[00:00:00] Speaker 04:
Our first case this morning is 191484, Polaris Innovations versus Hershey.

[00:00:09] Speaker 04:
Mr. Phillips, let me just say at the outset the panel decided to flip the order of these cases and that was largely because we

[00:00:19] Speaker 04:
issues in both deals, and we thought there was at least arguably more fulsome briefing in this case on those.

[00:00:26] Speaker 04:
So we decided we would hopefully be able to cover those procedural threshold issues in this case and not have to repeat them in the next one.

[00:00:35] Speaker 04:
So that's where we are.

[00:00:36] Speaker 04:
So just the hopes.

[00:00:37] Speaker 04:
You might want to be in there.

[00:00:40] Speaker 00:
OK.

[00:00:42] Speaker 00:
Thank you, Your Honor.

[00:00:43] Speaker 00:
Good morning.

[00:00:44] Speaker 00:
May it please the court?

[00:00:46] Speaker 00:
I would definitely like to say a few things about the claim construction issue in this appeal.

[00:00:52] Speaker 00:
But I will start with the procedural issue, as you noted.

[00:00:58] Speaker 00:
The board should have terminated this IPR when the parties filed a joint motion to terminate after they settled.

[00:01:05] Speaker 00:
While the board has discretion not to terminate when a joint motion to terminate is filed, a decision not to grant the motion should be explained.

[00:01:15] Speaker 00:
In this case, there has been no such decision or explanation.

[00:01:20] Speaker 00:
And in every other case in which the board has actually made a decision on a joint motion to terminate during an arthritis remand,

[00:01:28] Speaker 00:
the board has granted the motion.

[00:01:32] Speaker 00:
And there are three such cases.

[00:01:33] Speaker 00:
We've identified them in our supplemental briefing.

[00:01:36] Speaker 00:
And in light of those cases, it was arbitrary and capricious for the board in this case not to agree.

[00:01:43] Speaker 02:
PTO also cited some counter cases, though, right, that it argued were more in line factually with the circumstances here.

[00:01:53] Speaker 00:
The PTO, Your Honor, cited two cases, Apotex and Aristocrat.

[00:01:59] Speaker 00:
And neither case supports the board's position.

[00:02:03] Speaker 00:
In neither case did the board actually deny a joint motion to terminate or an Arthur treatment because of the fact that the solicitor had intervened on the merits in the appeal in this court.

[00:02:18] Speaker 00:
In both cases, the joint motion to terminate was just in limbo, as it is in this case, without a decision.

[00:02:26] Speaker 00:
And I will also note that in the Apotex case.

[00:02:29] Speaker 03:
You're saying in those cases that there's still that motion still pending?

[00:02:33] Speaker 03:
Is that what you're saying?

[00:02:34] Speaker 00:
Well, I'm saying there was no decision by the board on the joint motion to terminate.

[00:02:39] Speaker 00:
Now, in the Apotex case, it came up to appeal to this court, and the court reversed on the merits.

[00:02:48] Speaker 00:
So the motion to terminate became moved.

[00:02:52] Speaker 00:
So it doesn't matter in that case.

[00:02:54] Speaker 00:
In the Aristocrat case,

[00:02:56] Speaker 00:
That is lagging behind this case, and there has been no substantive briefing on really any issue, the termination issue or the merits issue.

[00:03:06] Speaker 03:
Was the motion to terminate ruled on?

[00:03:09] Speaker 03:
No.

[00:03:09] Speaker 03:
It wasn't decided by the board at all?

[00:03:11] Speaker 00:
No, Your Honor.

[00:03:12] Speaker 00:
Not in either case.

[00:03:13] Speaker 04:
But you're not claiming that the Board of the Patent Office doesn't have the authority under the statute to make a decision, whatever a decision, right?

[00:03:24] Speaker 04:
So that's a given, right?

[00:03:25] Speaker 00:
Correct, Your Honor.

[00:03:26] Speaker 04:
So your argument is, even though they have the authority to do that,

[00:03:34] Speaker 04:
Is that reviewable by us?

[00:03:37] Speaker 04:
Or is it your view that it's an APA problem because they have to give reasons and explanations for what they're doing?

[00:03:44] Speaker 04:
I'm just trying to understand what your argument is.

[00:03:48] Speaker 00:
Yes.

[00:03:49] Speaker 00:
At a very minimum, the board has to give a reasoned explanation for its decision to deny the motion.

[00:03:55] Speaker 00:
And of course, we don't have a decision here.

[00:03:57] Speaker 02:
How should we interpret what Chief APJ Bolick said in his order to you in this case, where he, as I understand it,

[00:04:08] Speaker 02:
found that the premise of your motion to terminate the IPR is untrue, given that the final written decision, the status of it is a fact.

[00:04:19] Speaker 02:
It's alive, and it's a real decision.

[00:04:22] Speaker 02:
It hasn't been vacated.

[00:04:24] Speaker 02:
And so therefore, the premise of your motion has been overtaken by events.

