[00:00:00] Speaker 04:
The first case is Arbor Global Strategies v. Samsung Electronics, No.

[00:00:05] Speaker 04:
22, 1465.

[00:00:08] Speaker 04:
Mr. Lerman, when you're ready.

[00:00:10] Speaker 03:
Thank you, Your Honor.

[00:00:11] Speaker 03:
May it please the Court, Dan Lerman, for repellent Arbor Global Strategies.

[00:00:16] Speaker 03:
The Board's procedures here violated the Administrative Procedure Act, and it reached the wrong conclusion on obviousness.

[00:00:22] Speaker 03:
I would like to start with our APA claim before turning to obviousness.

[00:00:27] Speaker 03:
Section 554 of the APA prohibits agency employees involved in investigative or prosecuting functions from participating in a decision by the agency.

[00:00:37] Speaker 01:
But this has already been resolved.

[00:00:40] Speaker 03:
I don't think it has, Your Honor, and I don't think Ethicon resolved this issue for three reasons, if you let me try and explain.

[00:00:46] Speaker 03:
First, Ethicon did not squarely address the APA challenge.

[00:00:51] Speaker 03:
The holding in Ethicon was that delegation to the same panel did not violate the Due Process Clause, and it did not violate the America Invents Act.

[00:00:58] Speaker 03:
It was not an APA decision.

[00:01:00] Speaker 03:
The parties did not brief the APA question.

[00:01:03] Speaker 03:
This court addressed it simply in a footnote stating that the FOT section 550-4 prohibits co-mingling of functions.

[00:01:09] Speaker 03:
And this court has made clear that prior panel decisions that do not squarely address an issue are not binding on subsequent panels.

[00:01:16] Speaker 03:
We cited some of those cases, but one which is relevant is an RSRex decision

[00:01:20] Speaker 03:
2018, which is an IPR decision.

[00:01:23] Speaker 03:
The question there was whether an adverse disposition dismissing an institution decision was appealable.

[00:01:31] Speaker 03:
The court held that it was, even though in St.

[00:01:33] Speaker 03:
Jude, this court stated that, quote, the only IPR decision that was appealable is the final written decision.

[00:01:39] Speaker 03:
And the court held that it was an appeal that St.

[00:01:41] Speaker 03:
Jude was not binding because it did not squarely address the issue.

[00:01:44] Speaker 03:
So our position is that Ethicon did not squarely address it.

[00:01:47] Speaker 04:
So your view is that every time we make a holding about whether some structure or something, some right of appeal or whatever, is OK, that as long as you can keep coming up with new arguments for it that weren't raised before, we have to keep addressing it over and over and over again?

[00:02:03] Speaker 03:
Well, no.

[00:02:04] Speaker 03:
It's not simply a new argument.

[00:02:05] Speaker 03:
I mean, here it's a specific statute that was not addressed by the court.

[00:02:08] Speaker 04:
That's a new argument.

[00:02:10] Speaker 03:
Well, I mean, it is both a new argument and a new claim, Your Honor.

[00:02:12] Speaker 03:
I mean, the APA claim, Section 554, was not addressed by the parties.

[00:02:16] Speaker 03:
It was not really addressed by this Court.

[00:02:18] Speaker 03:
And the statements that this Court made with respect to adjudication and prosecution were called into question by subsequent opinions from the Supreme Court and from this Court, which make clear that institution is the... What is the Supreme Court decision, do you think, suggests that the same panel can't institute and reach a merits decision?

[00:02:38] Speaker 03:
Well, they don't address that precise argument, Your Honor.

[00:02:41] Speaker 03:
What they do is, in Quozo, the Supreme Court stated that institution is akin to a grand jury's indictment.

[00:02:47] Speaker 04:
In Mylan and in Saint... I think we were aware of Quozo when we decided at the Con in 2016, aren't we?

[00:02:53] Speaker 04:
Or was it after?

[00:02:54] Speaker 03:
I think it was after, Your Honor.

[00:02:56] Speaker 04:
Our Quozo decision was before.

[00:02:57] Speaker 04:
What's that?

[00:02:57] Speaker 04:
Wasn't our Quozo decision before?

[00:02:59] Speaker 04:
Which decision?

[00:02:59] Speaker 04:
I'm sorry.

[00:03:00] Speaker 03:
Quozo.

[00:03:01] Speaker 03:
Quozo, I believe, came after Ethicon.

[00:03:04] Speaker 03:
The Supreme Court's Quozo came after this court's decision in Ethicon, Your Honor.

[00:03:09] Speaker 03:
And since then, in Milan and St.

[00:03:11] Speaker 04:
Vigia... The Supreme Court decision in Quozo, though, didn't have anything to do with the argument.

[00:03:16] Speaker 03:
It did not address the argument we're making.

[00:03:18] Speaker 03:
What it did was address the nature of inter partes proceedings.

