[00:00:00] Speaker 00:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:06] Speaker 00:
God save the United States and this honorable court.

[00:00:12] Speaker 00:
Good morning.

[00:00:12] Speaker 00:
Our first case for today is 2020-1589, Qualcomm versus Intel.

[00:00:22] Speaker 00:
Counsel, please proceed.

[00:00:25] Speaker 03:
Good morning, and may it please the court.

[00:00:27] Speaker 03:
Based on the party's briefing, I would like to focus on two issues where the board committed legal error.

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First, relating to all the challenged claims, the board denied Qualcomm the procedural safeguards of fair notice and adequate opportunity to respond under the APA.

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In a final written decision, the board for the first time disclosed a new construction of the term plurality of carrier aggregated transmit signals, which was both distant from

[00:00:56] Speaker 03:
and materially broader than the construction advanced by either party.

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Specifically, the board's construction eliminated the feature of increasing bandwidth for the user, which from the petition stage, both parties agreed, was properly part of the term's meaning.

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The board's suicide removal of the increasing of bandwidth for the user feature from the construction was clearly prejudicial

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because it eliminated a substantive element of proof that Intel would otherwise have to establish to show unpatentability.

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And this is evident from the final written decision at appendix pages 58 to 60, where the board applies the prior ARC to the limitation, but states that it will not consider whether the prior ARC disclosed the increasing the bandwidth for the user feature that both parties agreed were part of the construction.

[00:01:53] Speaker 02:
Second.

[00:01:56] Speaker 02:
I was hoping I could ask you a question on that first point.

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This is Judge Stoll.

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Hypothetically, what is during the beginning of Intel's presentation to the board?

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The board judge interrupted and said, I'm not convinced that six words in your construction to increase the bandwidth for a user

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are properly part of the claim construction.

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I give notice that we will determine whether those words belong in the construction.

[00:02:31] Speaker 02:
Would that have been sufficient notice under the APA?

[00:02:38] Speaker 03:
Your Honor, I think in and of itself that type of notice would not be sufficient under the APA in this Court's precedent.

[00:02:46] Speaker 03:
So, for example,

[00:02:48] Speaker 03:
uh... in cases such as del via color on and robalma versus bowler and if you don't vote the amazon this court makes clear that when the board's final written decision cancels claims they've been an issue that was raised for the first time edelweiss argument can't deny your your answer makes no sense just sold and ask you if it satisfies the a p a which requires notice and an adequate opportunity to be heard

[00:03:16] Speaker 00:
Judge Stoll asked you if it satisfied the notice portion.

[00:03:19] Speaker 00:
I haven't heard you address that.

[00:03:21] Speaker 00:
The cases you're referencing go to opportunity to be heard, not noticed.

[00:03:25] Speaker 00:
So would you agree with her that that kind of statement at the outset provides sufficient notice?

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I mean, how does that differ from a written order by the board saying we want additional info on this?

[00:03:37] Speaker 03:
I suppose, so your honor, if it was strictly with respect to notice that the board said that we are considering so respond to this issue at oral hearings strictly for suspected with regard to notice, I suppose that may be sufficient in putting aside the opportunity to respond.

[00:03:53] Speaker 00:
Now, would you like to address, if at all, how the facts of this case differ from that hypothetical, which you agree

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might be sufficient for notice purposes, or is your case hinging on adequate opportunity to be heard?

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I kind of think it's the latter, but go ahead.

[00:04:11] Speaker 03:
Your Honor, it's certainly the latter.

[00:04:13] Speaker 03:
It's certainly an opportunity to be heard, but I think the hypothetical that Judge Stoll identified is starkly different from the present case.

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that this was not where the board provided a formal indication that it was going to adopt or considering a construction that neither party advocated.

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Rather, the board asked one question, which the board itself characterized as a quick question, and it was directed solely to Intel, not to Qualcomm.

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And then after that question, the board asked some other questions directed to different aspects of the claim construction.

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And the board then, as part of a larger soliloquy, made a passing statement that it would consider whether increasing bandwidth should be part of the construction.

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I understood Judge Stoll's hypothetical to be where the board formally identified a construction that it was considering.

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I don't think that happened here.

[00:05:09] Speaker 02:
And the reason why, this is Judge Stoll again, and the reason why you don't think it happened here is because you think that asking questions to opposing counsel

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and then saying we're going to consider whether potentially to increase the bandwidth is required by the claim a page or two later in the transcript, that that's sufficiently different from my hypothetical?

[00:05:31] Speaker 03:
I do, Your Honor.

[00:05:31] Speaker 03:
It was one quick question, and there was no formal statement by the board that, you know, Petitioner and Patent Owner, we are contemplating misconstruction.

[00:05:40] Speaker 03:
Please respond.

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I think in the entire context of the proceeding, this issue was across

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16 months of proceedings and 20 plus briefs and six IPRs, the sum total that this issue arose in terms of notice was one question on an issue where the parties had agreed throughout the proceedings that increasing the bandwidth for the user was part of the construction.

[00:06:02] Speaker 03:
So in that context, in this context, I don't believe it was sufficient notice, no.

[00:06:07] Speaker 01:
Council, this is Joe Grana.

[00:06:09] Speaker 01:
Is it the case that the two limitations that we're talking about at the same time and to increase bandwidth for the user?

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Those were briefed on the merits during IPR, is that correct?

[00:06:23] Speaker 03:
The limitation was briefed on the merits, your honor, but it's important to, context is important.

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What was not briefed by other party was, well, let me refer to that.

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What was not addressed specifically by Qualcomm was the increasing the bandwidth for the user, because that is a part of the construction that both parties had agreed to.

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So Qualcomm addressed other aspects of the construction.

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that it disagreed with.

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What is it that you would have argued differently?