[00:04:29] Speaker 02:
I guess one way to interpret that order is essentially denying it or declaring it loop, because the basis of it, by happenstance, has now been erased.

[00:04:44] Speaker 00:
I believe it is correct to consider that commentary by the chief judge as an effective denial of our motion.

[00:04:52] Speaker 00:
But it was substantively legally incorrect.

[00:04:56] Speaker 00:
The motion was timely filed under 35 U.S.C.

[00:05:01] Speaker 00:
Section 317A, which refers to the filing of the motion before a decision by the board.

[00:05:10] Speaker 00:
And that's exactly what happened in the three cases we've cited.

[00:05:13] Speaker 00:
There had been a final written decision.

[00:05:17] Speaker 00:
There was an appeal, a remand.

[00:05:19] Speaker 02:
I guess what I'm wondering is what would be wrong for the USPTO to say the status of the final written decision in this case, we understand, has been vacated by the Federal Circuit.

[00:05:32] Speaker 02:
But its status is still up in the air because we just filed a cert petition in this particular case in light of our threats.

[00:05:42] Speaker 02:
And now I think it's worth waiting and seeing if the final written decision comes back to life with the Supreme Court's decision.

[00:05:53] Speaker 02:
And so we're going to wait and see what happens in that pending litigation.

[00:05:58] Speaker 02:
What would be wrong with that?

[00:06:00] Speaker 00:
Well, of course, that's not what the board said at any point.

[00:06:03] Speaker 00:
And that would have been inconsistent with what happened in the three cases we've cited.

[00:06:10] Speaker 00:
Those three cases were in the exact same procedural posture as this case in the sense that there was an appeal to this court.

[00:06:19] Speaker 00:
The petitioner settled out.

[00:06:21] Speaker 02:
As I understand this case, this is the one where the USPTO intervened and defended the merits of the final written decision.

[00:06:29] Speaker 02:
And then after that, the USPTO filed a cert petition in this case.

[00:06:33] Speaker 00:
That is correct, Your Honor.

[00:06:35] Speaker 03:
What was the status of the board's final written decision at the time of those other cases you're referring to?

[00:06:41] Speaker 03:
My recollection is that at that point, when the board ruled on the motion, that the final written decision was still vacated.

[00:06:50] Speaker 00:
That is correct.

[00:06:51] Speaker 03:
Isn't that different?

[00:06:52] Speaker 03:
I mean, I understand your point.

[00:06:54] Speaker 03:
I think you make some point about the timing being arbitrary and capricious.

[00:06:57] Speaker 03:
But if you think about it, timing matters and can be arbitrary in many cases.

[00:07:02] Speaker 03:
What if a court issues a ruling that changes the state of, say, 101 law, and that impacts the case?

[00:07:09] Speaker 03:
That could be a situation where you could say, well, it's arbitrary because my case was decided the day after.

[00:07:14] Speaker 03:
Right?

[00:07:15] Speaker 03:
So what is your response?

[00:07:18] Speaker 00:
My response is that the board could have given those reasons in the other three cases.

[00:07:24] Speaker 00:
It did not.

[00:07:25] Speaker 00:
The board promptly granted the joint motion to terminate in those other three cases.

[00:07:31] Speaker 00:
And it didn't in this case, inexplicably.

[00:07:34] Speaker 03:
But in this case, there was a final written decision that had been vacated but now was reinstated.

[00:07:42] Speaker 03:
at the time that the board decided the motion.

[00:07:46] Speaker 03:
And so there was a final written decision on the record, right?

[00:07:49] Speaker 00:
At the time when the board should have decided the joint motion to terminate in this case, the final written decision stood vacated.

[00:07:57] Speaker 03:
So you're complaining about the timing of the decision.

[00:08:00] Speaker 00:
Absolutely.

[00:08:01] Speaker 03:
And I will note, I mean- What rule or anything do you have to rely on to say that they have to decide it by a certain time?

[00:08:08] Speaker 00:
The APA, Your Honor, 35 USC, I believe it's 7062, says, I'm sorry, 5 USC, I don't know, let me find it.

[00:08:24] Speaker 00:
It's a statute that essentially says agency action may not be, quote, unlawfully withheld or unreasonably delayed.

[00:08:35] Speaker 00:
And to be clear, that's 5 USC section 7061.

[00:08:39] Speaker 00:
But that's exactly what happened here.

[00:08:43] Speaker 00:
The board sat on our motion doing nothing for over a year.

[00:08:48] Speaker 00:
with no explanation, no decision.

[00:08:51] Speaker 00:
And that's why we're in the circumstances we're in.

[00:08:56] Speaker 03:
Can I ask you one other question?

[00:08:58] Speaker 03:
When I look at 317A, I'm not sure that it requires a final written decision.

[00:09:03] Speaker 03:
It says, unless the office has decided the merits of the proceeding.

[00:09:08] Speaker 03:
So how do you respond to that?

