument, that their inverter is connected to a voltage stabilizer.

[00:11:59] Speaker 05:
That's correct.

[00:12:00] Speaker 05:
OK.

[00:12:00] Speaker 05:
I further understand.

[00:12:01] Speaker 05:
This is what I don't understand is, isn't your, and this is where you can tell me on your diagrams, isn't your inverter also getting power through that same kind of voltage stabilizer structure?

[00:12:13] Speaker 04:
It's getting it, yes, but with a very important difference.

[00:12:18] Speaker 04:
in our uh... in this is where was trying to go in in uh... in claim one in our device you've got c mos inverter this is inside the chip you've got a voltage stabilizer inside the chip and in between you have the e d so there is no direct connection in our chip from the c mos to the voltage stabilizer and can you show me that and explain what that means well um... i can show you uh... in fact it was uh... it was the whole point of their infringement

[00:12:47] Speaker 04:
presentation at trial, they embraced this aspect of our chip because... But I have two different diagrams that I've been looking at.

[00:12:58] Speaker 05:
I don't know if either of these would be helpful.

[00:12:59] Speaker 05:
Sure, sure.

[00:13:00] Speaker 05:
I think these are your product names, either 1005, the LNK 603, or either the LNK 584 at 1024.

[00:13:13] Speaker 05:
The data sheets.

[00:13:14] Speaker 04:
Yeah, the data sheets.

[00:13:16] Speaker 05:
The 1005 is better for me, but if it's not accurate, then... No, 1005 is fine.

[00:13:21] Speaker 04:
Do you have appendix 1005?

[00:13:23] Speaker 04:
Yes.

[00:13:23] Speaker 04:
Okay.

[00:13:24] Speaker 04:
So this is a block diagram for one of the accused devices.

[00:13:27] Speaker 04:
And you see that the little round circles, there's four of them, those are the external terminals on the chip.

[00:13:37] Speaker 04:
And in all of these devices, including the prior art, to power the chip,

[00:13:42] Speaker 04:
Power has to come in through one of those terminals to power the chip, given.

[00:13:48] Speaker 05:
I hate to get picky about this, but you all are using these words, and sometimes you're using them very imprecisely.

[00:13:58] Speaker 05:
When you mean power has to come in, do you mean just passive current that throws through the chip, or some kind of direct current that directly powers something?

[00:14:09] Speaker 04:
In your parlance, it would be current that powers something, that powers the components in the chip.

[00:14:16] Speaker 04:
And in fact, what happens is the drain, you see the drain terminal, the upper right?

[00:14:21] Speaker 04:
Yes.

[00:14:22] Speaker 05:
That's adding system is what they call, and there's an output.

[00:14:25] Speaker 05:
Yes.

[00:14:26] Speaker 05:
Okay.

[00:14:27] Speaker 04:
And that drain taps off of an external source to bring power or current into the chip to power the chip.

[00:14:37] Speaker 04:
And you can see it goes through the voltage.

[00:14:39] Speaker 04:
You see that regulator block?

[00:14:42] Speaker 04:
That's what they accused as being the voltage stabilizer of the claim.

[00:14:49] Speaker 04:
Now you don't see it on this block diagram, but that voltage stabilizer in turn

[00:14:55] Speaker 04:
connects to what they said was the CMOS inverter.

[00:14:58] Speaker 04:
And the reason you don't see it here is you have to go to a detailed schematic.

[00:15:02] Speaker 04:
So inside the chip, there was a collection of transistors.

[00:15:07] Speaker 04:
They said, that's the CMOS inverter of the claim.

[00:15:11] Speaker 04:
It's connected to that regulator block.

[00:15:14] Speaker 04:
And it was connected by way of VDD.

[00:15:18] Speaker 04:
VVD is an internal network of wires that distributes the power inside the chip.

[00:15:26] Speaker 04:
So think of it as a third separate structure.

[00:15:29] Speaker 05:
Is that anywhere on this diagram?

[00:15:32] Speaker 04:
It isn't labeled per se on this diagram.

[00:15:34] Speaker 04:
It's in our internal schematics, which are in the record.

[00:15:40] Speaker 04:
One place you can look is

[00:15:44] Speaker 04:
Dr. Zane's infringement report.

[00:15:46] Speaker 04:
I'll just see if I can get you a representative page here quickly.

[00:15:50] Speaker 00:
When you say that they disclaimed having VDD inside the chip?

[00:15:56] Speaker 04:
They disclaimed a connection, yes.

[00:15:59] Speaker 04:
They disclaimed any connection of the CMOS inverter component to VDD.

[00:16:05] Speaker 04:
They said you can't have that.

[00:16:07] Speaker 04:
You have to connect it directly to the voltage stabilizer.

[00:16:10] Speaker 04:
That's the GWIZ.

[00:16:12] Speaker 04:
That's the improvement.

[00:16:14] Speaker 04:
That's what column six lines one through 17 show.

[00:16:18] Speaker 04:
The prior art doesn't have that.

[00:16:19] Speaker 04:
The prior art connects this inverter to VDD.

[00:16:22] Speaker 04:
That's the conventional way.

[00:16:23] Speaker 04:
That's the old way.

[00:16:25] Speaker 04:
That's not how we do it.

[00:16:27] Speaker 04:
And the problem in this is so that means that's a new claim construction, number one.

[00:16:32] Speaker 04:
Prospectively and in the other cases that are out there, they sued us again.

[00:16:36] Speaker 04:
So that's got to be revisited in that case or dealt with in that case.

[00:16:40] Speaker 04:
But the other problem, and this is why 60B3 applies, is it was necessary to prove infringement in this case.

[00:16:48] Speaker 04:
They had to rely on the inverter being connected to VDD.

[00:16:54] Speaker 01:
And why is that?

[00:16:56] Speaker 01:
I have a problem.

[00:16:57] Speaker 01:
I understand your argument about how they disclaimed internal VDD.

[00:17:02] Speaker 01:
Let's accept for the moment that that's the case, that they did explain that.

[00:17:07] Speaker 01:
So the claim construction now is there's no DDD inside the chip.

[00:17:14] Speaker 01:
Okay.

[00:17:15] Speaker 01:
Please help me understand why it is, and I think you've explained also why your chip

[00:17:22] Speaker 01:
does have VDD inside the chair.

[00:17:25] Speaker 01:
And so it wouldn't infringe under the claim instruction that hypothetically they convinced the board for.

[00:17:30] Speaker 01:
I understand that.

[00:17:32] Speaker 01:
What I'm stumbling over is whether their infringement argument at the trial was inconsistent with what they told the PTO.

[00:17:45] Speaker 01:
Yes, it was.

[00:17:45] Speaker 04:
And here's why in two sentences.

[00:17:49] Speaker 04:
Claim one.

[00:17:51] Speaker 04:
requires the CMOS inverter to be connected to four items, which I think you observed earlier, Judge Dyke.

[00:18:00] Speaker 04:
One of those items is the voltage stabilizer.

[00:18:02] Speaker 04:
So the claim says the inverter has to be connected to the voltage stabilizer.

[00:18:08] Speaker 04:
In our devices, that connection is through VDD.

[00:18:14] Speaker 04:
So it was necessary for them to trace in the schematics.