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What were you prevented from proffering?

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You could not advance your argument because you couldn't guess the PTAB's construction.

[00:07:06] Speaker 03:
Certainly, Your Honor.

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If Qualcomm was believed that the term, that the part of the construction requiring increased bandwidth for the user was that issue, we would have specifically built a record and addressed that to explain to the board why that is properly part of the construction.

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And that would include focusing on the claim language, in particular the term aggregations.

[00:07:29] Speaker 01:
If the two limitations were briefed, why do you say that they were not on the record?

[00:07:35] Speaker 03:
Your Honor, the focus of the briefing was addressed to parts of the construction that the parties disputed.

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The parties did not dispute whether increasing the bandwidth for the user should be part of the construction.

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The fact that the parties disputed other aspects of the construction does not lessen the need for notice and opportunity to respond to Qualcomm if the board subsequently, as it did here, removes a feature of the construction that both parties had agreed to.

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And I think that this court's vast decision is instructive on that point where... This is counsel, thank you for stopping.

[00:08:11] Speaker 02:
This is Judge Stowell again.

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Before going into that, could you talk about what specific evidence you would rely on for your claim construction argument?

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And another question, why didn't Qualcomm appeal the claim construction if they thought it was wrong?

[00:08:32] Speaker 03:
Your Honor, let me respond to the first portion, first portion, first part of the question.

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I think what we would introduce if we were afforded opportunity again would be the claim language itself, the board construction drained all meaning from aggregation.

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Second, we point to the specification, in particular, figures 2A through 2D and column 2, lines 59 to 67 that support the understanding

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that carrier aggregation requires increased bandwidth for the user.

[00:09:04] Speaker 03:
In addition, the fact that based on this argument that the board could construe the term to require increased bandwidth, but that's not merely hypothetical because in another IPR dealing with the same patent owner, the same petitioner, the same technology and a similar patent, two of the same judges did construe carrier aggregation to require increased bandwidth and in large part based it

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on statements that are very similar to those in the 675 patent.

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As for the second part of your question, Your Honor, the reason I think we set forth why in this brief, why we should be afforded an opportunity in the first instance to make an argument to the board as to why increased bandwidth for the user, which is something that both parties agreed to, was properly part of the construction.

[00:09:52] Speaker 00:
But, Counsel, I don't... I'm sorry.

[00:09:54] Speaker 00:
Go ahead.

[00:09:55] Speaker 00:
It just says more.

[00:09:56] Speaker 00:
I don't understand.

[00:10:00] Speaker 00:
a record.

[00:10:01] Speaker 00:
A record is evidence, and yet what you said you would have pointed to is just claim language and the specification.

[00:10:08] Speaker 00:
So you're telling me that this claim construction issue would only be a question of law, no matter who decided it.

[00:10:14] Speaker 00:
You're telling me that you did not have and you do not plan to introduce any pieces of prior art, technical journals, expert testimony,

[00:10:25] Speaker 00:
So why in the world, if that's the case, and that's what you have said thus far, or at least you didn't mention any actual evidence, extrinsic evidence, I mean, I don't understand why you didn't appeal this directly to us.

[00:10:40] Speaker 00:
It's a question of law the way you framed it.

[00:10:43] Speaker 00:
And if you think the board got it wrong, in addition to raising the APA violation, why in the world would you not have appealed it directly?

[00:10:53] Speaker 03:
So your honor, let me respond in two parts.

[00:10:56] Speaker 03:
I think, and you're right, in addition to the intrinsic evidence, I think we would introduce evidence such as LTE specifications that are cited in the patent specification as establishing that increased bandwidth for the user as part of construction.

[00:11:10] Speaker 00:
So you're saying, I want to make this as clear, so you're saying you would have introduced other patents which are prior art to

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which constitute extrinsic evidence to inform how the construction should be understood to the plain and ordinary meaning of the construction.

[00:11:24] Speaker 00:
That's what you're saying?

[00:11:25] Speaker 03:
That's certainly a possibility if it was in dispute.

[00:11:27] Speaker 03:
But in addition, I think the patent itself cites certain standards that address what increased bandwidth for the user that is part of the term carrier aggregation.

[00:11:40] Speaker 00:
Council, I intend to be liberal with time.

[00:11:42] Speaker 00:
I would really, if you have one more thought on this point, I'd like you to make it.

[00:11:45] Speaker 00:
But then I do want you to move on because I really want to hear you address the power tracker argument.

[00:11:50] Speaker 00:
So please proceed.

[00:11:52] Speaker 01:
Judge Moore, I also have a question I'd like to ask counsel on the same topic that we're addressing now.

[00:11:59] Speaker 00:
Go ahead, please.

[00:12:01] Speaker 01:
OK.

[00:12:02] Speaker 01:
It seems to me that the PTAB raised this issue about whether you should import those two terms at the same time to increase bandwidth for the user.

[00:12:12] Speaker 01:
And it discussed with Intel's counsel its concern about that and whether the specification required those two limitations.

[00:12:21] Speaker 01:
Why is it that that's not enough for you to be put on notice and for you to have the opportunity to address those

[00:12:30] Speaker 01:
that concern that the PTAB was raising.

[00:12:34] Speaker 01:
It seems to me that what the PTAB is saying is that, among the clarity of where I'm going to go, give me your arguments as to which way I should go.

[00:12:42] Speaker 01:
And I can't find that you provided that argument to the PTAB.

[00:12:48] Speaker 03:
Your Honor, I think in the context of this proceeding, entering the proceeding all the way through the proceeding,

[00:12:54] Speaker 03:
I'm sorry, entering the oral hearing all the way through the proceeding.

[00:12:56] Speaker 03:
There was no dispute that increase in the bandwidth that was part of construction at the hearing.