[00:03:21] Speaker 03:
And it described them as akin to a grand jury indictment.

[00:03:25] Speaker 03:
This court then, relying on Quozo, said that institution is like an agency's decision to initiate or not initiate an agency enforcement action based upon third parties.

[00:03:35] Speaker 03:
The attorney general's report on the APA

[00:03:38] Speaker 03:
defines prosecution for purposes of this particular provision as making a preliminary decision to proceed to a formal hearing.

[00:03:46] Speaker 03:
That is what institution is.

[00:03:47] Speaker 03:
And the PTO, in its briefing in Palo Alto, and we cite this in our brief on page 22, in its briefing in Palo Alto, which came after Ethicon, after Quozo, it cited Quozo and stated that, quote, institution decision does not adjudicate the rights of the parties, but instead merely determines whether an agency will initiate such an adjudication.

[00:04:08] Speaker 03:
That statement came after Ethicon, after Mobility Works, after Quozo, after oil states.

[00:04:13] Speaker 03:
And that is the definition of prosecution that the attorney general's report on the APA used.

[00:04:19] Speaker 05:
What's wrong with the analogy to a preliminary injunction determination by a district court on likelihood of success on the merits versus an ultimate decision on the merits or the Supreme Court cert decision versus making a decision on the merits

[00:04:36] Speaker 05:
why are those analogies not at all persuasive?

[00:04:39] Speaker 03:
I think they're not persuasive for several reasons.

[00:04:41] Speaker 03:
Judge Stark, first, the APA doesn't apply to Article III courts, and so I would say that those analogies are beside the point.

[00:04:47] Speaker 03:
Congress made particular rules for agencies, and they don't bind to Article III courts.

[00:04:51] Speaker 03:
But their analogies are inept in any event.

[00:04:53] Speaker 03:
Those decisions

[00:04:54] Speaker 03:
are not committed to agency discretion by law.

[00:04:56] Speaker 03:
They're not based upon policy considerations.

[00:05:00] Speaker 03:
They are appealable.

[00:05:01] Speaker 03:
And most importantly, Your Honor, they do not trigger a formal proceeding.

[00:05:06] Speaker 03:
That's what institution is.

[00:05:07] Speaker 03:
Like an indictment, it triggers a formal agency here.

[00:05:10] Speaker 05:
Your contention, I thought, is ultimately that the board is too biased.

[00:05:15] Speaker 05:
by what it said at institution to have an open mind on the merits.

[00:05:21] Speaker 05:
That seems entirely analogous to the examples that I've given.

[00:05:26] Speaker 03:
I would turn to the due process argument, but this is a distinct argument, which is the APA argument.

[00:05:30] Speaker 03:
There's a structural APA argument that I grant you was motivated in part... So the APA argument doesn't turn on bias.

[00:05:36] Speaker 03:
Correct.

[00:05:37] Speaker 03:
Congress was concerned with bias, but it doesn't turn on bias.

[00:05:41] Speaker 03:
But again, if you look at the APA, page 56 of the Attorney General's report on the APA,

[00:05:48] Speaker 03:
which defined prosecution to be the decision to proceed to a formal hearing, did in fact say that to eliminate bias, that decision should be delegated to a different agency individual than the agency head.

[00:05:59] Speaker 03:
So I do think that the concerns are aligned in this case.

[00:06:03] Speaker 03:
But it is a different argument, and it's a statutory argument.

[00:06:06] Speaker 03:
I think our bias argument only lends further support to the argument that the agency can be biased, and that's why separating functions would eliminate that concern.

[00:06:18] Speaker 05:
I asked you about a slightly different contention you make.

[00:06:21] Speaker 05:
You seem to suggest there's something troubling about a district court and the PTAB having a kind of public back and forth in terms of whether litigation should be stayed or not.

[00:06:34] Speaker 05:
Here, I think the district court in parallel litigation denied a motion to stay, but indicated it would stay.

[00:06:41] Speaker 05:
If the board instituted it, then the board referenced that when it instituted, and then the district court stayed.

[00:06:47] Speaker 05:
seem to me that's all contemplated by the AIA and that there's nothing wrong with that.

[00:06:52] Speaker 05:
But you at least suggest, maybe I'm misinterpreting, that there's something nefarious going on.

[00:06:57] Speaker 05:
Could you help me with that?

[00:06:59] Speaker 03:
I don't think there's anything nefarious, your honor, with that procedure.

[00:07:04] Speaker 03:
What I will say is that what it displays is the potential for bias in this particular case.

[00:07:09] Speaker 03:
So you're right on the procedural posture that's basically in a nutshell.

[00:07:14] Speaker 03:
What the agency did was it said that the petitioners made a, quote, strong showing of unpatentability with respect to all the claims.