[00:18:18] Speaker 04:
And this is in the record, Appendix 732, Judge Hughes, to give you a specific example and answer your question at the same time.

[00:18:25] Speaker 04:
Appendix 732, they circled these things in the schematic.

[00:18:30] Speaker 04:
They circled the CMOS inverter in yellow.

[00:18:34] Speaker 04:
And the testimony was OK.

[00:18:38] Speaker 04:
That's the inverter.

[00:18:40] Speaker 04:
Do you see 732?

[00:18:42] Speaker 04:
I'm on 732.

[00:18:43] Speaker 05:
The whole yellow block is the inverter.

[00:18:46] Speaker 04:
Well, it's sort of the faint yellow block in the top center.

[00:18:50] Speaker 04:
Oh, yeah.

[00:18:50] Speaker 04:
I understand, yeah.

[00:18:51] Speaker 04:
That's what they alleged is the inverter, right?

[00:18:54] Speaker 04:
Right.

[00:18:54] Speaker 04:
And you see above that there's this little T symbol highlighted in green?

[00:18:58] Speaker 04:
Yeah.

[00:18:58] Speaker 04:
That's their highlighting, OK?

[00:19:01] Speaker 04:
And they did this consistently on all of our schematics.

[00:19:03] Speaker 04:
That's VDD.

[00:19:05] Speaker 04:
Our CMOS inverter in every single chip

[00:19:09] Speaker 04:
is connected to VDD, the conventional way.

[00:19:13] Speaker 00:
And the reason they had to highlight... Are you using VDD and Power Rail?

[00:19:17] Speaker 04:
Power Rail, same thing.

[00:19:18] Speaker 00:
They're the same.

[00:19:18] Speaker 04:
They're the same thing.

[00:19:19] Speaker 04:
It's a physical structure inside the semiconductor chip.

[00:19:23] Speaker 04:
Wait, yes.

[00:19:24] Speaker 05:
Again, I'm sorry to keep interrupting you, but when you say this green box is VDD connected in the conventional way, does that mean it's connected through a fourth element to power?

[00:19:36] Speaker 05:
But this is internal VDD.

[00:19:37] Speaker 05:
This is internal.

[00:19:38] Speaker 05:
So the fourth, the third, the fourth, nothing to do with this.

[00:19:42] Speaker 05:
So where is the VDD drawing its power from?

[00:19:47] Speaker 04:
It is getting it, again, it's not on this page.

[00:19:52] Speaker 04:
VDD is getting its power from the voltage stabilizer.

[00:19:55] Speaker 04:
It's getting it from the output, right?

[00:19:57] Speaker 04:
Yeah, from the output.

[00:19:59] Speaker 05:
OK, can I just, is this your argument?

[00:20:03] Speaker 05:
Their argument is,

[00:20:05] Speaker 05:
Their converter hooks directly to the voltage stabilizer, which is where you get the power.

[00:20:10] Speaker 05:
Yours is you have a structure in between that's called a VDD.

[00:20:15] Speaker 05:
Otherwise, it's exactly the same.

[00:20:17] Speaker 04:
That's exactly right.

[00:20:19] Speaker 04:
That's exactly right.

[00:20:20] Speaker 05:
And what is the VDD structure in your thing?

[00:20:23] Speaker 04:
The VDD structure is well, it's represented as wires.

[00:20:27] Speaker 04:
It's referred to as a power rail, a supply rail.

[00:20:32] Speaker 04:
It's this network of wires or rails inside the chip that distributes power inside the chip.

[00:20:40] Speaker 01:
And it's used to power things other than the CMOS inverter.

[00:20:43] Speaker 01:
Oh, for sure.

[00:20:44] Speaker 01:
Yeah.

[00:20:45] Speaker 01:
It's generally available in... There are voltage stabilizers only for the CMOS.

[00:20:50] Speaker 04:
Well, in...

[00:20:53] Speaker 04:
In the new claim construction, their new conception of what their invention is, this inverter can only connect directly to the voltage stabilizer and not to VDD.

[00:21:08] Speaker 05:
Yes, but in their invention, the power that's flowing through the voltage stabilizer flows throughout the rest of the circuits and can power other things too.

[00:21:18] Speaker 05:
That's true.

[00:21:20] Speaker 04:
That's true.

[00:21:21] Speaker 04:
But one thing it can't do in their invention anymore as a result of the re-exam is they can't use VDD.

[00:21:29] Speaker 04:
They cannot any longer point to VDD as being within the scope of their invention when it's distributing power inside the chip.

[00:21:36] Speaker 04:
They gave that up plain as day.

[00:21:39] Speaker 04:
And that is the fundamental contradiction.

[00:21:41] Speaker 04:
Because in our devices, A732 is one example of many.

[00:21:45] Speaker 04:
And they're in the record.

[00:21:49] Speaker 04:
our inverter is always connected to VDD inside the chip, always, just like the prior art they disclaimed.

[00:21:58] Speaker 05:
I'm sorry, when you say the prior art they disclaimed, are we talking about different prior art because some of the prior art they disclaimed that VDD

[00:22:07] Speaker 05:
the CMOS inverter, because maybe I'm completely misreading this, but it seemed to me that some of us said the CMOS inverter requires a higher voltage level.

[00:22:17] Speaker 05:
And some of the prior are the CMOS converter was powered externally from the chip, not internally.

[00:22:25] Speaker 05:
Is that wrong?

[00:22:26] Speaker 04:
No, you're not wrong.

[00:22:27] Speaker 05:
That can be true.

[00:22:29] Speaker 05:
So when you're saying yours is connected in the prior or conventional way, you're not saying it's connected that way, right?

[00:22:38] Speaker 04:
I'm not saying it's the same as necessarily all of the CMOS inverters in the prior art, but it is.

[00:22:45] Speaker 05:
Some CMOS inverters in the prior art were connected to external power in a way that didn't go through the voltage stabilizer.

[00:22:54] Speaker 05:
They were as a fourth element that did it.

[00:22:56] Speaker 04:
I have to say I don't know the answer to that question on this record because... That's a large focus of some other prosecution history.

[00:23:05] Speaker 04:
Well, I think actually with respect they focused on the other category of CMOS inverter.

[00:23:09] Speaker 04:
Prior art CMOS inverters, the ones that were connected to VDD.

[00:23:14] Speaker 04:
and those are the ones they said, they said Morris was like that, and Neuffer was like that.

[00:23:20] Speaker 04:
Let me ask something.

[00:23:21] Speaker 05:
So in your view, those two you decided to mean, those also are connected internally.

[00:23:27] Speaker 05:
There's no external power supply coming directly into the VDD.

[00:23:32] Speaker 04:
Well, there always has to be external power coming in.

[00:23:35] Speaker 04:
I know.

[00:23:35] Speaker 05:
This is the problem with this case.

[00:23:36] Speaker 05:
You all are using the same words to mean different things.

[00:23:40] Speaker 05:
And I'm not an electrical engineer.

[00:23:43] Speaker 05:
and I can't tell when you're using which word in which sense.

[00:23:46] Speaker 05:
When I'm talking about external power supply, I don't mean just the current flowing through to the voltage stabilizer.

[00:23:52] Speaker 05:
I mean at least some of the prior art that mentioned power coming through a fourth separate element that's powered directly rather than this power built up through the voltage stabilizer.