[00:13:01] Speaker 03:
There was only one quick question, the board termed it, directed solely to Intel.

[00:13:06] Speaker 03:
There was no questions directed to Qualcomm.

[00:13:10] Speaker 00:
Respectfully, Council, can I correct your facts?

[00:13:13] Speaker 00:
Because I think you have them wrong.

[00:13:14] Speaker 00:
There's not one quick question the board put to Intel.

[00:13:17] Speaker 00:
There's one quick question that one judge of a three-judge panel put to Intel.

[00:13:21] Speaker 00:
That does not make it a statement of the board, does it?

[00:13:26] Speaker 03:
Your Honor, it does not, but that was the only question that was directed to this issue in the entirety of the proceeding.

[00:13:34] Speaker 01:
How many questions do you think are necessary in order to give counsel notice as to an issue that's at bar?

[00:13:43] Speaker 03:
Your Honor, I don't know if there's a bright line rule that determines how many questions would provide notice, but I think certainly, at minimum, a question is directed to the patent owner asking them to respond to a formal hypothetical construction, which that didn't happen here.

[00:14:00] Speaker 03:
And I think, for example, this case stands in stark contrast to, for example, intellectual ventures.

[00:14:06] Speaker 03:
Erickson, where there was, I think, this court and the board, termed the questioning to be continuous, vigorous, and extensive.

[00:14:13] Speaker 01:
That did not occur here.

[00:14:15] Speaker 01:
OK.

[00:14:15] Speaker 01:
Just a last point.

[00:14:15] Speaker 01:
Did you seek any supplemental briefing or re-hearing to this issue?

[00:14:22] Speaker 03:
No, Your Honor.

[00:14:22] Speaker 03:
On the supplemental briefing, we did not, because the day after, the very next day after the oral hearing, the board did issue an order.

[00:14:31] Speaker 03:
And the order requested the parties to brief

[00:14:35] Speaker 03:
a different claim construction term, not this term, and the board did so, and it stated at Appendix 1624, the board said it was asking for briefing in a different term because having considered the arguments presented at oral hearing, the panel had decided to record with benefit from further briefing.

[00:14:54] Speaker 03:
So the board knew how to identify issues for the parties to address post hearing, and it did not do so with respect to increasing the bandwidth term.

[00:15:02] Speaker 03:
Yes, Your Honor.

[00:15:04] Speaker 02:
I want to ask you one more question, because I'm a little troubled by your reference to the fact that Qualcomm's counsel wasn't questioned.

[00:15:13] Speaker 02:
Do you think that Qualcomm doesn't have a duty to listen while the judges are questioning Intel?

[00:15:21] Speaker 03:
No, absolutely, Your Honor.

[00:15:22] Speaker 03:
Qualcomm has a duty to listen, and it did.

[00:15:25] Speaker 02:
Now, let's say, hypothetically then, that while the board judges were questioning Intel, they asked

[00:15:33] Speaker 02:
five questions and they also said as a prelude to one of those questions, we're concerned and all of us here or two of us are concerned about your construction and particularly this addition of to increase the bandwidth for a user.

[00:15:58] Speaker 02:
I mean wouldn't that be sufficient to put you on notice even though

[00:16:02] Speaker 02:
The questions are being directed to Intel and not Qualcomm.

[00:16:09] Speaker 03:
I suppose it would, Your Honor, but that is not what happened here.

[00:16:13] Speaker 03:
I understand.

[00:16:14] Speaker 02:
I'm just questioning your, you know, I don't think that a rule from us that says any notice must be given while the patent owner's talking makes much sense.

[00:16:27] Speaker 03:
Nor are we asking for such a rule, Your Honor, but on the facts of this case, as it manifested throughout the proceeding and the hearing, I don't believe there was adequate notice on the facts of this case.

[00:16:40] Speaker 03:
Your Honor, so I'd like to address the question briefly, if I may, about the petition for rehearing.

[00:16:47] Speaker 03:
We did not seek a petition for rehearing, and for three reasons.

[00:16:50] Speaker 03:
One, I think as Nike V. Adidas makes clear,

[00:16:54] Speaker 00:
uh... a petition for a hearing is it's too late because council i don't know what this is at council i don't think this is helpful move to the power tracking you're way beyond your time cover power tracking so we can ask about it the other side and ask you about it in rebuttal if you don't cover it you never know

[00:17:09] Speaker 03:
Absolutely, Your Honor.

[00:17:10] Speaker 03:
With respect to the subset of claims 28 to 32, the board incorrectly construed the term means for determining a single power tracking signal.

[00:17:18] Speaker 03:
In particular, the board's construction failed to identify the complete structure for performing the recited function.

[00:17:25] Speaker 03:
The board identified only the power tracker without including the algorithms at column 8, line 6 to 32, which are required to program or configure the power tracker to perform the recited function.

[00:17:38] Speaker 03:
And that was wrong as a matter of law under this court's precedent.

[00:17:42] Speaker 02:
Counsel, do I remember correctly that there is another claim in the patent that is directed to a power tracker and that term was not interpreted as means plus function.

[00:17:56] Speaker 02:
That term is understood and interpreted by the board to be a power tracker circuit.

[00:18:03] Speaker 03:
I believe that there's a claimed term, power tracker, independent of the means plus function term that is in the claims.

[00:18:11] Speaker 03:
And the board construed, consistent with how the ITC construed it, to be a component in a voltage generator that computes the power requirement.

[00:18:23] Speaker 03:
I think an important distinction is when the board construed the term power tracker, the dispute was whether

[00:18:31] Speaker 03:
the term power tracker in and of itself, even though it doesn't use the term means, triggers a 1-12-6 analysis.

[00:18:39] Speaker 03:
That is different than the situation on appeal, which is in the second step of a means plus function limitation, does a power tracker alone constitute structure?

