[00:00:00] Speaker 01: The first case for argument today is 21-2211, Sincor v. Vicor. [00:00:05] Speaker 01: Mr. Horowitz, please proceed. [00:00:07] Speaker 02: Thank you, Your Honor, and may it please the Court. [00:00:12] Speaker 02: I'd like to focus on three points this morning. [00:00:14] Speaker 02: First, one pair of rejections in this case is barred by issue preclusion based on a finding and a prior re-exam. [00:00:22] Speaker 02: Second, the other pair of rejections fails to reckon with the fact that one of the references in the asserted combination points away from using the other. [00:00:32] Speaker 02: And third, across all four rejections, there's an unexplained inconsistency in the board's treatment of secondary considerations. [00:00:41] Speaker 02: Let me start with preclusion. [00:00:44] Speaker 02: Rejections three and four should be reversed, because Vicor is precluded from relitigating the question whether a skilled artisan would make what Vicor called a simple substitution of Steigerwald's synchronous rectifiers in place of JP446's diode rectifiers. [00:01:02] Speaker 03: Can you explain this to me? [00:01:03] Speaker 03: So tell me why the following is an incorrect or legally immaterial understanding. [00:01:13] Speaker 03: In the earlier 702 Vicor proceeding, the asserted combination was borrowed two things from Steigerwald to combine with the JPP reference, the second being something about the rate of some rate. [00:01:37] Speaker 03: In this one, the asserted combination is not in that. [00:01:41] Speaker 03: so that the issue decided against VICOR in the earlier proceeding was only that that combination would not have been made because of certain inconsistencies between the Japanese patents function and the Steigerwald, but that's not necessary for VICOR to prevail here. [00:02:02] Speaker 02: So it is true, Your Honor, that in the prior case, VICOR used Steigerwald for two different things. [00:02:08] Speaker 02: That doesn't answer the question whether it's the same issue. [00:02:10] Speaker 02: The reason why it is the same issue, notwithstanding the differences in claims, and by the way, there were differences in claims in SYNCOR 5 as well, [00:02:18] Speaker 02: is because that the issue decided was that a person of skill wouldn't combine the systems because there was something incompatible about the systems, just as in SYNCORP5. [00:02:27] Speaker 02: So in SYNCORP5, across three patents, there were decisions that you wouldn't combine, same issue actually, synchronous rectifiers from one system into diode rectifiers for another. [00:02:36] Speaker 02: And this court applied preclusion saying there was a prior finding that the systems had an incompatibility with respect to switching frequencies. [00:02:44] Speaker 03: In this case, [00:02:45] Speaker 03: I guess to put it this way, perhaps, why is the combination required for this case a combination of what you call the systems as opposed to a particular teaching from style? [00:02:59] Speaker 02: So let me make two points. [00:03:01] Speaker 02: One is general, and then I'll just take issue with the specific fact. [00:03:04] Speaker 02: So the general point is what the board found at 1773-4, I believe, is that the two systems, [00:03:13] Speaker 02: JP446 and Steigerwald have different modes of operation that depend on different waveform types such that you wouldn't make a simple substitution. [00:03:24] Speaker 02: Well, there's two different types of waveforms and let me dig into that too. [00:03:27] Speaker 02: So our first line argument is that the finding is about the systems and their incompatibility just as in SYNCOR 5. [00:03:33] Speaker 02: If you think you need to parse the question, did they specifically find that you wouldn't bring in [00:03:39] Speaker 02: the synchronous rectifiers because of the current waveform, which is the dispute about the synchronous rectifiers, as opposed to the voltage waveform, which is the dispute about short transitions, which is what you were looking for earlier. [00:03:52] Speaker 02: We know they're talking about at least about the synchronous rectifiers, and at least about the current waveform for a couple of reasons. [00:04:00] Speaker 02: One, they use the term simple substitution. [00:04:03] Speaker 02: We have the sites in our brief, but if you look, the only time VICOR makes an argument about simple substitution [00:04:08] Speaker 02: is in connection with the synchronous waveforms argument. [00:04:11] Speaker 02: So the