[00:09:09] Speaker 03:
I mean, even if the final written decision had been vacated,

[00:09:14] Speaker 03:
The office decided the merits I mean they might have to read decide it but I if you think of that broad language has decided the merits and Supporting like the timing.

[00:09:24] Speaker 03:
Hey, if you're going to request a settlement It shall be terminated unless You know, we've gone so far along in the proceedings that there has been a decision by the office in America

[00:09:37] Speaker 00:
Yeah, the board actually addressed that in the other three cases when we granted those joint motions to terminate.

[00:09:46] Speaker 00:
And that's quoted on page 19 of our supplemental brief in this case.

[00:09:52] Speaker 00:
That's document 92.

[00:09:54] Speaker 00:
There the board explained, and I'm quoting, although we decided the merits of the proceedings and entered a final written decision, the Federal Circuit has vacated those final written decisions.

[00:10:04] Speaker 00:
Dot, dot, dot, under these circumstances, we determine good cause exists to terminate the proceedings.

[00:10:10] Speaker 00:
They could have and should have done the exact same thing for the exact same reason in this case, Your Honor.

[00:10:17] Speaker 04:
Your time's short, but we certainly are sympathetic to your reaching the merits.

[00:10:21] Speaker 04:
Do you have any other comments on this board intervention thing?

[00:10:25] Speaker 00:
One other comment before I turn to the claim construction issue, Your Honor, and that is,

[00:10:30] Speaker 00:
The purported distinction here between our case and the other three cases where the joint motion was terminated really don't stand up to scrutiny.

[00:10:40] Speaker 00:
And it's not enough of a distinction to overcome the arbitrary and capricious standards.

[00:10:46] Speaker 00:
First of all, the solicitor waived the argument by not making it at the first available opportunity.

[00:10:53] Speaker 00:
Second, the board has never adopted that reasoning, certainly not in this case.

[00:10:58] Speaker 00:
And in the other cases that were terminated, the board never mentioned the solicitor's intervention on the merits as having any relevance to its analysis.

[00:11:10] Speaker 00:
Third, somebody always defends the board's decision in these appeals.

[00:11:16] Speaker 00:
There's nothing special about the solicitor in that role.

[00:11:19] Speaker 00:
There's no reason to credit the solicitors defending the merits of the board decisions any more than that of a private party who has real skin in the game.

[00:11:27] Speaker 00:
The solicitor does not screen the cases that it intervenes in when a party settles.

[00:11:33] Speaker 00:
It takes them all and intervenes uniformly, no matter how poorly

[00:11:38] Speaker 00:
written the board's decision is.

[00:11:41] Speaker 00:
Fourth, there's no rational reason to protect the solicitor's intervention on the merits of garden variety, patent-specific issues, as opposed to issues of broader significance, like the constitutional issue in this case.

[00:11:55] Speaker 00:
And then fifth, it cannot be said that the fact that the solicitor has gone on record as believing that these claims are unpatentable supports denying the motion in this case.

[00:12:10] Speaker 00:
The board has already said that.

[00:12:11] Speaker 00:
The office has already gone on record as saying these claims are unpatentable.

[00:12:18] Speaker 00:
Of course, that depends on your view of the merits, and we disagree with that.

[00:12:22] Speaker 00:
So I would like to turn to the merits.

[00:12:26] Speaker 00:
So there are two possible meanings of the term memory chip in this art.

[00:12:36] Speaker 00:
It means either a packaged IC or an IC die.

[00:12:40] Speaker 00:
Those are two mutually exclusive meanings.

[00:12:43] Speaker 00:
In any given context, the term cannot mean both.

[00:12:47] Speaker 00:
And what does it mean in this case?

[00:12:50] Speaker 00:
Well, if you look at figure 2A, both experts agreed that the term memory chip is used to mean a die.

[00:12:59] Speaker 00:
So before your honors decide the claim construction issue in this case, ask yourself one simple question.

[00:13:05] Speaker 00:
How many memory chips are there in figure 2A of the patent?

[00:13:08] Speaker 04:
Well, why does that end the case?

[00:13:13] Speaker 04:
Don't we have numerous cases that say that you're not limited to one

[00:13:17] Speaker 04:
I mean, you're relying on figure 2A.

[00:13:23] Speaker 04:
But why is that the be-all and end-all in terms of claim construction?

[00:13:26] Speaker 04:
Our cases say the contrary, do they not?

[00:13:31] Speaker 00:
Well, first of all, figure 2A is the exact part of the specification that informs the reader how this document is using the term memory chips.

[00:13:41] Speaker 00:
And really, it's the only part of the, and it's accompanying text, the only part that addresses that very issue.

[00:13:47] Speaker 00:
So it's not just an embodiment in that sense.

[00:13:51] Speaker 00:
It's the most important part of the document.

[00:13:54] Speaker 00:
And there's no other embodiment in this patent.

[00:13:56] Speaker 03:
So you infer from the fact that there's a drawing that it's the most important embodiment and the claims are limited to it?

