[00:00:02] Speaker 01:
All rise.

[00:00:03] Speaker 01:
The United States Court of Appeals for the Federal Circuit is now open and in session.

[00:00:09] Speaker 01:
God save the United States and this honorable court.

[00:00:12] Speaker 02:
Please be seated.

[00:00:19] Speaker 02:
So our first case for argument today is 22-1704, Mechia Corporation versus DSS.

[00:00:28] Speaker 02:
Mr. Lucas?

[00:00:44] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:46] Speaker 01:
Eric Lucas from Sherman and Shirley on behalf of the Appellant, Nichia.

[00:00:51] Speaker 01:
Nichia appeals from an IPR final written decision in which the Board found the challenge claimed to the O4O patent not unpatentable over the asserted prior art.

[00:01:01] Speaker 01:
In doing so, the Board committed multiple legal errors.

[00:01:04] Speaker 01:
First,

[00:01:05] Speaker 01:
While the Board provided at least a partial claim construction for the phrase, the mounting surface having a plurality of recesses, finding that the recesses are in the mounting surface itself, it never fulfilled its obligations under Homeland Housewares fully to construe the related offsets claim phrase that requires the offsets to be between the mounting surface and the conforming electrical contacts.

[00:01:29] Speaker 01:
Notwithstanding the Board's refusal to fully construe the offsets phrase,

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it found the claims not unpatentable precisely because it could not find the offsets and the prior art.

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Second, to the extent that the board implicitly used the ordinary meaning of spaces for the word offsets, the combination of that construction and the construction for mounting surface having a plurality of recesses cannot be correct because the interplay of those two terms presents an impossibility and because the constructions taken together contravene the intrinsic evidence

[00:02:02] Speaker 01:
including the patent figures and the prosecution history.

[00:02:05] Speaker 03:
Denovo, Your Honor.

[00:02:19] Speaker 01:
Regarding the question of impossibility,

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It was not proper for the board to have simply shrugged off such concerns by suggesting that there might be possible constructions of other claim terms not propounded by either party.

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that might rectify the impossibility inherent in its constructions of requiring that the electoral context both conform to and be spaced apart from the Mountain Service's recesses.

[00:02:44] Speaker 02:
Well, one of the problems I have with your argument is you seem to demand that the board construe more than it thought necessary to resolve your case.

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And we've repeatedly stated that it's appropriate for a lower

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tribunal to constrain itself to only what it needs to decide in order to resolve a case.

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So what's wrong with that?

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Why do you think in this instance the board should have had to go further and resolve more than it thought necessary?

[00:03:14] Speaker 01:
Your Honor, I think that the issue stems from the interrelationship between the mounting surface claim term and the offsets claim term.

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And therefore, to just construe the mounting surface claim term,

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and then not be able to find the offsets claim term that's racked up in that mounting surface claim term is a failure under the board studio and our Helmet Housewares to resolve it.

[00:03:39] Speaker 03:
I thought that the board said the mounting surface has to have a plurality of recesses.

[00:03:45] Speaker 03:
And the petition, that means something that has when they say recesses, it has to have some sort of shape that's not cleaner.

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But then what happened was

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The mounting service that was identified in the petition by the petitioner actually was a straight line.

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So they said the mounting service does not have a plurality of recesses in the prayer.

[00:04:08] Speaker 03:
Why did they have to do more than that?

[00:04:10] Speaker 01:
That's right, Your Honor.

[00:04:11] Speaker 01:
That was the argument in the petition.

[00:04:13] Speaker 01:
During the deposition of DSS's expert, Dr. Baker, he identified a mounting surface that followed the contours of the recesses, as you were describing.

[00:04:24] Speaker 01:
And in Nichia's reply during the IPR, it explained how that construction was not meaningfully different with respect to measuring the offsets between a planar projection of that mounting surface and the underside of the electoral contacts.

[00:04:38] Speaker 03:
Are you talking now about your alternative argument?

[00:04:41] Speaker 01:
That's right, Your Honor, yes.

[00:04:42] Speaker 03:
Okay, so what is this?

[00:04:43] Speaker 03:
What priority are you focusing on there with that?

[00:04:47] Speaker 01:
The Kim reference would be the first reference that we put forward, but we made that argument in the reply briefing with respect to all of the priority references.