board is taking that directly on and rejecting it. [00:04:13] Speaker 02: That's one point. [00:04:15] Speaker 02: If you look above on the same page, and I'll pull it out, in volume three of the joint appendix, like I said, I think it's 17-734, but let me pull it up. [00:04:26] Speaker 02: If you look at the decision, and this is critical, the key paragraph is the second on the page where I'm looking at the distinct waveform types. [00:04:35] Speaker 02: But if you go right above that, understand what exactly, and again, 17734, what exactly is the board rejecting at this moment? [00:04:44] Speaker 02: Saying requester, that's Viscor, urges that the patent owner has mischaracterized the rejection as incorporating the waveforms of Steigerwald 539 into JP 446. [00:04:54] Speaker 02: And then it cites respondents brief at 20. [00:04:56] Speaker 02: I want to go to that brief in a moment. [00:04:58] Speaker 02: But before I do that, what the board is taking on is Viscor's argument that [00:05:03] Speaker 02: Look, you don't have to take waveforms from one system into another. [00:05:06] Speaker 02: You just have to take out a component, namely the synchronous rectifiers. [00:05:10] Speaker 02: With respect to that other issue, Judge Toronto, the short transitions, Fikor's argument was that actually you do have to take the waveform. [00:05:17] Speaker 02: That's the whole point. [00:05:18] Speaker 02: The short transitions is describing the shape of the voltage waveform, that it has short transitions rather than the sinusoidal shape. [00:05:25] Speaker 02: So it's saying, Fikor's saying, no, you don't have to take over the waveforms. [00:05:30] Speaker 02: What they're talking about is when you bring over the component, the synchronous rectifier, you don't have to bring over the current waveform. [00:05:37] Speaker 02: And in case there's any doubt on that, there's the site, Respondents Brief, page 20. [00:05:41] Speaker 02: That's 19368 of the Joint Appendix. [00:05:45] Speaker 02: So if you turn over to 19368, same volume, thankfully. [00:05:58] Speaker 02: And we look for this idea of mischaracterizing the rejection. [00:06:00] Speaker 02: What is ViCore talking about? [00:06:06] Speaker 02: ViCore says, SYNCOR mischaracterizes the rejection, which simply proposes incorporating the synchronous rectifiers from Steigerwald 539 into JP446, but does not require incorporating the current waveform. [00:06:22] Speaker 02: So the very thing the board is responding to is VIKOR says you just take the simple substitution of the component. [00:06:30] Speaker 03: And you say that's what's being urged here as well. [00:06:33] Speaker 02: That's exactly what's being urged here. [00:06:35] Speaker 02: VIKOR is saying you take the synchronous rectifiers from Stigerwald and you drop them into JP 446. [00:06:43] Speaker 02: That's what they urged in the 702. [00:06:45] Speaker 02: And what the board said was, [00:06:47] Speaker 02: can't do that, or at least the simple substitution wouldn't happen. [00:06:50] Speaker 02: And the reason it wouldn't happen is because there are distinct modes of operation between the two systems, depending on distinct waveform types. [00:06:57] Speaker 02: Just as in SYNCOR 5, again, some of these patents are the same. [00:07:01] Speaker 02: 702 patent, 190 patent, 290 patent, all three of them were at issue there. [00:07:05] Speaker 02: And we didn't parse the different claims, although the claims were different, because the issue was that the systems were incompatible. [00:07:13] Speaker 02: If I may, I'd like to turn to the [00:07:16] Speaker 02: second issue, which has a different kind of a problem with respect to rejections five and six. [00:07:22] Speaker 02: There, the board proceeded as if the skilled artisan already had Pressman and Steigerwald laying on the table before him. [00:07:28] Speaker 02: The only question was how best to optimize the combination. [00:07:32] Speaker 02: The problem is, apart from its inconsistency with WBIP generally, this approach led the board to overlook the fact that Pressman teaches away or points away from what Steigerwald proposes, specifically [00:07:45] Speaker 02: Pressman makes clear that there's a preference for one stage converters over two stage converters because two stage converters handle the power twice and are less efficient as a result. [00:07:57] Speaker 04: Is that teaching a way to say that a reference prefers one model over another model? [00:08:04] Speaker 04: that necessarily means that