[00:00:02] 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 its honorable court.

[00:00:10] Speaker 00:
The first case for argument this morning is 20-1710 Walletech Microelectronics versus Toshiba America.

[00:00:18] Speaker 00:
Mr. Neruzzi, whenever you're ready.

[00:00:22] Speaker 03:
Thank you, Your Honor, and may it please the court

[00:00:25] Speaker 03:
Uh, your honors, the board aired in its rejection of the proposed amendment claims, um, with respect to the eight to five patent, uh, in two respects, uh, as to claims 25, 27, 29, 30 and 32 to 48.

[00:00:42] Speaker 03:
The board rejected those claims as indefinite.

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The board's indefiniteness rejection was erroneous on three levels as an initial matter.

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the claim as proposed, both claims 25 and 27 as proposed, were unambiguous and met the reasonable certainty requirement set forth under Nautilus.

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Moreover, the board further ignored pass and key statements clarifying and defining the scope of the claims in violation of this court's decision in Enrede-Packard and refused to consider and its refusal to consider

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the final written decision, renders the board's decision arbitrary and capricious under aqua products and this court's decision in applications and internet time.

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And finally, Your Honors, the board wrongly

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read ambiguity into the claim based on purported alternative embodiments in the specification that are not in fact alternative embodiments and that in any case have no reason to be read into the language of the claim as drafted.

[00:01:56] Speaker 03:
We also challenge the board's decision with respect to enablement as to claims 28 and 30, but I'd like to start by focusing on the indefiniteness issue.

[00:02:07] Speaker 00:
Can I just ask you with regard to which claim is where on the indefiniteness?

[00:02:13] Speaker 00:
The indefiniteness also covers claim 30, right?

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So the only thing left for enablement if we were hypothetically to affirm the indefiniteness would be claim 28.

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Am I right about that?

[00:02:25] Speaker 00:
That's right, Your Honor.

[00:02:27] Speaker 00:
Okay, thank you.

[00:02:29] Speaker 03:
As to indefiniteness, Your Honors, the claim language clearly recites

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an electronic short-circuit prevention device, and then later refers back to that same electronic short-circuit prevention device.

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The language also makes clear that the short-circuit to be prevented is between contact of the receptacle.

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Therefore, a reasonable reading of the claim, a clear and unambiguous reading of the claim when it recites preventing

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a short circuit between view bus and ground contacts is to understand that those are the contacts of the receptacle.

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Um, the board there in a reading otherwise by looking to what it believed to be alternative embodiments and the specification.

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But when the board actually looked to the language of the claim itself, it did not find, uh, ambiguity.

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And so we believe that is

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the fundamental beginning error in the board's decision that based on the language of the claim itself, there was no ambiguity and there's therefore no reason to look to passages in the specification and materials outside of the language of the claim to assess indefiniteness.

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Regardless, however, to the extent that the court believes that the language of the claim

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could be read in multiple ways such that an ambiguity problem exists.

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The board further erred by ignoring Patentee's clarifying statements as to the scope of the claim.

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The Patentee repeatedly stated during the oral hearing and in its briefing before the board that the language at issue which recites

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the electronic short-circuit prevention device is operable to prevent a short-circuit between VBUS and ground contacts refers only to a short-circuit between VBUS and ground contacts of the receptacle.

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And therefore, there was no basis for the board to continue to find ambiguity in the claims in light of patent owner statements.

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This court has stated in Henry Packard that the board may not find

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proposed claims to be indefinite without considering clarifying statements by the pan owner and the pan owner's explanation as to why the claim is not ambiguous.

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And the board here did not follow that procedure at set forth in NRA Packard.

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The board's decision does not discuss why it continues to find the claims to be ambiguous in light of pan owner's clear statements.

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Those statements by patent owner are binding upon patent owner itself and bind patent owner vis-a-vis the rest of the world.

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Therefore, there is no risk that if the claims were issued as drafted in light of patent owner statements, that the public and MSI and Toshiba would continue to find ambiguity and uncertainty as to the scope that the claims cover.

