[00:00:07] Speaker 03:
So this case involves the question of whether the patentee is properly according to the idea of the present purposes lab.

[00:00:23] Speaker 03:
Assigning that question is going to let you know.

[00:00:32] Speaker 02:
Thank you, Your Honor.

[00:00:33] Speaker 02:
I didn't fully hear what the court said with respect to the issue of the ability for the ST to participate in the 1499.

[00:00:42] Speaker 03:
We're going to let them argue without deciding the question of whether they're formally a party.

[00:00:46] Speaker 03:
I understand.

[00:00:47] Speaker 03:
Thank you, Your Honor.

[00:00:49] Speaker 03:
You can revert on this appointment.

[00:00:54] Speaker 02:
Well, they didn't go through that route, but I understand, Your Honor.

[00:01:00] Speaker 02:
Thank you, and may it please the Court again.

[00:01:03] Speaker 02:
In this appeal, we have two separate IPR proceedings directed to the same patent.

[00:01:09] Speaker 02:
And in both instances, the evidence does not support

[00:01:14] Speaker 02:
the board's determinations of unpatentability.

[00:01:17] Speaker 02:
And I think ultimately that demonstrates the non-obviousness of the invention, the fact that these different references, whether as anticipation or obviousness, do not ultimately reach the claims.

[00:01:29] Speaker 02:
With respect to the first IPR, the board started off with a procedural error in that it relied on the combination of WADA and Barrett

[00:01:39] Speaker 02:
to meet the predetermined number limitation, whereas the petitioner consistently had only argued that that limitation was met based on WADA alone.

[00:01:49] Speaker 02:
And I think it bears focusing on that issue because if indeed the board is restricted

[00:01:57] Speaker 02:
to WADA alone with respect to the predetermined number limitation, the board's own findings demonstrate that the petition could not prevail with respect to the first IPR.

[00:02:12] Speaker 02:
To the extent the court is inclined

[00:02:14] Speaker 02:
to look beyond WADA alone and consider the combination of WADA and Barrett that the board raised with respect to the predetermined number limitation.

[00:02:24] Speaker 02:
The problem is that the board's combination only addresses part of WADA's shortcoming.

[00:02:30] Speaker 02:
The board's decision itself at appendix 13 and 19 acknowledges that neither of WADA's two embodiments on their own have any

[00:02:42] Speaker 02:
lower bound or upper bound.

[00:02:43] Speaker 03:
Okay, so the board relied on the second embodiment and it found that the existence of four multiplexers defined an upper limit, right?

[00:02:52] Speaker 02:
That was the board's assumption.

[00:02:54] Speaker 03:
And there is testimony to that effect by the expert.

[00:02:57] Speaker 02:
There is testimony from the expert that that's how the expert views it, but there's no support in WADA for such an understanding.

[00:03:05] Speaker 02:
And so the difference, the distinction that we highlighted and that the board failed to address is between a sort of number of states and the number of actual addresses generated.

[00:03:16] Speaker 02:
In the case of the four multiplexers, we can think of it like cylinders in a cart.

[00:03:22] Speaker 03:
Your argument is they could keep recycling it and that would produce more than four.

[00:03:28] Speaker 02:
So four multiplexers are four devices, right?

[00:03:31] Speaker 02:
And the fact that there are four devices doesn't tell us anything about when the system as a whole stops generating address signals.

[00:03:37] Speaker 02:
It's like there are four cylinders in a car.

[00:03:39] Speaker 02:
That doesn't tell us how many times each of them combusts.

[00:03:42] Speaker 02:
When the car is running, it just means there are four cylinders.

[00:03:45] Speaker 02:
And to go from the fact of four multiplexers to the conclusion of a system in which four addresses are generated, and then you stop.

[00:03:54] Speaker 03:
The positions expert said it showed four.

[00:03:57] Speaker 02:
Fair enough, Your Honor.

[00:04:01] Speaker 02:
I think that the problem in light of that evidence is that we submitted contrary evidence that was not addressed.

[00:04:09] Speaker 02:
And so the board only weighed and considered one side's evidence and agreed with it without addressing why it is that our detailed testimony and explanations were not adequate to show otherwise.