[00:18:49] Speaker 02:
But isn't it true in the first step that what they're looking at is whether it's a sufficiently definite structure as opposed to being like a nonce term or a meaningless term?

[00:18:59] Speaker 03:
I believe that's correct, Your Honor.

[00:19:01] Speaker 03:
The first part, almost step zero, or the threshold issue as to whether the power tracker triggers 112 steps, the analysis is whether it connotes sufficient structure.

[00:19:13] Speaker 03:
The threshold step and the second step involve different inquiries, different presumptions, and sort of different purposes.

[00:19:21] Speaker 02:
Are you aware of any cases in which there is a claim or something directed to a circuit

[00:19:29] Speaker 02:
And our court held that a circuit, that is, as opposed to a general purpose computer.

[00:19:37] Speaker 02:
And our court held that a algorithm should be the corresponding structure to the circuit.

[00:19:45] Speaker 03:
I believe in cases such as Sony, the Anku, and HTTP, the IPCOM are certainly analogous to that point where

[00:19:58] Speaker 03:
But I can say they're analogous, but they're not circuits.

[00:20:00] Speaker 02:
Neither of those cases involve circuits, right?

[00:20:04] Speaker 03:
I don't believe they involve circuits, per se.

[00:20:06] Speaker 03:
That's correct, Your Honor.

[00:20:08] Speaker 02:
So there are no cases in which our court has held that when a claim is directed to a circuit, like a power tracker circuit, that we should interpret the corresponding structure to be algorithms.

[00:20:25] Speaker 03:
Not at that level of justice.

[00:20:27] Speaker 02:
You're asking for it.

[00:20:28] Speaker 02:
I just want a very, I want a yes or no answer.

[00:20:33] Speaker 03:
I'm not aware of such a case.

[00:20:37] Speaker 02:
Okay, thank you.

[00:20:38] Speaker 00:
Council, let me ask, if you don't mind, one more question on this before you sit down.

[00:20:41] Speaker 00:
You know, you sort of marched through in your brief in a very methodical way why you think an algorithm ought to be the associated structure.

[00:20:51] Speaker 00:
I'm just not sure if you appreciate the catastrophic breadth of what you're asking for.

[00:20:57] Speaker 00:
I understand that you represent the patentee in this case, but the electrical arts are the most frequent user of the means for clauses, and you're now wanting to impute an algorithm requirement into every patent, otherwise it be held indefinite, if there's a means for that is directed to circuitry, which could implicate a logic or software component to the circuitry.

[00:21:20] Speaker 00:
That's the rule of law you're asking for.

[00:21:22] Speaker 00:
I think that rule of law is so broad that it would invalidate thousands and thousands of electrical patents that have relied upon the understanding in our law that the algorithm requirement is limited to a general purpose computer.

[00:21:39] Speaker 00:
Will you please address why you're not asking for a rule of law that might unsettle quite some limitations and really amount to a radical departure from our existing precedent?

[00:21:50] Speaker 03:
Yes, your honor, and in two parts.

[00:21:52] Speaker 03:
I think this court's precedent makes clear when there's an algorithm still necessary when there's a general reference to hardware or broad references to categories of hardware, such as in HTC and in Sony.

[00:22:06] Speaker 00:
And on the fact that this is... Well, counsel, counsel, counsel, in HTC, our court expressly held that the processor and transceiver, which are, by the way, components of pretty much every general purpose computer, were amounted to a general purpose computer.

[00:22:19] Speaker 00:
So that's not, quote, hardware in the abstract.

[00:22:22] Speaker 00:
And it's definitely not a specific circuit like a power tracker circuit.

[00:22:27] Speaker 03:
Well, Your Honor, I would say on the facts of this case, then, Intel itself has made clear that the term power tracker, as used in the 675 patent, what its expert opined is it does not provide any detail about the structure of the power tracker.

[00:22:42] Speaker 00:
So under the circumstances of this case... Even though during the prosecution history at A2231, there was evidence that a power tracker circuit includes a range of very specific and known circuits?

[00:22:58] Speaker 03:
Your Honor, with respect to the prosecution history, that was overcoming a rejection... Doesn't matter.

[00:23:04] Speaker 00:
It establishes the state of the art, right?

[00:23:07] Speaker 03:
And it was saying so.

[00:23:10] Speaker 03:
I believe that you said that it would be the power tracker connotes structure sufficiently under sub-structure.

[00:23:16] Speaker 03:
That's a different inquiry under Section 112, Step 2.

[00:23:19] Speaker 03:
It is a different inquiry whether that structure in and of itself is adequate to perform the claim function.

[00:23:26] Speaker 00:
But can you now try to address my breast concern because, you know, your brief doesn't at all seem to address the

[00:23:34] Speaker 00:
normative the breadth of what you appear to be asking for, at least to my mind.

[00:23:39] Speaker 00:
So why should I not be terrified that you're going to unseat enormous swath of settled expectations about how the electrical arts use means for?

[00:23:48] Speaker 03:
Well, because in the facts of this case, Your Honor, the petitioner concedes that as the power tracker does not connote or does not provide any detail about the structure,

[00:24:01] Speaker 03:
And therefore, you need that corresponding algorithm.

[00:24:04] Speaker 03:
And that, I think, dovetails with cases such as Stoney v. Iancu, where I believe the term was a synthesizer or controller.

[00:24:14] Speaker 03:
And this court explained that if that was truly implemented hardware, we would expect additional hardware detail.

[00:24:21] Speaker 03:
And because it was absent, this court construed the complete corresponding structure to be the controller synthesizer with a corresponding algorithm.

[00:24:30] Speaker 00:
So in that case, we said there needed to be additional hardware.

[00:24:33] Speaker 00:
Did we say there had to be an algorithm?