[00:07:23] Speaker 03:
Now, the standard for institution is a reasonable likelihood of prevailing on a single claim.

[00:07:28] Speaker 03:
As Your Honor suggested, the board made that determination because it was effectively

[00:07:32] Speaker 03:
addressing the district court's concern when the district court said it wouldn't stay unless the petitioners could show likelihood of success in all the claims.

[00:07:39] Speaker 03:
Our position is simply that by departing from the traditional standard and making that statement about a strong showing, the board effectively got ahead from out under its skis.

[00:07:49] Speaker 03:
And once you do that, it's hard to go back.

[00:07:50] Speaker 03:
After making that determination, it's hard to then say,

[00:07:53] Speaker 03:
that the petitioners did not show by preponderance of the evidence, which is the standard here, that even a single claim was invalid.

[00:08:00] Speaker 03:
And so our petition was that just sort of highlights part of the bias that can be inherent in these types of proceedings.

[00:08:06] Speaker 03:
So it wasn't that there was anything nefarious about the particular procedural posture, but it highlighted the procedural fairness infirmities that we think are endemic to the process.

[00:08:15] Speaker 03:
And the GAO report that we cite, I think, highlights some of those concerns you're

[00:08:20] Speaker 03:
Part of the principle here is that these are essentially neutral adjudicators, but the GAO report, which came out after... Let me ask you something about the merits of your argument on means plus function.

[00:08:32] Speaker 05:
Is it your contention that we require that the same reference disclose both the structure and the function?

[00:08:43] Speaker 03:
I don't think it has to be the same reference, Your Honor, but what I do think for obviousness as opposed to anticipation, I think what Fresenius holds is that you need to point to a structure that corresponds to the claim function.

[00:08:57] Speaker 03:
Fresenius also wanted to hold that that structure should be disclosed in the context of the claim function.

[00:09:02] Speaker 03:
So one example that it used was in that case there was a means plus function for delivering an anticoagulant agent.

[00:09:08] Speaker 03:
The associated structure was a stepper motor.

[00:09:10] Speaker 03:
What this court did was it conducted its own analysis of the prior art, and it saw that there was a stepper motor in the prior art, which was a claimed function, but it wasn't disclosed in the context of the claimed function.

[00:09:22] Speaker 03:
I would submit that it wouldn't be sufficient to then point to a totally different structure, like a syringe administering an anticoagulant by a nurse or a doctor.

[00:09:30] Speaker 03:
That wouldn't be sufficient to render it obvious, because it wasn't in the context of the claimed function.

[00:09:34] Speaker 03:
What we have here

[00:09:36] Speaker 03:
is the board pointed to a series of references that disclosed the function, but do so using a totally different structure.

[00:09:42] Speaker 03:
It also pointed to a series of references that, in combination, it said disclosed or would have suggested the structure, but did not perform the function.

[00:09:50] Speaker 03:
And when you look at the references individually, also none of them, in fact, individually actually disclosed the structure as only in combination.

[00:09:57] Speaker 03:
So it's really the combination of all those factors, Your Honor, and the point that the structure that the board pointed to did not, in fact, accomplish the claimed function.

[00:10:07] Speaker 03:
In addition, by combining the references in that way, the person of skill in the art would have had to abandon the very structure that accomplished the function.

[00:10:15] Speaker 03:
So the board relied, for example, in the Samsung proceedings on Cook and Trimberger as providing the function.

[00:10:23] Speaker 03:
It is undisputed that they do not use a wide configuration data port.

[00:10:26] Speaker 03:
And I should back up and say the function was reconfiguring a programmable array within one clock cycle.

[00:10:32] Speaker 03:
The structure is a wide configuration data port connecting in parallel cells on one die element to cells in the other with contact points throughout the die.

[00:10:41] Speaker 03:
It's undisputed that Cook and Trimberger, the function references, don't use a wide configuration data port.

[00:10:46] Speaker 03:
If it did, you wouldn't have had to combine the references.

[00:10:49] Speaker 03:
But by combining them in the way that the board said would have been reasonable to a person's skill in the art, you would have to abandon the very structures in Cook and Trimberger that were responsible for achieving that function.

[00:11:01] Speaker 03:
And the board did not explain why personal skill in the art would have expected success in achieving Cook's function with a totally different structure.

[00:11:08] Speaker 03:
So it's really the combination of all those elements here.

[00:11:11] Speaker 05:
So it sounds like your arguments really build out to substantial evidence.

[00:11:14] Speaker 05:
You're not saying there was a flaw in the legal analysis that the board undertook.

[00:11:21] Speaker 03:
Well, obviously, this is a mixed question.

[00:11:23] Speaker 03:
And to the extent that the board endeavored to interpret the prior art references, the nature and scope of the prior art

[00:11:29] Speaker 03:
various grand factors.

[00:11:30] Speaker 03:
Those are obviously substantial evidence, your honor.