[00:14:03] Speaker 00:
It's the only part of the document that talks about chips in relation to a memory component.

[00:14:10] Speaker 00:
There's nothing else.

[00:14:11] Speaker 03:
But it's an embodiment, right?

[00:14:12] Speaker 03:
What makes it, what translates it from being just an embodiment, because it's shown in a figure, to being the only way to interpret the claims?

[00:14:22] Speaker 00:
Well, keep in mind, Your Honor, that we're talking about a dependent claim, claim two.

[00:14:28] Speaker 00:
which is necessarily drawn to a narrow special case of the invention.

[00:14:32] Speaker 00:
Of course, that's going to be an embodiment.

[00:14:35] Speaker 00:
The particular embodiment here is figure 2a.

[00:14:38] Speaker 00:
That is what claim 2 is directed at.

[00:14:43] Speaker 00:
Here's my problem.

[00:14:45] Speaker 02:
I mean, we started off green that there's a well-established default understanding of this technical term memory chip.

[00:14:54] Speaker 02:
It's a generic term that can encompass one of two things, a packaged IC or a die.

[00:15:01] Speaker 02:
And so then the next question is, what is it in the intrinsic evidence in your specification that communicates that the patent drafter here has somehow redefined the understanding of memory chip so that it's narrowed down to just one of the two types of understood meanings for memory chip.

[00:15:23] Speaker 02:
And when we get to that, we don't even see the word die in your patent specification.

[00:15:29] Speaker 02:
We do see this very simple diagram for

[00:15:35] Speaker 02:
things on top of each other, four rectangles on top of each other.

[00:15:40] Speaker 02:
But at the same time, there's not anything, I'm afraid, that I can find that tells me that the patent drafter, under the broadest reasonable interpretation, consistent with the specification, was telling the rest of us that it is only talking about and thinking about dyes as serving as the memory chip.

[00:16:01] Speaker 00:
Three points to that, Your Honor, and I apologize that I'm over time, if you told me.

[00:16:07] Speaker 00:
First of all, both experts agreed in this case that the way one ordinary skill in the art would interpret figure 2A is that the chips are dye, and the bigger box that encompasses them is a packaged memory component.

[00:16:25] Speaker 00:
Dr. Tredenek, NVIDIA's expert, said so.

[00:16:29] Speaker 00:
You can see that on appendix pages 1573 through 74.

[00:16:34] Speaker 00:
And of course, Dr. Schabilski, Polaris' expert, said the same thing.

[00:16:38] Speaker 00:
That's noted on page 19 of our blue brief.

[00:16:41] Speaker 02:
Um, uh, the, the second point here, your honor is that, um, is there something about the nature of this invention about this access memory controller or whatever it is that, that demands or biases us to believe that, oh, the only way this is going to work is if the memory chip is a die as opposed to a packaged integrated circuit.

[00:17:05] Speaker 00:
Yes.

[00:17:05] Speaker 00:
And before I answer that question, if I may, the answer is yes.

[00:17:09] Speaker 02:
Where is that in your briefing?

[00:17:10] Speaker 00:
OK.

[00:17:12] Speaker 00:
Yes, the answer is yes.

[00:17:13] Speaker 00:
Before I answer that question, I wanted to finish my answer to your previous question.

[00:17:18] Speaker 02:
It's up to Judge Prost.

[00:17:21] Speaker 00:
Go ahead.

[00:17:22] Speaker 00:
Thank you very much.

[00:17:23] Speaker 00:
The other point I wanted to make is that here in this patent, the term memory chip, we know it's directed at a die, not just because the experts agreed, because that other possible meaning, a packaged IC,

[00:17:41] Speaker 00:
For that the term uses a different specific term it always uses the term memory component when referring to the packaged IC and that's why we know and it's consistent everywhere throughout the patent that's why we know that a chip in this patent is

[00:17:59] Speaker 00:
does not mean that other possible meaning.

[00:18:02] Speaker 00:
And remember, there are two mutually exclusive meanings.

[00:18:05] Speaker 00:
You can't have the union of both.

[00:18:06] Speaker 00:
It means either one or the other.

[00:18:08] Speaker 04:
We're still limited in time.

[00:18:09] Speaker 04:
Why don't you go ahead and answer Judge Chen's last question.

[00:18:13] Speaker 00:
Yes.

[00:18:13] Speaker 00:
Thank you, Your Honor.

[00:18:16] Speaker 00:
So the background section of the patent, that's column two, lines 36 through 53, explained the problem that the inventors were faced with.

[00:18:25] Speaker 00:
At the time of the invention, multi-die memory ICs were just becoming commercially viable.

[00:18:32] Speaker 00:
And the problem is that you need extra control lines to access the individual die within the package.

[00:18:38] Speaker 00:
And so the invention here is directed to that.

[00:18:42] Speaker 00:
It's a way of sharing control lines for both control and address.

[00:18:48] Speaker 02:
Column two, lines what?

