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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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The first case for argument this morning is 192340, SK Hynex v. Bianco.

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Mr. McAuliffe, whenever you're ready.

[00:00:20] Speaker 03:
Thank you, Your Honor.

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May it please the court?

[00:00:21] Speaker 03:
Good morning, Your Honors.

[00:00:23] Speaker 03:
Joe McAuliffe for Appellant SK Hynex.

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Your honors, in the proceedings below, the board adopted a brand new theory in the final written decision to uphold claims 40 and 41 in view of Ellsbury.

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The petition had argued that claims 40 and 41 were obvious over Ellsbury alone.

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In particular, the petition argued that Ellsbury rendered obvious that the recited buffer circuits further included the output buffers in reciting claim 40.

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The board in its final written decision did not decide that issue.

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Instead, the board decided the issue of whether Ellsbury discloses the output buffers of claim 40 and finding that we did not.

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There is a clear distinction in patent law.

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Mr. McAlister, Judge, sorry to interrupt, but firstly, can you keep your voice a little down?

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And secondly, I mean, we've had a 28-J letter appropriately citing our recent case in Vanduul.

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And I frankly am having a hard time differentiating between what went down here and what went down in FanDuel.

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And I know you alternatively said, well, if we're distinguishing it, and if not, FanDuel's wrong.

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Well, if FanDuel's wrong, that's kind of a problem for a panel here.

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So tell us how you think it can be fairly distinguished, please.

[00:01:49] Speaker 03:
Oh, it's very easily distinguished.

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In FanDuel, Your Honor,

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What the court held was that the petitioner was on notice that the board was going to address and decide an argument or a theory included in the petition.

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Here the board did not address or decide the argument that we included in our petition.

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It addressed and decided one that was not included in our petition.

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That was wholly different.

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We argued it would have been obvious to modify Ellsbury to further include the output buffers of Claim 40.

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The board said we had not proven that Ellsbury disclosed the output buffers of Claim 40.

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Whether a prior argument... Mr. McAuliffe, this is Judge Chen.

[00:02:30] Speaker 02:
Okay, so I see your argument is that... Your argument today is that you made a specific argument that it would have been obvious to modify Ellsbury

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You have both an input buffer and an output buffer, both of which are associated with the right command.

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And you're arguing to us today that the board failed to appreciate that argument in your petition.

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But when I look at your petition, I don't quite see your articulation of why claim 40 is unpatentable.

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in the way that I just heard you argue it today in front of us.

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The way I understand your petition when it comes to claims 40 and 41 was that the bidirectional drivers of Ellsbury could easily be implemented using something called tri-state buffers.

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But you don't take the extra step of identifying what is it in Ellsbury that corresponds to an input buffer

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and also a separate thing that corresponds to an input buffer as well as an output buffer.

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And then even if it's lacking that, why would you modify Ellsbury to have both an input buffer and an output buffer both associated with the right command?

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Where is that in your petition?

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Right.

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Well, Judge Shen, first of all, for claim 40, I didn't have to show for claim 40 both.

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The input buffer is recited in claim 39.

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And the board found that Ellsbury, in its analysis of claim 39, from which claim 40 depends, the board found that Ellsbury discloses the input buffer.

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So for claim 40, I just had to show it was obvious to further include the output buffer.

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And that is exactly the theory in the petition at Appendix, Joint Appendix page 52, 53, I believe, at the whole page.

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But at the bottom of the page, we specifically say that Ellsbury renders obvious that each respective buffer circuit further includes the output buffers of claim 40.

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So we did not take on the third.

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But the problem here is that, you know, just invoking the word obvious and then quoting the language from the claim

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isn't much of an argument in terms of a theory of understanding why it would be obvious.

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And especially when all the surrounding language in your petition is really just talking about how it would be obvious to implement the bi-directional drivers of Ellsbury using tri-state buffers.

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So you still have to explain in your obviousness theory, in your modification theory,

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why if there are not separate input buffers and output buffers associated with the right command in Ellsbury, why would it be nonetheless obvious to add an output buffer to Ellsbury, which the board agreed with you already includes an input buffer associated with the right command?

