[00:00:00] Speaker 00:
The first case for argument this morning is 20-1587, Qualcomm versus Intel.

[00:00:08] Speaker 00:
Mr. Meyer, welcome.

[00:00:13] Speaker 01:
Thank you, Your Honor.

[00:00:14] Speaker ?:
It's a privilege to be back.

[00:00:16] Speaker 01:
May it please the Court, the Board's decision holding that claims one through nine... Could you speak up a little?

[00:00:22] Speaker 01:
Oh, absolutely.

[00:00:23] Speaker 01:
Is this better, Your Honor?

[00:00:23] Speaker 01:
Yes.

[00:00:24] Speaker 01:
The Board's decision holding that claims

[00:00:27] Speaker 01:
and 13 would have been obvious in view that three reference combination should be vacated and remanded.

[00:00:34] Speaker 01:
for two independent but related reasons.

[00:00:37] Speaker 01:
On the central issues of teaching away and hindsight reconstruction, a sum of the board's analysis was a single paragraph on each issue.

[00:00:48] Speaker 01:
As to the teaching away issue, the board's sole paragraph consisted of a handful of turf sentences that stated and restated the board's conclusion and provided an incomplete legal test for teaching away.

[00:01:01] Speaker 01:
But otherwise, the board did not provide

[00:01:04] Speaker 01:
any supportive explanation for its conclusions.

[00:01:07] Speaker 01:
As a result, the board's decision contravenes this court's fundamental principle that as administrative agency, the board must provide its own sufficiently detailed reasoning and its own explanation as to how and why it reaches the conclusions that it does.

[00:01:24] Speaker 00:
Well, let me just ask you about that because your argument seems to be sort of a swish, which is they didn't provide enough reason and there's some

[00:01:32] Speaker 00:
you have questions about the reasoning that they did provide.

[00:01:35] Speaker 00:
Well, one, on the second part of that, I think they said just what our case in Valdez said.

[00:01:42] Speaker 00:
which was what you need for teaching away and saying that CHOI 2010 does not discredit or criticize, blah, blah, blah.

[00:01:53] Speaker 00:
So you can always say more.

[00:01:56] Speaker 00:
We get these cases a lot with sufficiency.

[00:02:00] Speaker 00:
The more common thing is where the board will just embrace one side or the other and not say much, but just embrace and say, I agree with everything the petitioner has said.

[00:02:10] Speaker 00:
But why is this over the line?

[00:02:15] Speaker 00:
I mean, they said something.

[00:02:16] Speaker 00:
They had some analysis.

[00:02:18] Speaker 00:
They talked about the legal standard.

[00:02:20] Speaker 00:
I mean, how much do they have to say?

[00:02:22] Speaker 00:
And different things require a different amount of analysis.

[00:02:26] Speaker 00:
And it's not clear to me that this case required so much more of a detailed analysis in order for us to appreciate what its thinking was.

[00:02:34] Speaker 01:
So a couple of points, Your Honor.

[00:02:36] Speaker 01:
I think it's sentences three and four that I believe Your Honor is asking about with respect to paragraphs and appendix page 29.

[00:02:45] Speaker 01:
The third sentence really is, and the fourth sentence, they are conclusions.

[00:02:50] Speaker 01:
They repeat the boilerplate

[00:02:53] Speaker 01:
statement of teaching away and insert the word does not or do not in front of discredit or criticize.

[00:03:01] Speaker 01:
That is not a finding or an explanation.

[00:03:03] Speaker 01:
That is still a bottom line conclusion couched in the boilerplate language.

[00:03:07] Speaker 01:
But more importantly.

[00:03:09] Speaker 03:
Can I ask this?

[00:03:10] Speaker 03:
I think it's just a version of what Judge Post just asked.

[00:03:14] Speaker 03:
So there's standard law, as you know, that if we can reasonably discern the path that the agency

[00:03:23] Speaker 03:
took, then we can say, OK, we see that there.

[00:03:27] Speaker 03:
And they might have used words that made that more apparent.

[00:03:33] Speaker 03:
What substantively do you think is uncertain about the path?

[00:03:40] Speaker 03:
What are the possibilities that you think the board just didn't make clear enough it was

[00:03:49] Speaker 03:
Foreclosing.