[00:24:36] Speaker 03:
I believe the court construed the claim to require an algorithm.

[00:24:41] Speaker 01:
Council, what if the record demonstrates that the tractor is a specific circuit?

[00:24:49] Speaker 01:
How does that affect your argument?

[00:24:52] Speaker 03:
If the record revealed that a power tracker by itself was adequate to perform the claimed function, then I think we would be in a situation such as, I believe, at Serrano where you could have a specific structure by itself or you could have a broad class of hardware together with an algorithm.

[00:25:11] Speaker 03:
But we know that that's not the case here because Intel's expert told us so.

[00:25:20] Speaker 00:
Okay, thank you, Council.

[00:25:22] Speaker 00:
Let's hear from colleagues.

[00:25:25] Speaker 00:
Are you okay with me moving on now?

[00:25:28] Speaker 00:
Yes.

[00:25:28] Speaker 00:
Okay, then let's go ahead and hear from your opposing council.

[00:25:36] Speaker 04:
Good morning, Your Honor.

[00:25:37] Speaker 04:
May it please the court, Lewis Tompros on behalf of Intel.

[00:25:41] Speaker 04:
Let me, if I could, start with Qualcomm's procedural argument

[00:25:45] Speaker 04:
It is well established that the board is not bound to adopt either party's preferred articulated construction of a disputed claim term and is instead free to adopt its own construction.

[00:25:57] Speaker 04:
When the board does so, that is not changing theories in a way that would prohibit that action under the APA as SAS describes.

[00:26:07] Speaker 04:
Instead, it is a permissible action by the board to reject both party's claim constructions and adopt its own.

[00:26:14] Speaker 00:
Council, let me answer that.

[00:26:20] Speaker 00:
Because SAS says the petition governs the scope of the IPR.

[00:26:24] Speaker 00:
Suppose that in the petition, it says clearly the claim construction is A. A is a very specific, particular thing.

[00:26:31] Speaker 00:
Patentee says no, claim construction is B. The board comes along out of the blue, never having mentioned it at oral argument or to anyone ever anywhere, and adopts the claim construction is instead C.

[00:26:44] Speaker 00:
And suppose both parties are befuddled by this C, claim construction, because it sort of came out of left field, has no foundation in the record, isn't supported by the SPAC.

[00:26:56] Speaker 00:
You don't think that there would be an APA problem if either or both of the parties were to complain to the court that they didn't have an opportunity to address that?

[00:27:04] Speaker 04:
Respectfully, Your Honor, I think this Court's precedent makes clear that that is not an APA problem.

[00:27:10] Speaker 04:
Now, it doesn't preclude an argument on the merits, which Qualcomm is not making.

[00:27:14] Speaker 00:
Of course, either party could challenge... Under which of our precedent do you believe, if the Board adopts a radically different claim construction than what either party proposed, that there's no APA violation in them doing that in the first instance in the final written decision?

[00:27:32] Speaker 04:
I think the key precedents are Western Gecko, where the court says the board is not bound to adopt either party's preferred articulated construction of a disputed claim term.

[00:27:43] Speaker 00:
Does Western Gecko... Yes, of course.

[00:27:45] Speaker 00:
Mr. Tompress, no one is disputing, even Falcom does not dispute, that the board may adopt a different claim construction.

[00:27:52] Speaker 00:
That's not the question.

[00:27:53] Speaker 00:
The question is, does

[00:27:54] Speaker 00:
the board have to give the parties an opportunity to be heard on that different claim construction, saying unequivocally no.

[00:28:00] Speaker 00:
I don't believe Western Echo addresses that issue at all.

[00:28:04] Speaker 04:
I agree it doesn't specifically say that, but in that case there was no indication that the parties had subsequently had an opportunity to brief that.

[00:28:14] Speaker 00:
Is there an ACA challenge in that case?

[00:28:16] Speaker 04:
I don't think so, Your Honor.

[00:28:18] Speaker 00:
Why would we have a record or why would this court have decided whether it was handled appropriately from a procedural standpoint?

[00:28:25] Speaker 04:
Well, I think that issue then came up subsequently in Praxair where there was indeed an APA challenge.

[00:28:32] Speaker 04:
In that case, the APA challenge was the argument that in construing a term, pharmaceutically acceptable was the term, the board violated a party's procedural rights by adopting a claim construction that neither party proposed.

[00:28:47] Speaker 04:
This court then said that argument is meritless.

[00:28:50] Speaker 04:
the board did not, quote, change theories in midstream, citing SAS.

[00:28:55] Speaker 04:
It reasonably declined to construe the generic term, pharmaceutically acceptable in institution, then rejected a party's further arguments regarding the term.

[00:29:04] Speaker 00:
To be clear, IMPRAX AIR, because I don't remember that case specifically, was that an APA challenge on the basis of notice and an opportunity to be heard, or was it an APA challenge to the propriety of the board adopting a different claim construction?

[00:29:19] Speaker 04:
It was, I believe it was a challenge on the basis, on SAS, right, on SAS basis, which is... That's not my question.

[00:29:27] Speaker 00:
Is it a, was it a, we didn't have adequate notice and an opportunity to be heard challenge?

[00:29:33] Speaker 00:
That's all this one is.

[00:29:34] Speaker 00:
This one is not a challenge.

[00:29:35] Speaker 00:
Nobody here, I have not seen anywhere Qualcomm say that the board can't adopt a different construction.

[00:29:42] Speaker 00:
They just want a chance to address it.

[00:29:45] Speaker 04:
I understand, Your Honor.

[00:29:46] Speaker 04:
So I think the answer to your question is yes, though I have not read the details of the brief subtract there to be able to confirm whether they actually say notice and opportunity.

[00:29:55] Speaker 04:
What they definitely say is SAS precludes this.