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Right.

[00:05:46] Speaker 03:
Well... Now, where is that in your petition?

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Well, so the sentence I pointed you to was the end of that section.

[00:05:53] Speaker 03:
There's more analysis in there, including citations to Dr. Stone's testimony and analysis and to our prior analysis of Claim 14, which also requires essentially a tri-state output buffer in the right direction, just like... Well, if I understand Claim 14, it requires a tri-state buffer, right?

[00:06:14] Speaker 02:
Well, it's in the right direction.

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And that claim requires a right command.

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In the right direction, that's fine.

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But claim 14 does not require both an input buffer and an output buffer in the right command direction.

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Is that right?

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That's just a tri-state buffers in the right direction.

[00:06:32] Speaker 03:
Sure.

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But the board found that that claim was an obvious variation of Ellsbury.

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And so that's right.

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But that's a different claim than claim 40 and 41, which has this extra element.

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Yes, both an input buffer and an output buffer, both associated with the right to commit.

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There's no question.

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And the board found the Ellsbury... The board found the Ellsbury disclosed the input buffer.

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And in the context of Claim 14, the board found the output buffer in the right to deduction would have been an obvious variation of Ellsbury.

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And that was our argument, the obvious variation.

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We were not arguing that Ellsbury disclosed those output buffers in the right direction.

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I'm also not arguing that I only had to show one or the other.

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I conceived it.

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It had both inputs and output buffers, claim 40.

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But we showed that Ellsbury had the input in the analysis of claim 39.

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And we said it was an obvious variation to further include the output.

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And we cited not only our analysis of Claim 14, but the evidence and analysis of Dr. Stone in his book where his testimony where he says doing that with a tri-state buffer would have just been use of a known structure.

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It would provide reliable results with no unpredictable results.

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He said in his book there's a motivation to do it because he cited page 74 of his book that said you want to use these tri-state buffers

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where you have multi-tap transmission lines, and Ellsbury is a multi-tap transmission line.

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And in fact, on that same page, he discloses both input buffers and output buffers implemented using tri-state buffers.

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So we did have... Wait a second.

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Where are you talking about?

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It's page 74 of Dr. Stone's book.

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It's the page where he says, and he's cited by both our papers and the board, where he says you should use tri-state

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buffers where you have a multi-tap transmission line.

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I mean, are you pointing to what, figure 4.7?

[00:08:45] Speaker 03:
No, it is not figure 4.7.

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I believe it was figure 2.8.

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Look, the problem here is the basic problem is that the board could see there was a D flip flop in Ellsbury Figure 4.

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Right.

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And the board said, OK, we'll conclude that that's the equivalent and corresponds to an input buffer.

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Right.

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There's nothing else inside those little boxes of the bi-directional drivers

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in Ellsbury that could also be, in addition to that D flip flop, something else that corresponds to an output buffer.

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With respect, Your Honor, you're doing what the Board did.

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I didn't have to show Ellsbury disclosed the additional output buffers, and I didn't seek to.

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All I sought to prove was that it would have been obvious to modify Ellsbury to include them, to further include them, and that is exactly the language we use in our petition because that's exactly the language in the claim, in claim 40.

[00:10:04] Speaker 02:
Okay, what is the exact language you use in your petition that says, okay, okay, okay, there is no output buffer in Ellsbury, but it'd be obvious to add an output buffer to Ellsbury.

[00:10:18] Speaker 03:
It is a joint appendix page 5253.

[00:10:22] Speaker 02:
Right.

[00:10:23] Speaker 02:
I don't see those words on A5253.

[00:10:29] Speaker 03:
Give me one minute, Your Honor.

[00:10:30] Speaker 03:
I have it right here.

[00:10:31] Speaker 03:
The last sentence on that page.

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Thus, Ellsbury renders obvious that each respective buffer circuit further includes output buffers.

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And then there's an and in brackets.

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And then there's remaining claim language from plain 40.

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Right.