the reference should be taken as teaching away from the other model? [00:08:12] Speaker 02: Let me first say that in the Polaris case, this court made clear that it actually doesn't make a difference in terms of review of this kind of situation, which is to say in Polaris, there was the same issue. [00:08:23] Speaker 02: Prior art reference said, don't raise the center of gravity in the ATVs by putting the gas tank under the seats. [00:08:31] Speaker 02: And the board didn't take on that teaching of the prior art. [00:08:34] Speaker 02: And then the appellant, which is the patent owner, just as in our situation, said on appeal, look, the board needed to reckon with this. [00:08:43] Speaker 02: Needed to reckon with this teaching. [00:08:44] Speaker 04: That's what I'm trying to figure out is, if I was an administrative patent judge in this case, and I read your brief challenging this proposed rejection, [00:08:55] Speaker 04: would I understand your side as making an argument that you do not make this combination because Pressman teaches away? [00:09:04] Speaker 04: Would I feel like there was a teaching away argument in front of me that I had to address? [00:09:09] Speaker 04: Obviously, the board decision doesn't make any findings on the question of whether Pressman teaches away, but that, according to the other side, is because your side never made such an argument to the board in the first instance. [00:09:24] Speaker 02: So let me take on the question of whether teaching away is the right frame, and then let me talk about what we presented below. [00:09:31] Speaker 04: As to the teaching- Well, isn't that what you're arguing now? [00:09:33] Speaker 04: I look at your- Pointing away, teaching away. [00:09:36] Speaker 04: It seems to be teaching away, Pressman. [00:09:37] Speaker 04: Teaching away from making this combination. [00:09:39] Speaker 04: That's how I read your brief. [00:09:40] Speaker 04: That's correct. [00:09:41] Speaker 04: That's correct, Your Honor. [00:09:42] Speaker 02: And now I'm trying to find- that express language isn't in your brief to the board. [00:09:47] Speaker 02: The word's teaching away or not. [00:09:48] Speaker 02: That's correct. [00:09:49] Speaker 02: But our brief makes the point in this court [00:09:51] Speaker 02: that, as in Polaris, we're not making an argument that it would have not been obvious based on a teaching away generally, as in it's not sort of like an objective evidence, don't look at this kind of move. [00:10:01] Speaker 02: It's when you take these two references next to each other, you have to look at what one says about the technique about the other and whether there's a preference stated, as in Polaris, which of course said, even if it's not a teaching away, if there's a preference, that's something the board has to take on. [00:10:14] Speaker 02: Now let me go to the question of what we presented to the board. [00:10:18] Speaker 02: And I think the best place to look is thankfully same volume 18047 of volume 3, the joint appendix. [00:10:27] Speaker 02: And this is where we're making the general point about starting points. [00:10:33] Speaker 02: And this is the broader WBIP argument in part 18047. [00:10:47] Speaker 02: At the bottom of 1847, we start our argument about you wouldn't make this combination in the first place. [00:10:55] Speaker 02: What we say in particular is that DPA, that's a reference to distributed power architecture, which is the single stage approach, was the preferred conventional architecture for large telecommunication and computer systems. [00:11:08] Speaker 02: which used one or more single stage isolating and regulating, as opposed to two stages that separate the two, as shown by Prespin's preference for a single stage converter on each load board. [00:11:18] Speaker 02: So we're making the point, look, you're plugging these two references out of the prior art. [00:11:22] Speaker 02: One of them is about radar arrays, pulsed loads. [00:11:25] Speaker 02: It's a specialized context. [00:11:26] Speaker 02: It's unusual. [00:11:28] Speaker 02: The other one, it's a textbook from like 20 years before. [00:11:31] Speaker 02: And what it teaches is we're past two stages. [00:11:33] Speaker 02: We're moved on to single stage, which is more efficient, the conventional wisdom as represented by press. [00:11:38] Speaker 02: That's sort of the conflict that we're pointing at. [00:11:40] Speaker 02: We made the argument below, and the board didn't confront it. [00:11:42] Speaker 