[00:03:51] Speaker 01:
So your honor, one of the central issues before the board on teaching away was whether Choi's teaching of always using a boosted voltage would lead a person of ordinary skill in the art in a path divergent from what the inventors did, which was a selective boost using a battery voltage or first supply line voltage when the envelope signal is regular and using a boosted voltage only when the envelope signal was higher above the threshold.

[00:04:17] Speaker 01:
What the board needed to engage with and grapple is, why wouldn't choice teaching always using a boosted voltage?

[00:04:25] Speaker 01:
And it's teaching that using a boosted voltage, always using a boosted voltage provides for robust performance.

[00:04:30] Speaker 03:
I'm afraid I don't remember the details well enough.

[00:04:33] Speaker 03:
Does choice say, it seems to me there are two possibilities.

[00:04:38] Speaker 03:
One is,

[00:04:39] Speaker 03:
In our system, we always use a boost.

[00:04:45] Speaker 03:
Does it say?

[00:04:47] Speaker 03:
And it would be a bad idea to use a boost only some of the time.

[00:04:54] Speaker 03:
I thought the board actually did fine that Joy sort of stopped at that first place.

[00:05:01] Speaker 01:
So the board said, I believe in sentence three of paragraph 29, that Choi generally describes boosted voltage.

[00:05:11] Speaker 01:
To the extent anything can be gleaned from the board's analysis is that the board determined that because Choi

[00:05:18] Speaker 01:
expressly didn't say, do not use a selective boost, or did not expressly discredit selective boost, it ended its inquiry there.

[00:05:27] Speaker 01:
But as a result, the board ended its inquiry precisely where this court instructs the inquiry must continue.

[00:05:34] Speaker 01:
And I think that this court's spectralytics decision is instructive and directly on point.

[00:05:39] Speaker 01:
In spectralytics, this court explained that teaching away does not require that the prior art foresaw the specific invention

[00:05:48] Speaker 01:
that was later made and warned against taking that path.

[00:05:52] Speaker 01:
And his court further continued that it is indeed of interest if the prior art warned against the very modification made by the patentee, but it is not the sole basis on which a trier fact could find that the prior art led away from the direction taken by the patentee.

[00:06:08] Speaker 01:
So the board needed to engage with the argument and explain why Choi's teaching to always boost would not have led a person of ordinary skill and art in a path divergent from what the inventors did, which is use a selective boost, namely sometimes use battery voltage and then occasionally use a boosted voltage depending on circumstances.

[00:06:27] Speaker 03:
And what was your evidence that Choi went beyond just saying, in our system we always have the boost, but you can tell from Choi that Choi thought it was vitally important to always use the boost because bad things would happen if you didn't.

[00:06:49] Speaker 01:
Well, so Choi, the totality of Choi and specific statements in Choi make clear that the circuit is all about, the circuit is focused on, the thrust of the disclosure.

[00:06:59] Speaker 01:
The article is about a circuit that always provides a boost of voltage.

[00:07:03] Speaker 01:
And it was cited to the board and it's, I believe, in the second column

[00:07:07] Speaker 01:
of the Choi reference, which is Appendix 1255, where Choi teaches that in this paper, a new supply modulator architecture employing a boost converter is proposed.

[00:07:21] Speaker 01:
And it then says that by boosting up the supply voltage of the linear amplifier to 5 volts, regardless of the voltage variation, that indicates that Choi is designed to always provide a boosted voltage.

[00:07:37] Speaker 01:
And then Choi further explains by providing that boosted voltage at appendix 1256.

[00:07:43] Speaker 01:
Choi explains that thanks to the robust performance of this proposed architecture, there is no degradation

[00:07:50] Speaker 01:
of the output power, gain, and linearity.

[00:07:53] Speaker 01:
So the totality of Choi is about using a boosted voltage.

[00:07:57] Speaker 01:
And he is teaching, or the reference is teaching, that there's advantages to doing it.

[00:08:02] Speaker 04:
So aren't you now arguing a substantial evidence question?

[00:08:06] Speaker 04:
I mean, I get that, that you have arguments that the board's conclusion is not supported by substantial evidence.

[00:08:12] Speaker 04:
But the suggestion that they violated the APA because they haven't given us sufficient reasoning to understand the issue

[00:08:19] Speaker 04:
is belied by the very argument you're making.

[00:08:21] Speaker 04:
We understand that the choice was selected boost versus the other kind of boost, and that your argument is way taught away from that.