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So that sentence says, thus, Ellsbury renders obvious that the quoted claim language.

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Thus, Ellsbury renders obvious the claim language.

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Right?

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Which says further includes.

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Yes, Your Honor.

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That's a conclusion.

[00:11:09] Speaker 03:
Well.

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That's not really an analysis, is it?

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Well, no, but there's more analysis.

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As I said earlier, we cited claim 14 and Dr. Stone's analysis.

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And if you look at Dr. Stone's analysis, I don't see anybody who comes to the conclusion that we were arguing Ellsberg disclosed it.

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First of all, neither the petition nor Dr. Stone's testimony ever said it discloses it.

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And there's a distinction between a prior art reference disclosing something and something being obvious from that prior art reference.

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Secondly, everything that Dr. Stone says

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all goes to an obvious variation of Ellsbury.

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Using these tri-state buffers with known, they created predictable and reliable results, there were motivations to do it.

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Nothing in our papers could be read to mean that we were saying Ellsbury disclosed those output buffers.

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But yet, the board said, you didn't prove claim 40 unpatible because you didn't prove Ellsbury disclosed those output buffers.

[00:12:03] Speaker 03:
They changed theories on us and didn't address the theory that we put in our papers.

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And that's a violation of my client's due process and APA rights.

[00:12:13] Speaker 03:
In fact, I think... Yes, Your Honor.

[00:12:18] Speaker 00:
No, go ahead and finish your thought.

[00:12:19] Speaker 00:
I was just going to suggest we hear from the other side, but finish your thoughts.

[00:12:24] Speaker 03:
Well, my thought is this puts this issue squarely in the Nike, in Ray Magnum Oil, and SAS cases, where in each case the board came up with a new theory that had never been in anybody's paper.

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This theory was that the board decided, and it's with respect to the output bar for the claim 40, was never in our petition.

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The patent owner never raised it.

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The board never raised it.

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In fact, this is a somewhat more egregious case, I would suggest to you, because in those cases, the board came up with a theory on behalf, essentially, of one party and resolved it against the other party.

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Here, the board came up with a theory basically on behalf of

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my client and resolved it against my client.

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We never made this argument that they decided.

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And that violated our, our, my client's rights.

[00:13:19] Speaker 00:
Why don't you do that for rehearing or reconsideration on this issue?

[00:13:25] Speaker 03:
Well, obviously we're not required to do that.

[00:13:27] Speaker 03:
But, but there's a lot of reasons not to go for, for rehearing or reconsideration before the PTAB.

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One big one is timing.

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There is no time limit for them to decide it.

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And, you know, this patent is the subject of a staid parallel litigation, but it's still subject to a parallel litigation.

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And the continuation of it has been asserted.

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And so, you know, it was our view that we were, that appeal was a better route for us.

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And I think it was Maggie Moyles that we're entitled to elect appeal rather than the hearing, and we did.

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

[00:14:08] Speaker 03:
Well, I don't know if my time, I didn't hear a beeper, but if you want to go to the, I'm happy to let the other side have their say, if that's what you'd like, Chief Justice.

[00:14:18] Speaker 00:
I'm sorry.

[00:14:19] Speaker 00:
Elise, did we hear a beep?

[00:14:22] Speaker 00:
Yes, it may have been a little soft and I'll try to do that better next time.

[00:14:25] Speaker 00:
I'm very sorry.

[00:14:32] Speaker 00:
It's okay.

[00:14:32] Speaker 00:
Mr. McBride.

[00:14:36] Speaker 01:
Good morning, your honors.

[00:14:37] Speaker 01:
May it please the court?

[00:14:39] Speaker 01:
Chief Judge Prost, I believe you have it correct with the FanDuel versus interactive games decision.

[00:14:46] Speaker 00:
Well, let me start with the... Excuse me, Mr. McBride.

[00:14:50] Speaker 00:
But let me start you with the rehearing.

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The board is... Or the office is suggesting, is it, that you can't have a kind of APA due process violation if you don't...