[00:29:59] Speaker 04:
And what SAS was doing was saying the APA says the board may not change theories without notice and opportunity.

[00:30:06] Speaker 00:
Does the APA have multiple different independent requirements that an agency has to follow?

[00:30:11] Speaker 00:
Of course, it does.

[00:30:12] Speaker 00:
So, of course, which could be notice and opportunity to be heard, another of which could be required to articulate, you know, fully and completely the rationale for your decision.

[00:30:21] Speaker 00:
A different one could be in the scope of the petition.

[00:30:24] Speaker 00:
These are all requirements.

[00:30:26] Speaker 00:
The fact that they are found a different portion of the APA wasn't violated when the board decided a claim instruction different has, to me, no bearing on whether or not a similar challenge based instead upon notice and opportunity to be heard.

[00:30:41] Speaker 00:
would have been decided that way.

[00:30:47] Speaker 04:
I think I can explain the relationship.

[00:30:49] Speaker 04:
What the APA requires is not notice and opportunity to be heard about literally everything.

[00:30:55] Speaker 04:
What the APA requires is that an agency may not change theories in midstream without notice and opportunity to be heard.

[00:31:04] Speaker 04:
So what Praxair said is adopting a claim construction that neither party proposed is not changing theories midstream.

[00:31:12] Speaker 04:
Therefore, there is no predicate requirement

[00:31:15] Speaker 04:
for such a notice and opportunity to be heard.

[00:31:17] Speaker 04:
And I do think that is precisely the situation here.

[00:31:20] Speaker 04:
It's exactly the same thing that happened in the intellectual ventures case where there was likewise the court said there is no requirement for the board to adopt one of the party's construction.

[00:31:32] Speaker 04:
So I think as a predicate matter where the board does not previously say it's going to construe the claim one way and then change, where the board instead

[00:31:42] Speaker 04:
who just rejects both parties' arguments, that is not a change in theory midstream that gives rise to a notice and opportunity to be heard.

[00:31:51] Speaker 04:
And therefore, we don't even have to get to the question of whether there was adequate notice or not.

[00:31:59] Speaker 04:
Now, it is important, as was raised in Palin's argument, that Qualcomm is not appealing on the merits.

[00:32:08] Speaker 04:
They did in their briefing before the board make arguments in support of the claim construction and make arguments specifically in support of the aspect of the claim construction for which they claim they never had an opportunity to be heard.

[00:32:25] Speaker 04:
The board itself made clear in its summary of the party's arguments at JA-18 that Qualcomm argued for and cited evidence, including extrinsic evidence,

[00:32:38] Speaker 04:
in support of its extended transmission bandwidth construction, which is its version of the increase of bandwidth for the user.

[00:32:45] Speaker 04:
So the Qualcomm had the opportunity to defend its construction.

[00:32:49] Speaker 04:
It did defend its construction.

[00:32:51] Speaker 04:
The board rejected it.

[00:32:53] Speaker 04:
And the only thing the board did that is different from just rejecting Qualcomm's arguments outright and switching to petitioners is that it adopted its own construction.

[00:33:05] Speaker 04:
which this court has said it's free to do.

[00:33:08] Speaker 04:
So we don't even have to get to notice and opportunity to be heard.

[00:33:12] Speaker 04:
All of the cases that involve notice and opportunity to be heard that Qualcomm sites do not involve a

[00:33:20] Speaker 04:
an adoption of a claim construction that neither party proposed.

[00:33:23] Speaker 04:
They instead involve reliance on an entirely new theory, entirely new prior art, et cetera.

[00:33:29] Speaker 04:
Those cases are not in this category where the court has said that there is no requirement to adopt one party's construction or the other.

[00:33:37] Speaker 04:
I will say that notwithstanding that, if this court were to find

[00:33:42] Speaker 04:
that there was some obligation for Qualcomm to have notice of the new construction, that the notice that was given during Intel's argument before the board was sufficient.

[00:33:56] Speaker 04:
We'd simply disagree with Qualcomm that the notice was in any way unclear.

[00:34:04] Speaker 04:
Wurmeister did say specifically, we'll think about whether that's necessary with regard to the specific aspect of the construction that Qualcomm disputes.

[00:34:15] Speaker 04:
And Qualcomm then had multiple opportunities to attempt to support that aspect of the construction if it had wanted to do so.

[00:34:23] Speaker 04:
It had its full argument time.

[00:34:25] Speaker 04:
It had the opportunity to seek

[00:34:26] Speaker 04:
reconsideration after final written decision.

[00:34:29] Speaker 04:
It had the opportunity to seek to submit before final written decision a supplemental brief given what happened at oral argument and it elected not to do any of those and then it elected not to actually challenge on the merits.

[00:34:43] Speaker 02:
I want to go back to your general point about maybe no, I think you're taking the position that no notice was required.

[00:34:52] Speaker 02:
in this case.

[00:34:54] Speaker 02:
But what about the fact, I mean, something that makes this unique to me is the idea that both parties proposed the same construction.

[00:35:04] Speaker 02:
These six words were agreed to by both parties, and the ITC had specifically included these six words in the construction as well.

[00:35:12] Speaker 02:
Given that that seemed to be, you know, it seemed to be steeped in some history, those six words, and it was undisputed,

[00:35:22] Speaker 02:
I hear opposing counsel to be saying, you know, we didn't brief this.

[00:35:26] Speaker 02:
We didn't think about this because it was something that, um, was undisputed.

[00:35:33] Speaker 02:
Both parties agreed.

[00:35:34] Speaker 02:
So why wouldn't notice be fired in this circumstance?

[00:35:40] Speaker 04:
Understood, your honor.

[00:35:41] Speaker 02:
I, so I just, I think the facts are whether it's a claim destruction or not.