[00:04:56] Speaker 03:
So this is your alternative argument where you say that Kim has an opting service that is not in plainer and therefore meets the board's

[00:05:06] Speaker 03:
But I thought that the board said that Kim didn't teach that.

[00:05:12] Speaker 03:
In other words, that Kim didn't have a mounting surface that had a plurality of recesses.

[00:05:20] Speaker 01:
What the board said on Appendix 18, Your Honor, is that under the alternative argument, Kim lacked the offsets that were measured between the underside electoral context and the mounting surface.

[00:05:48] Speaker 01:
The sentence that begins in the first paragraph, contrary to the claims requirement that the device itself comprise a mounting surface with recesses in electrical contacts their size to provide, and then it's italicized, offsets between said mounting surface and said electrical contacts, both Kim's device and the figure 4A embodiment show recesses between the device and a flat surface on which the device is mounted.

[00:06:14] Speaker 03:
Well, maybe it's the flat surface

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How am I supposed to know that they didn't also rely on the fact that Kim doesn't have a mounting surface or doesn't show a mounting surface that's not cleaner?

[00:06:31] Speaker 01:
Well, I think that the analysis for each of the prior references is in two parts in the board's final decision.

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The first part begins on 17 where it discusses the planar mounting surface with respect to Nietzsche's construction that I put forth in the petition.

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And then part two of the analysis is under the alternative argument where the recesses are in the mounting surface itself under DSS's expert construction.

[00:06:57] Speaker 03:
One of the problems I'm having with your alternative argument is when I look at Kim and what it teaches, I feel like you just drew in a line that was nine-planar and that Kim doesn't actually say that that line being true is the mounting surface.

[00:07:11] Speaker 03:
And I think the board may have felt the same way based on the sentence that it has at the top of page 18.

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So could you tell us where in Kim you think it discloses a mounting surface the way you've drawn it in in your groups?

[00:07:26] Speaker 01:
Yes, Your Honor.

[00:07:27] Speaker 01:
So the purported invent concept, if you will, of the 040 patent is that there are recesses that provide room for solder to affix the electronic device to a printed circuit.

[00:07:39] Speaker 03:
Sometimes it's helpful in these arguments to point to us where in the appendix we should look to for the teaching to remind us that we can follow the record as you're telling us what your answer is.

[00:07:50] Speaker 03:
I think this might be one of those circumstances where that would be helpful.

[00:07:54] Speaker 01:
If you still have the final written decision open, you can look at Appendix 16 where two of the figures from the Kim Prior Art Reference are reproduced and the Figure 3 Kim Reference

[00:08:10] Speaker 01:
Well, the red line is shown in that annotation as being NYXIA's initially proposed construction.

[00:08:17] Speaker 01:
You can see where the zigzag electrical contacts, which are designated as 32 and 31 in that figure, you can see how there's solder underneath of those two electrical contacts.

[00:08:31] Speaker 03:
Does the description describe solder as being underneath those two?

[00:08:36] Speaker 01:
I believe it's either solder or some other type of adhesive that affixes this electronic device to a printed circuit board or some other type of substrate.

[00:09:11] Speaker 01:
So the Kim reference begins on appendix 477, and that's the Japanese version.

[00:09:17] Speaker 01:
There's a translation that's behind it that begins on appendix 482.

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And then the figure three that I was discussing that's reproduced in the founding decision is on appendix 486.

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And you can see in the description of Figure 3 on Appendix 485, where it says, brief description of the drawings, it says, this is a longitudinal, with respect to Figure 3, it says, this is a longitudinal cross-section view showing the situation in which one example of a bottom-lead semiconductor package of the present invention is mounted on a printed circuit board.

[00:10:10] Speaker 03:
Where does it say, I mean, which element

[00:10:14] Speaker 03:
and figure three is identified as being the circuit board.

[00:10:26] Speaker 03:
It's 40.

[00:10:27] Speaker 01:
Yes, 40, Your Honor.

[00:10:30] Speaker 03:
And so why is it that 40 isn't the red line that the petition identified?

[00:10:38] Speaker 01:
Under which argument, Your Honor?

[00:10:40] Speaker 03:
Well, I understand you've got alternative arguments for what the prior teaches, but it's hard to see why is it that your first argument was incorrect?

[00:10:49] Speaker 03:
Why should you be able to arbitrarily write what the borrowing surface is, depending on the fit of it?