[00:08:32] Speaker 04:
They found not.

[00:08:33] Speaker 04:
And so if you want to say that finding is not supported by substantial evidence, why isn't that the argument you're making instead of this APA challenge?

[00:08:41] Speaker 01:
Because we understand the board's conclusion.

[00:08:45] Speaker 01:
It found it was not.

[00:08:45] Speaker 01:
But as this court has made clear in cases such as In Ray Lee, it is not enough to state a conclusion.

[00:08:50] Speaker 01:
that Choi did not teach away.

[00:08:52] Speaker 01:
What the board must provide is articulated reasoning.

[00:08:55] Speaker 01:
And what it needed to do was that they provided a reasoning.

[00:08:58] Speaker 04:
You may disagree with that reasoning.

[00:09:00] Speaker 04:
You may disagree that it's sufficient.

[00:09:02] Speaker 04:
But attack the reasoning.

[00:09:04] Speaker 04:
Don't get on this threshold APA analysis.

[00:09:08] Speaker 04:
We can look at Choi and see whether it supports or doesn't support teaching away.

[00:09:14] Speaker 01:
And that, Your Honor, is, I think, in some ways the problem.

[00:09:17] Speaker 01:
Because the board didn't provide that explanation.

[00:09:18] Speaker 01:
It provided a conclusion.

[00:09:20] Speaker 01:
And it's now requiring this court and counsel to back it up.

[00:09:25] Speaker 04:
That's what substantial evidence is.

[00:09:27] Speaker 04:
We look at it, and we determine whether it's substantial evidence.

[00:09:30] Speaker 04:
You're going back and back and saying the board didn't provide the analysis.

[00:09:33] Speaker 04:
Well, we understand the board's legal conclusion.

[00:09:37] Speaker 04:
Review legal and factual conclusion teaching way as a factual conclusion.

[00:09:40] Speaker 04:
I take it We understand that that's the factual conclusion They made and we get a look at the record the entire the other record and determine whether it's supported by substantial evidence so if we understand the board's factual conclusion and how it got there and it didn't conjure it up out of thin air and

[00:09:57] Speaker 04:
which it didn't.

[00:09:58] Speaker 04:
It explained exactly where it did.

[00:10:00] Speaker 04:
It may not have given the analysis.

[00:10:03] Speaker 04:
We're entitled and, in fact, obligated to look at the substantial evidence.

[00:10:07] Speaker 04:
But this is not the way you'd argue the case about why Choi doesn't sufficiently teach that.

[00:10:12] Speaker 04:
So I presume Choi's board's conclusion is supported by substantial evidence if we read Choi.

[00:10:18] Speaker 01:
Your Honor, and our issue is that whether it may or may not be supported by substantial evidence, there's no findings underlying.

[00:10:26] Speaker 01:
There's no rational explanation or sufficiently detailed articulation of why Choi does not teach away from that.

[00:10:33] Speaker 01:
It is still a conclusion.

[00:10:34] Speaker 01:
The board termed it finance.

[00:10:36] Speaker 04:
Because it does not discredit or criticize selective boost.

[00:10:40] Speaker 04:
Are you saying that that is legal error because that's applying the wrong standard?

[00:10:44] Speaker 04:
Because another thing you said earlier in response to questions sounded like you were saying that's not the right legal test.

[00:10:51] Speaker 04:
But you haven't argued that either.

[00:10:53] Speaker 04:
That's the analysis.

[00:10:54] Speaker 04:
They're saying Joy doesn't criticize it, so it doesn't teach away.

[00:10:57] Speaker 04:
If that's a wrong legal conclusion or the wrong legal test, you should have argued that, although I don't think that's correct either.

[00:11:04] Speaker 01:
So Your Honor, to the legal conclusion, whether we argue it, I believe it is argued at pages 31

[00:11:11] Speaker 01:
that the board is applying an incomplete test, an incomplete legal standard for teaching away.

[00:11:17] Speaker 04:
And that is also why it's not a- Well, that sounds like a better argument for you than this notion that the board is somehow citing some kind of heightened reason-making requirement under the APA beyond just telling us what their conclusions are so we should review them.

[00:11:35] Speaker 01:
I'm sorry.

[00:11:36] Speaker 01:
I missed the first part of your question.

[00:11:38] Speaker 01:
It's OK.