[00:35:45] Speaker 02:
This is simply whether the board should say something like,

[00:35:49] Speaker 02:
give some notice.

[00:35:50] Speaker 02:
I'm having a hard time understanding why no notice is required.

[00:35:54] Speaker 02:
Anyway, go ahead.

[00:35:55] Speaker 04:
Yes, so I think the procedural history, if you've characterized it, there is just a little bit off.

[00:36:00] Speaker 04:
So you are correct that there are similarities between the two parties' constructions, but the parties did not actually propose the same six words.

[00:36:11] Speaker 04:
They proposed different constructions.

[00:36:14] Speaker 04:
And even as to these specific six words, they proposed

[00:36:18] Speaker 04:
different language.

[00:36:19] Speaker 04:
The language that Qualcomm has been describing here is actually part of the Intel proposal.

[00:36:24] Speaker 04:
What Qualcomm proposed

[00:36:26] Speaker 04:
was language that talked about carrier aggregation requiring multiple component carriers.

[00:36:37] Speaker 04:
It did not have the specific increase the bandwidth.

[00:36:39] Speaker 04:
It had language that we agree in substance encompasses a similar term.

[00:36:44] Speaker 04:
So this was not a situation where this was an undisputed claim term or an agreed to construction.

[00:36:49] Speaker 04:
In that circumstance, things might be different.

[00:36:52] Speaker 04:
This was a situation in which this term was indeed disputed.

[00:36:56] Speaker 00:
But counsel, not with regard to this portion of it.

[00:37:01] Speaker 00:
You know, a term can be 10 words long, right?

[00:37:04] Speaker 00:
A term is not always a single word.

[00:37:07] Speaker 00:
And with regard to this portion, whether this claim limitation required increased bandwidth, you were both in complete agreement.

[00:37:16] Speaker 04:
You're correct, Your Honor, that both proposed constructions included the increased bandwidth aspects.

[00:37:22] Speaker 04:
Though I will say, Qualcomm did not, it did indeed brief why that was appropriate in its briefing.

[00:37:29] Speaker 04:
That is, it defended the increased, as it called it, extended transmission bandwidth in its briefing.

[00:37:35] Speaker 04:
At JA 18, there's a discussion of what they cited.

[00:37:38] Speaker 04:
They cited the Dahlmann reference.

[00:37:39] Speaker 04:
They cited portions of the specification.

[00:37:42] Speaker 04:
The board understood

[00:37:43] Speaker 04:
Qualcomm's argument about why extended bandwidth was there.

[00:37:47] Speaker 02:
So, it did have the... I'm sorry to interrupt you, but do we have in the record, you're setting J18, which is the board's opinion, right?

[00:37:56] Speaker 02:
Do we have in the appendix there are briefs?

[00:38:00] Speaker 04:
We have portions.

[00:38:01] Speaker 04:
I do not think that the portions that cite that aspect were in the appendix.

[00:38:08] Speaker 04:
They are certainly part of the overall record and available from the patent office as part of the certified list.

[00:38:15] Speaker 04:
But they are, that was what the board, that's the board's description of what the patent owner was doing.

[00:38:23] Speaker 04:
And the board is correct.

[00:38:24] Speaker 04:
The patent owner did indeed defend all aspects of its construction.

[00:38:28] Speaker 02:
Right, so that would go under, just to make sure my head, I've got it right.

[00:38:32] Speaker 02:
You agree that would be part of like opportunity to respond.

[00:38:35] Speaker 02:
You had an opportunity to respond because you actually briefed it.

[00:38:39] Speaker 04:
I think that's right.

[00:38:41] Speaker 04:
I think that's right.

[00:38:41] Speaker 04:
And I think it goes overall to the problem with their claiming that they never had an opportunity to be heard.

[00:38:48] Speaker 04:
I'm not sure that they're, as we said, that they're actually, that the notice and opportunity to respond is required on a claim construction issue anyway.

[00:38:57] Speaker 04:
But to the extent that there is some issue about Qualcomm claiming that it never had its arguments before the board, that is just wrong.

[00:39:04] Speaker 04:
It did have them in its opening briefs.

[00:39:08] Speaker 01:
Just turning to the second... Just to be clear, are you saying that the parties had presented evidence and argument regarding whether the priority met the two limitations?

[00:39:23] Speaker 04:
Yes, Your Honor, and now I agree completely with Judge Moore and with opposing counsel that in substance there wasn't a dispute about the aspect of the limitation that Qualcomm is now addressing here.

[00:39:35] Speaker 04:
Not withstanding that, the constructions were different and both parties presented evidence in support of their construction.

[00:39:41] Speaker 04:
Qualcomm itself presented evidence in support of its increased bandwidth aspect of its construction.

[00:39:47] Speaker 04:
The Board understood that and identified it in its opinion in summarizing Qualcomm's arguments.

[00:39:53] Speaker 04:
So turning, if I could, to the second issue on the means plus function claims.

[00:39:57] Speaker 04:
This is not a case in which the algorithm rule of MS gaming and aristocrat applies.

[00:40:03] Speaker 04:
It applies only to means plus function claims in which the corresponding structure is a general purpose computer.

[00:40:10] Speaker 04:
Here, both parties agree that the corresponding structure is a power tracker, and the board found, quote, the power tracker is not a computer, unquote.

[00:40:20] Speaker 04:
That's JA 347.

[00:40:21] Speaker 04:
It's a factual finding by the board.

[00:40:23] Speaker 04:
Qualcomm did not challenge that underlying finding a fact, nor would it have any basis

[00:40:28] Speaker 04:
to do so and that ends the analysis.

[00:40:30] Speaker 04:
That makes this case exactly like and controlled by the Nevereau case in which just last year this court addressed means for generating a paresthesia free therapy signal with the signal frequency in a certain range.