02: I see that I'm into my rebuttal time. [00:11:44] Speaker 02: The only thing I wanted to just mention in addition was that we have a couple of other issues in a brief. [00:11:49] Speaker 02: I'm happy to rest on the brief on what I will call the Arendt issue, unless the court has questions. [00:11:53] Speaker 02: But I did want to note that the objective evidence issue cuts across [00:11:57] Speaker 02: all four rejections. [00:11:58] Speaker 02: And so there are a lot of permutations in terms of outcomes here, but we have to win on either both of the first two, some version, or secondary considerations for some combination throughout. [00:12:12] Speaker 02: So if there are no further questions, I'd reserve the balance of my time for rebuttal. [00:12:14] Speaker 01: OK. [00:12:15] Speaker 01: Thank you very much. [00:12:16] Speaker 01: Mr. Smith, please proceed. [00:12:19] Speaker 00: Thank you, Chief Judge Moore. [00:12:21] Speaker 00: Let me begin where my counterpart left off with the teaching away argument. [00:12:27] Speaker 00: And I think there's a couple of major distinctions from the Polaris case. [00:12:31] Speaker 00: First of all, in the Polaris case, the patent owner actually made the argument for teaching away. [00:12:36] Speaker 00: We were just looking at appendix page 18047, where Sincor allegedly made that argument below. [00:12:42] Speaker 00: It's a 10-word parenthetical, which doesn't use the term teaching away, it uses the term preference. [00:12:48] Speaker 00: It's describing something relatively tangential, which is whether a distributed power system is typically one stage or two stage. [00:12:57] Speaker 00: It is stated without any citation of evidence or any of the calculations or the percentages of efficiency you see in SYNCOR's opening brief. [00:13:07] Speaker 00: And it is not the kind of thing that I think could be said to fairly put the board on notice that this issue was at play, so they would have to address it. [00:13:17] Speaker 00: And I think that's particularly important here, where the appellant is raising chennery, effectively saying you can't affirm for anything the board didn't address. [00:13:24] Speaker 00: I think addressing the doctrine of forfeiture, or at least the idea that the board can only give the amount of treatment to an issue that the appellant deems fit to put into the [00:13:37] Speaker 00: appeal brief is appropriate here where Chenery is invoked. [00:13:42] Speaker 00: I would also say that with respect to this particular issue, the board and the examiner below expressly found that Pressman [00:13:54] Speaker 00: figure 34B and this is an appendix pages 7381 and 7382 was in effect a abstract example of the Steigerwald architecture that is where you have one stage that leads to multiple output stages and Pressman expressly teaches that by using the [00:14:14] Speaker 00: architecture figures 3-4b you can create a multiplicity of outputs at high efficiency so even if one were to take into account this sort of ten word argument that SYNCOR made in its brief to the board below that resulted in this particular decision [00:14:30] Speaker 00: Pressman is effectively teaching it toward the specific architecture that's adopted in Starterwald. [00:14:36] Speaker 03: And so the efficiency... But did the board say that or you're just saying that the evidence in your view shows that? [00:14:43] Speaker 00: So the board was not specifically refuting the argument that SYNCOR effectively didn't make in its brief, but the examiner did find that Pressman effectively stated that [00:14:56] Speaker 00: the examiner did find based on record evidence that there was a correspondence between the architecture of Stagerwald 090. [00:15:03] Speaker 03: And as a procedural matter, do we take a examiner finding that hasn't been reiterated by the board as a finding that we can rely on? [00:15:18] Speaker 00: I don't think it matters in this case, because I think it was reiterated by the board, Your Honor. [00:15:23] Speaker 00: So I think the board did note the examiners. [00:15:25] Speaker 00: So the board goes through the examiner's analysis, does note the correspondence with Pressman, and does, I think, refer to figure 3.4b and the fact that Pressman teaches with respect to figure 3.4b. [00:15:36] Speaker 03: In the descriptive order. [00:15:38] Speaker 00: In the descriptive, but then affirms the examiner. [00:15:40] Speaker 00: So the board is seeing itself as sitting in judgment over the examiner's