[00:11:32] Speaker 03:
But the ultimate conclusion is a legal question and by far a dead end.

[00:11:37] Speaker 05:
But looking to more than one reference to find the structure in one and the function in the other, while you suggest in various places in your brief that that would be legal error, ultimately you're not saying that's a legal error.

[00:11:49] Speaker 03:
It's legal error with respect to the bottom line determinant of GSS.

[00:11:52] Speaker 03:
I think it's overstating the case to say that the board can never combine references.

[00:11:57] Speaker 03:
What we're saying is that in combining references in the way that it did so here failed to disclose, failed to render obvious our invention.

[00:12:05] Speaker 03:
And in part, I mean, the board is obligated as are all agencies subject to the APA.

[00:12:10] Speaker 03:
It has reasoned decision-making obligations under State Farm and the like.

[00:12:13] Speaker 03:
And part of our argument is that the board

[00:12:15] Speaker 03:
did not sufficiently explain how or why a person of skill of the art would have both been motivated to combine these and had a reasonable expectation of success in doing so.

[00:12:26] Speaker 01:
But again, just to clarify the point, it seems to me that what you just said confirms what Judge Stark just said, that this is basically a substantial evidence question, not a legal question.

[00:12:39] Speaker 01:
You're not arguing that

[00:12:41] Speaker 01:
if one reference shows a structure and the other reference shows function that you simply cannot make out a 103 case, you're arguing that you can't make out a 103 case unless you can establish as a matter of substantial evidence that there was a reason to combine with a reasonable expectation of success.

[00:13:03] Speaker 03:
Part of that's true.

[00:13:04] Speaker 03:
I mean, there's still this illegal area here under Fresenius.

[00:13:06] Speaker 03:
It doesn't necessarily need to be a single reference that does this.

[00:13:10] Speaker 03:
But you still need to point to a reference or a combination of references that either disclose or suggest the structure and do so in the context.

[00:13:18] Speaker 01:
But if the references disclose and teach enough to support the argument that one of ordinary skill in the art would have had a reason to combine, then obviousness is made out.

[00:13:32] Speaker 01:
right if if those if it's i don't think you can read for seniors as probably as you seem to be reading it to me it's a fairly narrow uh... uh... ruling

[00:13:47] Speaker 03:
Right, but even if you disagree with the reading in the briefs of Fresenius, it still stands for the proposition that the structure corresponding to the function must be disclosed.

[00:13:56] Speaker 03:
And it's stated that it should be disclosed in the context of the function.

[00:13:59] Speaker 03:
And that's the key element of what's missing here.

[00:14:01] Speaker 03:
The structure references are not disclosed in the context of the function.

[00:14:05] Speaker 01:
But the context is all about the teachings and what does the evidence show.

[00:14:11] Speaker 01:
Well, it's not a legal question.

[00:14:14] Speaker 03:
Well, yes.

[00:14:15] Speaker 03:
The determination of what the prior art rep, the nature and scope of the prior art is a substantial evidence question, Your Honor.

[00:14:20] Speaker 03:
That's right.

[00:14:21] Speaker 03:
But the ultimate determination whether or not they in fact disclose them in the context and whether or not a person, and whether putting all this together, a person, a skill, and the art would have found this to be obvious is a legal question.

[00:14:32] Speaker 03:
And our view is that as a legal matter, it would not have been obvious to a person, a skill, and the art, in part because of the legal errors in failing to account for these

[00:14:42] Speaker 03:
principles, which is how a person of skill in the art would have expected success.

[00:14:46] Speaker 03:
I mean, another aspect here is that the court, the board did not explain, for example, in abandoning the structures that accomplish the function.

[00:14:53] Speaker 03:
how these would all be put together.

[00:14:54] Speaker 03:
And our position is that this is not a bologna sandwich, where you could just swap out the bologna and swap in ham and say this is done.

[00:15:02] Speaker 03:
The board had an obligation to explain how the various circuits were combined, which cells connected to which cells.

[00:15:07] Speaker 03:
And it didn't do that.

[00:15:08] Speaker 03:
It pointed to their expert's contention that a person of skill in the art wouldn't just slap them together.

[00:15:13] Speaker 04:
But I- Council, you've used all of your time.

[00:15:16] Speaker 04:
We'll restore some of your rubato, but let's hear from the other side now.

[00:15:26] Speaker 04:
Mr. O'Quinn, when you're ready.

[00:15:37] Speaker 06:
Thank you, Judge Hughes, and may it please the court.

[00:15:39] Speaker 06:
John O'Quinn on behalf of the Appellees.

[00:15:41] Speaker 06:
I'm joined by Mr. Schneidman on behalf of Xilinx and Ms.

[00:15:44] Speaker 06:
Karizwan from the Justice Department.