[00:05:55] Speaker 03:
Your honors, respectfully, the boards

[00:05:57] Speaker 03:
failure to even address town owner statements on these issues in the board's final written decision constitutes arbitrary and capricious error under both aqua products and this court's decision in applications and internet time.

[00:06:17] Speaker 00:
Is it your suggestion that the board could never find indefiniteness

[00:06:23] Speaker 00:
as long as the patent owner in the patent file or somewhere says, well, it's not indefinite, this is what I mean, that that's sufficient to obviate an indefinite conclusion, even if the claims on the spec lead you there?

[00:06:40] Speaker 03:
So, Your Honor, in the context, let me just start by saying, I don't think we need a rule that is as sweeping as that for purposes of this case.

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The salient issue here is more specifically that the board did not address and consider the patent owner's statements in the final written decision.

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However, the question that you raised is often obviated in the context of normal prosecution proceedings, because in that context, the patent owner can simply continue to amend the claims to resolve any potential ambiguity within the language of the claims themselves.

[00:07:18] Speaker 03:
This context is somewhat different because it's a motion to amend in an inter-parties review proceeding.

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And in this context, the question is whether the board should read the claims consistently with the patent owners' proposed understanding and intent of the claims and assessing indefiniteness.

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And we believe the answer to that question is yes, and that this court's precedent supports that.

[00:07:47] Speaker 02:
This is Judge Dyke.

[00:07:48] Speaker 02:
I have a question.

[00:07:49] Speaker 02:
In the course of these IPRs where there's a motion for leave to amend, is there any opportunity to further change the claim language that's included in the amendment, or are you stuck with the language as it's originally presented?

[00:08:11] Speaker 03:
Judge Dyke, in the context of this motion to amend, at the time

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that the motion was presented and the rules that applied to the motion at the time, we were stuck with the claims as proposed.

[00:08:25] Speaker 02:
Since the board has... The qualifications there, is that no longer the case?

[00:08:31] Speaker 02:
Have they changed the rules or something?

[00:08:33] Speaker 03:
Yes, that's what I was getting to.

[00:08:35] Speaker 03:
The board has since offered

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and expanded procedure where it is possible to potentially submit a further round of amendments after obtaining some feedback from the petitioner and the board with respect to original proposed amendments.

[00:08:53] Speaker 03:
But that process was not available to pan owner in this proceeding at the time.

[00:09:00] Speaker 00:
So going forward, your argument that the board should have considered just because everyone was on notice because the patent owner said what it meant wouldn't carry the day necessarily going forward, and it shouldn't carry the day because if the patent owner means to clarify it, he will have an opportunity to do that, right?

[00:09:22] Speaker 03:
Your honor, I think it will simply just become less salient because of that opportunity.

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So when the opportunity exists to directly modify the proposed claim language to resolve any concerns by the board,

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then I expect that pan owners will take advantage of that and they will not need to come to this particular issue that we face today.

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But I think the fundamental principle that the board should acknowledge the intended claim scope that the pan owner puts forth during prostitution remains correct because that statement, those definitional

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and disavowing statements by the patent owner are binding on the patent owner and limit the claim scope going forward.

[00:10:11] Speaker 03:
So there's no particular reason for the board to refuse to accept and acknowledge those statements and to continue to read ambiguity into the claims not withstanding the patent owner's statements.

[00:10:23] Speaker 02:
Well, except that you end up with a situation in which the claims which are read by the public are confusing and ambiguous.

[00:10:35] Speaker 02:
And surely the patent office has an interest in making sure the claim language on its face is understandable by people so that they don't have to tell the prosecution history to figure out what the claim means.

[00:10:50] Speaker 03:
Well, Judge, I understand that point.

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But the reality is that in almost every

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patent claim interpretation exercise, there will be some question in some readers' minds as to certain claim scope issues.

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And those questions are almost never fully resolved by reading the explicit language of the claims themselves.

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They require, in almost every instance, looking at least to the specification, considering the knowledge of the ordinary artisan and the meaning of the terms in the context of the invention.