[00:11:38] Speaker 01:
I apologize.

[00:11:39] Speaker 01:
Go ahead.

[00:11:40] Speaker 01:
But to your point, Your Honor, I think what's missing here is not only the date.

[00:11:44] Speaker 04:
I mean, I guess my point was, if you think you have a strong argument that the board applied the incorrect legal determination, then why aren't you leading with that, not just now, but in your briefs?

[00:11:55] Speaker 04:
Because that's a de novo review.

[00:11:57] Speaker 04:
And if they did err in the legal standard, that's something that is a much easier thing for us to get at than whether they've not given substantial evidence or misapplied the APA standard for explaining their conclusions.

[00:12:11] Speaker 01:
And, Your Honor, I believe that is in our opening brief with respect to teaching away.

[00:12:15] Speaker 04:
I'd say it's there, but it's certainly not the first point.

[00:12:17] Speaker 04:
You lead with this notion that they haven't described their argument enough, which is almost always a loser.

[00:12:22] Speaker 04:
So I don't understand why you're focusing on basically asking us to grade their paper and saying they got an F. And they may have gotten a D minus, but they certainly didn't get an F in my view.

[00:12:35] Speaker 01:
And perhaps it would have been better to lead with the legal argument, but they are tied together in the sense that, given the absence of any articulated reasoning, there's no satisfactory fact findings to address that legal standard.

[00:12:51] Speaker 01:
And as a result, the substantial evidence standard isn't triggered because the board's treatment of teaching away is deficient in that regard.

[00:12:58] Speaker 01:
OK, thank you.

[00:12:58] Speaker 00:
You're into rebuttal.

[00:12:59] Speaker 00:
Let's hope the rest of you hear from the others.

[00:13:19] Speaker 05:
Good morning, Your Honors.

[00:13:19] Speaker 05:
May it please the Court?

[00:13:21] Speaker 05:
My name is Jim Dowden, together with my colleague Kelly Powell.

[00:13:25] Speaker 05:
I represent Intel.

[00:13:27] Speaker 05:
There are many grounds on which

[00:13:29] Speaker 05:
Your Honors could affirm the decision below.

[00:13:31] Speaker 05:
I'm going to focus on just three issues and leave the rest to the briefs.

[00:13:36] Speaker 05:
The first is the motive to combine.

[00:13:38] Speaker 05:
The second is the teaching away.

[00:13:40] Speaker 05:
And the third is the alternative grounds to affirm on claims 6, 8, and 13 based on claims.

[00:13:46] Speaker 04:
I mean, your friend seems to think that the biggest problem here is that the board didn't explain its reasoning.

[00:13:51] Speaker 04:
So maybe you should address that.

[00:13:53] Speaker 04:
That's the focus of their argument, as baffling as that may seem to me.

[00:13:57] Speaker 05:
I agree with Your Honor.

[00:13:58] Speaker 05:
The board fully explained its reasoning.

[00:14:01] Speaker 05:
The standard that this court has set in evasive, I believe Judge Crost articulated, is correct.

[00:14:06] Speaker 05:
It's can you discern the path that the board took below.

[00:14:10] Speaker 05:
Here you clearly can discern the path.

[00:14:13] Speaker 05:
On motivation, it articulated exactly what its motivation finding was.

[00:14:17] Speaker 05:
This is 830 to 31, that Myers' selection technique

[00:14:26] Speaker 05:
The combination of Meyer selection technique with the amplifiers of Chu and Choi achieved battery efficiency during described operating modes.

[00:14:35] Speaker 05:
That is the motive.

[00:14:37] Speaker 05:
They achieved battery efficiency during described operating modes.

[00:14:40] Speaker 05:
In nuvasive, this court cited Nike and Allied.

[00:14:45] Speaker 05:
The second case was Allied.

[00:14:47] Speaker 05:
Those cases have a very similar articulation of what the motive was.

[00:14:51] Speaker 05:
Nubasive actually cites those articulations as meeting the APA requirement.

[00:14:56] Speaker 02:
What about the teaching away part?

[00:14:58] Speaker 02:
Which is, I think, what Mr. Meier was focused on.

[00:15:03] Speaker 05:
Let me answer that directly.

[00:15:04] Speaker 05:
There is a relationship between motive and teaching away, obviously.

[00:15:08] Speaker 05:
Motive is what impels the combination.