[00:10:56] Speaker 03:
Your reference doesn't seem to teach the alternative that you're seeking.

[00:10:59] Speaker 01:
I see what you're asking about.

[00:11:02] Speaker 01:
claim is about a surface-mountable electronic device, and it's that device that has to include the mounting surface.

[00:11:09] Speaker 01:
And so that's why the bottom of the semiconductor package in the Kim reference is identified as the mounting surface and not the printed circuit board itself.

[00:11:22] Speaker 01:
Does that answer your question, Your Honor?

[00:11:24] Speaker 04:
I think so.

[00:11:25] Speaker 04:
Can we talk more about your impossibility argument?

[00:11:28] Speaker 04:
Can you turn to Appendix 707?

[00:11:32] Speaker 04:
I just want you to kind of explain what you think your possibility argument is.

[00:11:51] Speaker 01:
This is the patent owner response.

[00:11:56] Speaker 01:
So the way that these claim terms are written require that the electoral context conform to the recesses that are under the board's instruction in the mounting surface itself.

[00:12:06] Speaker 01:
And then at the end of the claim limitation, it requires there to be offsets between the mounting surface and those electrical contacts that can form to the mounting surface's recesses.

[00:12:18] Speaker 01:
So if the mounting surface zigzags up where the electrical contacts are, then there can't be an offset or a space between the mounting surface and those electrical contacts.

[00:12:29] Speaker 01:
is the possibility that we're referencing.

[00:12:32] Speaker 04:
So it seemed to me at least on 707 to 708 they're explaining how these terms could be consistent and that there would not be such an impossibility.

[00:12:39] Speaker 04:
So I guess I'm asking you, what is your response to that?

[00:12:49] Speaker 01:
This is with reference to the district court's explanation of how there might be a construction that doesn't render the claims indefinite.

[00:12:58] Speaker 04:
Yeah, if you just even look at what's at the bottom of 707-708, if you have a response to it, if you don't, fine too, but I'm just trying to get that out.

[00:13:06] Speaker 01:
Your Honor, my response would be that as I read that proposal from the district court, that would require there to be a space above the electoral context.

[00:13:17] Speaker 01:
and underneath the body or the mounting surface of the semiconductor package.

[00:13:23] Speaker 01:
And that is not an embodiment that's anywhere shown in the 040 patent.

[00:13:28] Speaker 01:
And I think that that explanation is just not supported by the intrinsic record.

[00:13:33] Speaker 01:
And that would be an excellent.

[00:13:35] Speaker 03:
We have a lot of opinion.

[00:13:36] Speaker 03:
Phillips, it's an in-game decision that says how you're going to perform claim destruction.

[00:13:42] Speaker 03:
It gives lots of guidance.

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And one of the things it says is that we're not going to construe claims to be

[00:13:48] Speaker 03:
Why should the claim have to be construed if the plain language doesn't cover what's described in the specification?

[00:13:58] Speaker 03:
Why does it have to be construed to be consistent with the specification?

[00:14:02] Speaker 01:
I do think that there's intrinsic evidence that supports such a construction, namely the patent figures and the prosecution history, where the applicant stated that the claims as amended read on those patent figures.

[00:14:16] Speaker 01:
And so that informs the construction of the mounting surface and offsets limitation.

[00:14:22] Speaker 02:
I know you're almost out of your rebuttal time.

[00:14:24] Speaker 02:
I'm going to restore your time, but let me ask one last question.

[00:14:27] Speaker 02:
Is your argument related to Kim?

[00:14:32] Speaker 02:
focused on whether Kim does or does not disclose a mounting service, i.e.

[00:14:39] Speaker 02:
what the prior art discloses, or do I have to first agree with your claim construction in order to get to your Kim argument?

[00:14:46] Speaker 02:
I'm trying to appreciate whether it's truly an alternative or whether it is conditional upon me first agreeing with your claim construction.

[00:14:55] Speaker 01:
I don't think it's conditional that Kim discloses a mounting surface in light of the description in that prior reference that it's mounted on a printed circuit board and there's solder that's placed inside of those recesses that... There's nothing in the Kim reference that says there's solder placed inside those recesses.

[00:15:11] Speaker 01:
In that figure, you can see that there's some adhesive that's affixing it.

[00:15:14] Speaker 02:
No, it doesn't say that there's an adhesive that's affixing it.