[00:15:03] Speaker 00:
take advantage of the opportunity for rehearing before the board, is it?

[00:15:11] Speaker 01:
Well, I think our point with the rehearing is that, well, in this case, you know, first of all, SK Hynix certainly had notice of the ground of unpatentability that was going to be reviewed by the board because they presented it in their petition.

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So they had notice at the moment they filed their petition.

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They had an opportunity to address that ground.

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And then our point with the request for rehearing was that that was a perfect opportunity for them to have another opportunity to address the issue with respect to claims 40 to 41 if they thought that the board's analysis concerning claims 40 to 41 was inconsistent with how it analyzed

[00:15:53] Speaker 01:
claim 14, or if they thought that the board misunderstood or misapprehended the arguments that they were making in their petition or that Dr. Stone made in his declaration, that would have been the perfect opportunity to bring that to the attention of the board.

[00:16:09] Speaker 01:
So they certainly had, in the director's view,

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you know, fair notice and opportunity of the ground.

[00:16:17] Speaker 00:
But I don't think you're really answering my question.

[00:16:20] Speaker 00:
I understand your position that they had another bite at the apple if they chose to take it.

[00:16:26] Speaker 00:
But rehearing is rarely granted.

[00:16:28] Speaker 00:
So is it your view that you cannot sustain a due process or APA if you don't take advantage of the rehearing?

[00:16:42] Speaker 01:
I mean, it seems like in FanDuel, I mean, this court said that the time to disagree with the board's decision is after the board's decision, either in a request for rehearing or by... Mr. McBride.

[00:16:55] Speaker 02:
Mr. McBride.

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This is Judge Schoen.

[00:16:58] Speaker 02:
Yes.

[00:16:59] Speaker 02:
Is S.K.

[00:16:59] Speaker 02:
Hinnick barred from making their due process violation argument to us here at the Federal Circuit because they failed to file a reconsideration request?

[00:17:09] Speaker 02:
Is that the PTO's position?

[00:17:13] Speaker 01:
I don't think they're barred from making the argument.

[00:17:15] Speaker 01:
I just think, at least in the back of this case, it's not a very convincing argument.

[00:17:21] Speaker 01:
I mean, there could be a different situation where perhaps they didn't have an opportunity if a new ground of rejection was somehow raised.

[00:17:30] Speaker 01:
You know, maybe that would be a situation where you would have a viable due process claim without filing a request for rehearing.

[00:17:37] Speaker 01:
But at least in this case.

[00:17:38] Speaker 02:
But the bottom line is they can make this argument here on appeal.

[00:17:41] Speaker 02:
You agree with that?

[00:17:43] Speaker 02:
I think they can make that.

[00:17:45] Speaker 02:
You're just making an observation that, oh, there was an opportunity to raise it on reconsideration.

[00:17:51] Speaker 02:
But they're not required to in order to file this appeal and make this argument.

[00:17:57] Speaker 00:
Correct.

[00:17:58] Speaker 02:
Yeah.

[00:17:58] Speaker 02:
OK.

[00:17:59] Speaker 00:
Well, the second part to that question is not whether they're allowed to raise it, but whether it's appropriate for us.

[00:18:06] Speaker 00:
to find in their favor, even though they forfeited or they failed to file for reconsideration or rehearing.

[00:18:16] Speaker 00:
And the answer is to entertain a due process or an APA allegation here, notwithstanding the failure to file for rehearing, correct?

[00:18:28] Speaker 00:
Correct.

[00:18:32] Speaker 00:
OK.

[00:18:32] Speaker 00:
We were going to talk about fan bills, so please proceed.

[00:18:37] Speaker 01:
Yeah, so I think the FanDuel case is actually very, very similar to this case and involves a situation where the board and its institution decision, you know, went one way on patentability.

[00:18:50] Speaker 01:
The patent owner didn't really challenge the merits of that patentability determination in its patent owner response or its preliminary response.

[00:18:58] Speaker 01:
And then the board, after fully vetting all of the evidence presented, changed its decision.