[00:15:10] Speaker 05:
Teaching away is something.

[00:15:11] Speaker 03:
Impel may be a little strong.

[00:15:13] Speaker 05:
Maybe, yeah.

[00:15:13] Speaker 05:
But is there something that diverges?

[00:15:15] Speaker 05:
Going through that direction, I mean.

[00:15:17] Speaker ?:
Right?

[00:15:18] Speaker 05:
On that point, there are two key points that I'd like to make on that.

[00:15:22] Speaker 05:
The first is, although counsel is focused on the paragraph at the top of page A29, the analysis of CHOI and what it teaches actually begins back on A22, I'm sorry, A23.

[00:15:39] Speaker 05:
And the key point here is, what did the board find about what Choi teaches?

[00:15:45] Speaker 05:
It found, and I'm quoting from A23, that Choi teaches the use of integrated boost converter, quote, to keep a stable operation of the power amp during supply modulator.

[00:16:00] Speaker 05:
Okay, so the teaching of Choi that the board found is keep stable operation.

[00:16:06] Speaker 05:
That's what you use this power, this boost converter to do.

[00:16:11] Speaker 05:
There's nothing about that that's inconsistent with the improvement of efficiency that Myers teaches by using the boost only when you get to the battery degraded portion of operation.

[00:16:23] Speaker 05:
So there's nothing that is inappropriate about that.

[00:16:27] Speaker 05:
They then go on over A25678 to work through what choice teaching is.

[00:16:35] Speaker 05:
And so when we get to A29, here they're directly addressing the teaching away point.

[00:16:41] Speaker 05:
And they're saying, no, it doesn't teach away because it doesn't exclude or discourage the use of selective boost.

[00:16:48] Speaker 05:
It doesn't criticize or discourage the use of selective boost.

[00:16:52] Speaker 05:
Instead, it applies Boost generally to achieve its goals.

[00:16:56] Speaker 05:
And this other statement I think is quite important.

[00:17:00] Speaker 05:
It doesn't discourage a person of ordinary skill in the arc from working with the boosted voltage to achieve battery efficiencies.

[00:17:07] Speaker 05:
That's a direct linkage to the motivation that they found to come up.

[00:17:11] Speaker 05:
When they say it doesn't discourage from working with boosted voltage to achieve battery efficiencies, they're saying it doesn't discourage a person of skill who is implementing the circuit of Chu and Choi with Myers.

[00:17:23] Speaker 05:
from working with the boosted voltage to do what Myers suggests, which over on A30-31 is to use Myers to achieve battery efficiency during described operating modes.

[00:17:35] Speaker 05:
So that's a pretty detailed analysis of the reference.

[00:17:38] Speaker 05:
It's a detailed analysis of why it doesn't teach away.

[00:17:42] Speaker 05:
My second point is it's an analysis that directly addresses what Qualcomm argued below to the board.

[00:17:52] Speaker 05:
And that's found at A 360, which is where the patent owner gave its actual teaching away argument.

[00:18:10] Speaker 05:
The teaching away argument that the patent owner gave was simply that Choi teaches a constant boost, and there's no other embodiment than that.

[00:18:20] Speaker 05:
And they say here, they're actually quoting the Dupuy spine case, which says, a reference does not teach away if it merely expresses a general preference for an alternative invention, but does not criticize, discredit, or otherwise discourage investigation into the invention claims.

[00:18:39] Speaker 05:
So it's no accident that that's the language that the board actually uses at A29 when it's setting forth its analysis.

[00:18:48] Speaker 05:
It says the same things.

[00:18:49] Speaker 05:
It says it addresses whether this constant boost teaches away.

[00:18:55] Speaker 05:
That's right at the top of the page.

[00:18:57] Speaker 05:
It goes on to say, we're not persuaded by patent owner's evidence and argument.

[00:19:04] Speaker 05:
And they cite the specific pages of Choi that the patent owner relied on, which tells us that they actually went and analyzed what the patent owner relied on.

[00:19:13] Speaker 05:
And then they say, using the language of the Puey-Spine case, that this mere fact of constant boost, in fact, doesn't teach away and, in fact, doesn't discourage, but instead applies boost generally to achieve its goals, not exclusively, generally to achieve its goals.

[00:19:34] Speaker 05:
So the board simply disagreed with the patent owner's argument.