[00:24:03] Speaker 05:
Do the two references you just mentioned talk about power coming through the voltage stabilizer to a VDD and

[00:24:13] Speaker 05:
then going to the inverter or power directly coming from the outside to a VDD to the inverter and not from the stabilizer?

[00:24:24] Speaker 04:
It's the former.

[00:24:26] Speaker 04:
The former.

[00:24:27] Speaker 04:
The prior art inverters that were disclaimed have the inverter connected to a voltage stabilizer by way of VDD.

[00:24:40] Speaker 00:
in the same way the power integrations change.

[00:24:48] Speaker 05:
How do I verify that?

[00:24:51] Speaker 05:
I mean, the district court listened to the testimony, had a bunch of hearings on this.

[00:24:56] Speaker 05:
Their expert is saying something completely different.

[00:24:59] Speaker 05:
I read their expert, and it doesn't match up with what you're saying.

[00:25:03] Speaker 05:
How am I supposed to do a de novo factual review of what's true here and what's not?

[00:25:08] Speaker 04:
Well, you don't have to do a de novo factual review because on the critical factual issue, there is no dispute.

[00:25:14] Speaker 04:
There's no dispute about how the prior art

[00:25:17] Speaker 04:
inverters were connected directly to VDD.

[00:25:20] Speaker 00:
There's no dispute that in our devices... But it was the external power that was described as the conventional way, correct?

[00:25:30] Speaker 00:
That's what they were distinguishing.

[00:25:33] Speaker 04:
No, the conventional way was connecting the inverter... Let's go back to A291 again, because they actually say explicitly what they mean when they said the conventional way.

[00:25:43] Speaker 04:
Alright?

[00:25:48] Speaker 04:
with me sorry lost my spot here not 291 I'm sorry I gave you the wrong the wrong it's a 390 okay actually starts at the bottom of 389 a 389 the last sentence there the 623 patent documents documents the incorporation of a CMOS inverter

[00:26:16] Speaker 04:
in a non-traditional and unconventional manner.

[00:26:20] Speaker 04:
So what's non-traditional, unconventional is how the CMOS inverter is used.

[00:26:24] Speaker 04:
And then they quote, column 6, lines 1 to 17, which I won't read, obviously, here, but is all about the connection.

[00:26:36] Speaker 04:
The word connection appears here about a half a dozen times.

[00:26:39] Speaker 04:
The connection of the CMOS inverter and how it's connected inside the chip.

[00:26:45] Speaker 04:
And in particular, they say a conventional, well, let me start before then.

[00:26:52] Speaker 04:
The CMOS inverter of the invention is connected to the remainder of the circuit in a non-traditional manner.

[00:27:00] Speaker 04:
Specifically, a conventional CMOS inverter is connected to a pair of complementary supply voltages.

[00:27:08] Speaker 04:
That's VDD.

[00:27:11] Speaker 05:
Sorry, I just want to parse more of this, because again, all these words

[00:27:16] Speaker 05:
are hard to translate between the two of it.

[00:27:19] Speaker 05:
You go on and it says, with the source of the P channel MOSFET connected to a positive supply voltage as one to the ground, what is that positive supply voltage?

[00:27:33] Speaker 04:
The connection described there is shown in figure two of the patent, where

[00:27:43] Speaker 04:
The CMOS, this is in the preferred embodiment, the CMOS inverter in figure two.

[00:27:49] Speaker 04:
which is item 139, is connected directly to the voltage stabilizer.

[00:27:55] Speaker 05:
But that's not what this is talking about.

[00:27:57] Speaker 05:
This is not what I'm asking you.

[00:27:59] Speaker 05:
I'm asking you, you're saying this is what they're describing as the changes.

[00:28:04] Speaker 05:
And this is a sentence saying the conventional CMOS inverter, which is not their invention, is connected to a pair of complementary supply voltages.

[00:28:14] Speaker 05:
with the source of the p-channel MOSFET connected to a positive supply voltage, what does positive supply voltage mean?

[00:28:26] Speaker 04:
That's in the conventional, that is VDD.

[00:28:30] Speaker 04:
In the conventional way, the inverter is connected to positive supply voltage is VDD.

[00:28:41] Speaker 04:
And their experts said that.

[00:28:43] Speaker 04:
Our experts said that.

[00:28:45] Speaker 04:
There's no dispute.

[00:28:47] Speaker 01:
What was BDD coming from the fourth terminal from an external source?

[00:28:51] Speaker 01:
That was the conventional way of doing it.

[00:28:54] Speaker 01:
Correct?

[00:28:56] Speaker 01:
That was a conventional way.

[00:28:58] Speaker 00:
Yes.

[00:28:58] Speaker 00:
So when you say they define conventional wave, that's the way they define the conventional wave.

[00:29:03] Speaker 05:
But they're not taught.

[00:29:04] Speaker 05:
How much of supply voltage throughout this is used to reference power coming through that fourth element?

[00:29:09] Speaker 05:
There's a different term for the type of power that's coming through the other way.

[00:29:18] Speaker 05:
Source to source or something like that?

[00:29:20] Speaker 04:
The reference to source to source here

[00:29:25] Speaker 04:
maps directly in these numbers map directly to the connection shown in figure two which is the CMOS inverter connecting directly to the voltage stabilizer with no VDD.

[00:29:38] Speaker 05:
That's not answering my question.

[00:29:40] Speaker 05:
Because you're using this to argue that they recognize the prior art is your chip connected from the inverter

[00:29:50] Speaker 05:
through VDD to this other thing we're talking about that I've forgotten the name for.

[00:29:54] Speaker 05:
And I'm understanding this, and they're going to get up on their side, and I'm pretty sure they're going to tell me that what this means when they're talking about positive power supply is the prior arc where there's something that comes directly in through a VDD outside, an external power source outside to the VDD to power the inverter.

[00:30:17] Speaker 05:
And if we can't understand the difference between these two and you can't keep them straight for me, I'm not sure how I can overturn Judge Chen's decision.

[00:30:25] Speaker 04:
So I'll let them speak for themselves.

[00:30:31] Speaker 04:
I won't.

[00:30:33] Speaker 04:
But again, it comes back to this distinction between outside the chip versus inside the chip.

[00:30:41] Speaker 01:
Well, your argument, as I understand it, is that there are statements to the PTO

[00:30:46] Speaker 01:
which they made in order to get to preserve the patent, were broader than VDD coming through a fourth terminal.

[00:30:56] Speaker 01:
It was any VDD, including internal VDD.

[00:31:01] Speaker 01:
And in the statements, there are statements where they say there is no VDD.

[00:31:07] Speaker 01:
And you're interpreting that as being broader than there's no VDD coming through a fourth terminal.

[00:31:14] Speaker 01:
As the PTO had already said,

[00:31:16] Speaker 01:
That's not a sufficient distinction.

[00:31:18] Speaker 01:
Correct.

[00:31:19] Speaker 04:
And in fact, they say, and again, I won't.

[00:31:21] Speaker 05:
Is this the piece of evidence you're using to show that, though?

[00:31:27] Speaker 05:
I want to know where you're getting that from, that what they've disclosed is not just external VDD, but internal VDD, and which piece of evidence you're pointing to.