[00:19:04] Speaker 01:
And in FanDuel, this court said that it encouraged the board to actually change its decision if it was convinced that its initial decision was wrong.

[00:19:13] Speaker 01:
And there's a number of reasons for doing that.

[00:19:15] Speaker 01:
There's a different standard.

[00:19:17] Speaker 01:
for determining patentability in an institution decision where you just have to look at whether there's a reasonable likelihood that at least one claim would be proven unpatentable as opposed to a final written decision where you're looking at each claim and you have to determine patentability by the preponderance of the evidence.

[00:19:36] Speaker 01:
There are very different analyses and standards.

[00:19:41] Speaker 01:
And then also the burden always remains on the petitioner throughout the proceeding, regardless of whether the patent owner files a patent owner response or regardless of what arguments the patent owner makes.

[00:19:54] Speaker 01:
And also in FanDuel, the score pointed out there's no pre-decisional opportunity for a petitioner to disagree with the board.

[00:20:04] Speaker 01:
That's not a requirement.

[00:20:06] Speaker 01:
The time to disagree with the board's decision is after it makes its decision.

[00:20:10] Speaker 01:
You can do that by filing a request for rehearing or appealing to this court.

[00:20:15] Speaker 01:
So, I don't think there's any way to distinguish a fan duel from the facts of this case.

[00:20:22] Speaker 02:
So, as I understood Mr. McAuliffe's argument, well, it's not something that necessarily fits within the facts of fan duels because, as I understand his argument today, it's that in their petition,

[00:20:39] Speaker 02:
their argument for unpatentability of claims 40 and 41 was based on argument number one, but the board never actually addressed argument number one.

[00:20:49] Speaker 02:
It misunderstood argument number one and ended up addressing a never made argument number two in finding that the claims were not proven to be unpatentable.

[00:21:02] Speaker 02:
So perhaps in a sense what he's arguing is that it needs to be vacated and remanded to give

[00:21:09] Speaker 02:
the board a chance to actually answer the argument that was raised in the petition.

[00:21:17] Speaker 02:
Could you explain why you don't believe that's necessary given their view that the board misconstrued the petition as arguing that Ellsbury discloses

[00:21:38] Speaker 02:
the claimed output buffer when really all, what Inix was arguing all along was that it's merely an obvious thing to do to add the output buffer.

[00:21:51] Speaker 01:
Yeah, well, Judge, I think you kind of nailed it in your analysis of what's in their petition.

[00:21:58] Speaker 01:
If you look at their petition at APPX 5253 for claim 40, it's just, it's a one-page analysis

[00:22:07] Speaker 01:
It's fairly conclusory.

[00:22:11] Speaker 01:
you know, identify what Ellsbury discloses.

[00:22:13] Speaker 01:
And then at the very end, they just say, you know, thus Ellsbury renders obvious that quote, and then they just quote the claim limitation, but they don't give any analysis as to why it would have been obvious to add an output buffer to Ellsbury's system as claimed.

[00:22:32] Speaker 01:
And that's really what's missing.

[00:22:33] Speaker 01:
And if you look at the board's analysis, that's exactly what it found.

[00:22:38] Speaker 01:
And Stone's declaration doesn't,

[00:22:40] Speaker 01:
go any further, if you look at his declaration at APPX 1834 to 1835, it's also very short.

[00:22:49] Speaker 01:
It's just over one page with six paragraphs, and it has the same conclusion.

[00:22:55] Speaker 01:
It talks about what's disclosed in Ellsbury, and for the reasons set forth, it would have been obvious to implement the cited combinations of Ellsbury and Stone such that, quote, and it just quotes the limitation, but it doesn't have

[00:23:10] Speaker 01:
the analysis of why it would be obvious to modify Ellsbury as disclosed in Figure 4 to include the output buffers, which as the board found, they don't appear in Ellsbury Figure 4.

[00:23:25] Speaker 01:
If you look at Ellsbury and how the board analyzed it,

[00:23:28] Speaker 01:
They looked at Ellsbury Figure 4 and found that they agreed with SK's arguments and its petition that the bi-directional signal drivers, elements 402 and 404, which included these D flip-flop, those were the claimed input buffers.