[00:40:44] Speaker 04:
The corresponding structure there was found to be a signal generator which was not a general purpose computer and the court in Nevereau said that ends the analysis where there is not a general

[00:40:56] Speaker 04:
where the claim does not require a specific algorithm when the identified structure is not a general purpose computer or processor.

[00:41:06] Speaker 04:
What we would say Qualcomm's error is, is focusing on

[00:41:10] Speaker 04:
the level of detail of description of the disclosed power tracker.

[00:41:14] Speaker 04:
That is not what's relevant for the algorithm rule.

[00:41:18] Speaker 04:
It's not the level of detail of the disclosure.

[00:41:21] Speaker 04:
What matters is whether the thing that is disclosed is or is not a general purpose computer, not how much detail you use to describe the thing.

[00:41:30] Speaker 04:
Here, the thing that is disclosed is a power tracker.

[00:41:33] Speaker 04:
It is described specifically as an ASIC.

[00:41:35] Speaker 04:
It is described specifically in the prosecution history as a set of known circuits.

[00:41:40] Speaker 04:
And NEVRO then controls and that ends the analysis.

[00:41:44] Speaker 04:
I know that I'm over time.

[00:41:45] Speaker 04:
Thank you, Ramesh.

[00:41:47] Speaker 00:
Does anyone have any further questions for Mr. Tompros?

[00:41:51] Speaker 00:
No.

[00:41:51] Speaker 00:
Okay.

[00:41:52] Speaker 00:
I have one more.

[00:41:54] Speaker 00:
You nonetheless undoubtedly heard all of my questions.

[00:41:57] Speaker 00:
was surprised that there would be an attempt to extend the WMS gaming algorithm rationale to a piece of circuitry.

[00:42:06] Speaker 00:
Are you aware of any cases where that's ever been done in the past?

[00:42:11] Speaker 04:
I'm not, Your Honor, and I agree with counsel for Qualcomm that HTC and Sony are not cases in which there was an extension to circuitry.

[00:42:21] Speaker 04:
Those were general purpose computers.

[00:42:25] Speaker 04:
I've never seen that done, and I agree with Your Honor that it would be a very broad expansion of what is otherwise a fairly limited rule in aristocrat.

[00:42:36] Speaker 00:
Okay.

[00:42:36] Speaker 00:
Thank you, Mr. Tomprose.

[00:42:40] Speaker 00:
Give some rebuttal time.

[00:42:42] Speaker 00:
Why don't you give him three minutes and if colleagues have more questions, of course, we can extend it.

[00:42:50] Speaker 03:
Thank you, Your Honors.

[00:42:51] Speaker 03:
Three quick points on the APA issue.

[00:42:55] Speaker 03:
First, the decisions such as Praxair and Western Gecko, they're different for a variety of reasons in the present circumstances, but two important differences are in none of those cases did the board adopt a construction that was materially broader

[00:43:08] Speaker 03:
than what either party proposed, and in none of those cases did the board eliminate a feature of the claim construction that both parties had agreed to prior.

[00:43:18] Speaker 03:
Second, with respect to the different verbiage, I think the board, verbiage between increased bandwidth and enhanced bandwidth, I think the board's opinion at APTX 22 recognizes that whether it's increased bandwidth for the user or enhanced bandwidth, it's substantively the same thing.

[00:43:35] Speaker 03:
And third, with respect to the argument that Qualcomm briefed this issue down below, if, Your Honors, the issue that was briefed was the part of the construction, Qualcomm's construction, that required transmission from a single terminal.

[00:43:51] Speaker 03:
And if we look at APPX 1558, I believe, which is a demonstrative that Intel itself introduced, it highlights the terms

[00:44:01] Speaker 03:
that the parties disputed in part of the construction that the parties disputed during the proceedings.

[00:44:09] Speaker 03:
And it focused on a single terminal and transmission from a single terminal, not whether the term, the term, the corality of carrier aggregated transmit signals requires increased bandwidth for these.

[00:44:21] Speaker 00:
That was never in dispute.

[00:44:22] Speaker 00:
Council, I understand that opposing council has argued that despite the fact that it was undisputed,

[00:44:29] Speaker 00:
You nonetheless presented argument to the board about why the increased bandwidth limitation as opposed to the other portions of this construction should be adopted by the board.

[00:44:39] Speaker 00:
Did you do that in the Patent Owner Response?

[00:44:41] Speaker 00:
Is that correct?

[00:44:43] Speaker 03:
Your Honor, we advocated constructions that extended transmission bandwidth, but the focus of the argument was that it has to be from transmission from a single terminal.

[00:44:52] Speaker 03:
We did not focus on whether it has to be extended transmission bandwidth.

[00:44:57] Speaker 03:
That was, we agreed with that part of the construction from Intel.

[00:45:02] Speaker 02:
Council, just I want to make sure I understand.

[00:45:04] Speaker 02:
Did you explain why there were site evidence to support that part of your claim construction, that part being the extended

[00:45:13] Speaker 02:
bandwidth part?

[00:45:16] Speaker 03:
I believe there were citations to that, but the focus was on a user transmission from a single terminal.

[00:45:21] Speaker 03:
That was where the arguments were made.

[00:45:23] Speaker 03:
We did not focus on arguing about or making a case for the increasing the user bandwidth.

[00:45:29] Speaker 03:
We agreed with that.

[00:45:33] Speaker 00:
Okay, anything further?

[00:45:37] Speaker 00:
All right, counsel, I think we'll take this case under submission at this point.

[00:45:40] Speaker 00:
I thank both lawyers for an excellent argument.

[00:45:44] Speaker 03:
Thank you, Your Honor.

[00:45:46] Speaker ?:
Thank you.