[00:31:41] Speaker 05:
Because if this is it, I don't get it from this.

[00:31:45] Speaker 04:
It is, this is part of it.

[00:31:49] Speaker 04:
Because everything referred to here is internal.

[00:31:53] Speaker 04:
And they go on to explain how it is the internal connections that matter.

[00:31:59] Speaker 04:
And the claim recites four internal connections.

[00:32:03] Speaker 04:
And it does not say there's any connection to VDD.

[00:32:07] Speaker 04:
And then they say, and they repeat over and over again, there cannot be

[00:32:14] Speaker 04:
that in our invention, the inverter is connected to four things, none of which is the power rail, which is VDD.

[00:32:23] Speaker 04:
No power rail connection exists.

[00:32:26] Speaker 04:
The traditional connection is to the power rail.

[00:32:30] Speaker 04:
We don't have that.

[00:32:32] Speaker 04:
over and over and over again here on pages 390 to 391.

[00:32:35] Speaker 01:
The traditional connection they're talking about there is the internal connection between the CMOS and VDD power rail?

[00:32:45] Speaker 01:
Exactly.

[00:32:46] Speaker 04:
Exactly right.

[00:32:48] Speaker 04:
That's what they're talking about.

[00:32:49] Speaker 04:
And just again, and I appreciate the frustration Judge Hughes because there was so much confusion in the record and in the way this was presented by OptiCurrent, but just take high level

[00:33:01] Speaker 04:
There is no discussion in this key office action response about three terminals versus four terminals and where and how our power is entering the chip.

[00:33:13] Speaker 04:
It's not there.

[00:33:15] Speaker 04:
And that's the striking thing.

[00:33:17] Speaker 04:
They tried that in their patent owner response in July.

[00:33:20] Speaker 04:
The patent office, the examiner comes back and says, no dice.

[00:33:25] Speaker 04:
I don't care.

[00:33:26] Speaker 04:
I don't care if you have three terminals or four terminals or where the power is coming from.

[00:33:30] Speaker 04:
Not interested.

[00:33:32] Speaker 04:
And that's when they pivoted, and they dove inside the chip.

[00:33:37] Speaker 04:
They fastened on this one paragraph from column six that's all about connections inside the chip.

[00:33:44] Speaker 04:
And they said, and that's why we're different, and that's why we should keep our patent.

[00:33:51] Speaker 04:
And there's nothing about terminals, external terminals, or power coming in the chip through external terminals.

[00:33:59] Speaker 04:
And that is the fundamental confusion.

[00:34:01] Speaker 04:
And I appreciate it, because the whole first trial was about that outside piece.

[00:34:05] Speaker 04:
This case was up here before you on the issues surrounding power coming into the external terminals on the chip and what that meant and how that worked.

[00:34:17] Speaker 04:
That was the first case.

[00:34:18] Speaker 04:
That was the trial.

[00:34:20] Speaker 04:
They won.

[00:34:22] Speaker 04:
We went to re-examine.

[00:34:24] Speaker 04:
And to stay alive, they

[00:34:28] Speaker 04:
reinterpreted their patent and said, you've got to have this special connection inside the chip.

[00:34:35] Speaker 04:
That's where we are.

[00:34:37] Speaker 04:
That's what this case is about.

[00:34:38] Speaker 00:
So if we agree with the district court that there was no inconsistency for the very reasons you just said, which is there was no inconsistency because the issue wasn't really raised below.

[00:34:52] Speaker 00:
It wasn't relevant below.

[00:34:55] Speaker 04:
Right?

[00:34:57] Speaker 04:
No, I can't agree with that.

[00:34:59] Speaker 04:
Because the reason the judge says there's no inconsistency is he thought that, at the end of the day, he thought that the re-examination disclaimer somehow did, in fact, relate to the external

[00:35:18] Speaker 04:
power coming into the chip and that's wrong.

[00:35:22] Speaker 00:
What he said is that the issue at trial only had to do with the external.

[00:35:28] Speaker 04:
That's true.

[00:35:29] Speaker 04:
We agree with him on that.

[00:35:30] Speaker 04:
We agree with him on that.

[00:35:31] Speaker 00:
Right.

[00:35:31] Speaker 00:
And you agreed before that there was no reason to even address this issue below, that you didn't address it, that no one else addressed it because it was all focused on this fourth terminal.

[00:35:41] Speaker 00:
Right.

[00:35:42] Speaker 00:
Okay.

[00:35:42] Speaker 06:
Right.

[00:35:43] Speaker 00:
So if we agree with the district court that that means it's not inconsistent, even if for some reason you think that what they're saying now doesn't read on your product, that's not an inconsistency with respect to how they tried the case.

[00:35:58] Speaker 00:
So if we agree with that, then what are you stuck with?

[00:36:00] Speaker 00:
You're stuck with 60B6?

[00:36:04] Speaker 04:
No, because they're

[00:36:05] Speaker 04:
there is still the factual inconsistency that improving their case at trial under the claim constructions that applied at that time, they necessarily relied on the connection between the inverter and VDD.

[00:36:21] Speaker 00:
Yeah, but you need fraud, right?

[00:36:23] Speaker 04:
Well, true.

[00:36:25] Speaker 04:
True.

[00:36:25] Speaker 04:
OK.

[00:36:26] Speaker 04:
So they based their case on that connection, among other things.

[00:36:30] Speaker 04:
That was critical to their case.

[00:36:32] Speaker 04:
The inverter has to be connected to VDD.

[00:36:35] Speaker 04:
because that's the only way you get a connection to the voltage stabilizer.

[00:36:39] Speaker 04:
Their expert said it in his report.

[00:36:41] Speaker 01:
Their expert said it in his report.

[00:36:43] Speaker 01:
I just don't see fraud here.

[00:36:45] Speaker 01:
What seems to me likely happened is they got in trouble with the PTO.

[00:36:49] Speaker 01:
They came up with a new argument to preserve the patent.

[00:36:52] Speaker 01:
And it might have been inconsistent with what everybody was assuming at the time of the impeachment trial.

[00:36:58] Speaker 01:
But I don't see that as being fraud.

[00:37:01] Speaker 01:
To have fraud, you'd have to have them thinking

[00:37:03] Speaker 01:
oh, well, we are thinking that this is the right claim construction at the time of trial.

[00:37:08] Speaker 01:
I don't.

[00:37:09] Speaker 01:
I mean, that seems to me.

[00:37:12] Speaker 04:
Fair enough.

[00:37:14] Speaker 04:
Maybe I should end there.

[00:37:15] Speaker 04:
I've been very generous with the time.

[00:37:18] Speaker 04:
We don't have to prove fraud to prevail on this appeal, right?

[00:37:21] Speaker 04:
That's one of the four bases we urged.

[00:37:26] Speaker 01:
I come back to you've got two different issues.

[00:37:29] Speaker 01:
One to set aside the judgment for past infringement.

[00:37:32] Speaker 01:
which requires something in the nature of inconsistency.

[00:37:37] Speaker 01:
And the other one is whether the running royalty should be set aside.

[00:37:41] Speaker 01:
And that doesn't require a showing of inconsistency, only that there's a new claim construction that is a new legal determination, which makes the product non-infringing.