[00:15:47] Speaker 06:
Arbor's arguments on appeal

[00:15:49] Speaker 06:
distort the law of obviousness as applied to means plus function claims, fail to grapple with the board's factual findings in these IPR decisions, and ask the panel to run roughshod over precedent upholding the director's delegation of institution authority to the PTAB.

[00:16:05] Speaker 06:
Now, from the argument that we've just heard, it seems like Arbor is abandoning the first argument in its brief.

[00:16:11] Speaker 06:
I had taken their argument to be that Fresenius requires that a single reference disclose the entirety of a means

[00:16:18] Speaker 06:
a means plus function limitation.

[00:16:21] Speaker 06:
It's right that they've abandoned that argument.

[00:16:23] Speaker 06:
It's contrary to this court's precedent in Fleming versus Sirius, which is cited in our brief, which specifically address the fact that single limitations can be rendered obvious based on a combination of prior art.

[00:16:35] Speaker 06:
And I'll note that Fleming versus Sirius at page 1222, the page we cite in our brief, in turn cites a case called Randall versus Reyes, 733 F3 at 1364 for that same proposition.

[00:16:48] Speaker 06:
I flagged that because Randall v. Rea itself involved the means plus function claim, in which the court specifically said that the means plus function limitation could be found from a combination of prior art references.

[00:16:58] Speaker 06:
So that just leaves what I think is a substantial evidence attack on the board's reasoning.

[00:17:05] Speaker 06:
I think our briefs address at length why the board's decisions are supported on the facts, at least with respect to the Samsung IPRs, which I can address.

[00:17:16] Speaker 06:
I'm happy to answer any questions about those.

[00:17:18] Speaker 06:
Mr. Schneidman will answer any questions about the Zeitlinx ones.

[00:17:21] Speaker 06:
But obviousness here follows from three very, very basic propositions.

[00:17:26] Speaker 06:
The first one is that programmable arrays, such as FPGAs, were well known, as were the benefits of them.

[00:17:32] Speaker 06:
I don't think that's disputed.

[00:17:33] Speaker 06:
Connecting FPGAs with microprocessors and memories to have a reconfigurable processor was well known.

[00:17:41] Speaker 06:
That's indisputable.

[00:17:42] Speaker 06:
That is the Cook reference itself.

[00:17:44] Speaker 06:
And 3D arrangement technologies were well known as taught by Koyanagi and by Burton.

[00:17:51] Speaker 06:
And the benefits of converting from two dimensions to three dimensions were explained in background prior, like the Akasaka reference and the Alexander reference.

[00:18:00] Speaker 06:
I'm happy to answer any questions the court may have about that.

[00:18:03] Speaker 06:
If the court has none, I'll say a few words about the APA challenge that they've raised.

[00:18:09] Speaker 06:
And I think, first of all, this court's decisions in Ethicon

[00:18:12] Speaker 06:
And more recently, in Mobility Works, foreclose the arguments that they are making.

[00:18:18] Speaker 06:
Now, my friend on the other side tries to suggest that Ethicon is somehow not binding, because allegedly APA section 554D was not an argument that was being made in Ethicon.

[00:18:31] Speaker 06:
I don't understand that argument, because if you look at the cert petition that was filed in Ethicon, one of the things that was argued

[00:18:39] Speaker 06:
by AFRICON was that this court had purportedly erred because it, quote, characterized both the institution decision and the final written decision as adjudicative and therefore discounted the relevance of the Administrative Procedure Act's prohibition on investigating or prosecuting personnel participating in final adjudicative decisions, end quote.

[00:19:00] Speaker 06:
with Ethicon noting that this court had in fact quoted Section 554D.

[00:19:06] Speaker 06:
But whatever you think of Ethicon, we have Mobility Works, which reaffirmed the holding of Ethicon.

[00:19:11] Speaker 06:
It comes after a number of the precedents that my friend on the other side has cited.

[00:19:15] Speaker 06:
And it came over a dissent that specifically discussed Section 554D, that specifically discussed the Williams case, which they cited for the first time in their reply brief.

[00:19:25] Speaker 06:
and specifically discussed the Arthrex case, which they discussed for the first time in their reply brief, in their opening brief.

[00:19:34] Speaker 06:
They simply noted it in two footnotes for the proposition that the director delegates institutional authority to the PTAB.

[00:19:41] Speaker 06:
So I think all those arguments were forfeited, as are their arguments based on the GAO's report, which were raised for the first time in their reply brief, and which I would note that this court rejected nearly identical arguments

[00:19:53] Speaker 06:
based on the GAO report earlier this year in a case called New Vision Gaming, number 20-1400.

[00:20:01] Speaker 06:
I'm happy to answer any questions the court may have on any of these issues.

[00:20:05] Speaker 06:
Otherwise, I'll turn it over to my friend, Mr. Schneidman.

