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The United States Court of Appeals for the Federal Circuit is now open and in session.

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God save the United States and this honorable court.

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Good morning.

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We have three cases that are scheduled for oral argument this morning.

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The first case is Qualcomm, Incorporated versus Apple, Incorporated.

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Attorney Sweezy, you reserved four minutes to time for rebuttal.

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Is that correct?

[00:00:30] Speaker 02:
Yes, it is, Your Honor.

[00:00:31] Speaker 01:
Okay, you may begin, please.

[00:00:36] Speaker 02:
Thank you.

[00:00:37] Speaker 02:
Good morning, and may it please the Court.

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There were two grounds in this IPR, and on each ground there was a critical issue.

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Yet for each ground... For each ground, the Board improperly sidestepped that critical issue.

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For the first ground, the Board erred in failing to construe a key term,

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And for the second ground, the board erred in refashioning that ground in a manner not raised by the petition.

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I'd like to address both of these legal errors this morning, and I'll start with the board's error in not construing a key term.

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This is Judge Tronto.

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Can I just ask you, why does it matter if the board didn't adopt its own construction if, as I think it did,

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It said that even under your construction, the SATO art meets, teaches the element at issue.

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Haven't we said repeatedly that claim constructions that are not material, not outcome determinative, simply needn't be, issues simply needn't be resolved?

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Yes, Your Honor, I agree with the principle of this Court that not every case requires a claim construction, but that wasn't the situation here, and I'd like to explain.

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The Board itself recognized that this was a pivotal issue, and it was a material issue for this first ground, and Your Honor mentioned

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mentioned whether the board had actually applied our construction.

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The board did not apply either side's construction.

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It never says in its final written decision that it's going to go through an analysis under either side's construction.

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We recognize that when the board or the district court does that, that is one way to sidestep an issue.

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But here, the board did not apply either side's construction.

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And I would specifically point out that while there was a dispute between the parties on the full meeting of the term,

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both sides agreed that the clock signal requires synchronization.

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Our definition came in full from the IEEE dictionary and the patent itself, but Apple removed the word periodic.

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But regardless, both sides were in agreement that synchronization was required.

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And in the board's patentability analysis, and the court can find this at appendix 15 through 25, there is no finding, much less any analysis,

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as to whether the SATO reference actually discloses or renders obvious synchronization.

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The only mention there is the board recognizing that our construction requires synchronization, but there's no further analysis or findings of synchronization in the SATO reference.

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That is why... Do you somewhere in your blue brief raise the issue and make a showing

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that under your constructions, SATO does not meet the elements?

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I took it that on SATO you just have an argument about the failure to adopt a construction and you don't have an argument that the board did not have substantial evidence for SATO meeting the elements.

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I think, Your Honor, it's all bundled up with this threshold failure of the board to give the term a meaning.

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Under the standard two-step process for evaluating a challenge to a patent, you first have to understand what the scope is of the claims that are being challenged.

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And that was critical here because clock signal, as the board recognized, as Apple recognized as the oral hearing, that this ground was dependent on the claim construction issue.

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This was the only disputed term in the IPR.

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And in order for both the board to reach a finding of unpatentability and for this court to meaningfully review it, we first have to understand what the scope of the term means.

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That comes... Counselor, this is Judge Rada.

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You're using the word synchronization.

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Are you arguing that it must be periodic, that the Clark signal must be periodic?

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Yes, Your Honor.

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Our construction does follow the standard definition of terms, the well-understood meaning that is based on a very reliable source in this art, the IEEE dictionary.

[00:05:19] Speaker 01:
Yeah, I see that.

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It's got it in the IEEE dictionary, the definition that you're advancing.

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But show me where the specification is periodic, disclosed.

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It isn't, Your Honor, and the reason is not uncommon.

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Why would we rely on a definition outside of the specification?

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I mean, you want us to drag extrinsic evidence into the specification, and it's just not there.

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I don't see your support for periodic or synchronization.

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I don't see anything in the intrinsic record that supports that or compels you to go outside and seek support via extrinsic evidence.

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Two responses to that, Your Honor.

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On the face of the patent and requiring a clock signal, inherently within that meaning of clock is a periodic timing event.

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The clock is controlling things at a certain rate or speed.

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not some sort of external user or event or ad hoc basis.

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But under the ordinary meaning of clock, the patent didn't need to go on and specify what that meaning is.

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This court's precedent is clear that patents do not have to restate a standard definition.