[00:04:26] Speaker 02:
With respect to the non-interruptible limitation, the board relied on the combination of WADA and Barrett in a fairly unusual way.

[00:04:37] Speaker 02:
It said that it's not taking any teaching at all from Barrett as to non-interruptible.

[00:04:43] Speaker 02:
It's only taking the so-called particular desire to make address signal generation non-interruptible.

[00:04:50] Speaker 02:
And then the board said, once a person of steel is armed with that desire from Barrett, then WADA would somehow effectively magically become non-interruptible.

[00:05:01] Speaker 02:
But there was no explanation from the board as to how that would actually happen, and no evidence of a reasonable expectation of success.

[00:05:09] Speaker 02:
And the distinct requirement of a reasonable expectation of success, part of the motivation to combine,

[00:05:15] Speaker 02:
is something that this court's precedents have repeatedly held the board is required to address and consider.

[00:05:25] Speaker 04:
How does your patent make this first uninterruptible?

[00:05:31] Speaker 04:
Your Honor, I think that's... The patent doesn't explain, so I'm just wondering what exactly has happened.

[00:05:38] Speaker 04:
I understand, Your Honor, because... Holding the ADV signal high, maybe?

[00:05:41] Speaker 02:
Not exactly like that.

[00:05:45] Speaker 02:
So let me give you some citations for this point.

[00:05:50] Speaker 02:
Appendix 11, 43 to 44.

[00:05:53] Speaker 02:
Appendix 12, 21.

[00:05:56] Speaker 02:
Appendix 35, 56 to 57, for instance.

[00:06:00] Speaker 02:
And in these various locations, as well as in our blue brief, you'll see the following explanation.

[00:06:08] Speaker 02:
What the patent teaches is,

[00:06:10] Speaker 02:
that if you program the number of address signals you want generated through pulses into the burst clock ahead of time, then you can go along and have the system know in advance how many it needs to generate.

[00:06:27] Speaker 02:
That's the predefined number.

[00:06:29] Speaker 02:
Once you've solved the predefined number issue, now you no longer need any interrupt mechanism.

[00:06:36] Speaker 02:
like the prior art did, because the interrupt mechanisms that were there in the prior art are there because there is no predefined number.

[00:06:43] Speaker 02:
There needs to be some way of starting and stopping.

[00:06:46] Speaker 02:
And so because we figured out a way how to create a predefined number by programming the pulses into the burst clock, we obviated any need for an interrupt mechanism, and we allowed the system to become non-interruptible.

[00:06:59] Speaker 02:
And so our expert explains that once a person of skill sees the teaching of the 134 pattern with respect to the programming of the burst cloth with pulses to generate the predefined number, then they know how to create the non-interruptible part.

[00:07:16] Speaker 02:
but without the teaching as to the pulses and achieving the predefined number independent of some external control signal, then they would not know how to achieve the non-interruptible limitation.

[00:07:29] Speaker 02:
And that's really the dichotomy.

[00:07:31] Speaker 04:
So where the board... Did your experts say either this is some unpredictable art or

[00:07:39] Speaker 04:
When looking at the teachings of Guada, I would not know how to make that first uninterruptible.

[00:07:49] Speaker 02:
Yes, our expert did say that.

[00:07:51] Speaker 02:
The expert said that.

[00:07:52] Speaker 04:
Where did the expert say that?

[00:07:53] Speaker 04:
I saw the expert say WADA is in this kind of context.

[00:07:57] Speaker 04:
Barrett is in this other context.

[00:08:00] Speaker 04:
WADA is synchronous.

[00:08:02] Speaker 04:
Barrett is asynchronous.

[00:08:03] Speaker 04:
But I didn't ever see the expert actually connect the idea that once a skilled artisan is motivated to make a non-interruptible burst signal,

[00:08:16] Speaker 04:
they would be confused or lost or very uncertain about how to make that happen.

[00:08:26] Speaker 02:
Your Honor, we did make that point.

[00:08:34] Speaker 02:
Let me give you some citations, if I could.

[00:08:43] Speaker 02:
While I pull up the citations, I'll just articulate that effectively what the expert said is that since in WADA you are reliant on the external control signal and you're not able to generate any predefined number, there is also no way of achieving non-interruptible in WADA without some significant modifications.