[00:18:49] Speaker 00:
36 through 52 or 53, your honor.

[00:18:53] Speaker 00:
So that's the sweet spot that the invention is directed at.

[00:18:56] Speaker 00:
Claim one is overbroad.

[00:18:58] Speaker 00:
We're not defending that.

[00:18:59] Speaker 00:
But that's what claim two is directed at.

[00:19:01] Speaker 00:
That's the invention.

[00:19:03] Speaker 00:
Thank you for the extra time.

[00:19:04] Speaker 00:
I appreciate it.

[00:19:05] Speaker 04:
Thank you.

[00:19:05] Speaker 04:
We'll restore a couple minutes of rebuttal.

[00:19:07] Speaker 04:
Let's hear from the artist.

[00:19:15] Speaker 04:
Good morning.

[00:19:35] Speaker 01:
Good morning, Your Honor.

[00:19:36] Speaker 01:
I'm at the physical court.

[00:19:38] Speaker 01:
Omar Amin on behalf of the USPCA.

[00:19:40] Speaker 01:
Starting first with the termination issue.

[00:19:42] Speaker 02:
Is Mr. Hirschfeld still an employee of the PTO?

[00:19:45] Speaker 02:
He is not currently.

[00:19:47] Speaker 02:
All right.

[00:19:48] Speaker 02:
So why is this called Polaris versus Hirschfeld?

[00:19:50] Speaker 01:
I believe Mr. Brent will be substituted as a party.

[00:19:53] Speaker 01:
He will be the deputy director, and he will be substituted as a party once he clears conflicts.

[00:20:01] Speaker 02:
OK.

[00:20:01] Speaker 02:
Where's Ms.

[00:20:02] Speaker 02:
Vidal in all this?

[00:20:03] Speaker 01:
Ms.

[00:20:03] Speaker 01:
Vidal has a conflict.

[00:20:05] Speaker 01:
So we submitted a motion to modify the caption, because she has a confidence matter.

[00:20:12] Speaker 01:
OK.

[00:20:14] Speaker 01:
So starting with the termination issue, the parties apparently do not disagree that the statute gives the USPTO the option whether to terminate or not to terminate.

[00:20:23] Speaker 01:
And so at this point, we have Polaris' argument that the USPTO's failure to terminate is ugly.

[00:20:30] Speaker 02:
What's the status of the joint motion to terminate?

[00:20:33] Speaker 02:
So has it been denied, or is it still just hanging out there, unaddressed?

[00:20:38] Speaker 01:
So the joint motion term has not been formally denied.

[00:20:40] Speaker 01:
As Your Honor noted previously, it was addressed in the October 29, 2021 order, but it wasn't actually formally denied with that order.

[00:20:53] Speaker 04:
But I mean, I thought in the document, the board had said that the termination motion was no longer properly before it because of Arthrox.

[00:21:02] Speaker 04:
And that's because the first written decision was reinstated after it was vacated.

[00:21:09] Speaker 01:
So yes, Your Honor.

[00:21:10] Speaker 01:
That portion of that decision was responding to Polaris' argument in the joint motion to terminate.

[00:21:15] Speaker 01:
The termination was proper because Arthur's required a new decision.

[00:21:18] Speaker 01:
So it was responding to that argument.

[00:21:21] Speaker 01:
That order was actually in response to Polaris' request for a conference call with the board.

[00:21:26] Speaker 01:
about how to handle the remand proceedings.

[00:21:29] Speaker 01:
So it didn't formally deny the joint motion terminating.

[00:21:33] Speaker 02:
Should either Polaris or this court expect that the patent board is going to do anything further on this joint motion?

[00:21:40] Speaker 01:
Your Honor, the chief judge expressed his views on the joint motion.

[00:21:45] Speaker 04:
Well, how do we have a final judgment if there's still a pending motion that could dislodge everything that's going on here?

[00:21:52] Speaker 04:
How is this properly before us at all, in the case of its entirety?

[00:21:56] Speaker 01:
Well, Your Honor, the denial of the director review noted that the founding decision is to finalize the action.

[00:22:04] Speaker 01:
So Polaris requested director review.

[00:22:07] Speaker 01:
That director review request is principally based on the idea that this proceeding should be terminated.

[00:22:12] Speaker 04:
That's fine.

[00:22:12] Speaker 04:
But my question is, there's an open motion.

[00:22:17] Speaker 04:
Presumably, we know the likelihood that it's going to go the other way.

[00:22:22] Speaker 04:
But it's still open.

[00:22:23] Speaker 04:
It hasn't been denied.

[00:22:25] Speaker 04:
So how do we have a final judgment?

[00:22:28] Speaker 04:
I mean, there might be a final written decision.

[00:22:30] Speaker 04:
But if there's still a pending motion before the board that could dislodge it or do something different, why are we reviewing it?

[00:22:39] Speaker 04:
What if the board would grant it tomorrow?

[00:22:41] Speaker 04:
We're wasting our time and the court's energy

[00:22:44] Speaker 04:
to decide something that could be mooted out by the granting of a motion, right?