[00:37:52] Speaker 01:
But I think what I struggle with is

[00:37:55] Speaker 01:
Forget about the running road.

[00:37:57] Speaker 01:
Just talk about the past infringement.

[00:37:59] Speaker 01:
I'm not sure that I see a basis under Rule 60B for setting aside that original judgment, because the party's understanding of these issues evolved before the PTO, and at the time of the original trial, people were thinking differently about it.

[00:38:17] Speaker 01:
I'm not sure that's a ground for setting aside the past infringement judgment.

[00:38:21] Speaker 04:
So the answer to that is 60B2, newly discovered evidence, not fraud, doesn't require contradiction, newly discovered evidence in the form of what they contend and believe the scope of their claim is.

[00:38:35] Speaker 04:
And this is the TDM America case that we cited for that proposition.

[00:38:39] Speaker 04:
They don't disagree with the legal proposition.

[00:38:41] Speaker 04:
And so if you believe that what happened in the re-exam is newly discovered evidence.

[00:38:48] Speaker 00:
You have to believe that.

[00:38:49] Speaker 00:
That's the problem.

[00:38:50] Speaker 00:
That's pushing the concept of newly discovered evidence very far.

[00:38:57] Speaker 01:
The trouble with newly discovered evidence is that it has to be evidence that existed at the time of the original trial.

[00:39:06] Speaker 01:
And the statements that they made to the PTO didn't exist at the time of the original trial.

[00:39:11] Speaker 04:
The statements they made didn't exist, true, but presumably they believed the same thing then they believed during re-exam.

[00:39:20] Speaker 04:
Let me put it this way.

[00:39:21] Speaker 04:
There's no evidence in the record that it just occurred to them during re-exam, suddenly,

[00:39:26] Speaker 04:
that this was a key feature of their invention, especially where it's laid out in column six for 17 lines as this is the preferred embodiment.

[00:39:34] Speaker 04:
This is this key gee whiz in our invention.

[00:39:37] Speaker 04:
So they knew that back at trial.

[00:39:39] Speaker 04:
Clearly, they knew it.

[00:39:41] Speaker 04:
Everyone knew it, right?

[00:39:42] Speaker 04:
And it wasn't until they got confronted in re-exam with prior art that was going to knock them out that they said, well, actually, the claim, claim one is this comprising claim that's irony.

[00:39:55] Speaker 04:
A comprising claim, we're going to limit it to just those connections shown in column 6, even though it's a comprising claim.

[00:40:04] Speaker 04:
That's the issue.

[00:40:05] Speaker 04:
And that is what was newly discovered.

[00:40:08] Speaker 04:
And under TDM America, that should qualify.

[00:40:11] Speaker 01:
All right.

[00:40:12] Speaker 01:
Well, I think we're out of time.

[00:40:12] Speaker 01:
We'll give you a couple of minutes to repuddle.

[00:40:14] Speaker 01:
Thank you.

[00:40:15] Speaker 01:
We'll hear from Mr. Gunter.

[00:40:27] Speaker 02:
May it please the court.

[00:40:30] Speaker 02:
It was not an abuse of discretion when Judge Chin issued a well-reasoned and methodical opinion.

[00:40:36] Speaker 01:
Let's get into the merits of this.

[00:40:40] Speaker 01:
Focus first on the running wild.

[00:40:42] Speaker 01:
If in fact they

[00:40:43] Speaker 01:
disclaimed an internal VDD power rail.

[00:40:48] Speaker 01:
And we conclude that the product in fact has an internal VDD power rail.

[00:40:55] Speaker 01:
That's a basis for relief under 6VB5 with respect to the running royalty.

[00:40:59] Speaker 01:
I'm not talking now about the past damages, but as to the running royalty, correct?

[00:41:03] Speaker 01:
It doesn't have to be an inconsistency.

[00:41:06] Speaker 02:
But I don't think they get there, Your Honor.

[00:41:08] Speaker 01:
And I'd like to walk through.

[00:41:09] Speaker 01:
But I'm correct, right?

[00:41:10] Speaker 01:
I believe that's correct.

[00:41:11] Speaker 01:
On those assumptions, I'm correct, right?

[00:41:13] Speaker 02:
I believe that's correct.

[00:41:13] Speaker 02:
But I'd like to walk through and clarify for the court several different examples here of exactly how Judge Chin walked through the past.

[00:41:20] Speaker 01:
He didn't address that.

[00:41:21] Speaker 01:
I didn't see that he addressed that question that I just asked you.

[00:41:25] Speaker 01:
He says there's no inconsistency.

[00:41:28] Speaker 01:
He may have been correct about that.

[00:41:30] Speaker 01:
It may not be an abuse of vessel.

[00:41:32] Speaker 01:
But I don't see that he addressed the 60B

[00:41:36] Speaker 01:
issue.

[00:41:40] Speaker 02:
Your honor, what Judge Shin said was on Appendix 9 on there, and you're right, he said there was no newly discovered evidence within the meaning of 60B2, but then also continued his explanation saying, for the reasons stated above, there's no clear and convincing evidence that the verdict was obtained through fraud, misrepresentation, or other misconduct.

[00:42:00] Speaker 02:
and he cites to 60B3 and continues, the injunctive relief was, for the same reason, not inequitable under 60B5.

[00:42:08] Speaker 01:
But that's not correct, right?

[00:42:10] Speaker 01:
Because you don't have to have an inconsistency to set aside the future relief.

[00:42:17] Speaker 01:
I mean, there are a lot of Supreme Court cases that parties did inside the Wheeling Bridge case and so on and so forth.

[00:42:23] Speaker 01:
You can't keep an injunction.

[00:42:25] Speaker 01:
You can't keep prospective relief if the judgment was wrong in the first place.

[00:42:31] Speaker 02:
While I might agree with the broad statement there, I would refer to you to the court's use of the inequitable aspect of this.

[00:42:37] Speaker 02:
And what the court was saying was that it was not.

[00:42:39] Speaker 01:
There's no findings about this issue, about whether the statement that I made was correct or incorrect.

[00:42:48] Speaker 01:
That is, that there was a disclaimer in the re-exam about the scope of the patent, and that given that disclaimer, there's no infringement of the patent in the future.

[00:43:02] Speaker 01:
He just doesn't say anything about that.

[00:43:04] Speaker 01:
You're correct, Your Honor.

[00:43:06] Speaker 02:
So if I could turn back for a few moments and offer to clarify what I heard Mr. Schoenbach to walk through just a moment ago.

[00:43:14] Speaker 02:
So as an initial point, the original re-examination application for the petition had five grounds, the first three of which were based largely on the patent's prior 323 design and the Neufer and Morris reference standing alone.

[00:43:30] Speaker 02:
After the patentee's statement, those were discarded.

[00:43:34] Speaker 02:
And then it was just looking at really the last two, the two grounds for alleged invalidity.

[00:43:40] Speaker 02:
And that was under a combination of the 323 patent, which is a three terminal design.

[00:43:45] Speaker 02:
It does not have a fourth terminal connected to power supply in combination with a CMOS inverter that's shown in either Newford or Morris.

[00:43:54] Speaker 02:
So that was the task at hand in the section that Mr. Scherkenbach was pointing to at appendix 390.