[00:23:47] Speaker 01:
But if those are the claimed input buffers, the board found that what you're missing is where is the additional disclosure of the output buffers that's required by claims 40 to 41, and that's just missing

[00:23:58] Speaker 01:
from the prior art, it's missing from the petition, it's missing from Dr. Stone's declaration.

[00:24:05] Speaker 02:
Mr. McBride, I get the sense that the other side thinks that if you agree that it would be obvious to have tri-state buffers implemented in Millsbury, then you necessarily agree that it would be obvious to

[00:24:26] Speaker 02:
have output buffers in Ellesbury.

[00:24:31] Speaker 02:
Can you speak to that question?

[00:24:35] Speaker 02:
There's an assumption that tristate buffers are output buffers.

[00:24:40] Speaker 01:
So I heard SK Hynexis Council make that argument, but I didn't see that argument in the petition.

[00:24:49] Speaker 01:
I didn't see that argument made before the board

[00:24:55] Speaker 01:
It's an interesting argument, but they just didn't make it.

[00:24:58] Speaker 01:
If that was their case, I believe they should have put that in their petition.

[00:25:01] Speaker 01:
Dr. Stone should have said something about that.

[00:25:05] Speaker 01:
You know, they could have put that in a request for re-hearing.

[00:25:07] Speaker 01:
They could have put that in their appeal brief or their reply brief.

[00:25:11] Speaker 01:
I mean, I think it's somewhat telling that after the director filed our intervener brief kind of pointing out that you still haven't pointed out where the prior are, where in Ellsbury and Stone.

[00:25:23] Speaker 01:
This additional limitation of the output buffer associated with the write command, where is that in the prior art and how do you map that to the claim?

[00:25:32] Speaker 01:
In their reply brief, they still didn't do that.

[00:25:34] Speaker 01:
Instead, they pointed to their own specification in the 907 patent and pointed out that they have written description support for the limitation.

[00:25:42] Speaker 01:
But this is not a written description rejection.

[00:25:45] Speaker 01:
It's a prior art rejection based on obviousness.

[00:25:48] Speaker 01:
So I just haven't seen it.

[00:25:50] Speaker 01:
I haven't seen that argument made anywhere.

[00:25:52] Speaker 01:
And, you know, the board gets deference for how it interprets, you know, how the factual findings that it makes as to what the prior art discloses.

[00:26:01] Speaker 01:
And I think its analysis here is fairly thorough.

[00:26:04] Speaker 01:
It considered all the evidence that SK Hynix presented.

[00:26:08] Speaker 01:
And they just found that it was not persuasive enough to meet the burden of persuasion here of a preponderance of the evidence.

[00:26:16] Speaker 01:
And if you take a step back, they did challenge 65 claims in the 907 patent, and they were successful in 63 of the 65.

[00:26:25] Speaker 01:
So they did a fairly thorough job here, and they agreed with almost everything S.K.

[00:26:30] Speaker 01:
Hynek said.

[00:26:31] Speaker 01:
It's just they just didn't see these additional limitations of claims 40 to 41.

[00:26:36] Speaker 01:
They didn't see it in the prior art.

[00:26:37] Speaker 01:
They didn't see it in the arguments.

[00:26:39] Speaker 01:
They didn't find that it would have been obvious.

[00:26:41] Speaker 01:
And they explained why.

[00:26:42] Speaker 01:
And I think that's just one deficiency in their petition and their arguments.

[00:26:50] Speaker 02:
Since you're here, do you happen to know why the patent here wants

[00:26:59] Speaker 02:
both an input buffer and an output buffer associated with the write command?

[00:27:09] Speaker 01:
I am not an expert in electrical engineering, so I don't know enough to tell you why they would want the additional limitation of an output buffer in this particular configuration.

[00:27:26] Speaker 01:
but I haven't seen that argument made that it would necessarily be required or essential or it's just not clear from the record.

[00:27:51] Speaker 00:
I'm sorry, go ahead.