[00:22:49] Speaker 01:
It's certainly possible that the board would revisit it, but I think that depending on the instruction, a remand instruction.

[00:22:55] Speaker 02:
That was a very spooky thing you just said.

[00:22:58] Speaker 02:
It's quite possible that the board could reconsider.

[00:23:01] Speaker 01:
I didn't mean to consider that order that bowling issued a year ago so not reconsider that issue because again that order formally respond reconsider what so the if it on remand depending on the remand instructions the board may have the authority to maybe is the joint motion term but if the remand instructions are to finally resolve that that was judge chance first question which is why I get

[00:23:25] Speaker 04:
I'm holding my breath here, because you're saying there's still a pending motion that has not been either denied or granted, that's still open before the board.

[00:23:34] Speaker 02:
I mean, one way to interpret what Bullock said was, under any reasonable reading of Section 317, once there's a final written decision, the board is not going to entertain any kinds of motions determining the proceeding.

[00:23:51] Speaker 02:
It can always consider one up until,

[00:23:55] Speaker 02:
there is a final written decision.

[00:23:56] Speaker 02:
But once there's a final written decision in the books, it's not going to do it.

[00:24:02] Speaker 02:
Is that what Bullock was trying to say?

[00:24:05] Speaker 01:
Yes.

[00:24:05] Speaker 01:
I think, effectively, it did deny the joint motion to terminate.

[00:24:08] Speaker 01:
It didn't actually enter the ministerial task of formally denying it.

[00:24:12] Speaker 04:
But as you know, I believe that- So what's no longer open and pending because it was effectively denied, is that the office's position?

[00:24:18] Speaker 01:
That is my understanding of the officer.

[00:24:20] Speaker 01:
It is effectively denied, but there's no actual adjudication.

[00:24:24] Speaker 04:
So what you're talking about is if it goes back to remand.

[00:24:26] Speaker 04:
I mean, no further action.

[00:24:28] Speaker 04:
Is any further action, in your view, required or necessary to put that question to bed?

[00:24:34] Speaker 01:
My understanding is that no further action is required.

[00:24:39] Speaker 01:
If the court requires, for example, additional explanation, then the board may have to provide additional explanation as to why the joint motion of terminate was denied.

[00:24:46] Speaker 01:
But beyond that, my understanding is that no further action is required.

[00:24:56] Speaker 01:
All the support has further questions on termination.

[00:24:58] Speaker 01:
I could turn to the mayor.

[00:24:59] Speaker 04:
Well, you want to talk a little, because your friend spent a lot of time and effort in his briefing here.

[00:25:03] Speaker 04:
talking about under the APA, the need for consistency here.

[00:25:08] Speaker 04:
And the board did not provide consistency, because not only did this, what it did here, fly in the face of its previous determinations, but it offered no explanation as to why or how this case was different than those.

[00:25:22] Speaker 04:
So you want to respond to that?

[00:25:23] Speaker 01:
Sure, Your Honor.

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

[00:25:28] Speaker 01:
These cases presented the USPTO very unique circumstance.

[00:25:31] Speaker 01:
The USPTO was faced with the prospect of 100 cases being remanded, potentially requiring new decisions.

[00:25:36] Speaker 01:
And in that light, the USPTO did its best to weigh competing concerns.

[00:25:41] Speaker 01:
On the one hand, certainly there's the concern of encouraging settlement.

[00:25:45] Speaker 01:
On the other hand, we want to avoid wasting resources and avoid unwinding proceedings.

[00:25:50] Speaker 01:
And in responding to those considerations, the line that we drew was intervention on the merits on appeal.

[00:25:57] Speaker 01:
So where the USPTO intervened on the merits on appeal, we decided that we would not grant termination there.

[00:26:03] Speaker 01:
But for cases where that didn't happen, we grant joint motion to terminate.

[00:26:08] Speaker 01:
So I don't think Polaris can argue that it wasn't treated the same as those other similarly situated parties, namely Apotex and Aristocrat.

[00:26:16] Speaker 02:
OK, so let me get something straight.

[00:26:19] Speaker 02:
For those other cases where the PTO did not intervene on the merits in appeal, and then after the Arthrex Supreme Court decision, I guess, resurrected final written decisions and all of these other IPRs, the board in those cases nevertheless went ahead and granted the motion to terminate the proceeding, even though there was in effect

[00:26:48] Speaker 02:
a final written decision back on the books?

[00:26:51] Speaker 01:
So at the time, the board granted the joint motion to determine those cases.

[00:26:54] Speaker 01:
Arthrox had not been decided yet.

[00:26:55] Speaker 01:
The Supreme Court Arthrox decision had not come out yet.

[00:26:58] Speaker 01:
So at that point, the final decision was still vacated.

[00:27:01] Speaker 01:
The status were they were still vacated.

[00:27:04] Speaker 01:
Yes.