[00:19:38] Speaker 05:
In some senses,

[00:19:40] Speaker 05:
What the patent owners are now arguing is that they should have gone further to prove a negative.

[00:19:44] Speaker 05:
But it was patent owners' burden below to demonstrate teaching away.

[00:19:49] Speaker 05:
That was their response to a prima facie case of obviousness.

[00:19:53] Speaker 05:
The board reviewed Choi, specifically cited the pages that Pat and Owner relied on, and came to a different conclusion about those pages than the Pat and Owner did.

[00:20:04] Speaker 05:
And that reasoning is, in the test of nuvasive, readily discernible from what they wrote.

[00:20:10] Speaker 05:
So with that,

[00:20:12] Speaker 05:
Really, there is nothing more to do.

[00:20:15] Speaker 00:
Can I just ask you, we didn't reach it with Mr. Meyer, guys, but of course he can respond if you have something to say about this in reply.

[00:20:22] Speaker 00:
But his second argument, which he spends less ink on, is on this hindsight thing.

[00:20:28] Speaker 00:
And I guess we see a lot of these references to improper hindsight.

[00:20:33] Speaker 00:
Is it your view that the answer to hindsight is motivation to combine so that if the board gives a fulsome analysis or adequate analysis of motivation to combine that in and of itself,

[00:20:46] Speaker 00:
response to the argument that there was improper hindsight or is more needed?

[00:20:52] Speaker 05:
No, I do think that is correct because motivation to combine is meant to be a bulwark against use of hindsight.

[00:20:58] Speaker 05:
So the task of analyzing motivation to combine is to look at it from the perspective of a person at the time

[00:21:05] Speaker 05:
of patenting, essentially, at the time the invention was created.

[00:21:09] Speaker 05:
So by looking at it from that lens, they are looking at it not from today, but from back then.

[00:21:15] Speaker 05:
And that is a bulwark against motivation.

[00:21:18] Speaker 05:
But here, I think they did go further.

[00:21:20] Speaker 05:
And this is on A27.

[00:21:22] Speaker 05:
They actually specifically look at it and find that the concerns, and I'm quoting here,

[00:21:27] Speaker 05:
The concerns with power degradation and efficiency, which patent owners to Clarence testified, were common concerns known before the 558 patent.

[00:21:38] Speaker 05:
They go on to say, we find that petitioner presents persuasive evidence and argument that the issues of power degradation and efficiency were known in the art and within the knowledge of a person of ordinary skill in the art.

[00:21:50] Speaker 05:
So what they're saying is they are looking at this from the perspective of what a person of skill would know before the patent

[00:21:56] Speaker 05:
And then they go on to credit the petition, credit the petitioner's argument.

[00:22:01] Speaker 05:
They specifically credit the argument and cite the pages.

[00:22:04] Speaker 05:
And that's the basis for the motivation to combine that they find.

[00:22:09] Speaker 05:
And they say that they're looking at it, and now we're on A30, at the time of patenting.

[00:22:14] Speaker 05:
So they very clearly were not using hindsight.

[00:22:17] Speaker 05:
They were saying, what would a person of skill at this time understand from Choi, from Chu, from Myers, all of which are prior art,

[00:22:26] Speaker 05:
They also cite some secondary references, like the Maxim reference and the Mahara reference that they describe in their analysis.

[00:22:34] Speaker 05:
And they come to the conclusion that there was this motive.

[00:22:38] Speaker 05:
So there, I think, there really is, again, not a lot more that could be said.

[00:22:46] Speaker 05:
The standard here, as I alluded to, is can you reasonably discern what they did and why they did it?

[00:22:52] Speaker 05:
Here, I think you can reasonably discern what they did and why they did it, both on motive and on the teaching away point.

[00:23:00] Speaker 05:
I would just briefly turn to the alternative grounds for affirmance.

[00:23:04] Speaker 05:
I don't need to get too far down the line on this, but to the extent that you agree on the new basis point, on whether they've met the APA requirements, there's no reason to get to plane construction.

[00:23:17] Speaker 05:
You don't need to get to those issues.

[00:23:21] Speaker 05:
By any chance you don't agree, there is an alternative basis to affirm, at least as to the claims, I believe it's 3, 6, and 8.

[00:23:29] Speaker 05:
Let me be sure I'm accurate about that.