rejection. [00:15:45] Speaker 00: So it does summarize and says the examiner's conclusion here is good based on this. [00:15:49] Speaker 00: And so I think even the teaching away argument, the board does have a teaching that is supported by substantial evidence in the form of what Pressman actually says about the example in Pressman that is closest to Stagerwald 090, and that it will lead to high efficiency. [00:16:04] Speaker 00: So that's really a teaching towards, regardless of whatever else this 500 page textbook might say about particular instances of other systems. [00:16:13] Speaker 00: The Polaris case, I think, is [00:16:17] Speaker 00: In other respects, a very good example of how this issue is treated. [00:16:22] Speaker 00: I mean, the board found that Stargerwald 090, regardless of what one thinks about the 290 patent or what Dr. Select says about what his motivation was, before you can leave that all aside, Stargerwald 090 is a public domain system where a person of ordinary skill in the art looking at it could see an improvement. [00:16:42] Speaker 00: And that improvement is the substitution of switching regulators, as we said before. [00:16:47] Speaker 00: And that improvement was obvious to a person of ordinary skill. [00:16:51] Speaker 00: So the fact that we have Steigerwald 090 out there, and there is an apparent improvement that will lead to a better Steigerwald 090, in effect, is sufficient for the obviousness case. [00:17:01] Speaker 00: And this is effectively what the Polaris case held when it judged the rejection of claim one over the Denny reference and the Furoshino reference. [00:17:11] Speaker 00: where the patent owner actually raised an argument under WBIP saying, why is it obvious to take this particular reference and modify it to add four-wheel drive? [00:17:21] Speaker 00: And the court said it's unavailing because that particular principal reference you have is admitted to be analogous art, and it is admitted that there is a motivation to make this change. [00:17:30] Speaker 00: So you are effectively going to get better prior art in that way, a better prior art system. [00:17:34] Speaker 00: And that was sufficient to make the obviousness combination. [00:17:38] Speaker 00: But even if it weren't, [00:17:39] Speaker 00: I think the examiner and the board found that there was a correspondence between more general systems, such as what we saw in Pressman's Figure 3.4b, that are more broadly applicable to things like telecom. [00:17:53] Speaker 00: Pressman expressly says that when you have a multiplicity of outputs, the Figure 3.4b embodiment can provide those with high efficiency. [00:18:03] Speaker 00: And this is what SYNCOR is arguing in the background of their opening brief at pages 11 to 12. [00:18:08] Speaker 00: that in the 1990s leading up to the relevant time frame there was pressure in the industry to deal with the proliferation of voltages that were needed and pressure to do that with high efficiency. [00:18:18] Speaker 00: That's exactly what Pressman is saying would occur with this type of architecture and it's a good reason even if we're not limited to Stagerwald 090's own purposes [00:18:28] Speaker 00: to more broadly take up Stagerwald than I know of architecture. [00:18:32] Speaker 04: WBIP does say something about how there needed to be some basis for why you would select these references. [00:18:42] Speaker 04: Was the reason why [00:18:45] Speaker 04: We said that in WBIP because in that particular case, the primary reference that was being asserted was a land-based generator, and the claim was for a marine-based generator, and therefore it would be... [00:19:01] Speaker 04: at least from an initial standpoint, unusual to try to take something like a land-based generator and do all kinds of modifications in order to make it marine-based. [00:19:13] Speaker 04: And for that reason that's why we observed that in that particular case there needed to be some kind of explanation for why you would go off to land-based generators. [00:19:25] Speaker 00: Yes, I think that is correct, noting that there is a sort of mismatch, and we argued this in the brief too, obviously, between the motivation that's being applied and the starting reference. [00:19:38] Speaker 00: In other words, one might have said, OK, let's pick up a land-based generator and modify it for purposes appropriate to a land-based generator. [00:19:45] Speaker 00: And that would have been fine in WBIP, I think. [00:19:48] Speaker 00: That is effectively what