[00:27:04] Speaker 04:
Because the decision was pending before the Supreme Court?

[00:27:08] Speaker 01:
Correct.

[00:27:08] Speaker 04:
Well, didn't they have an opportunity here during that interim period to do the same thing?

[00:27:14] Speaker 04:
Yes.

[00:27:15] Speaker 04:
So I thought you were answering us in terms of what the distinction is between this case and those.

[00:27:21] Speaker 01:
So at that point, the distinction is still the same.

[00:27:24] Speaker 01:
At that point, the USPTO had intervened on the merits.

[00:27:28] Speaker 01:
had intervened on the merits.

[00:27:31] Speaker 01:
So the ESPTO had intervened before this court's orthoracic decision, before the cases were remanded back to the ESPTO.

[00:27:38] Speaker 03:
So for timing, just to make sure I understand, what you're saying is that for those cases in which the PTO had intervened on appeal in the first case that came before this court, before the Supreme Court's decision on orthoracics, the board just didn't rule on those

[00:27:56] Speaker 03:
motions to settle or motions to terminate.

[00:28:00] Speaker 03:
Instead, they just sat there pending, whereas for those cases where the USPTO did not intervene, those motions were ruled on.

[00:28:10] Speaker 01:
That's correct.

[00:28:11] Speaker 01:
Thank you.

[00:28:13] Speaker 04:
All right.

[00:28:13] Speaker 04:
You want to move on to the merits?

[00:28:17] Speaker 01:
Sure.

[00:28:17] Speaker 01:
Thank you, Your Honor.

[00:28:18] Speaker 01:
With respect to the merits, I'd like to first note that for Polaris to prevail on its appeal, it has to show that both of the constructions here were unfeasible.

[00:28:26] Speaker 01:
And I'd like to start off by saying that the 993 patent discloses a solution relating to the control component.

[00:28:33] Speaker 01:
Namely, multiplexing certain address and control signals on the control component so they can control different memory configurations.

[00:28:42] Speaker 01:
That solution has very little to do with how the semiconductor memory component or the memory chips are packaged.

[00:28:48] Speaker 01:
Turning specifically to memory chips, as the parties agree, that term can refer to either a packaged IC or a single die.

[00:28:57] Speaker 01:
Polaris asserts that only the latter is consistent with the disclosure in the 993 specification.

[00:29:03] Speaker 01:
But in making that argument, it principally focuses on figure 2a, which is described as being an embodiment.

[00:29:08] Speaker 01:
And there is no indication within the specification that claim 2 was intended to be limited to figure 2a.

[00:29:15] Speaker 01:
On top of that.

[00:29:15] Speaker 04:
Well, your friend seems to suggest that because this is a dependent claim, and this is the only one.

[00:29:21] Speaker 04:
I mean, isn't that a fair reading?

[00:29:23] Speaker 04:
If you look at the dependent claim, and you say, OK, what in the spec speaks to this particular dependent claim?

[00:29:33] Speaker 04:
Is your friend not making a fair point that the answer to that is 2A, full stop?

[00:29:40] Speaker 01:
Well, your honor, I would agree with that part of the line.

[00:29:43] Speaker 04:
I don't know that you want to agree.

[00:29:44] Speaker 01:
Well, so what I would add is that there are important differences between claim 2 and figure 2a.

[00:29:49] Speaker 01:
So for example, figure 2a shows four memory chips.

[00:29:52] Speaker 01:
There's nothing on the face of claim 2 that's limited to four memory chips.

[00:29:57] Speaker 01:
Figure 2a also shows a stacked arrangement.

[00:29:59] Speaker 01:
There's nothing in the claim that requires a stacked arrangement.

[00:30:03] Speaker 01:
So the specification, I think, the distinction between figure 2a and claim 2 indicates that claim 2 is not limited to what's shown in figure 2a.

[00:30:13] Speaker 02:
You're opposing counsel.

[00:30:14] Speaker 02:
brought up the background section, column two, that's somehow guiding the reader to suggest that when we're talking about memory chips, we must be talking about a die, not a packaged IC.

[00:30:28] Speaker 01:
Do you have a response to that?

[00:30:30] Speaker 01:
Your Honor, I completely disagree with that.

[00:30:32] Speaker 01:
This paragraph relates to- You want us to slow down?

[00:30:35] Speaker 01:
Oh, I'm sorry.

[00:30:36] Speaker 01:
Your Honor, I would disagree with that.

[00:30:39] Speaker 01:
This paragraph describes a need for the controller to be able to control different configurations without increasing the number of pins on the controller.

[00:30:49] Speaker 01:
It doesn't distinguish between multiple memory chips as package die being the rents or those rents being composed of individually packaged devices.

[00:31:00] Speaker 01:
There's no distinction drawn here between those two possibilities.

[00:31:07] Speaker 04:
Anything further?

[00:31:08] Speaker 01:
Your Honor, I just have one additional point.

[00:31:11] Speaker 01:
In this situation, we don't just have figure 2a as being referred to as an embodiment.