[00:23:34] Speaker 05:
6, 8, and 13, sorry.

[00:23:37] Speaker 05:
And that is that this construction of the word or,

[00:23:42] Speaker 05:
really is an alternative.

[00:23:45] Speaker 05:
If you look at the way that the board analyzed this, they say right up front that this word or states alternatives.

[00:23:53] Speaker 05:
That's the plain meaning.

[00:23:56] Speaker 05:
On a claim construction issue on appeal, it's de novo review.

[00:23:58] Speaker 05:
You do take a fresh look at that question.

[00:24:01] Speaker 05:
And we would submit, and this is largely laid out in our papers, but we would submit that or states alternatives.

[00:24:08] Speaker 05:
And if that's true, then you look to, that's the plain meaning, you would look to the specification to see is there lexicography or is there a disavowal.

[00:24:17] Speaker 05:
And here there is no lexicography or disavowal.

[00:24:20] Speaker 05:
And what the board did was say we're gonna read that to require selective boost.

[00:24:25] Speaker 05:
We're gonna require, rather than just the battery voltage or the boosted voltage, we're gonna require both and we're gonna require a selection between them.

[00:24:35] Speaker 05:
You can't find out of the specification, because the specification discloses, it's in the abstract, it's in column one, and it's in column eight, a boost-only embodiment of the figure three of the patent, a boost-only embodiment.

[00:24:50] Speaker 05:
And that, they excluded in their construction.

[00:24:54] Speaker 05:
And we would suggest that's improper.

[00:24:56] Speaker 05:
That's all I think I need to say on that one.

[00:24:59] Speaker 05:
Thank you.

[00:25:00] Speaker 05:
OK.

[00:25:00] Speaker 05:
Thank you, Ron.

[00:25:14] Speaker 01:
Thank you, Your Honor.

[00:25:15] Speaker 01:
Just a couple of quick points on teaching away.

[00:25:17] Speaker 01:
Mr. Dowd focused, I believe, on the fourth sentence on paragraph... Excuse me, one second.

[00:25:23] Speaker 01:
Mr. Dowd.

[00:25:25] Speaker 01:
Am I covering?

[00:25:29] Speaker 01:
Mr. Dowd focused on the fourth sentence in the board's analysis or discussion of teaching away on appendix page 29.

[00:25:36] Speaker 01:
And that sentence actually highlights and underscores the deficiency of the board's analysis.

[00:25:41] Speaker 01:
What that sentence says is we do not find that the teachings in CHOI 2010 discourage a person of ordinary skill in the art

[00:25:49] Speaker 01:
from working with boosted voltage.

[00:25:51] Speaker 01:
That was never the issue.

[00:25:53] Speaker 01:
There was no dispute that CHOI 2010 teaches espouses and avows working with boosted voltage.

[00:26:01] Speaker 01:
The issue was and remains whether that teaching would discourage a person of ordinary skill in the art from following the path that the inventors took, which is using a selective boost.

[00:26:13] Speaker 01:
Mr. Dowd also mentioned a couple of portions of the board's opinion.

[00:26:18] Speaker 01:
The portion on Appendix Page 23, that is a one-sentence summary of Choi reference.

[00:26:26] Speaker 01:
That is not reasoned analysis or an articulation of reasons for why there's no teaching away.

[00:26:31] Speaker 01:
Then the rest of the passages that were referenced from page 25 to 28, those relate to a Chu and Choi combination.

[00:26:40] Speaker 01:
Those do not relate to the three reference combinations that is subject to this appeal.

[00:26:45] Speaker 01:
Just very briefly following up on a point that was made with respect to the legal standard, in In Re Li, this court made clear that omission of a relevant factor required by precedent is both legal error

[00:27:00] Speaker 01:
and arbitrary agency action.

[00:27:02] Speaker 01:
And in Ravalma, this court explained that the board must, as to issues made material by governing law, set forth a sufficiently detailed explanation of its determination.

[00:27:13] Speaker 01:
The board here failed to do so with respect to whether Choi would have led a person aboard in a skill yard in a path divergent from what the inventors did.

[00:27:23] Speaker 01:
For that, we ask that they get your own remand.

[00:27:25] Speaker 00:
Thank you.

[00:27:25] Speaker 00:
Thank you, Your Honor.

[00:27:26] Speaker 00:
We thank both sides, and the case is submitted.