is happening here in this case. [00:19:51] Speaker 00: The board and the examiner took Stargerwald 090 [00:19:54] Speaker 00: found that adding switching regulators to the non-biased outputs would increase efficiency, and that's better for the purposes of Steigerwald 090. [00:20:03] Speaker 00: So conceptually speaking, you're not crossing that barrier from a land-based generator to a marine-based generator. [00:20:09] Speaker 00: Just aside from anything that the 290 patent says, you are getting a better Steigerwald 090 through that modification. [00:20:16] Speaker 00: But if one wanted to cross that conceptual boundary, there's a lot better evidence in this case that you could do that. [00:20:22] Speaker 00: In other words, that Stagerwald 090 would be appropriate, more broadly speaking, for the kinds of telecom applications that Dr. Schlicht was talking about in his post-issue explanation of why the 290 patent was created. [00:20:39] Speaker 00: Let me briefly address Rejection 3 and the issue preclusion question. [00:20:47] Speaker 00: And in particular, my counterparts, sort of first line and second line arguments, which I understand to be the first line argument being that there was a finding by the prior board that there was a fundamental conflict between these two references and that no one would ever combine them. [00:21:08] Speaker 00: And the second line argument being this argument about the current waveform. [00:21:12] Speaker 00: And respectfully, I don't think it's quite as simple as that. [00:21:17] Speaker 00: If you look at the briefing leading up to the board's prior decision, [00:21:21] Speaker 00: The reason for that, and I'll address the specific language that he's talking about, which is that there are distinct modes of operation between JP446 and Stargardwald 539, but I think it's important here to do this somewhat chronologically. [00:21:35] Speaker 00: It shows the reason why there's a little bit of confusion on this record. [00:21:40] Speaker 00: If you look at SYNCOR's briefing to the board in the prior case, so this is arguing about JP446 and Stargardwald 539 in the context of the 702 patent, [00:21:51] Speaker 00: And I'm looking specifically at appendix pages 19316 and 317. [00:21:57] Speaker 00: SYNCOR does make arguments about the current waveform, the voltage waveform. [00:22:02] Speaker 00: The problem is they seem to sum this up by saying, and this is on page 19317, quote, as stated above, the claims require short transitions [00:22:16] Speaker 00: And JP446 teaches that short transitions would introduce unacceptable noise, thus rendering it unfit for its intended purpose. [00:22:25] Speaker 00: Now, the claims in the 702 patent are only referring to voltage waveforms. [00:22:29] Speaker 00: So here, SYNCOR seems to be saying the problem is you have claims that require short voltage transitions, and JP446 can't handle that. [00:22:38] Speaker 00: Now, I acknowledge some ambiguity here. [00:22:40] Speaker 00: They do say, as stated above, which sounds like they're summarizing the argument. [00:22:44] Speaker 00: But they could be just going back somewhere and sort of arbitrarily picking an argument to reiterate. [00:22:50] Speaker 00: But when you look at how the board treated this, it does seem to have been taken as a summary that encapsulates all of their arguments. [00:22:59] Speaker 00: Because in the board's opinion, and I'm referring to appendix page 17, 733, the board reiterates what SYNCOR's arguments are. [00:23:08] Speaker 00: and finishes with, quote, as a consequence, it is argued that JP446 teaches that short transitions would introduce unacceptable noise, thus rendering it unfit for its intended purpose. [00:23:21] Speaker 00: So it does seem like the board there is focusing simply on what JP446 needs without considering what Stargardwald 539 needs, which suggests that what the board is saying is, I don't care how this combination takes place. [00:23:35] Speaker 00: I know the claims require short transitions. [00:23:38] Speaker 00: And if you try to put those into JP446, that's not going to work. [00:23:44] Speaker 00: The board then goes on to state its reasoning. [00:23:47] Speaker 00: And then the board's reasoning- Just so I can follow what's going on here. [00:23:49] Speaker 04: Yes. [00:23:50] Speaker 04: Are you saying that the combination here in replacing one set of rectifiers with another set of rectifiers from Steigerwald, the replacement of the rectifiers doesn't come with it these short transition