[00:15:17] Speaker 02:
You're right.

[00:15:17] Speaker 02:
There is some grayish matter there.

[00:15:21] Speaker 02:
But you're an attorney.

[00:15:22] Speaker 02:
And your argument, with all due respect, is not evidence.

[00:15:24] Speaker 02:
There's nothing in the reference itself that discloses what that is.

[00:15:29] Speaker 02:
And so I guess that was what I was getting to.

[00:15:32] Speaker 02:
In the beginning, Judge Dole asked what the standard review is.

[00:15:34] Speaker 02:
So what's the standard review on this question, the question about what Kim does or does not disclose?

[00:15:40] Speaker 02:
I believe it's.

[00:16:07] Speaker 00:
Before I begin, I'd just like to put on the record, and especially relevant to today, that Professor Moore was my teacher for patent law, and George Mason, and I think I graduated before you started teaching.

[00:16:26] Speaker 00:
May it please the court, my name is Matthew Smith, and I represent the Appellee DSS Incorporated.

[00:16:33] Speaker 00:
I'd first like to review the invention.

[00:16:35] Speaker 00:
While the claims of the 040 patent are directed to a surface-mountable electronic device, there are minimal electronic components decided in the claims.

[00:16:44] Speaker 00:
Instead, the invention focuses on the packaged body.

[00:16:48] Speaker 00:
In short, the invention is a box.

[00:16:51] Speaker 00:
It's a very specifically shaped box, but a box nonetheless.

[00:16:56] Speaker 00:
And as with all boxes, the embodiments described in the 040 patent are three-dimensional.

[00:17:01] Speaker 00:
The patent's figures may only show top and side views,

[00:17:04] Speaker 00:
of the devices, but they are three-dimensional.

[00:17:08] Speaker 00:
We have included a demonstrative on page five of our appellee's brief showing a 3D rendering of the figures of 4A and 4B in three dimensions.

[00:17:21] Speaker 00:
This is not a new concept.

[00:17:23] Speaker 00:
For example, Nietzsche's expert declaration has a similar rendering, which is on page 354 of the appendix.

[00:17:31] Speaker 00:
And likewise, in its deposition of DSS's expert Dr. Baker, Nietzsche presents another version of the 3D renderings, which is on page 1128 of the appendix.

[00:17:44] Speaker 00:
While Nietzsche clearly understands that the devices of the 040 patent are three-dimensional, they try to force the claim language to fit two-dimensional drawings, specifically figure 4A.

[00:17:56] Speaker 00:
By trying to fit a square peg into a round hole,

[00:18:05] Speaker 02:
that claim to capture Figure 4A, or do you think the board's construction excludes Figure 4A as an embodiment from the scope of the plan?

[00:18:15] Speaker 00:
That's a good question.

[00:18:15] Speaker 00:
I think that the board's construction includes Figure 4A.

[00:18:20] Speaker 00:
I think that the board, throughout its arguments, I mean, its decision, had, it always

[00:18:30] Speaker 00:
It always, throughout its decision, included caveats that indirectly stated or implied that Nietzsche's interpretation of Figure A was what the claims did not read on.

[00:18:45] Speaker 00:
For example, in the final written decision on page 11 of the appendix, the board asserted that as Nietzsche's reliance on Figure 4A alone,

[00:18:53] Speaker 00:
which caused the uncertainty in the claim language.

[00:18:55] Speaker 00:
Likewise, on the next page, the board implies that there is no support for Nietzsche's interpretation of Figure 4A that falls within the scope of Claim 1.

[00:19:04] Speaker 03:
Can you tell us what the standard is for the board in these IPRs?

[00:19:09] Speaker 03:
The statute says they're not allowed to address indefiniteness.

[00:19:14] Speaker 03:
So what is it that they should do in a situation like that, according to our case law?

[00:19:20] Speaker 03:
And what is it that you think they did in this case?

[00:19:22] Speaker 00:
The case law says that they'd have to not render a decision if they found it impossible to render an extension.

[00:19:30] Speaker 00:
But the case law also allows for them to render a decision in cases where, for example, in the Intel case, where at least one element of the claim was missing from the prior arcs, and that was not reaching the impossibility of other elements, they were able to make that determination.

[00:19:48] Speaker 03:
And here they say we only need to construe the claim so much as to resolve the validity, anticipation, obviousness issue before us.