[00:09:07] Speaker 02:
And let me give you

[00:09:17] Speaker 02:
a reply brief at page 21.

[00:09:20] Speaker 02:
We gather citations to this point.

[00:09:25] Speaker 02:
And we explained that we challenged

[00:09:35] Speaker 02:
The WADA Barrett combination is not enabled below.

[00:09:38] Speaker 02:
And we cite to appendix 1160 to 62, appendix 1269, appendix 1293 to 99, and appendix 3727 to 29.

[00:09:50] Speaker 02:
So these are all places where we discuss why it is that WADA and Barrett

[00:09:55] Speaker 02:
based on their own teachings.

[00:09:58] Speaker 04:
Are these sites where I'll see what your expert said, that you wouldn't be able to, with any degree of reasonable certainty, make the water purse non-interruptible?

[00:10:10] Speaker 02:
Yes, some of them are.

[00:10:11] Speaker 02:
So half of them are to our brief, and half of them are to the experts.

[00:10:14] Speaker 03:
The theory is that it couldn't make it non-interruptible because there's no disclosure of a predetermined number.

[00:10:21] Speaker 02:
That is part of the theory.

[00:10:22] Speaker 02:
Well, certainly, the first part is that WADA doesn't teach non-interruptible at all.

[00:10:26] Speaker 02:
And the second part is what you're on to.

[00:10:28] Speaker 03:
Does it include that WADA does this laws pre-determined under, then there's no problem with non-interruptible?

[00:10:36] Speaker 02:
No, not quite, Your Honor.

[00:10:37] Speaker 02:
I understand why my argument may have suggested that.

[00:10:46] Speaker 02:
Our pattern teaches a particular way of achieving the predetermined number, which I articulated with the pulses and the burst clock.

[00:10:53] Speaker 02:
That's what also allows non-interruptible in the scope of our invention.

[00:10:57] Speaker 03:
To the extent the prior art is deemed to have taught other ways of achieving where defined number experts say that even if Wada teaches pre-determined number, the combination still doesn't teach non-interruptible.

[00:11:11] Speaker 03:
Where does he say that?

[00:11:12] Speaker 02:
Your honor, this was a focal point in the prosecution history, where the prior art that was brought up.

[00:11:19] Speaker 03:
So your expert doesn't say that?

[00:11:20] Speaker 02:
I believe he does.

[00:11:22] Speaker 02:
I think the same citations that I already provided support that point as well.

[00:11:27] Speaker 02:
So I'm happy to go to them.

[00:11:29] Speaker 03:
That doesn't work.

[00:11:31] Speaker 03:
You guys are not aware of it?

[00:11:33] Speaker 02:
Well, it's the same issue.

[00:11:35] Speaker 02:
So that's why I'm relying on the same citation.

[00:11:38] Speaker 02:
OK, so for example,

[00:11:42] Speaker 02:
37-27 is our expert's testimony, I believe.

[00:12:03] Speaker 02:
So in 37, 27 to 29, the expert talks about the differences between WADA and Barrett and their incompatibility.

[00:12:11] Speaker 03:
This isn't the expert testimony.

[00:12:13] Speaker 03:
This is your brief.

[00:12:13] Speaker 02:
Oh, I'm sorry.

[00:12:44] Speaker 02:
So 1293 and 1299.

[00:12:45] Speaker 02:
And in particular, we can look at 1294.

[00:12:51] Speaker 02:
The title of this section is that a person of skill would not expect the combination to succeed.

[00:13:00] Speaker 02:
And in 1294, at paragraph 180, the expert talks about reasonable expectation of success with respect to the combination.

[00:13:11] Speaker 03:
It goes on through 1299 to get into the details of... Okay, but you're not able to point to me right now where he says even if Wadden disposes a predetermined number, the combination doesn't show none at all.

[00:13:30] Speaker 02:
I don't have that citation for you offhand.

[00:13:32] Speaker 02:
I can provide it.