times? [00:24:08] Speaker 04: That's a separate piece of the Stagerwald reference. [00:24:12] Speaker 04: And so they're not attached to each other, such that if you bring one along, the other one, i.e. [00:24:19] Speaker 04: the short transition times, comes along too. [00:24:22] Speaker 00: Yes, I understand what you're saying. [00:24:25] Speaker 00: unfortunately it's incredibly complicated and that's because throughout these litigations cincora has had a differing and sometimes very broad interpretation of what short transitions means in the claims of their patent which is not necessarily the same as what jp four four six would tolerate in terms of short transitions but i think what we can say is that the record in the seven o two patents [00:24:52] Speaker 00: in terms of both SYNCOR's argument and the decision that was ultimately made is not very clear. [00:24:59] Speaker 00: And the reason it's not very clear is because you can't really tell what the board is basing its decision on. [00:25:05] Speaker 00: Even though the board says there are distinct modes of operations in these two references, that doesn't quite get to where SYNCOR, I think, wants to get to, which is that you can fundamentally never combine these references. [00:25:18] Speaker 00: And if you go a couple of sentences later in the opinion [00:25:21] Speaker 00: The board says the distinct waveform needs of JP446 cut directly against the simple substitution argument. [00:25:28] Speaker 00: I think what the board is saying here is if you have to substitute in a simple substitution manner, synchronous rectifiers for linear rectifiers, that's going to be very complicated based on these references, and I know you're going to have to get short transitions. [00:25:44] Speaker 00: But fortunately, [00:25:45] Speaker 03: Would it be understanding things right to say that not only do you think that, but the current board thought that about its earlier decision? [00:25:57] Speaker 03: And if that's right, is that the kind of determination that we defer to? [00:26:04] Speaker 03: Is that component of an issue of preclusion analysis a factual matter or a legal matter? [00:26:12] Speaker 00: I think that is a factual matter, Your Honor. [00:26:14] Speaker 00: And I think under the Administrative Procedure Act, you would need to give that at least substantial evidence type review. [00:26:20] Speaker 00: The cases that SYNCOR cited in the gray brief on this issue are dealing with reversals of summary judgment motions that were granted or motions to dismiss on the pleadings that were granted. [00:26:32] Speaker 00: It's obviously a very different context. [00:26:34] Speaker 00: in an appeal from an agency governed by the Administrative Procedure Act for the factual matters. [00:26:39] Speaker 00: Of course, you would need to give substantial evidence review. [00:26:41] Speaker 00: And I think that is a factual issue, although I will profess I don't know an exact citation on whether the relevant question, which is the identity of issues, is a factual sub-issue. [00:26:54] Speaker 00: The way, say, motivation to combine would be in an overall issue that is decided to noble, such as an obviousness. [00:27:04] Speaker 00: But in either case, the second board, which had two overlapping members, including the administrative patent judge who wrote the original decision, looked at this and told us why they thought they decided the earlier board decision the way they did. [00:27:21] Speaker 00: And they said they were influenced by them. [00:27:24] Speaker 03: We don't generally give a privileged position to an author of a published opinion as to the meaning for the public of that opinion. [00:27:37] Speaker 03: OK. [00:27:38] Speaker 04: That's fair. [00:27:38] Speaker 04: And I think this board panel has done some inconsistent things over the years across the various interparties re-exams. [00:27:45] Speaker 04: I think we'll all agree. [00:27:47] Speaker 01: OK, Mr. Smith, your time's up. [00:27:49] Speaker 01: We'll let's have Mr. Horowitz have his rebuttal time. [00:27:51] Speaker 04: Thank you, Your Honor. [00:27:54] Speaker 04: I'm just curious. [00:27:54] Speaker 04: Is this the last SYNCOR-VICOR? [00:27:58] Speaker 02: I wish I could tell you. [00:27:58] Speaker 02: The answer was yes, Judge Penn. [00:28:00] Speaker 02: There is another pending. [00:28:01] Speaker 02: So maybe there's eight. [00:28:03] Speaker 02: An interparties re-exam or something? [00:28:04] Speaker 02: Another interparties