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and looking to the prosecution history to see if there are clarifying or disavowing statements made.

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It's an exercise that I certainly undertake with respect to many patent claims that I look at.

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And when there are those sorts of clear statements that resolve the ambiguity that might otherwise exist in the mind of the reader, when those are found in the prosecution history, we know that they are dispositive.

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And so no further ambiguity can remain beyond that point.

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But I think, Your Honors, that the board here erred at a further, even more basic level by simply not addressing the town owner's statements and explaining why it continued to find ambiguity in the claims, not withstanding those statements as part of the board's final written decision.

[00:12:21] Speaker 03:
The standard here is not perfect certainty.

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The standard is reasonable certainty.

[00:12:30] Speaker 00:
Go ahead.

[00:12:31] Speaker 00:
Finish your sentence.

[00:12:33] Speaker 03:
And the board did not explain in its decision why, in light of the patent owner's statements, it continued to find a lack of reasonable certainty as to the scope of the proposed claims.

[00:12:45] Speaker 00:
OK.

[00:12:46] Speaker 00:
Will we serve your rebuttal?

[00:12:48] Speaker 00:
And let's hear from Mr. Clausen.

[00:12:52] Speaker 00:
Thank you.

[00:12:58] Speaker 01:
May I please the court?

[00:13:00] Speaker 01:
I'd like to first address the issue that appellant raised regarding the finding of ambiguity.

[00:13:08] Speaker 01:
On the board's decision, which is at APPX 78, the board found that substantial evidence weighed in favor of

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creating an ambiguity and failing to delineate with reasonable certainty the scope of the claim.

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That's at the bottom of APPX 78.

[00:13:25] Speaker 01:
So the board did find that the claims were ambiguous.

[00:13:28] Speaker 01:
And it did that by taking a look at the actual claim language

[00:13:33] Speaker 00:
And the claim limitation is... Mr. Claussen, I had to read it twice, too, because on page 77, which is the real important paragraph, I think, in the board's opinion, it does say that they agree with the patent owner, blah, blah, blah, that the claim limitation at issue, now maybe the operative word is could be referring to the context of the receptacle.

[00:13:59] Speaker 00:
And then later on in the paragraph, they say, a person of ordinary skill in the art could draw the conclusion that the last limitation is referring to the contents of the spectacle.

[00:14:08] Speaker 00:
So you read that as saying, but it's a possible reading, but it's not the only possible reading, and therefore it's ambiguous?

[00:14:21] Speaker 01:
Chief Judge, yes, that's exactly how I read it, could be referring.

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is one possible interpretation of the claim.

[00:14:29] Speaker 01:
If you look to the next page, 78, they use that same, could be referring to another interpretation of the claim.

[00:14:36] Speaker 01:
But those two interpretations don't conflict with one another.

[00:14:39] Speaker 01:
The second interpretation of the claim actually encompasses the first interpretation of the claim.

[00:14:46] Speaker 01:
So they're not in tension.

[00:14:48] Speaker 01:
The complete understanding of the claim is that the VBUS and ground contacts

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could refer to any of the three sets of contacts that are recited earlier in the claim.

[00:15:02] Speaker 00:
So what is your response to your friend's argument that there was certainty introduced by the patent owner's statements and that that ought to be sufficient to remove any ambiguity and allow the amendment, particularly in a circumstance where he didn't have a chance to actually amend the claim language under the procedures existing at the time?

[00:15:24] Speaker 01:
So first of all, I don't think that there was any sort of disclaimer or disavowal here in this case.

[00:15:32] Speaker 01:
What happened here was patent owner proposed a claim construction, and the board rejected that claim construction.

[00:15:41] Speaker 01:
Now, patent owner is characterizing that construction as how a person of ordinary skill in the art would understand the claims, and somehow that means that there was a disclaimer.

[00:15:51] Speaker 01:
But that's an ordinary claim construction argument.

[00:15:54] Speaker 01:
The argument is how a person of ordinary skill and art would understand the claims.

[00:15:59] Speaker 01:
That does not disclaim claim scope.