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It doesn't have to bog down the specification with terms that are well understood in the

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And the IEEE dictionary is one of the best evidence of what is well understood in this art.

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In fact... But doesn't the dictionary... doesn't it list clock signal, clock pulse, and timing pulse as synonyms?

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It does, Your Honor, and notably absent from that is the term that is used in the SATO reference of timing signal.

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So two points... Well, if that's the case, if they're synonyms, then why did the board...

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Explain the argument that the board aired when they concluded the timing signal in Sado encompassed the clock signal in the patent.

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If they're synonyms, then how did the board air?

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Let me give you three responses.

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First, Your Honor, Sado doesn't disclose clock signals, so it brings us back to the initial point that we need to understand what the scope of clock signal is.

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The second is that while the IEEE dictionary does include

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additional terms like clock signal, it doesn't disclose timing signal.

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And the third point there is what I think effectively the board did, and this court has been clear that the patentability analysis is not something that should amount to a word search.

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And frankly, this sort of reminds me of a kid's telephone game.

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When you start with one term, clock signal, and the board said, all right, that's similar to clock pull,

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which the IEEE dictionary exposes, and then that's similar to timing pull, and then it got to timing signal.

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But just like in the case telephone game, what you end up with is not what you started with.

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You don't come full circle.

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So it still leaves us open with the question of what does clock signal mean, and does SATA's discussion of timing signals actually disclose or render obvious the clock signal term.

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This court precedent in... Ms.

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Sweezy, this is Judge Toronto.

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You've focused up till now on the board's discussion of timing signal in SADO, but you haven't, I think, referred yet to SADO's disclosure of a clocked static type address decoder, which I took to be the basis for the board saying,

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It doesn't really matter whether there's a difference between clock signal and timing signal because SATO discloses a clock, which is the basis for your own construction.

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And so under your construction, the element is found in SATO.

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Yes, Your Honor, let me address that because as best we can read the decision, that's what the board was relying on for purportedly finding this issue moot.

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But again,

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it still leaves a predicate question of what does clock signal mean.

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Notably, the clock static address decoder that is discussed in CEDAW is not term clock signal.

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Second, the board discusses that with no supporting evidence.

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It simply block quotes those portions of CEDAW while it does that a few times in its decision at 10, 17, 18, and 22.

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It's simply quoting from CEDAW, but there's no discussion

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no analysis, and under APA obligations, the board needs to tell us why it finds some equivalence between those two terms.

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It doesn't provide... Council, this is Judge Stoltz.

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So here we've got something where the patent itself says, refers to a clock static decoders, and there's different quotes that are put in the board's decision.

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You think the board needed to interpret that?

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I mean, it's...

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What do you think they needed to say?

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The board needed to say what clock signal means.

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That's the predicate question under case of... Hang on.

[00:10:51] Speaker 03:
I want to ask you something.

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Why didn't they say what it means at page A9?

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I mean, Apple's brief suggested, in fact, the board did construe this term and rejected your argument requiring periodic timing.

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at page A9 and even later on at page A18.

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Why do you think the board, what is your response to that position?

[00:11:18] Speaker 02:
A couple of responses, Your Honor.

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First, the board tells us that it is not construing the term.

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At Appendix 10, it expressly says it determines not to construe the term cost signal.

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So we have to take the board at its word at that,

[00:11:35] Speaker 02:
I'm sorry, Your Honor.

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I did want to continue responding to your question, but I didn't want to interrupt you.

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Go ahead.

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I didn't say anything.

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Go ahead.

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OK.

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I'm sorry.

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If I may continue.

[00:11:49] Speaker 01:
Yes, you may continue.

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Thank you.

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The second point is that Apple itself, throughout its brief, I think you mentioned an assertion in Apple's brief repeatedly, starting from the statement of its issues

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Apple recognizes that the board did not construe the term, and we're really left with a decision that we can't really evaluate or test the viability of the board's patentability analysis because we don't know what clock signal means.

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Again, this was the only construction in dispute.

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It was critical to this first ground, and the board did not construe it.

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What about where the board said it could either be A or it could be B?

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And under either of those constructions,

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We conclude that the prior teaches this claim element.

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Is the court allowed to do that, say A or B, either one?

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It teaches the claim element.

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Yes, Your Honor.

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We accept that principle, but that is not what happened here, and the board decision cannot be read that way, because both sides did agree that synchronization was required, and the board never addressed whether SADO actually discloses synchronization.