[00:20:09] Speaker 05:
I'm just curious, from your perspective, the bottom line.

[00:20:12] Speaker 05:
Is there an open question under the APA that this court has to resolve?

[00:20:22] Speaker 05:
Because Ethicon and their cert petition, they can't change what the holding of the court is.

[00:20:26] Speaker 05:
Or is it your view that the question has already been decided by this court?

[00:20:31] Speaker 06:
Judge Stark, I think the question has been decided.

[00:20:34] Speaker 06:
And in all events, the question of whether or not the decision to institute

[00:20:38] Speaker 06:
is an adjudicatory decision as opposed to a prosecutorial or investigatorial decision was squarely addressed by this court in Ethicon.

[00:20:47] Speaker 06:
That is their argument.

[00:20:49] Speaker 06:
Their argument is that it's not adjudicatory, that instead that it is prosecutorial.

[00:20:53] Speaker 06:
And it doesn't matter that they're trying to pour new wine into old wineskins.

[00:20:59] Speaker 06:
It's the same exact argument, whether it's raised under the due process clause, whether it's raised under the APA,

[00:21:06] Speaker 06:
whether it's raised under the AIA.

[00:21:08] Speaker 06:
But in all events, I think Mobility Works had the APA argument in front of it, because that was discussed at length by the dissent in the Mobility Works case as well.

[00:21:17] Speaker 06:
And one other point while I'm on this, Judge Stark, I agree that the preliminary injunction analogy that you made reference to, I think, is the apt analogy here.

[00:21:26] Speaker 06:
I'll offer two others, where courts engage in discretionary decisions that are unreviewable that get to the same type of inquiry that the board has to make here,

[00:21:36] Speaker 06:
For example, if a district court denies a certificate of appealability under 28 USC 2253, then the Court of Appeals has to decide for itself whether or not there's been a, quote, substantial showing.

[00:21:49] Speaker 06:
And no one has suggested that a Court of Appeals judge who makes that determination can't then sit on the subsequent panel or on the en banc court.

[00:21:57] Speaker 06:
And similarly, the Supreme Court, in deciding certiorari, decides discretionary decisions that are unreviewable all the time, which consider what they think

[00:22:05] Speaker 06:
to potentially consider what they think about the merits of a particular case, as well as other discretionary factors in deciding whether or not to grant cert.

[00:22:14] Speaker 04:
Thank you, Mr. Chairman.

[00:22:16] Speaker 06:
Thank you, Judge Hughes.

[00:22:18] Speaker 04:
Mr. Schneidman, you're up next.

[00:22:31] Speaker 02:
Thank you, Your Honors.

[00:22:32] Speaker 02:
I'm Jeffrey Schneidman.

[00:22:33] Speaker 02:
I represent Xilinx, the appellee in four of these seven consolidated matters.

[00:22:39] Speaker 02:
And I joined Samsung and the government on the common issues, but I want to offer a straightforward way, I think, to resolve this appeal, aside from the APA issues, and resolve through the Xilinx cases.

[00:22:52] Speaker 02:
Which is, Xilinx is in a slightly different scenario than the Samsung cases.

[00:22:57] Speaker 02:
And the Xilinx final written decisions, if they are affirmed, would resolve the appeal because Xilinx challenged a superset of the claims that are at issue in this case that Samsung raised.

[00:23:08] Speaker 02:
And Judge Stark, you raised this bias question.

[00:23:11] Speaker 02:
I just want to flag that Arbor alleges no flaws in the Xilinx institution decisions, for example, and we note that in our brief at page 31, no 19.

[00:23:20] Speaker 02:
There was no allegation of prejudgment.

[00:23:22] Speaker 02:
There was no allegation of bias.

[00:23:25] Speaker 02:
So here's the point I suppose I'd like to make, which is I heard my friend discuss how the structure has to be disclosed in the context of the function, and that's what the board did explicitly in the Xilinx cases, and I just want to point the court to this.

[00:23:42] Speaker 02:
I thought I was going to be talking about a situation where means plus function comes from different references.

[00:23:46] Speaker 02:
I agree.

[00:23:46] Speaker 02:
I think I heard it backing off from that.

[00:23:48] Speaker 02:
But I also want to make sure the court is aware that the PTAB engaged directly with that.

[00:23:54] Speaker 02:
And I direct the court to the final written decision of the 226 patent, which is Appendix 568, where the board wrote this.

[00:24:01] Speaker 02:
The patent owner argues that petitioner relies on one reference for structure in terms of another function, but this is not the case here.

[00:24:09] Speaker 02:
And then the board still notes at 568 that the function from the relevant portions of Tremberger with specific reference to the function attributed by Tremberger to the structure included from Tremberger is in the asserted combination.

[00:24:25] Speaker 02:
Arbor concedes that this is what the board did.