[00:13:34] Speaker 02:
It's certainly in the record because it's an argument that was made both during the prosecution and during the IPR repeatedly, that these are distinct requirements and that although the prosecution are purported to show predefined numbers, the claims were actually allowed because the examiner agreed that the ARC did not separately show non-interruptible.

[00:13:55] Speaker 02:
I would also like to very briefly address Schaeffer, if I may.

[00:13:59] Speaker 02:
I think the issue with Schaeffer is actually quite straightforward.

[00:14:03] Speaker 02:
In Schaeffer, the connection between the prohibition on the next command and the timing is with respect to the point at which auto-precharge is employed.

[00:14:14] Speaker 02:
That's what Schaeffer itself says at column 7, lines 40 to 47.

[00:14:18] Speaker 02:
And the time when auto-precharge is employed is as of time 6, which is in the middle of the burst.

[00:14:25] Speaker 02:
And that leaves the time from T2 to T6 interruptible, not non-interruptible.

[00:14:30] Speaker 04:
I guess the question is whether there's some ambiguity about

[00:14:35] Speaker 04:
the auto recharge being issued and whether now you can't have any intervening commands once it's issued.

[00:14:43] Speaker 04:
And if it's issued at T2, then maybe then you can't do anything between T2 and T9.

[00:14:51] Speaker 02:
That was the board's sort of general understanding.

[00:14:54] Speaker 02:
What's wrong with that is that the language, explicit language of Schaeffer that the board relies on, ties the starting point of this non-interruption effect to the time when outer pre-charge is employed.

[00:15:07] Speaker 04:
In the figure they have all these little NOP symbols between T2 and T9 and T6 and NOP stands for no operation and the board relied on that as further evidence that in fact you wouldn't have any interrupting commands.

[00:15:27] Speaker 04:
What's your understanding of NOP, no operation?

[00:15:32] Speaker 02:
My understanding is that the only thing that's special about figure four according to what was at the time Qualcomm, the only thing that's special about it is this auto pre-charge feature and the only issue

[00:15:47] Speaker 02:
that everyone agrees is when does the auto-precharge kick in to prohibit the interruptions.

[00:15:53] Speaker 02:
And that, in turn, everyone agrees depends on when the auto-precharge is actually employed.

[00:15:59] Speaker 02:
And the auto-precharge is employed at T6.

[00:16:02] Speaker 02:
So those NOPs.

[00:16:03] Speaker 04:
Can you just tell me what your best understanding of those NOPs are?

[00:16:17] Speaker 02:
That was not an issue the other side raised in their briefing.

[00:16:21] Speaker 02:
So I don't think that it's not something that was the focus of the appeal, respectfully, Your Honor.

[00:16:27] Speaker 02:
I would like to address it, but it's not something that we had an opportunity to address in the briefing.

[00:16:59] Speaker 01:
Good morning, Your Honors.

[00:17:00] Speaker 01:
May it please the court?

[00:17:01] Speaker 01:
This is a substantial evidence case, Your Honors, and the record shows that there is substantial evidence to support the board's findings of unpackability and that Monterey's other arguments lack merit.

[00:17:16] Speaker 01:
I want to begin, Your Honors, with the point about the supposed new theory that the board raised.

[00:17:24] Speaker 01:
This was an argument that Monterey made at the end of the proceedings as we rounded into appeal.

[00:17:32] Speaker 01:
And just to be entirely clear, the position that the board took at Appendix 24 is laid out at Appendix 124 in the petition.

[00:17:46] Speaker 01:
When the petitioners filed, they had at some inkling that Monterey would argue that a burst was terminated before it was completely processed.

[00:17:59] Speaker 01:
And so they put in the petition, to the extent that patent owner argues that a burst is interrupted, that it is not completely processed, you do a combination with Barrett.

[00:18:11] Speaker 01:
That's what the board accepted, and it's been a part of this proceeding since the petitions were filed.

[00:18:19] Speaker 01:
In any event, even if this were some kind of a new argument to Monterey, it had almost a year to address the issue after the institution decision

[00:18:31] Speaker 01:
And it did in the briefing.

[00:18:33] Speaker 01:
The parties talked about it at length.

[00:18:36] Speaker 01:
And the issue was addressed by both sides as the IPR proceedings played out.