[00:16:01] Speaker 01:
It's a claim construction proposal, which the board rejected.

[00:16:09] Speaker 00:
So you think if this issue were litigated, the other side would not be bound by the statements they're talking about?

[00:16:17] Speaker 01:
In this case, that's correct, Your Honor.

[00:16:19] Speaker 01:
OK.

[00:16:21] Speaker 02:
Suppose that they had made a clear and unequivocal disclaimer.

[00:16:27] Speaker 02:
Given the procedural posture, would that be sufficient to eliminate the ambiguity?

[00:16:32] Speaker 01:
In this case, not necessarily.

[00:16:35] Speaker 01:
The board is not required to accept a disclaimer.

[00:16:39] Speaker 01:
And we've cited the Tempo lighting case on that point.

[00:16:44] Speaker 01:
So merely because they raised the disclaimer doesn't mean that the board is required to accept it.

[00:16:50] Speaker 01:
particularly here where the disclaimer is in conflict with the very evidence that they cited for written description support of the same claim element.

[00:17:02] Speaker 02:
I'm not familiar with the tempo case.

[00:17:03] Speaker 02:
What does that hold?

[00:17:05] Speaker 01:
Well, it's at page 978, and let me give you the full citation for tempo lighting.

[00:17:14] Speaker 01:
That is 742, F3rd, 973,

[00:17:22] Speaker 01:
And that's at 978.

[00:17:26] Speaker 00:
Is it sighted in red?

[00:17:28] Speaker 01:
It is sighted in red.

[00:17:30] Speaker 02:
Okay.

[00:17:33] Speaker 02:
And what does it hold?

[00:17:35] Speaker 01:
So the operative portion of the decision is on page 978, the first column on the left near the bottom, this court also observes that the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.

[00:17:57] Speaker 01:
So the PTAB is not under an obligation to accept the statement made by the patent owner as a disclaimer.

[00:18:08] Speaker 02:
Because it's just a client construction state.

[00:18:10] Speaker 01:
Correct.

[00:18:17] Speaker 00:
Anything further?

[00:18:19] Speaker 01:
Yes, Your Honor.

[00:18:20] Speaker 01:
I also want to address the issue of

[00:18:22] Speaker 01:
The allegation that the board did not address statements raised during either oral argument or in the briefing regarding this disclaimer.

[00:18:32] Speaker 01:
And that's at APPX 75.

[00:18:35] Speaker 01:
Yep.

[00:18:40] Speaker 01:
So the board, you can see down at the bottom of APPX 75, the board cited both the reply and the transcript.

[00:18:49] Speaker 01:
And they're block quoted there.

[00:18:51] Speaker 01:
It's hard for me to understand how the board somehow overlooked or did not consider this evidence.

[00:18:59] Speaker 01:
It's clearly in the board's final written decision and formed part of the findings of fact that are now reviewed for substantial evidence.

[00:19:09] Speaker 01:
And substantial evidence does support the finding of ambiguity.

[00:19:14] Speaker 00:
Well, the question is, I think your friend in fairness, I mean, Matt decided in the party's arguments

[00:19:20] Speaker 00:
But I think you look to answer the question by looking at the board's analysis.

[00:19:25] Speaker 00:
So where does the board's analysis, which begins on Appendix 76, deal with that?

[00:19:31] Speaker 01:
So, I will, I can see that the board's analysis doesn't actually quote.

[00:19:36] Speaker 00:
Well, I think that's what he meant.

[00:19:37] Speaker 00:
Now, he may be right or wrong, but I think in fairness to the other side, it's not like they were making an argument that is not accurate, right?

[00:19:45] Speaker 01:
Oh, I'm sorry.

[00:19:46] Speaker 01:
I don't intend to imply that the argument is inaccurate.

[00:19:49] Speaker 01:
I just don't think it fully contemplates what the board did here.

[00:19:53] Speaker 01:
Fine.

[00:19:58] Speaker 01:
Appellant raised the issue of enablement.