[00:24:28] Speaker 02:
If I read the bottom of the blue brief at 37, Arbor wrote, unlike in the Samsung 226 patent IPR, however, the board determined that Petitioner presents the structure and combination of Zvrachy, Cherchescu, Akasaka, and Tremberger, and the function from the relevant portions of Tremberger with specific reference to the function attributed by Tremberger to the structure included from Tremberger in the inserted combination.

[00:24:56] Speaker 02:
If we look back at what the board identified as what it included from Tremberger in the asserted combination, that's found at appendix 566 at the bottom.

[00:25:07] Speaker 02:
The partition persuasively shows that limitation 13.4, that's the means plus function, is taught not by Tremberger's teaching regarding the single memory access port that provides access to the configuration memory alone, but rather in combination with the description in Tremberger instantly switching

[00:25:23] Speaker 02:
to a new configuration with bit lines for a memory plane read simultaneously from configuration memory.

[00:25:30] Speaker 02:
And that echoes the board's earlier description of the relevant structure at Tremberger at PENIX 553 and again at 563.

[00:25:37] Speaker 02:
To quote there at 563, Tremberger teaches that the entire configuration of the FPGA can be changed in a single cycle of the memory.

[00:25:45] Speaker 02:
When the device is flash-configured, all bits in the logic and interconnect array are updated simultaneously from one memory plane.

[00:25:54] Speaker 02:
So the board understood what was in the petition.

[00:25:56] Speaker 02:
The board cites the pages where that argument was made in the description.

[00:26:04] Speaker 02:
And we would rest on the fact that the board's fact-finding was supported by substantial evidence.

[00:26:08] Speaker 05:
Can I have one question for you?

[00:26:10] Speaker 05:
Page 41 of the blue brief, Pat Noonan argues, the structure that Xilinx points to as achieving the functionality of the means plus function elements does not actually perform that functionality.

[00:26:22] Speaker 05:
Could you just address that?

[00:26:24] Speaker 05:
Yeah.

[00:26:24] Speaker 02:
Again, that was page 41.

[00:26:26] Speaker 02:
Yeah.

[00:26:27] Speaker 02:
So the arbor is incorrectly citing what the board actually relied on in the construction.

[00:26:33] Speaker 02:
In the final written decision, the portion I just quoted at 566, the board understood, and you have to understand Judge Stark, so I was the attorney below, we went through a series of claim constructions in this case.

[00:26:51] Speaker 02:
So what ultimately ended up at the end was different than what was at the beginning of the petition.

[00:26:56] Speaker 02:
At the very end, what we did, and especially in oral argument, is pointed to were the parts of the petition that provided the relevant structure under the claim construction.

[00:27:04] Speaker 05:
So the things that are cited in the blue brief at page 41 were not the final things?

[00:27:10] Speaker 02:
It's an incomplete description.

[00:27:12] Speaker 05:
It's not what the board really relied on even?

[00:27:14] Speaker 02:
That's correct.

[00:27:15] Speaker 05:
That's correct.

[00:27:16] Speaker 02:
I think when your honors write the brief, if you look and follow these references, you'll see that.

[00:27:24] Speaker 02:
So let me close just by saying as to the question of whether we can fairly discern the path that the board took in reasoning to get to its decision.

[00:27:32] Speaker 02:
I say that the 390 pages of final written decision on these patents certainly provides that.

[00:27:39] Speaker 02:
That's just for the Xilinx IPRs.

[00:27:42] Speaker 04:
Thank you, Counselor.

[00:27:43] Speaker 04:
It was also your time.

[00:27:52] Speaker 04:
I heard Mr. O'Quinn pronounce your name that I've forgotten already.

[00:27:55] Speaker 00:
How do you say it?

[00:27:56] Speaker 00:
Dana Karasvan for the director.

[00:27:59] Speaker 00:
And I'm here to address the constitutional and APA issues.

[00:28:02] Speaker 00:
They're controlled by Ethicon and Mobility Works.

[00:28:07] Speaker 00:
Ethicon reasoned that both decisions are adjudicatory, and that resolves both the constitutional and the APA challenge.

[00:28:13] Speaker 00:
So I'm happy to answer any questions.

[00:28:15] Speaker 00:
Otherwise, I'll rest on my briefs.

[00:28:16] Speaker 05:
I just have one.

[00:28:17] Speaker 05:
At page 13 of your brief, you wrote, in deciding whether to institute IPR, the board reviews opposing views presented by different parties.

[00:28:25] Speaker 05:
That's not necessarily a part of the institution process, is it?

[00:28:29] Speaker 00:
Well, yes, Your Honor.

[00:28:31] Speaker 00:
So the process is the petitioner and their petition makes their arguments and submits their evidence.

[00:28:39] Speaker 00:
And the board, by statute 314A, can't institute

[00:28:44] Speaker 00:
unless the petition viewed together with the response shows that there is a reasonable likelihood that the petitioner will prevail.