[00:44:00] Speaker 02:
The examiner thought you could take any CMOS inverter and simply drop it into the 3-2-3 design and arrive at the patented invention.

[00:44:10] Speaker 02:
That was not the case.

[00:44:11] Speaker 02:
And that's what Patentees Council walked through with the examiner.

[00:44:16] Speaker 00:
But on that same page, the paragraph below that description, it does say that none of which is a power rail when you're describing

[00:44:28] Speaker 00:
the unconventional use of CMOS.

[00:44:30] Speaker 00:
Now, if you're completely disclaiming any power rail, is that in your view the same thing as a disclaimer of any VDD?

[00:44:40] Speaker 02:
No, Your Honor.

[00:44:41] Speaker 02:
So there was not a disclaimer of VDD here.

[00:44:43] Speaker 02:
What there was was an explanation that you could not take any CMOS inverter and add it in because the 623 patent uses a CMOS inverter in an unconventional manner.

[00:44:54] Speaker 02:
And so that's what this paragraph found in

[00:44:56] Speaker 02:
column six of the patent is describing, you can have two different ways of using a CMOS inverter.

[00:45:01] Speaker 02:
You can use it in the traditional way, which is connected to a fourth terminal power supply.

[00:45:06] Speaker 02:
That's the plus V voltage that's mentioned here that Judge Hughes, you had some questions about earlier.

[00:45:12] Speaker 05:
Can I just stop you and interrupt?

[00:45:16] Speaker 05:
Is any of the prior art showing a three element circuit with a CMOS inverter connected to an internal VDD rail?

[00:45:26] Speaker 05:
No, it is not.

[00:45:28] Speaker 05:
So the prior art with three element used something different than a CMOS inverter?

[00:45:34] Speaker 02:
So there's two categories here.

[00:45:37] Speaker 02:
The 323 design did not have a CMOS inverter in it.

[00:45:41] Speaker 02:
The Morris and Newford references were both four terminal devices that used a CMOS inverter in the conventional way, namely connection to the fourth terminal VDD.

[00:45:54] Speaker 02:
And so that's the breakdown that the patent is describing, that you can have two different types of connection.

[00:45:59] Speaker 02:
And so, Judge O'Malley, to your point a moment ago, whenever the counsel for patentee stated that there's no connection to power rail, in the parentheticals there, they're saying the conventional way.

[00:46:12] Speaker 02:
meaning the prior art is not, excuse me, that claim one is not claiming a conventional connection.

[00:46:19] Speaker 02:
What claim one is claiming is a CMOS inverter that's connected to a voltage stabilizer which in turn derives its power from the third terminal, the drain terminal.

[00:46:31] Speaker 02:
So that's a point that

[00:46:33] Speaker 02:
Opti-currents expert, Dr. Regan Zane, made many times a trial.

[00:46:37] Speaker 05:
Okay, even if we're there with you, I think I'd further understand their argument to be that yours connects directly between the CMOS inverter and the... I'm sorry, I can't remember this word.

[00:46:51] Speaker 05:
I don't know why.

[00:46:52] Speaker 05:
It's a block.

[00:46:53] Speaker 05:
Theirs goes through a VDD internal power rail.

[00:46:57] Speaker 05:
Why isn't that enough to make it different and non-infringing?

[00:47:00] Speaker 02:
And so what Judge Chin said in his opinion in Appendix 6, he said, whether they call it a VDD or not is not the dispositive issue.

[00:47:10] Speaker 02:
It's where does the power come from?

[00:47:12] Speaker 02:
Where does that connection lead from?

[00:47:14] Speaker 02:
And so what we showed at trial was that the accused products, just like Claim 1 of the 623 patent, the accused products connect to a voltage stabilizer, which in turn derives its power from the third terminal.

[00:47:26] Speaker 01:
But it's not just a question of terminology.

[00:47:30] Speaker 01:
The statements that you made to the patent office talk about VDD power rail and things like that.

[00:47:37] Speaker 01:
So that has some meaning.

[00:47:41] Speaker 01:
And you told them what it is.

[00:47:43] Speaker 01:
I mean, I don't see that we can resolve this by saying, oh, well, we don't have to be concerned about the use of the VDD power rail because they were just really talking about a voltage stabilizer.

[00:47:55] Speaker 01:
I mean, it has meaning.

[00:47:56] Speaker 01:
And in fact, there was

[00:48:00] Speaker 01:
evidence that the power rail, VDD power rail, plays a role internal to the chip in the accused device.

[00:48:12] Speaker 02:
And so you're correct.

[00:48:13] Speaker 02:
The accused devices in the internal schematics, they do use the designation VDD.

[00:48:18] Speaker 02:
But what is indisputed is that connection is still through the voltage stabilizer and the third terminal.

[00:48:23] Speaker 02:
The jury found that.

[00:48:25] Speaker 05:
But the question is, when you were telling the patent office, we don't connect

[00:48:30] Speaker 05:
through a VDD power rail, did you mean any kind of VDD power rail, or did you just mean VDD power rail that's external, not internal?

[00:48:41] Speaker 02:
I'm very glad that you asked that question.

[00:48:44] Speaker 05:
So what we should do is... I understand that's your argument, but

[00:48:49] Speaker 05:
Both of you are pointing to different things back and forth.

[00:48:51] Speaker 05:
And I think Judge Shen accepted your argument.

[00:48:54] Speaker 05:
How do we know that's what you disclaimed was only the external, not the internal power rail?

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

[00:49:01] Speaker 02:
So I would point the court to Appendix 411.

[00:49:05] Speaker 02:
So this is the declaration of Dr. Zane that was submitted concurrently with the office action response that we've been discussing today.

[00:49:13] Speaker 05:
This is your expert, right?

[00:49:14] Speaker 02:
Yes, it is.

[00:49:15] Speaker 02:
And this is the same expert that testified at trial.

[00:49:18] Speaker 02:
And so what you'll see here is that, well, I should start on the preceding page, Appendix 410, but Dr. Zane goes through the exact same exercise that the Council for OptiCarn went through.

[00:49:29] Speaker 02:
He cites to Column 6, he describes that there's two different ways of using a CMOS, either conventional or unconventional, and then in Paragraph 22 he says,

[00:49:42] Speaker 02:
The nontraditional and unconventional use of the CBOS inverter connected in a specific way in a three-terminal switch as required by claim one, but not connected to a power supply VDD via a fourth terminal, referred to in the quotation above as positive supply voltage plus V. What Dr. Zane is explaining is that the unconventional way doesn't go to a fourth terminal.

[00:50:05] Speaker 02:
He's not disclaiming the use of the word VDD or the use of the word power rail.

[00:50:11] Speaker 02:
What he's explaining is that 623 patent, claim one, specifically limitation C of claim one,

[00:50:18] Speaker 02:
claims that unconventional use of a CMOS, that's supported in the specification and that's what was addressed during the re-examination.

[00:50:27] Speaker 01:
But the problem that I have is you unsuccessfully argued to the PTO that this was different because the prior art had this fourth terminal with a VDD power rail in it and we don't have that and they didn't accept that so you had to come up with something else.

[00:50:47] Speaker 01:
And something else looks to be we don't have a VDD power rail at all, even without the fourth terminal.