[00:13:01] Speaker 01:
Okay, Counselor, you're into your rebuttal time.

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I think you may want to reserve it.

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I'll give you back all your rebuttal time, but let's hear from the other side now.

[00:13:12] Speaker 02:
Thank you, Your Honor.

[00:13:12] Speaker 02:
I didn't reach the second ground.

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I'd be happy to, but I understand I'm out of time.

[00:13:20] Speaker 01:
I tell you, go ahead and reach the second ground and take no more than a couple of minutes to do that.

[00:13:27] Speaker 02:
Sure, Your Honor.

[00:13:28] Speaker 02:
On the second ground, I think this can be addressed quite clearly by looking at Apple's petition.

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Apple's petition presented a combination of two references, Asano and Ito, and specifically used the Ito reference for one of the limitations on the first and second logics.

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The board's decision, as Apple concedes, rested only on Asano alone.

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It departed from the ground and the petition.

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And under SAS Institute, and this court's case law under SAS, it is important to

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follow the AIA restrictions on the board, that it is not injecting itself and crafting its own theories, but needs to follow the arguments that are in the petition.

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From the start of the petition and its enumeration of ground two, Apple repeatedly calls the ground a sono and due of eto.

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Its only arguments are relying on a sono for this limitation, and the board should not have departed and injected its own ground, and we would ask the court

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to remand an order for the board to address the petition's theories within the scope of the IPR and not its separate deviation from Apple's theories.

[00:14:32] Speaker 01:
Okay.

[00:14:33] Speaker 01:
Thank you.

[00:14:33] Speaker 01:
I think we have that.

[00:14:35] Speaker 01:
Let's hear from Councilor Degna, please.

[00:14:38] Speaker 02:
May I please support Lauren Degna for Apple?

[00:14:41] Speaker 02:
Let's start with the Sado ground.

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The board found the claims obvious of a Qualcomm's construction.

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Because that finding is supported by substantial evidence, this court should affirm.

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I would say, Your Honor, just Toronto, you're quite right.

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The construction that, because the board found Sato rendered the claims obvious under Cochran's construction, that's as much as it had to do.

[00:15:06] Speaker 02:
On the issue of the board... Ms.

[00:15:11] Speaker 00:
Sweezy's answer, I think, at least the thing that's sticking in my mind, is that there remains a...

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omission in the board's discussion if we were thinking of the board's discussion as applying to SATO Qualcomm's construction because the board never found SATO to teach that the signal was synchronous.

[00:15:40] Speaker 02:
Yes, Your Honor.

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And respectfully, I think that's simply not the case.

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I think you were quite right.

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We searched the brief.

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QACOM has not made a substantial evidence challenge to the board's finding that SACO's discussion of a QAC static type address decoder and the fact that its invention, including the decoder of Figure 3, would be used in such a system, that finding has not been challenged for substantial evidence.

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And in fact, there is ample more than substantial evidence to support the board's finding.

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So this notion of there's no mention in the brief, there's nothing in the appellate record, and the board's finding is factual in nature.

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And I would say in terms of what that evidence is, Your Honor, the board read the reference, and it talks about a clock signal.

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And then the board looked at the dictionary that Qualcomm supplied and said, we understand a clock signal by Qualcomm's own evidence has these attributes.

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It analyzed.

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It looked at that evidence.

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And it also looked at the declaration that was put in by Apple's expert, Dr. Hurst, that explains how the system, how one of skill and the art would understand Stato's combined teaching.

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All of those, all that evidence, the patent, the declaration, and the dictionary is substantial evidence supporting the court's, the board's finding.

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And the board did more than enough analysis under the APA for this court to discern its reasoning and see how it reached its conclusion that SATO meets the clock, the clock limitation.

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And the second argument, if I may, Your Honors,

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focuses on this idea that we really shouldn't believe SATO when it says that it can work in a clock system.

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And the board correctly discounted the argument that Qualcomm could not negate SATO's explicit disclosure by characterizing

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Sado's disclosure as mere opinion.

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We are entitled, unless, excuse me, unless a reference is shown not to be enabled, we are entitled to take Sado at its word.

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And the board properly reviewed that reference through the lens of a factual finder and determined that Sado's explicit specific implementation instruction to use its system, its decoders, in operating with a clock signal.

[00:18:16] Speaker 00:
And that was the finding of clock was supported by- Am I understanding things right?

[00:18:24] Speaker 00:
That the patent that's in front of us is the one that uses the two word phrase clock signal.