[00:18:46] Speaker 01:
In any case, Your Honors, this is an argument that was forfeited by Monterey because it never said anything to the board at all about how it was raising a new theory in the institution decision.

[00:19:00] Speaker 01:
I'm not surprised by that, given the disclosures that are in the petition at appendix 124.

[00:19:07] Speaker 01:
But there was no effort at all to say to the board in any way, shape, or form that it was improper to raise this particular issue.

[00:19:16] Speaker 01:
And as such, Monterey failed to extinguish its administrative remedies and has therefore waived the argument.

[00:19:26] Speaker 01:
Are there any questions I can answer for the panel relating to that specific issue about this supposed new theory?

[00:19:34] Speaker 01:
So, Your Honors, let me move on to WADA then.

[00:19:38] Speaker 01:
WADA discloses a second embodiment that I believe Judge Dyke mentioned a few moments ago.

[00:19:44] Speaker 01:
And in that embodiment, WADA itself describes that you have these four multiplexers.

[00:19:49] Speaker 01:
When the device gets a chunk signal, an internal address chunk signal,

[00:19:55] Speaker 01:
It takes the outputs of those four multiplexers in succession, and those become the burst.

[00:20:03] Speaker 01:
The patent says, and just to be specific, Your Honors, that Appendix 488 and 89, this is WADA, column 15, line 66 to column 16, line 3.

[00:20:17] Speaker 01:
This was cited by the board in its decision on Appendix 24.

[00:20:23] Speaker 01:
You're using the four multiplexers in succession.

[00:20:27] Speaker 01:
And it says those four multiplexers are 60A through 63A.

[00:20:32] Speaker 01:
I think I have that right.

[00:20:35] Speaker 01:
It may be 60A through 60D.

[00:20:38] Speaker 01:
Actually, Your Honors, I will turn there to make sure that I don't lead you astray.

[00:20:42] Speaker 01:
One moment.

[00:20:45] Speaker 03:
I don't know if it matters what number is attached to the multiplexers, but go ahead.

[00:20:51] Speaker 01:
So, Your Honor, it says that you use the multiplexers 60A through 63A.

[00:20:58] Speaker 01:
Now, there's a 60A, there's a 61A, there's a 62A, there's a 63A.

[00:21:04] Speaker 01:
Four, not fewer, not more.

[00:21:09] Speaker 01:
But that's not the only disclosure in WADA that's relevant.

[00:21:12] Speaker 01:
If you look at figure four and just turn back a few pages, I believe that's appendix four, 68.

[00:21:20] Speaker 01:
This is the signaling diagram that goes together with the WADA second embodiment.

[00:21:27] Speaker 01:
And you can see at the imt.cha line and the output line, which is labeled DO, there are two bursts.

[00:21:35] Speaker 01:
And those bursts both have exactly four internal addresses.

[00:21:41] Speaker 01:
Not more, not fewer.

[00:21:43] Speaker 01:
There is no disclosure in WADA whatsoever of having more or fewer for the second embodiment.

[00:21:48] Speaker 01:
So we submit, Your Honors, that there is substantial evidence at least as to the second embodiment to support the board's conclusion and ask for affirmance on that thesis.

[00:22:00] Speaker 01:
There was also a suggestion that the board didn't take into account the evidence that Monterey had submitted with regard to there being early termination of water's burst or that it might go on infinitely.

[00:22:17] Speaker 01:
That's not correct either.

[00:22:19] Speaker 01:
If you look at appendix 23 and 24, the board says, having taken into account all of that evidence, that there is

[00:22:28] Speaker 01:
It's not an arbitrary disclosure as to burst length in Watt's second embodiment.

[00:22:33] Speaker 01:
It's tied to the four multiplexers where you have exactly four addresses.

[00:22:40] Speaker 01:
Your honors, if I could turn just for a few minutes.

[00:22:43] Speaker 01:
to the modification argument.

[00:22:46] Speaker 01:
I don't think that there is a dispute here that Barrett disclosed a non-interruptible burst.

[00:22:51] Speaker 01:
I also don't think that there's any dispute here that there was a motivation to take those teachings and incorporate them into WADA.