[00:20:00] Speaker 01:
He didn't discuss it very much, but there is no dispute that the full scope of claims 28 and 30 is impossible.

[00:20:09] Speaker 01:
Both claims recite connectors of a size that cannot physically mate with the claims USB 1.0 sockets.

[00:20:16] Speaker 01:
Both experts agreed on that, Dr. Baker at APPX 2607 and Dr. Fernald at APPX 2711.

[00:20:25] Speaker 01:
And the claim is impossible, or that portion of the claim is impossible.

[00:20:31] Speaker 01:
And so the claim is not enabled.

[00:20:37] Speaker 01:
And if the court has no further questions, I will see the rest of my time.

[00:20:42] Speaker 00:
Thank you.

[00:20:44] Speaker 00:
Mr. Naruzi, you have a few minutes left, some time left.

[00:20:50] Speaker 03:
Thank you, Chief Judge Prost.

[00:20:52] Speaker 03:
A few brief points.

[00:20:53] Speaker 03:
First of all, you're absolutely correct that in Appendix 77, the board begins by acknowledging that the claim as written would be read in the way that pan owner has also argued that the relevant contacts are those of the receptacle.

[00:21:13] Speaker 00:
Did you say, I'm hearing the word you used, did you say would or could be read?

[00:21:19] Speaker 00:
They said could.

[00:21:20] Speaker 03:
I said would.

[00:21:22] Speaker 03:
The board's decision says would and then it says could, right?

[00:21:25] Speaker 03:
So if we look at the actual language, it says a person of having ordinary steel in the yard would have understood that the claim limitation issue could be referring to the contacts of the receptacle.

[00:21:40] Speaker 03:
So that's the exact language they use.

[00:21:42] Speaker 00:
Yeah, but could is the operative word, really, I think.

[00:21:45] Speaker 00:
They're reading the sentence fairly.

[00:21:47] Speaker 00:
They're saying that they could have read it.

[00:21:49] Speaker 03:
Well, and let's accept that for the moment and contemplate that the could suggest that there's some other possible reading.

[00:21:58] Speaker 03:
The board never identifies another possible reading based on the language of the claim.

[00:22:02] Speaker 03:
What they do is they say, however, the sections of the 870 application

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lead us to an alternative construction.

[00:22:10] Speaker 03:
And we think that's a fundamental error there.

[00:22:12] Speaker 03:
Because the ambiguity, if any, that they need to rely on to go down the path of indefiniteness needs to be within the language of the claim itself, not based on alternative embodiments that they find in the specification.

[00:22:26] Speaker 03:
If there are indeed different embodiments, they shouldn't be led into the claim language if the claim language does not admit them.

[00:22:32] Speaker 00:
Well, they kind of tie up the bow at 78, right?

[00:22:38] Speaker 00:
Because they say based on the lack of specificity in the language and the stuff in the application, which further clarifies that when they use the word could, yeah, it could mean this, it could mean that, it could mean any one of a number of things.

[00:22:55] Speaker 00:
So I'm not sure how far their use of the word could get you.

[00:23:00] Speaker 03:
Well, Your Honor, the way that I read this decision and the way I think it does read in fairness is that they got to the place of the statement that you make at the bottom of Appendix 78 by first identifying the ambiguity in the specification, not in the language of the claim.

[00:23:22] Speaker 03:
And so I think they arrive at the conclusion of ambiguity and the susceptibility to multiple readings, not based on

[00:23:30] Speaker 03:
an actual ambiguity of the claim language, but one reading of the claim language, which is the only reading that they put forth in Appendix 77.

[00:23:39] Speaker 03:
And then, if I may finish, Your Honors.

[00:23:43] Speaker 03:
And then, by looking to these supposedly alternative embodiments from the specification, I would like to address a couple other points, but I believe my time is up.

[00:23:53] Speaker 03:
So if there are no further questions, I will stop here.

[00:23:56] Speaker 00:
Thank you very much.

[00:23:57] Speaker 00:
We thank both sides, and the case is submitted.

[00:24:00] Speaker 03:
Thank you.