[00:27:55] Speaker 00:
Anything further I was asking?

[00:27:58] Speaker 01:
Please.

[00:28:00] Speaker 01:
I was going to just touch on, you know, as Kay argued in the reply brief and during their opening argument, they said they discussed the Nike versus Adidas case as supporting their case.

[00:28:09] Speaker 01:
I just wanted to point out that that was a case involving new proposed substitute claims.

[00:28:15] Speaker 01:
And if the board is going to sue Espante, apply prior art to reject new claims, it's only fair that you give notice of that

[00:28:23] Speaker 01:
you know, rejection to the patent owner and give them an opportunity to respond.

[00:28:28] Speaker 01:
That's very different than what's happened here where SK Hynix was on notice of the ground of unpatentability when they filed their petition and the board was simply just determining whether they met their burden of proving that ground of unpatentability.

[00:28:44] Speaker 01:
As far as the alternative ground argument, I think it's pretty clear based on the board's decision and how the arguments were presented that the board certainly considered all of the arguments.

[00:28:55] Speaker 01:
based on Ellsbury in combination with Stone.

[00:29:00] Speaker 01:
The board decision cites to the Stone Declaration in the paragraph, for example, paragraphs 502 to 504 of the Stone Declaration, which expressly discusses the Stone textbook and how it, in combination with Ellsbury,

[00:29:17] Speaker 01:
allegedly renders the claims unpatentable.

[00:29:20] Speaker 01:
In fact, Stone's declaration only argues that the claims are unpatentable based on the combination of Stone and Ellsbury.

[00:29:27] Speaker 01:
So I think the board certainly did an adequate job of considering that argument.

[00:29:34] Speaker 01:
Unless the panel has any further questions for me, I'm happy to yield the rest of my time.

[00:29:43] Speaker 00:
Good timing.

[00:29:45] Speaker 00:
All right.

[00:29:47] Speaker 00:
Given the confusion, we'll restore your five minutes of rebuttal time.

[00:29:52] Speaker 00:
So please proceed if you need it.

[00:29:54] Speaker 03:
Thank you, Your Honor.

[00:29:55] Speaker 03:
I appreciate that.

[00:29:56] Speaker 03:
I'd like to point out first that in respond to Judge Chen's question about whether remand is necessary counsel for the director, I believe said certain things about our petition and the evidence.

[00:30:08] Speaker 03:
I would like to point out that that is the first time anyone from the PTO has addressed our arguments as to claim 40's obviousness.

[00:30:17] Speaker 03:
the first time in these proceedings.

[00:30:20] Speaker 03:
It's clearly not the appropriate first time.

[00:30:23] Speaker 03:
As far as, I believe, Judge Chin's questions about tri-state buffers and output buffers, there's only one example, I think it's figure five of the 907, that supports both claim 14, which has tri-state buffers outputting data to the memory devices, and claim 40, which recite output buffers.

[00:30:45] Speaker 03:
out transmitting data to the memory devices.

[00:30:47] Speaker 03:
And so, and they are, I believe, in the disclosing vitamin tristate buffer, so they are buffers that are outputting data, therefore output buffers.

[00:30:55] Speaker 03:
So I don't think there's any issue, and certainly nobody has ever argued that a tristate buffer that is, that is outputting data, transmitting data, for example, to memory devices is an output buffer.

[00:31:08] Speaker 00:
Ms.

[00:31:09] Speaker 00:
Powell, can I just ask what in your perfect world, or if in your correct world,

[00:31:14] Speaker 00:
the board precisely should have done.

[00:31:18] Speaker 00:
So then they get to your arguments and in your view, your view is you serve the argument that this was just an obvious variant.

[00:31:28] Speaker 00:
What should they have done?

[00:31:31] Speaker 03:
Well, they should have agreed with me that it was an obvious variant.

[00:31:35] Speaker 00:
I mean, I'm talking about your APA argument, that they came up with this new-ish new ground that you didn't have the opportunity to respond to.