[00:20:00] Speaker 00:
Correct.

[00:20:01] Speaker 00:
They construed the term mounting surface to have recesses in the sides and the mountings to be actually a part of the device.

[00:20:09] Speaker 02:
I'm sorry, I didn't mean to interrupt.

[00:20:12] Speaker 02:
Were you finished?

[00:20:13] Speaker 00:
Oh, I was just going to say that they didn't need to construe everything else because they found those elements missing from the priority.

[00:20:20] Speaker 02:
Is there a companion district court litigation to this PPR?

[00:20:25] Speaker 02:
Yes.

[00:20:25] Speaker 02:
I assume indefiniteness is an issue being raised there.

[00:20:29] Speaker 02:
I don't know what the status is.

[00:20:30] Speaker 00:
Yeah, the case is currently state pending this decision here, but the indefiniteness was brought up in in the district court case in a motion to dismiss.

[00:20:40] Speaker 04:
I believe I'm not involved in that case.

[00:20:45] Speaker 00:
I think they haven't gotten to claim construction as far as I understand.

[00:20:49] Speaker 04:
Sure, but my question to you is would indefiniteness be addressed?

[00:20:53] Speaker 00:
Yes, yes.

[00:20:57] Speaker 00:
Okay.

[00:21:04] Speaker 00:
The claim construction does not lead to any sort of impossibility.

[00:21:08] Speaker 00:
It is Nietzsche's opinion that the construction is impossible because the device cannot have both a mounting surface with recesses to which the electrical contacts can form and a mounting surface and contacts that are spaced apart by an offset.

[00:21:21] Speaker 04:
Can I also ask you about the same pages I asked your opposing

[00:21:36] Speaker 00:
you said?

[00:21:37] Speaker 04:
Yes, Appendix 707.

[00:21:45] Speaker 00:
On page 707, it's addressing the him reference and not specifically addressing the possibility of the claims of the 404 patent.

[00:21:56] Speaker 04:
Maybe I'm not in the right spot, but the part I was focused in on 707 was at the bottom, the beginning of the additional language going on to the top of 708.

[00:22:04] Speaker 04:
I talked to

[00:22:08] Speaker 04:
address it.

[00:22:11] Speaker 00:
Yes, this is what was argued in the district court.

[00:22:15] Speaker 00:
Right, so that's just one example of a way to construe the claims that would not lead to impossibility of the 404 patent, and that's what the district court notes.

[00:22:31] Speaker 00:
Nietzsche argues that the board stated that neither party had sufficiently explained how to solve Nietzsche's impossibility position.

[00:22:37] Speaker 00:
However, the board did not actually state that an impossibility exists, only that neither party sufficiently explained how the elements were arranged.

[00:22:45] Speaker 00:
In fact, the board never confirmed there was an impossibility.

[00:22:48] Speaker 03:
Instead, the board correctly found that it could address... Your opposing counsel was focusing more on him.

[00:22:55] Speaker 03:
And whether Kim, this alternative thing, our argument that we have that Kim actually pitches

[00:23:18] Speaker 00:
What a reference teaches, I believe, is reviewed under substantial evidence.

[00:23:25] Speaker 03:
Substantial evidence, it's a factual question.

[00:23:28] Speaker 03:
And what is your view, what is your response to the assertion that Ken teaches in Mountain Circus that has recesses?

[00:23:35] Speaker 00:
Well, the Kim reference, first of all, the non-planar interpretation of the claim language, we do not agree with.

[00:23:43] Speaker 00:
We do not think that there is a non-planar mounting surface.

[00:23:46] Speaker 00:
That was something that... In Kim?

[00:23:48] Speaker 00:
In Kim or in the 404 reference?

[00:23:52] Speaker 00:
In the 404 patent?

[00:23:54] Speaker 00:
We think that the mounting surface is a flat surface that has recesses in the side body.

[00:23:58] Speaker 00:
There is nothing in that language that supports that it's non-planar.

[00:24:03] Speaker 00:
And the Kim reference, they've drawn several ways where they think that the Kim reference reads on the claims of the 404 patent, but we disagree that that's true.

[00:24:14] Speaker 00:
Kim is missing, besides for the mounting surface, is missing other elements from the claim language.

[00:24:19] Speaker 03:
Well, focusing on the mounting surface, that's really what the board is able to resolve.