[00:23:00] Speaker 01:
The question is whether and how a person of ordinary skill in the art would do that.

[00:23:07] Speaker 01:
It was entirely predictable, routine, and trivial to take the idea of a non-interruptible burst and put that into WANA.

[00:23:15] Speaker 01:
That's reflected in at least three ways.

[00:23:17] Speaker 01:
Number one, it's known in the art.

[00:23:20] Speaker 01:
Barrett shows us that a non-interruptible burst is known.

[00:23:23] Speaker 01:
Number two, if you look at the specification of the 1-3-4 patent, it mentions the word non-interruptible outside of the claim exactly six times.

[00:23:33] Speaker 01:
And it doesn't explain how it is that you make a burst non-interruptible.

[00:23:38] Speaker 01:
It just says that there is a non-interruptible burst.

[00:23:41] Speaker 01:
That's evidence if the patent is fully enabled that a person of skill in the art doesn't need the details of how to do that because it's already known.

[00:23:50] Speaker 01:
It's predictable.

[00:23:51] Speaker 01:
It's trivial.

[00:23:52] Speaker 01:
It's routine.

[00:23:53] Speaker 01:
One step beyond that, it is true that Monterey says we have this burst signal disclosure that is in the patent where you're sending these pulses and therefore generating addresses.

[00:24:06] Speaker 01:
If that is a way to get a non-interruptible burst, which is what Monterey's position is, its experts said in no uncertain terms outside of the scope of the patent, in the abstract, generically, that that was something that a person of ordinary skill in the art would understand how to do at the time of the alleged invention.

[00:24:27] Speaker 01:
It's not tied to the patent specification.

[00:24:30] Speaker 01:
It's just that in the general knowledge of the art,

[00:24:33] Speaker 01:
We're not talking about a complicated affair here.

[00:24:35] Speaker 01:
We're talking about programming a signal so that you have a certain number of bursts.

[00:24:40] Speaker 01:
That was something that was well within the scope of the knowledge of a person of ordinary skill in the art at the time that we mentioned.

[00:24:48] Speaker 04:
Are you referring to the deposition testimony of the patent owner's expert when he's talking about

[00:24:55] Speaker 04:
whole circuit design in general.

[00:24:58] Speaker 04:
That was cited by the board.

[00:25:00] Speaker 01:
I am, Your Honor.

[00:25:01] Speaker 01:
That's exactly what I'm referring to.

[00:25:03] Speaker 01:
And that's at Appendix 3554 through 3556, or 3560, I'm sorry.

[00:25:11] Speaker 01:
If I could, I'll just point the board to two portions of that that I think are particularly important.

[00:25:15] Speaker 01:
To court.

[00:25:16] Speaker 01:
I'm sorry.

[00:25:17] Speaker 01:
Thank you, Your Honor.

[00:25:18] Speaker 03:
I mean, I know you guys recycle the same arch, but it is a different part.

[00:25:23] Speaker 01:
Absolutely, Your Honor, and I apologize for that.

[00:25:26] Speaker 01:
So if I could say to the court, and just point out two portions of that testimony, on appendix 3554, the expert says at line 10, in the abstract, and then goes on to say that a person of skill in the art would know how to make something that puts out that number of pulses.

[00:25:49] Speaker 01:
And on appendix 3556, starting at line four, the expert clarifies that his answers in the last couple of minutes

[00:25:58] Speaker 01:
They were just about a person of ordinary skill in the art knowing how to generate a circuit that can produce four pulses or eight pulses.

[00:26:06] Speaker 01:
That wasn't tied to the patent at all.

[00:26:08] Speaker 01:
It's about that testimony in the abstract and what a person of skill would know.

[00:26:14] Speaker 01:
Unless there are any questions, Your Honors, I do want to give my colleague from the Patent Office some time to argue as well.

[00:26:23] Speaker 03:
Thank you, Your Honors.

[00:26:39] Speaker 04:
Does the PTO think STM should be a party to the Schaeffer appeal?

[00:26:44] Speaker 00:
The PTO does not think that the court has to answer that question.

[00:26:48] Speaker 04:
What about intuitive surgical?

[00:26:52] Speaker 04:
Are you familiar with our court's opinion in intuitive surgical?