re-exam, a return trip from what we called SYNCOR 5 in our brief here. [00:28:10] Speaker 02: So all I can say is we weren't the appellant. [00:28:13] Speaker 02: So we didn't bring it. [00:28:14] Speaker 02: So four quick points in rebuttal. [00:28:17] Speaker 02: On the Pressman-Steigerwald, I just wanted to note that my colleague referred to the board's discussion of Figure 3-4B and talked about how it was two-stage. [00:28:28] Speaker 02: The relevant sites on that are 76, I think, and 79 of the Joint Appendix. [00:28:35] Speaker 02: When you look at that section of the opinion, you'll see that there's no reference to the fact that it's two stages. [00:28:40] Speaker 02: And we did present evidence below at 1121 and 1147 to 49. [00:28:45] Speaker 02: This is cited in our briefs. [00:28:47] Speaker 02: explaining why Pressman teaches away or points away from that two-stage architecture. [00:28:55] Speaker 02: On WBIP, the issue is that there needs to be some explanation of the motivation for picking up these two references out of the sea of prior art. [00:29:03] Speaker 02: That's the issue on that case in particular. [00:29:05] Speaker 02: There isn't an explanation. [00:29:06] Speaker 02: It starts from, you've got Steigerwald, you've got Pressman, how would you improve one with the other? [00:29:13] Speaker 02: WBIP teaches that that's not how the analysis goes. [00:29:17] Speaker 02: With respect to preclusion, there's two points I wanted to make. [00:29:22] Speaker 02: One has to do with what's going on in the board's decision. [00:29:28] Speaker 02: I grant you, we did make both arguments. [00:29:31] Speaker 02: We did say that you wouldn't import the short transitions. [00:29:34] Speaker 02: You wouldn't import the synchronous rectifiers. [00:29:36] Speaker 02: And the board summarized our arguments, including the short transitions one. [00:29:40] Speaker 02: That's true. [00:29:41] Speaker 02: But when you look at what the board decided, the board's decisional language and the board's reasoning, that's on 17.734. [00:29:49] Speaker 02: What the board said is, we, the board, do not think Patent Owner has mischaracterized the rejection. [00:29:54] Speaker 02: What are they saying? [00:29:55] Speaker 02: We disagree with what Vicor said on page 20 of its brief. [00:29:59] Speaker 02: That's the thing I took you to before about the synchronous rectifiers. [00:30:04] Speaker 02: The board is explicitly rejecting the very argument that Vicor was making about synchronous rectifiers. [00:30:09] Speaker 02: And then at the end, simple substitution. [00:30:12] Speaker 02: We don't think you could do this simple substitution. [00:30:15] Speaker 02: Council just acknowledged that the substitution they're talking about is rectifiers, not waveforms. [00:30:21] Speaker 02: The word simple substitution, that argument, it's imported from a Morata re-exam. [00:30:25] Speaker 02: We explained this in our brief. [00:30:27] Speaker 02: There is no simple substitution argument with respect to the voltage waveform short transitions anywhere in the record. [00:30:33] Speaker 02: So they must be talking about the issue that is in common between this case and that one. [00:30:38] Speaker 02: And the last point I just wanted to note on the standard of review. [00:30:42] Speaker 02: ViCOR cites one case, the Gossage case, to support its idea that the standard of review includes deference in preclusion analysis. [00:30:51] Speaker 02: ViCOR does not cite a single case. [00:30:53] Speaker 02: where this court or any other deferred to the same issue determination, which is the question, Judge Sorrento, that you were asking about. [00:31:00] Speaker 02: Do we defer on the same issue determination? [00:31:02] Speaker 02: Bycourt didn't cite a single case where that's happened. [00:31:04] Speaker 02: The issues handled de novo routinely. [00:31:07] Speaker 02: In fact, in Sincor 5, we raised it for the first time on appeal. [00:31:10] Speaker 02: The court just answered the question, because it's a legal question based on the legal materials in the record. [00:31:15] Speaker 02: It's not the sort of thing courts generally defer to. [00:31:18] Speaker 02: The only difference in gossage [00:31:20] Speaker 02: had to do with a matter of historical fact. [00:31:22] Speaker 02: Did this person have records in his possession? [00:31:24] Speaker 01: OK, Mr. Horowitz, your time is up. [00:31:26] Speaker 01: Thank you, Your Honor. [00:31:26] Speaker 01: We take this case under submission.