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SATO uses the two word phrase timing signal and then the, I don't know, four or five word phrase clocks something decoder.

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But that SATO never uses the phrase clock signal.

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Is that right?

[00:18:45] Speaker 02:
That is right, Your Honor.

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And I think that is ultimately immaterial in that the board, as part of its fact-finding mission, is allowed to interpret these references.

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And so it doesn't have to find a word-for-word match.

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But interpreting the references, it determines its disclosure.

[00:19:07] Speaker 01:
Are those terms synonyms under the IEEE dictionary?

[00:19:12] Speaker 02:
Yes, they are, Your Honor.

[00:19:13] Speaker 02:
And the board found that they are at least equivalent.

[00:19:15] Speaker 02:
And the dictionary itself says that, although those same exact words are not used, right?

[00:19:21] Speaker 02:
But the board, based on the dictionary's disclosure, finds that they're equivalent.

[00:19:26] Speaker 02:
And we agree that they are synonymous.

[00:19:29] Speaker 02:
And under the broadest reasonable interpretation, a BRI standard, you know, strike that.

[00:19:37] Speaker 02:
We don't need to get into that.

[00:19:38] Speaker 02:
But I would agree with you, Your Honor, that they are synonymous.

[00:19:41] Speaker ?:
OK.

[00:19:42] Speaker 01:
Any other questions?

[00:19:45] Speaker 00:
I'm sorry, can I just ask, do you have anything to say about the second ground, the Osano ground?

[00:19:52] Speaker 02:
Your Honor, the first thing I will say about the second ground is this course does not need to reach it.

[00:19:57] Speaker 00:
Right, what's the next thing you have to say?

[00:19:58] Speaker 02:
Yeah, of course.

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So with respect to Osano, the petition, so let's just set the stage on this, Your Honor, and I don't want to rush it.

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The petition did, in fact, rely on Asano to disclose the first and second logics.

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It also, there's no question it advanced an obviousness theory.

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But its obviousness theory relied both on Asano for the first and second logic and on Ito.

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And the petition, as well as the declaration submitted with that petition, goes through and interprets Asano, not only figure two, but the words surrounding the description of figure two,

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and describes what one of ordinary skill in the art would understand Asano to teach.

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And that was in the petition, and it also was in the declaration.

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Apple came back to it in the reply.

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The board relied on what was in the petition.

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In fact, Qualcomm disputed vigorously that Asano disclosed the first and second logic, which takes a certain number of bits.

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and outputs were light enabled signals and the second logic taking a certain number of bits and outputting these things.

[00:21:08] Speaker 02:
Qualcomm specifically disputed that Asano had that teaching.

[00:21:12] Speaker 02:
The board evaluated Qualcomm's argument and then the board rejected them.

[00:21:17] Speaker 02:
It's really unclear how we have an APA violation here of notice of opportunity.

[00:21:21] Speaker 02:
Not only was Qualcomm put on notice, it made arguments.

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Perhaps at most it's saying we wish we had said more, but it certainly had the opportunity to say as much as it wanted to on this point.

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And so we have to look at this second ground with APA through the lens of notice and opportunity.

[00:21:39] Speaker 02:
And this is a far cry from the cases

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that council referenced, and even the M&K Holdings case from earlier this week from this court, it's a far cry from that.

[00:21:48] Speaker 02:
The petition set the scope of the grounds, the board ultimately found obviousness, and it found a motivation to combine, and it stayed within the boundaries that the petition had come up with.

[00:22:03] Speaker 02:
M&K in contrast, a brief deviation into that case,

[00:22:09] Speaker 02:
The court, the board had found anticipation.

[00:22:12] Speaker 02:
It was a completely different theory.

[00:22:14] Speaker 02:
The claim had, the independent claim had two completely different options in its independent claim, A and B, so to speak.

[00:22:22] Speaker 02:
The claim at issue, claim three, was specifically targeted to one of the options, B, and the entire theory was based on the fact that the primary reference didn't have the B option, so they went to another reference.

[00:22:33] Speaker 02:
The board switched gears entirely and said, we don't care about the option.

[00:22:37] Speaker 02:
You can still kill this claim for A. That is the kind of notice and opportunity issue that requires a remand.

[00:22:45] Speaker 02:
But when the board stays within the boundaries of the petition, as it did here, we don't have an APA violation.

[00:22:52] Speaker 02:
There's no need for a remand.