[00:26:58] Speaker 00:
The PTO's position, Your Honor, is set.

[00:27:00] Speaker 04:
Are you familiar with this court's opinion in intuitive surgical?

[00:27:05] Speaker 00:
It's pretty fresh.

[00:27:06] Speaker 00:
I have not specifically read it for this preparation for this hearing.

[00:27:12] Speaker 04:
It says once a party is collaterally stopped under Section 315E, they're no longer a party for the case.

[00:27:19] Speaker 04:
It takes effect immediately once the final written decision issues in a different IPR proceeding.

[00:27:27] Speaker 00:
I think your honor is more capable of explaining this court's case law than I am.

[00:27:35] Speaker 04:
Oh.

[00:27:36] Speaker 04:
OK.

[00:27:37] Speaker 04:
So just so I can get it on the record, the PTO has no view on whether STM is a proper party in the Schaeffer appeal.

[00:27:46] Speaker 00:
In this specific appeal?

[00:27:50] Speaker 04:
You're here for a reason.

[00:27:54] Speaker 00:
Yes.

[00:27:56] Speaker 00:
But the PTO is taking no position on that specific issue in this specific appeal because this court doesn't need to reach it precisely because the PTO is here to defend the board's decision in that issue in the 1771 appeal.

[00:28:12] Speaker 00:
So it's a moot issue.

[00:28:13] Speaker 03:
There's no contingent interest in the outcome of the Schaeffer appeal if they lose on the other one.

[00:28:21] Speaker 03:
But this court.

[00:28:23] Speaker 04:
OK, just go ahead with Schaeffer.

[00:28:26] Speaker 00:
Thank you, Your Honor.

[00:28:28] Speaker 00:
Good morning, and may it please the Court.

[00:28:30] Speaker 00:
Peter Sallert, on behalf of the USPTO Director.

[00:28:33] Speaker 00:
In the 1771 appeal, there is only a single issue as to whether Schaeffer discloses that the first read or write with auto-precharge is non-interruptible.

[00:28:47] Speaker 00:
It is a question of fact that this Court reviews for substantial evidence what the prior art teaches.

[00:28:57] Speaker 00:
The board clearly explained why the burst with a auto-precharge in Schaeffer is non-interruptible.

[00:29:08] Speaker 00:
It's correct and more than supported by substantial evidence.

[00:29:14] Speaker 00:
As the board explained with reference to Figure 4, the auto-precharge is issued at time T2

[00:29:25] Speaker 00:
with along with the read command.

[00:29:27] Speaker 00:
It is not a separate command.

[00:29:28] Speaker 00:
So the distinction that my

[00:29:33] Speaker 00:
a friend tried to draw between issued and employed isn't correct because the relevant passage that the board relied on at APPX 4564 makes the distinction between issuance of a command and performance within the SDRAM clear.

[00:29:52] Speaker 00:
It says, by using the auto pre-charge command feature, a manual pre-charge command does not need to be issued

[00:30:00] Speaker 00:
during the functional operation of the SDRAM.

[00:30:04] Speaker 00:
The auto-precharge command ensures that the precharge is initiated at the earliest valid stage within a burst cycle, and then this was the key line that the board relied on.

[00:30:14] Speaker 00:
The user, it's the user who's prohibited, the user is not allowed to issue another command until the precharge time is completed.

[00:30:24] Speaker 00:
And so,

[00:30:25] Speaker 00:
The clear teaching of the text here in Schaeffer is that the prohibition applies to the user.

[00:30:30] Speaker 00:
The user issues the read or write with the auto-precharge at time t2, and the user cannot issue any other command until the pre-charge time is completed.

[00:30:41] Speaker 00:
Therefore, the entire span of that operation is uninterruptible, and that's further supported by

[00:30:48] Speaker 00:
description of using no ops and the command line during that entire sequence period to ensure that no other command is issued.

[00:31:03] Speaker 00:
I think that the PTO has gone through the operation of Schaeffer, these specific commands, the timing, the diagram, and explained exactly the issue I've just gone through that the key is that the read or write with auto-precharge is one command that happens at one time that's issued by the user.