[00:24:39] Speaker 03:
that that's not actually a mounting surface.

[00:24:44] Speaker 00:
But at no point does Kim show that there are recesses in the sides of the mounting surface as the patent office found that the plain language requires.

[00:24:56] Speaker 04:
Can you point us to a JA page to answer Judge Stoll's question in particular?

[00:25:02] Speaker 00:
Well, the next page, 709, shows that as a flat surface how much the device is mounted and that's not

[00:25:11] Speaker 04:
I think it was around Appendix 485, I think that was at one point, if I'm remembering correctly.

[00:25:21] Speaker ?:
Yeah.

[00:25:21] Speaker 04:
At least the translation, is that right?

[00:25:23] Speaker ?:
And the right spot?

[00:25:26] Speaker 00:
The translation of Kim is...

[00:25:32] Speaker 00:
I believe it's 482.

[00:25:39] Speaker 00:
Oh, sorry, that's the next one.

[00:25:42] Speaker 00:
I went too far.

[00:25:46] Speaker 00:
Yeah, 482.

[00:25:51] Speaker 04:
I was hoping to follow along in the reference itself as you answered your question.

[00:25:58] Speaker 00:
Great.

[00:25:59] Speaker 00:
So on page 486, they show the embodiments of their Kim's reference.

[00:26:06] Speaker 00:
And our position is that there is no side recesses that is shown in Kim at any point on this device, as the board found.

[00:26:19] Speaker 02:
So what's missing?

[00:26:20] Speaker 02:
I mean, figure three in Kim looks so much like figure 4A of the patent to me.

[00:26:25] Speaker 02:
So what is, what's the problem?

[00:26:29] Speaker 02:
What's missing?

[00:26:29] Speaker 00:
Well, if you look at figure four of Kim, these apparent... I'm looking at figure three.

[00:26:35] Speaker 00:
Right, right, right.

[00:26:35] Speaker 00:
Figure three is the side view and figure four is the top view.

[00:26:38] Speaker 00:
Got it.

[00:26:39] Speaker 00:
So if you look at figure four and figure the portion of that's where 45 is that you pointed out earlier is the open spaces in figure four so that there's no sort of recess in the mounting surface.

[00:26:54] Speaker 00:
These are

[00:26:55] Speaker 00:
are missing portions of the device itself.

[00:26:59] Speaker 02:
I don't understand, number 45 isn't shown on the figure.

[00:27:00] Speaker 00:
Right, right, right, but the position where it is would be those, I don't know what to call them, but like the holes in the side of the device where it makes a bunch of U shapes, where 32 is referenced, 32 is labeled the internal lead, but these are holes in the device and it's mounted on 62.

[00:27:26] Speaker 00:
So it doesn't have recesses in the side body as claimed in the 404 patent.

[00:27:43] Speaker 02:
Okay, anything further, Mr. Smith?

[00:27:46] Speaker 00:
No, that's it.

[00:27:46] Speaker 00:
Thank you.

[00:27:47] Speaker 00:
Do you have no further questions?

[00:27:49] Speaker ?:
No.

[00:27:49] Speaker ?:
Thank you very much.

[00:27:52] Speaker ?:
Thank you.

[00:28:05] Speaker 01:
Thank you very much.

[00:28:07] Speaker 01:
So if we go back to the Kim reference on pages 484 of the appendix and then we'll go to 485 next, but I want to point out two paragraphs in Kim that talk about solder and mounting the Kim reference.

[00:28:23] Speaker 01:
In paragraph seven, this is describing Kim at a high level, in view of this current situation, the present invention is directed to providing a bottom lead semiconductor package and a method of manufacturing the same

[00:28:35] Speaker 01:
in which in mounting the bottom lead semiconductor package on a board, such as a printed circuit board, a strong solder joint is made.

[00:28:42] Speaker 01:
The mounting height of the package could be minimized, and the bottom leads can be arranged at a high density.

[00:28:47] Speaker 01:
And I believe that that is similar to what the 040 patent describes as the purpose of its invention.

[00:28:54] Speaker 01:
And I'd also like to direct the panel to paragraph 19 on 485.

[00:28:59] Speaker 01:
And that's a description of figure three of Kim.