[00:50:58] Speaker 01:
So if you don't have a fourth terminal, the VDD power rail disclaimer has to relate to the use of VDD power rail within the chip, internal to the chip.

[00:51:10] Speaker 02:
So your honor, I would clarify that with it.

[00:51:13] Speaker 02:
I do not believe that the examiner rejected or set aside the three versus four argument after the initial patent owner's statement.

[00:51:22] Speaker 02:
So if you look at appendix 328, this is the office action that immediately precedes the response that we've been looking at.

[00:51:30] Speaker 02:
Appendix 328, the examiner walks through and talks about how

[00:51:34] Speaker 02:
The 323 is a three terminal device, but was under the misunderstanding that it had a voltage stabilizer disclosed, but in any event didn't show a CMOS inverter.

[00:51:43] Speaker 02:
And what it says for the grounds of rejection here is that any conventional CMOS inverter, this is the last paragraph of the page, any conventional CMOS inverter you could use.

[00:51:53] Speaker 02:
Therefore, the CMOS inverter taught by Morris

[00:51:56] Speaker 02:
in combination with 323 or by extension Newfer in combination with 323, that would be the invalidation.

[00:52:02] Speaker 02:
That was the point that the patentee was addressing in the December office action response, was you can't take any traditional or regular CMOS inverter and just drop it into the 323.

[00:52:16] Speaker 05:
Can I just back up and see if I understand you?

[00:52:19] Speaker 05:
To the extent we're talking about four versus three, you're saying your three matters because the traditional art using a CMOS all had four.

[00:52:29] Speaker 05:
And the examiner said, well, you can just plug in a CMOS to a three, so the four versus three distinction doesn't matter.

[00:52:38] Speaker 05:
And your response to further that was, in a 3, you can't just plug in a CMOS.

[00:52:45] Speaker 05:
So the 3 versus 3 doesn't matter for some other things, but for the CMOS inverter, it does.

[00:52:51] Speaker 05:
It's still part of the same story.

[00:52:53] Speaker 02:
And that's what the patentee had to explain to the examiner.

[00:52:56] Speaker 02:
They had to kind of clarify the first misunderstanding, which was that there was a voltage stabilizer in the 323, and there was not.

[00:53:02] Speaker 02:
And that was what the first half or so of the Office Action Response was walking through.

[00:53:07] Speaker 02:
But the second part was why you couldn't just take any CMOS and drop it in, because it's the unconventional use.

[00:53:13] Speaker 02:
There was no fourth terminal to connect the CMOS inverter to.

[00:53:17] Speaker 02:
It only had the three.

[00:53:19] Speaker 02:
And that's why the invention had to use the novel connection of going through the voltage stabilizer, which in turn derived its power from the third terminal.

[00:53:28] Speaker 01:
But you agree there's a difference between the voltage stabilizer and the VDD power, right?

[00:53:35] Speaker 02:
I don't know that I agree with that.

[00:53:36] Speaker 02:
I think VDD is just a designation that is used in the accused product and in the patent.

[00:53:43] Speaker 02:
That's the third terminal through the voltage stabilizer.

[00:53:46] Speaker 01:
But in the prior art...

[00:53:54] Speaker 02:
I think it has a meaning, and it just depends on which way that we're looking at this.

[00:53:58] Speaker 02:
If it's under the accused products and the patent in suit, it's the third terminal supplied through the voltage stabilizer, because that's what they label in their schematics as PDD.

[00:54:08] Speaker 02:
But in the prior art, these were all four terminal devices that were using CMOS inverters, and so the PDD was to the fourth terminal.

[00:54:20] Speaker 01:
make me nervous when you say that you don't know what a VDD power rail is.

[00:54:27] Speaker 05:
These circuits are all just a bunch of wires or something.

[00:54:32] Speaker 05:
Please forgive my ignorance, but I'm doing my best here.

[00:54:36] Speaker 05:
When you're talking about VDD, it's just the place in the circuit where the power is coming through.

[00:54:41] Speaker 05:
It's not you go and buy something that's called a power rail and put it into a chip, is it?

[00:54:46] Speaker 02:
That's correct.

[00:54:47] Speaker 02:
And that's why Judge Chin, in his opinion, said it doesn't matter what we call it.

[00:54:52] Speaker 02:
We have to look where it's connected.

[00:54:58] Speaker 00:
And that's why, when you look at the brief, it seems like you're talking about two different things.

[00:55:06] Speaker 02:
We believe OptiCurrent has been consistent across both trial and at... I mean, you and your friend on the other side talking about two different things.

[00:55:15] Speaker 02:
I disagree with Mr. Schurkenbach's characterization that there was a disclaimer of VDD as a whole, if that's the case.

[00:55:24] Speaker 00:
But you also disagree with him on what VDD means, right?

[00:55:29] Speaker 02:
He seems to interpret VDD to take some larger meaning that would connote whether it's connected to a third or fourth terminal.

[00:55:36] Speaker 02:
In my opinion, it doesn't.

[00:55:38] Speaker 02:
in the prior art pieces, Morris and Newther, they had four terminals.

[00:55:41] Speaker 01:
VVD is a particular voltage.

[00:55:43] Speaker 01:
It's a power line that supplies a particular voltage, right?

[00:55:48] Speaker 01:
Yes, and so typically in... And it's different from a voltage stabilizer in the fact that it's providing current, whereas the voltage stabilizer is just keeping the voltage the same.

[00:55:59] Speaker 01:
The voltage stabilizer is described in the patent... And I'll answer my question.

[00:56:04] Speaker 02:
I believe the voltage stabilizer supplies the power.

[00:56:06] Speaker 01:
The difference between the two is the voltage stabilizer keeps the voltage stable, whereas the VDB power line provides current.

[00:56:19] Speaker 01:
I'm not sure that I see the distinction there.

[00:56:22] Speaker 01:
In my mind, the... One is just fixing the voltage, the other one is supplying current.

[00:56:28] Speaker 02:
I believe the voltage stabilizer connects to the third terminal.

[00:56:32] Speaker 02:
That's a wildly varying voltage.

[00:56:34] Speaker 02:
And so what it does is it corrects that voltage to a usable amount and provides that for operational use of the CMOS inverter.

[00:56:42] Speaker 02:
So that's the role of the voltage stabilizer.

[00:56:45] Speaker 02:
Now if you had just taken the voltage stabilizer out and connected it to a fourth terminal VDD, well then you could set that to be the amount that would be required for the CMOS inverter.

[00:57:02] Speaker 01:
Unless there's any further questions from the court, I would yield the podium.

[00:57:22] Speaker 04:
Let me just go in reverse order and deal with this three versus four terminal issue again.

[00:57:29] Speaker 04:
No, I don't want to hear about that first.

[00:57:31] Speaker 05:
I want to hear about how these chips function and what the difference is.

[00:57:35] Speaker 05:
They both have power coming in through the same output drain portion, right?

[00:57:40] Speaker 05:
Yes.

[00:57:41] Speaker 05:
And they both send the power to a voltage stabilizer.

[00:57:45] Speaker 03:
Yes.

[00:57:45] Speaker 05:
and then it flows through and your main view is somehow the circuits flowing it through before it gets to the CMOS inverter is a power rail, internal power rail in your device.