[00:31:26] Speaker 00:
And then Schaeffer says the user doesn't get to do anything else until that's done, and therefore

[00:31:31] Speaker 00:
the burst must be non-interruptible in the terms of the claims as the board found.

[00:31:39] Speaker 04:
Under auto pre-charge or under pre-charge, the TRP, the pre-charge time is between T6 and T9, right?

[00:31:47] Speaker 04:
That is correct, Your Honor.

[00:31:48] Speaker 04:
So is there an explanation why we would also want to preclude any commands between T2 and T6 under the auto pre-charge scheme?

[00:32:01] Speaker 04:
What's the purpose of that?

[00:32:03] Speaker 00:
Well, the entire

[00:32:07] Speaker 00:
purpose of having this type of burst operation is that it's predefined.

[00:32:11] Speaker 00:
So it's known that it's gonna be a forward burst in the example that's in figure four.

[00:32:16] Speaker 00:
So the entire system is set up to allow for that fixed number of addresses to be generated and used to read or write data and then automatically complete the pre-charge that will reset the device for the next operation.

[00:32:34] Speaker 00:
There's no

[00:32:36] Speaker 03:
point to allowing an interruption and create more...

[00:32:44] Speaker 00:
It would, Your Honor.

[00:32:45] Speaker 00:
And the advantage of the auto-precharge is that you're setting up a certain command sequence in advance because you know you don't want to interrupt it.

[00:32:57] Speaker 04:
Between T6 and T9?

[00:33:00] Speaker 00:
At any time during that sequence, Your Honor, because that's specifically what Schaeffer says.

[00:33:05] Speaker 00:
It says once the user issues one command, which will cause two things to happen, the read and the precharge,

[00:33:14] Speaker 00:
Once the user issues that, he can't do anything else until after the pre-charge time is complete.

[00:33:32] Speaker 02:
I'd like to start by providing those appendix sites that were requested and then those directly relate to the issues that were raised in the opposing argument.

[00:33:43] Speaker 02:
So with respect to Judge Dyke, Appendix 1260-69 contains our expert testimony where the expert talks about why WADA would not

[00:33:52] Speaker 02:
be non-interruptible and would not have a reasonable expectation of success in response to your question.

[00:33:58] Speaker 02:
Judge Chen, with respect to the NOP, there is a detailed discussion of that across about seven or eight pages at appendix 5277 to 84.

[00:34:08] Speaker 02:
And as I generally recall,

[00:34:11] Speaker 02:
The basic answer to your question is that the NOP exists in both figure 2, where there's only pre-charge, and figure 4, where there's auto-pre-charge.

[00:34:21] Speaker 02:
And we know that figure 2 with pre-charge is interruptible.

[00:34:24] Speaker 02:
That's conceded.

[00:34:26] Speaker 02:
And the NOP exists at the same points in time that it exists in figure 4.

[00:34:30] Speaker 02:
So therefore, we know that the NOP does not render anything non-interruptible.

[00:34:35] Speaker 02:
If anything changes the interruptibility, it's the auto-precharge feature.

[00:34:39] Speaker 02:
And the whole dispute is just about when does that kick in.

[00:34:43] Speaker 02:
In terms of the issue of when it kicks in, appendix 4564, and it's discussed at our reply brief at page 27, has explicit language from Schaeffer that explains the auto-precharge is employed or issued at time T6.

[00:34:57] Speaker 02:
It's not at time T2.

[00:34:58] Speaker 02:
They are two distinct times.

[00:35:00] Speaker 02:
There's a time where the command issues with the rewrite, that's T2.

[00:35:04] Speaker 02:
There's a time where the auto-precharge is employed, that's a T6.

[00:35:07] Speaker 02:
And finally, the expert stated that a person of skill would know how to build the burst clock of the invention once they've seen the teachings where the patent says, use pulses to program the burst clock.

[00:35:22] Speaker 02:
The expert made clear, however, that that idea of using that existing tool of pulses

[00:35:28] Speaker 02:
being programmable was novel to the 134 pattern in terms of utilizing that to create a predefined number of address signals that would be non-interruptible and that's the distinction.

[00:35:41] Speaker 03:
Okay, thank you.