[00:31:44] Speaker 00:
So what procedurally should they have done to allege your concerns about due process?

[00:31:51] Speaker 03:
Yeah, well, instead of analyzing whether or not Ellsbury discloses

[00:32:01] Speaker 03:
both the input buffers and the output buffers.

[00:32:03] Speaker 03:
Once they found the disclosed input buffers, they should have applied the law of obviousness, as step four, for example, in KSR, and determined whether, based on the record evidence before them and the arguments, adding, further including the output buffers of claim 40, would have been an obvious variation.

[00:32:23] Speaker 03:
And I don't see how they could have determined otherwise.

[00:32:28] Speaker 03:
given what they did with CLAIM-14 and finding that those tri-state buffers outputting data to the memory devices, they're an obvious variation of Ellsbury.

[00:32:39] Speaker 00:
Well, that goes just to say with Eric, not on the due process.

[00:32:43] Speaker 00:
I mean, on your theory that they changed theories or they introduced this new theory that you didn't have an opportunity to respond to.

[00:32:52] Speaker 00:
I'm directing your attention to the latter.

[00:32:55] Speaker 03:
So I see.

[00:32:57] Speaker 03:
You mean if they had given me an opportunity to respond, I would have said, that's not our argument.

[00:33:05] Speaker 00:
I mean, they should have said, you didn't make this argument.

[00:33:08] Speaker 00:
You made this argument, but we're not buying it.

[00:33:11] Speaker 00:
But give us some more information about that.

[00:33:14] Speaker 00:
Make a different argument.

[00:33:15] Speaker 00:
Enhance your argument.

[00:33:17] Speaker 00:
What should they have done?

[00:33:19] Speaker 00:
Just on the peer due process argument.

[00:33:22] Speaker 03:
They should have just addressed the theory in the petition.

[00:33:25] Speaker 03:
Maybe I don't understand your question, Your Honor.

[00:33:27] Speaker 03:
I apologize.

[00:33:28] Speaker 03:
But we had one theory.

[00:33:30] Speaker 03:
Look, there are lots of ways to prove a claim is obvious.

[00:33:34] Speaker 03:
KSR puts half a dozen or a dozen of them, maybe.

[00:33:38] Speaker 03:
There are lots of ways to do it.

[00:33:40] Speaker 03:
Our whole argument is they needed to address the one we put in our petition.

[00:33:44] Speaker 03:
That would have avoided any due process or

[00:33:49] Speaker 03:
or APA argument.

[00:33:51] Speaker 03:
And if they had disagreed with us, we probably would have appealed it anyway.

[00:33:55] Speaker 03:
And then you would have just been looking straight at the obviousness determination by the board.

[00:34:00] Speaker 03:
But if they had just addressed that one instead of the one they came up with themselves without telling anybody, that would have obviated the APA and due process arguments.

[00:34:15] Speaker 02:
What if the board had simply looked at your very brief argument

[00:34:20] Speaker 02:
and concluded that your arguments in your petition were never about adding an additional buffer to the already existing buffer in disclosed in Ellsbury.

[00:34:36] Speaker 02:
Your argument was just about implementing the one buffer in Ellsbury in a particular manner.

[00:34:46] Speaker 02:
And the problem ultimately is that

[00:34:49] Speaker 02:
with a claim like claim 40, it requires two different types of buffers.

[00:34:54] Speaker 02:
And there was never, you never spoke to the questions of why it would be obvious to add an additional buffer to the already existing buffer in Elsevier.

[00:35:07] Speaker 03:
Well, first, obviously, I disagree with that characterization.

[00:35:11] Speaker 03:
But when you say what if, at least they would have been treating what I put in my petition.

[00:35:17] Speaker 03:
rather than some other argument that was not in my position.

[00:35:22] Speaker 00:
I think my time is up.

[00:35:25] Speaker 00:
We all heard the bell.

[00:35:26] Speaker 00:
Thank you very much.

[00:35:27] Speaker 00:
We thank both sides and the case is submitted.

[00:35:30] Speaker 03:
Thank you, Your Honor.