[00:22:59] Speaker 02:
And with that, if there are no further questions, I can stress the balance of my time.

[00:23:04] Speaker 01:
Okay.

[00:23:04] Speaker 01:
No, we thank you.

[00:23:06] Speaker 01:
Let's go back and hear from Councilor Sweeney, please.

[00:23:10] Speaker 01:
We have four minutes.

[00:23:12] Speaker 02:
Thank you, Your Honor.

[00:23:13] Speaker 02:
I'll start with a state of the ground and touch on at least three points briefly.

[00:23:17] Speaker 02:
The first point is that under this court's precedent, it is clear that we need to have first acclaimed construction to even meaningfully assess the board's decision.

[00:23:26] Speaker 02:
That is why the substantial evidence standard doesn't come into play yet because we don't really have any meaningful way to test whether the board found something in the prior art or not because it hasn't first construed the term.

[00:23:36] Speaker 02:
And under this court's decisions in Getter and CSR versus Skullcandy, those are directly on point.

[00:23:42] Speaker 02:
In both of those cases, the board found a term either in or not in the prior art

[00:23:49] Speaker 02:
but without first construing the claim.

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And this court said that was error, that threshold failure to construe a material claim that was in dispute by the parties was a threshold legal error.

[00:24:01] Speaker 02:
So it's necessarily bound up with the board's patentability findings.

[00:24:06] Speaker 02:
The second point I would like to make is that the board did not reject either side's construction or embrace either side's construction.

[00:24:14] Speaker 02:
It explicitly said it was not construing the term.

[00:24:17] Speaker 01:
So both periodic and synchronization were... Councilor, why was it necessary for the board to construe the term if there's no controversy?

[00:24:27] Speaker 01:
Didn't we say under Vivid that terms need to be construed only to the extent that it's required to resolve a controversy?

[00:24:36] Speaker 02:
Yes, Your Honor, and there was a controversy here.

[00:24:39] Speaker 02:
As Apple said at the hearing, this issue was dependent on how to construe the term.

[00:24:45] Speaker 02:
The board at Appendix 14 says this was the pivotal issue, and yet it sidesteps.

[00:24:50] Speaker 02:
It did not conduct a dual analysis under both constructions.

[00:24:54] Speaker 02:
It did not give a construction.

[00:24:56] Speaker 02:
It simply looked at clock signal and found a similar word in SATO, clock static address decoder, without any analysis.

[00:25:05] Speaker 02:
and then discarded that portion of CEDAW because the remainder of the board's patentability analysis is on timing signal, which did not equate with clock signal.

[00:25:15] Speaker 02:
We are really left with an incomplete and unsupported decision and under Gector and CSR versus Skullcandy, Homeland Healthwares, the board first needs to adopt a construction in order to actually carry out its obligations on a patentability analysis.

[00:25:32] Speaker 02:
And both periodic and synchronization were at issue in the party of constructions.

[00:25:38] Speaker 02:
And in our opening brief at 23, we addressed this and reinforced this in our reply brief at page seven.

[00:25:45] Speaker 02:
And then briefly on the second ground, I want to reinforce that we are presenting both a failure of notice and opportunity, but more importantly, this court's precedent is clear than their SAS Institute and its progeny.

[00:25:57] Speaker 02:
The petition is what sets

[00:25:59] Speaker 02:
the scope of the IPR proceedings and is the architect of the case.

[00:26:03] Speaker 02:
The case that my opposing counsel described was exactly the scenario in that the board departed from the combination that Apple asserted.

[00:26:12] Speaker 02:
It did not offer alternative grounds.

[00:26:15] Speaker 02:
It offered only a sonno in via veto.

[00:26:18] Speaker 02:
We're all familiar with petitions that offer a third ground that Apple could have done.

[00:26:22] Speaker 02:
It was Apple's strategic choice not to offer a sonno only in the alternative.

[00:26:27] Speaker 02:
And so for both of these legal errors,

[00:26:29] Speaker 02:
including the claim construction failure at the outset in the first round and the failure to apply the enumerated ground, we would ask the court to reverse the board's decision and remand for further proceedings, first, specifically to conduct claim construction, and second, to evaluate the ground presented in Apple's petition.

[00:26:52] Speaker 02:
Thank you for the additional time.

[00:26:55] Speaker 01:
Okay.

[00:26:55] Speaker 01:
We thank you for your argument.

[00:26:56] Speaker 01:
We thank parties for their argument.

[00:26:59] Speaker 01:
in this particular case.