[00:31:15] Speaker 01:
We also have, as the board noted, some interchangeable usage between the terms memory chip and semiconductor memory component.

[00:31:21] Speaker 01:
And so the idea that there's this sharp distinction between one component that's supposed to be packaged and one component that is not packaged, we would say that those passages essentially rebut that argument.

[00:31:32] Speaker 04:
And as Judge Chen pointed out with your friend, there's a plain and ordinary meaning here that seems to go there.

[00:31:38] Speaker 01:
Yes, absolutely.

[00:31:39] Speaker 01:
So we would say under Thorner, because there's agreed upon a plenary meaning Polaris Michelle, some sort of either definition or disavow, and the passages that they've cited don't rise up.

[00:31:51] Speaker 02:
I'll be honest.

[00:31:51] Speaker 02:
I didn't understand the argument you made about the seeming interchangeable use of the term semiconductor memory module.

[00:32:01] Speaker 02:
and memory chip.

[00:32:03] Speaker 02:
I mean, I don't understand how that fact, assuming that it's true, helps me understand the meaning of memory chip and why memory chip should be open to include a packaged IC.

[00:32:17] Speaker 01:
Well, it's really in response to Polaris' argument.

[00:32:19] Speaker 01:
So Polaris is slow down.

[00:32:22] Speaker 01:
Polaris is arguing that the specification consistently uses these terms, semiconductor memory component and memory chip.

[00:32:29] Speaker 01:
It consistently uses one to refer to a packaged device and one to refer to a device that is not packaged.

[00:32:35] Speaker 01:
And so if Polaris is right and there's strict dichotomy, that would support their argument that memory chip is not packaged, semiconductor component is packaged.

[00:32:43] Speaker 01:
But as the board noted, since there's some interchangeable usage between these terms, then that dichotomy evaporates.

[00:32:53] Speaker 01:
OK.

[00:32:54] Speaker 04:
Thank you.

[00:32:55] Speaker 01:
Thank you.

[00:33:05] Speaker 04:
OK, as I said, we'll restore two minutes of your reply.

[00:33:09] Speaker 00:
Thank you, Your Honor.

[00:33:11] Speaker 00:
I will give back more than the added time in the next appeal.

[00:33:16] Speaker 03:
Can I ask you a question about your motion to terminate?

[00:33:19] Speaker 03:
I understood you to be asking that the IPR be terminated full stop.

[00:33:25] Speaker 03:
And one option would have been to ask that it be terminated simply as to NVIDIA, right?

[00:33:31] Speaker 00:
Correct.

[00:33:32] Speaker 03:
But you didn't ask for it to be terminated simply as to NVIDIA.

[00:33:36] Speaker 03:
You instead asked that it be terminated full stop.

[00:33:39] Speaker 00:
We asked for both, Your Honor.

[00:33:41] Speaker 00:
But NVIDIA had agreed not to participate in any event.

[00:33:44] Speaker 00:
So that was sort of a moot aspect of the motion.

[00:33:47] Speaker 03:
It's just the way 317 is written.

[00:33:49] Speaker 03:
The way 317 is written, it says, shall be terminated with respect to any petitioner.

[00:33:56] Speaker 03:
The way it's written is specific to that scenario, at least the first sentence.

[00:34:03] Speaker 00:
Correct.

[00:34:03] Speaker 00:
The first sentence, Your Honor.

[00:34:06] Speaker 00:
I do want to address the final judgment here.

[00:34:09] Speaker 00:
I think an important legal principle is that agency inaction can be treated as a denial by this court.

[00:34:18] Speaker 00:
We didn't brief that.

[00:34:19] Speaker 00:
We didn't see that issue coming.

[00:34:21] Speaker 00:
But there's lots of law.

[00:34:22] Speaker 00:
And at that point, we'd be happy to.

[00:34:24] Speaker 04:
So you agree with your friend that there's no problem with the final judgment in this case because it effectively denied it.

[00:34:31] Speaker 00:
Yes.

[00:34:31] Speaker 00:
It's done.

[00:34:32] Speaker 00:
Yes.

[00:34:33] Speaker 00:
OK.

[00:34:34] Speaker 00:
I do want to address the line that my friend said has been drawn regarding intervention on the merits.

[00:34:41] Speaker 00:
That was never explained by the office until April of 2022, this year, in the solicitors supplemental response brief.

[00:34:51] Speaker 00:
They never gave that to Polaris as an explanation for sitting on the joint motion and not ruling it.

[00:34:56] Speaker 00:
They never said that was a factor that mattered in the other joint motions that they did grant.

[00:35:03] Speaker 00:
And I see that I'm out of time.

[00:35:07] Speaker 00:
But I'll stay here for the next case.

[00:35:10] Speaker 04:
That would be fine.

[00:35:11] Speaker 04:
We'll call the next case.

[00:35:13] Speaker 04:
I don't know.

[00:35:14] Speaker 04:
We thank both sides, and that case is submitted.