[00:28:55] Speaker 05:
But there's no necessity to consider opposing views presented by different parties.

[00:29:00] Speaker 05:
What you meant is they have to consider the standard of reasonable likelihood.

[00:29:05] Speaker 05:
Is that what you meant?

[00:29:07] Speaker 00:
Well, but the petitioner has the burden.

[00:29:09] Speaker 05:
Right.

[00:29:10] Speaker 05:
OK.

[00:29:11] Speaker 05:
The board doesn't have to hear from an opposing party.

[00:29:13] Speaker 05:
at the institution stage, do they?

[00:29:16] Speaker 00:
There is an opportunity to file a response.

[00:29:19] Speaker 00:
I'm sorry if that wasn't clear.

[00:29:21] Speaker 00:
Okay, thank you.

[00:29:23] Speaker 00:
Thank you.

[00:29:29] Speaker 04:
We'll restore your three minutes.

[00:29:30] Speaker 03:
Thank you, Your Honor.

[00:29:33] Speaker 03:
One point on the APA, or maybe two, and one on the merits.

[00:29:37] Speaker 03:
Obviously, a cert petition is a cert petition.

[00:29:40] Speaker 03:
It was denied, and we don't know why it was denied.

[00:29:42] Speaker 03:
That itself doesn't say anything.

[00:29:44] Speaker 03:
I would again point to the PTO's statement after Mobility Works and after Ethicon that the institution does not adjudicate the rights of the parties, but merely determines whether the agency will initiate such an adjudication.

[00:29:57] Speaker 03:
That statement is a concession.

[00:30:00] Speaker 03:
that it is not an adjudication but a prosecutorial act.

[00:30:03] Speaker 03:
To get to the last point made, lots of agency enforcement proceedings are prompted by third party complaints.

[00:30:09] Speaker 03:
The NLRB case cited by the PTO here as an example of when separation of functions would be required is prompted by a complaint filed by an employee or a union or employer.

[00:30:20] Speaker 03:
Then the office decides whether to move forward based upon that evidence.

[00:30:24] Speaker 03:
And then there's a hearing.

[00:30:25] Speaker 03:
That's analogous to what's happening here.

[00:30:27] Speaker 03:
And most agencies actually segregate those functions.

[00:30:30] Speaker 03:
the agency here did not do so.

[00:30:32] Speaker 03:
One question at one point on Mobility Works, because I think Judge Hughes or someone else mentioned it, Mobility Works simply quoted the Ethicon money quote that said, nothing in the statute or the Constitution prohibits delegation to the same path.

[00:30:45] Speaker 03:
When it's talking about the statute, it's talking about the AIA.

[00:30:48] Speaker 03:
The whole discussion preceding that money quote was about whether the AIA's delegation provisions authorized the director to delegate to the same panel.

[00:30:57] Speaker 03:
So I would submit that nothing in Ethicon or Mobility Works address this, I think as demonstrated by the PTO statement in Palo Alto, that institution is not an adjudication, but merely a decision to proceed to an adjudication, which is the definition of prosecutorial.

[00:31:13] Speaker 03:
On Trimberger, Your Honor, with respect to the Zillings patents, if Trimberger in fact disclosed the structure and the function, there wouldn't have been any combination.

[00:31:21] Speaker 03:
So I think it has to be taken for granted that Trimberger did not do so.

[00:31:25] Speaker 03:
The fundamental point of distinction on Trimberger was they relied on this memory access port as potentially disclosing or teaching the wide configuration data port.

[00:31:36] Speaker 03:
I think it's well accepted that it's not what's responsible

[00:31:39] Speaker 03:
in Trimberger for achieving the one-clock cycle reconfiguration.

[00:31:42] Speaker 03:
That is achieved by having eight different memory configuration cells distributed across the FPGA, and they're preloaded with data that can then shift to the FPGA rapidly.

[00:31:52] Speaker 03:
But our invention, Arbor's invention, allowed on-demand reconfiguration of the FPGA within one-clock cycle.

[00:32:00] Speaker 03:
And that's the advance.

[00:32:01] Speaker 03:
And my friend on the other side talked about how all these different aspects, whether it's stacking or FPGA,

[00:32:05] Speaker 03:
PG's were known.

[00:32:06] Speaker 03:
But what was not known was connecting them in this way using a wide configuration data port to enable the one clock cycle reconfiguration and that's the advance.

[00:32:15] Speaker 03:
That achieved benefits over the prior art which suffered for many flaws.

[00:32:20] Speaker 03:
It wasn't in the prior art the combination here and we would submit that the board erred in concluding that it was obvious to do so.

[00:32:26] Speaker 03:
Thank you.

[00:32:27] Speaker 03:
Thank you.

[00:32:28] Speaker 04:
Case is submitted.