[00:58:00] Speaker 06:
Exactly.

[00:58:01] Speaker 05:
And that they've disclaimed that internal power rail.

[00:58:04] Speaker 05:
Exactly.

[00:58:09] Speaker 05:
What are the stuff it's flowing through in your internal power rail different than how they describe their invention?

[00:58:17] Speaker 05:
Is it not the same way?

[00:58:19] Speaker 05:
Is it not that power comes in through the drain, the stabilizer turns it into a usable current for the CMOS inverter and sends it on to the CMOS inverter?

[00:58:31] Speaker 04:
The first two things are the same.

[00:58:33] Speaker 04:
The power comes in through the drain.

[00:58:35] Speaker 04:
It goes to a voltage stabilizer.

[00:58:38] Speaker 04:
That's in their invention.

[00:58:39] Speaker 04:
That's in our chip.

[00:58:40] Speaker 04:
Here's the difference.

[00:58:42] Speaker 04:
In our chip, it goes from the voltage stabilizer to the VDD distribution network, and then it goes to the inverter.

[00:58:50] Speaker 04:
There is an intervening physical circuit structure known as VDD.

[00:58:56] Speaker 05:
Is the stabilizer and your invention what builds up the voltage to the correct amount to power the CMOS inverter?

[00:59:04] Speaker 04:
Yes.

[00:59:06] Speaker 04:
In there, so that's our device.

[00:59:08] Speaker 05:
So yours just, you say that your device, the VDD, sends power to the CMOS inverter, but can also potentially send power to other parts of the chip.

[00:59:19] Speaker 04:
Exactly.

[00:59:20] Speaker 04:
Exactly.

[00:59:21] Speaker 04:
Exactly.

[00:59:22] Speaker 04:
It's a network, okay?

[00:59:23] Speaker 04:
Think of it as a network.

[00:59:25] Speaker 04:
Now, their device, both as shown in their figures, as described in column six,

[00:59:33] Speaker 04:
And as explained in detail to the examiner, no VDD.

[00:59:40] Speaker 04:
The voltage stabilizer is connected directly to the CMOS inverter, and that is the feature of their invention.

[00:59:48] Speaker 00:
What do we do with the fact that after

[00:59:51] Speaker 00:
three separate hearings or four separate hearings, Judge Chen ultimately concluded that it doesn't matter what we call it, that it's not a question of whether it's a VDD or not.

[01:00:00] Speaker 00:
It's a question of how you are charging this CMOS.

[01:00:07] Speaker 04:
So I think what you do with that is this.

[01:00:11] Speaker 04:
Number one, Judge Chen, in the end, became focused only on whether there was a contradiction or not between

[01:00:19] Speaker 04:
the re-exam and the trial.

[01:00:20] Speaker 04:
And he never actually engaged on whether the claim scope had been changed.

[01:00:27] Speaker 00:
Well, then why should we be doing it in the first instance?

[01:00:30] Speaker 04:
Well, for the reasons we explained in our brief, which is the claim scope has changed.

[01:00:36] Speaker 04:
There's definitely a disclaimer here.

[01:00:38] Speaker 04:
And the question is, what are the implications of that disclaimer?

[01:00:45] Speaker 00:
You're asking for extraordinary relief.

[01:00:47] Speaker 00:
And your brief doesn't even explain, really, why you're entitled to it.

[01:00:52] Speaker 00:
So at best, shouldn't we send this back to Judge Chen to see if there's a distinction in this?

[01:00:58] Speaker 04:
Well, we would be OK with that, because he never, in the first instance, actually analyzed, independent of contradiction or not, whether the claim scope has changed.

[01:01:09] Speaker 04:
But with respect, I believe we did say in our brief that we're 60B2.

[01:01:14] Speaker 04:
in 60B5, 60B2 is newly discovered evidence, 60B5 is prospective relief, that the change in claim scope as a result of their disclaimer

[01:01:24] Speaker 04:
triggers both of those provisions.

[01:01:26] Speaker 00:
Well, it can't trigger 6DB2 because it has to be evidence that existed at the time and that was not disclosed.

[01:01:37] Speaker 04:
So you're right.

[01:01:39] Speaker 04:
I misspoke and it's important to speak.

[01:01:42] Speaker 04:
What existed at the time is their understanding and their belief that their invention scope was limited in this way.

[01:01:50] Speaker 04:
And if that had been known at the time, we wouldn't be here.

[01:01:54] Speaker 00:
But they just pointed to the particular part of the re-exam where the PTO described their understanding and it had nothing to do with what your understanding is.

[01:02:08] Speaker 05:
If all we conclude that they disclaim is a conventional method of connecting a CMOS inverter, which require connection to a positive power source through a fourth terminal, and I know you disagree with that, but if that's all they require, where are we left in this case?

[01:02:27] Speaker 05:
Why is all your discussion about an internal BDD relevant?

[01:02:33] Speaker 04:
Well, I think if your hypothetical is that there's no disclaimer, and as long as a chip gets power through a fourth terminal, as long as the inverter gets power somehow ultimately derived from the fourth terminal, where are we?

[01:02:48] Speaker 04:
Well, then we lose.

[01:02:51] Speaker 04:
But that's, I hope, not where we are.

[01:02:53] Speaker 04:
All of these arguments and all of these distinctions they draw where they say these are claim limitations, they have to mean something.

[01:03:03] Speaker 04:
And the last thought I'll leave you with, and again, I appreciate the court being very generous with the time, look at the key argument on appendix 389 to 91.

[01:03:16] Speaker 04:
You will not see a single reference to fourth terminal, power coming in through fourth terminal, four terminals versus three terminals.

[01:03:25] Speaker 00:
But there is a parenthetical that refers back to the normal way.

[01:03:31] Speaker 00:
conventional way.

[01:03:33] Speaker 00:
The conventional way they're talking about here in context has nothing to do with... But it refers back to the prior paragraph where they describe the conventional way to be with the fourth terminal.

[01:03:44] Speaker 04:
No, no, no.

[01:03:45] Speaker 04:
And that's... I mean, again, there's a lot of words here.

[01:03:48] Speaker 04:
There's no reference to the fourth terminal whatsoever, okay?

[01:03:51] Speaker 04:
It's all about how the CMOS inverter is connected to the voltage stabilizer.

[01:03:56] Speaker 04:
There's no fourth terminal in sight.

[01:03:58] Speaker 04:
That's why this is so confusing.

[01:04:01] Speaker 04:
It was so confusing for Judge Chan.

[01:04:02] Speaker 04:
We had three hearings because OptiCurrent kept wanting to go there and to sweep this under the rug and say, this is all just the same as the first trial.

[01:04:12] Speaker 04:
Don't look at it.

[01:04:13] Speaker 04:
It's not.

[01:04:14] Speaker 04:
It's not.

[01:04:15] Speaker 04:
It's not what they said.

[01:04:17] Speaker 01:
OK.

[01:04:17] Speaker 01:
I think we're out of time.

[01:04:18] Speaker 04:
All right.

[01:04:18] Speaker 04:
Thank you.

[01:04:19] Speaker 01:
Thank both counsel.

[01:04:19] Speaker 01:
The case is submitted.

[01:04:20] Speaker 01:
That concludes our session for this morning.