[00:29:04] Speaker 01:
It's describing Figure 3 as a longitudinal cross-sectional view showing the situation in which a bottom lead semiconductor package, according to the President's invention, is mounted on a printed circuit board.

[00:29:15] Speaker 01:
The lower faces of the bottom lead groups 31 are directly adhered to the upper face of the printed circuit board 40.

[00:29:21] Speaker 01:
An electrical connection to this board is made by way of solder 45, which is injected into the grooves 38 respectively formed.

[00:29:35] Speaker 01:
Apologies for not having that in my fingertips before.

[00:29:39] Speaker 01:
One other point that I would like to make with respect to the board's construction, with respect to Figure 4A in particular, is that the board explicitly found that Figure 4A is not within the scope of Claim 1 of the 040 patent.

[00:29:55] Speaker 01:
And we made an argument in pages 71 and 72 of the blue brief that based on that finding, none of the other patent figures that we reproduced in that section would be covered by the board's interpretation as well.

[00:30:08] Speaker 01:
And I believe that that's indicative of the errors that occurred here is that none of the embodiments of the invention would be covered by the board's interpretation of the mounting surface.

[00:30:22] Speaker 03:
the board was correct on that.

[00:30:24] Speaker 03:
Where does that leave it?

[00:30:27] Speaker 03:
That there's a, we suggest there's maybe a re-description enablement problem, maybe, but claims shouldn't be interpreted to solve immunity problems, right?

[00:30:37] Speaker 01:
That's right, Your Honor.

[00:30:38] Speaker 01:
I believe that goes to the indefinite, sort of the impossibility issue that we were presenting in this appeal, and therefore the final written decision should be vacated, and even the institution decision, perhaps.

[00:30:51] Speaker 01:
such that no estoppel would apply.

[00:30:52] Speaker 03:
What is the difference between impossibility and indefiniteness versus written description?

[00:30:59] Speaker 01:
Written description has to do with whether there are words in the specification that describe the environments, and the impossibility indefiniteness issue has to do with whether

[00:31:11] Speaker 01:
as logically and physically possible for there to be conforming electrical contacts and a space between the mounting surface and those electrical contacts that are supposed to conform to the recesses in the mounting surface.

[00:31:24] Speaker 03:
When the claim language itself is so confusing or what it describes as impossible to satisfy?

[00:31:31] Speaker 01:
That's right.

[00:31:33] Speaker 02:
You haven't lost the indefiniteness argument.

[00:31:36] Speaker 02:
You still can make that in the district court, correct?

[00:31:38] Speaker 01:
We can still make that in the district court, Your Honor.

[00:31:41] Speaker 02:
And you have now conditioned, I guess, collateral estoppel, should they try to argue something different about the construction in the district court.

[00:31:53] Speaker 01:
That's true, Your Honor.

[00:31:54] Speaker 01:
What we do have, though, is estoppel based off of 102-103 paper prior to art, and a final written decision comes with

[00:32:03] Speaker 01:
that estoppel provision under 315e.

[00:32:05] Speaker 02:
But that doesn't affect your 112 arguments.

[00:32:07] Speaker 01:
It doesn't, but it does preclude us from arguing any paper prior art in the district court litigation.

[00:32:13] Speaker 02:
Not any paper prior art, only paper prior art that you knew or should have known of at the time you brought the IPR, right?

[00:32:20] Speaker 01:
I can't remember if we stipulated whether it was broader than that or not, but it's very possible that we might have, and so if we did, that would be an even broader... That's up to you, though, if that's the case.

[00:32:31] Speaker 01:
That is true, Your Honor.

[00:32:33] Speaker 04:
Do you have any non-paper prior art?

[00:32:34] Speaker 04:
You were very specific.

[00:32:35] Speaker 04:
Do you have any non-paper prior art that you were going to argue?

[00:32:41] Speaker 01:
I'm not sure.

[00:32:42] Speaker 01:
At this time... Is that privilege where you can't tell me?

[00:32:45] Speaker 04:
You're hesitating.

[00:32:47] Speaker 01:
I'm not aware of any non-paper part at this moment that we have that we're intending to argue in this report, but I'm not sure if we are able to find any.

[00:32:56] Speaker 02:
Okay, thank you, Mr. Lucas.

[00:32:57] Speaker 02:
We take this case under submission.

[00:32:59] Speaker 02:
Thank both counsels.

[00:33:00] Speaker 02:
Thank you.