[00:00:00] Speaker 00: Next case for argument is 23-1415, park revision versus TCL. [00:00:06] Speaker 00: Please proceed. [00:00:07] Speaker 01: Good morning, Your Honor. [00:00:08] Speaker 01: My name is Jason Charkel, and I represent park revision. [00:00:11] Speaker 01: So why are we here today? [00:00:12] Speaker 02: Well, the PTAB decided that a dirty argument and no evidence is sufficient on a key... Can we first figure out what things are now barred from this appeal? [00:00:24] Speaker 02: Sure. [00:00:24] Speaker 02: You're not going to argue claim construction anymore, is that right? [00:00:28] Speaker 01: Today I'm not going to argue claim construction. [00:00:30] Speaker 01: I'm going to focus on claim four of the patent, which nobody disputes. [00:00:33] Speaker 01: There's no issue with in terms of any sort of... [00:00:36] Speaker 01: Right, because Claim 3 is gone. [00:00:38] Speaker 02: Well, we believe there's a different record and there's... Claim 3 was deemed to be unpatentable and we affirmed that in an earlier litigation, right? [00:00:48] Speaker 01: Correct. [00:00:48] Speaker 01: It was deemed gone. [00:00:49] Speaker 01: We believe there's a different record and under the Supreme Court's decision in [00:00:55] Speaker 00: We're talking about preclusion again. [00:00:58] Speaker 00: Yes. [00:00:58] Speaker 01: I'm going to make it quick, because it seems like you got that out early on tonight. [00:01:01] Speaker 01: So for Park Lane Hosiery Code, be sure, 439 US 322 at 330 to 331. [00:01:09] Speaker 01: That's a Supreme Court case that talks about this particular situation is offensive collateral estoppel if we were to be barred by that. [00:01:17] Speaker 01: And the Supreme Court said there's [00:01:19] Speaker 01: The court should be very wary of that in situations just like this, where a party like TCL could have joined up in the case, in the petition. [00:01:29] Speaker 01: And it only happened a couple of months after TCL entered with suit. [00:01:34] Speaker 01: And they didn't. [00:01:35] Speaker 01: And the Supreme Court said, you have to be wary of that, because it's right for problems which happen just like we're in that right now. [00:01:42] Speaker 01: Through no fault of our own, we're in a very [00:01:45] Speaker 01: weird position, which quite frankly is messed up, where basically you have a situation where we told the board it should be combined. [00:01:52] Speaker 01: The earlier case and this case, the board said no. [00:01:57] Speaker 01: And different records developed. [00:01:59] Speaker 01: We came to this court. [00:02:00] Speaker 01: We said the first case should be stayed and everything should be consolidated. [00:02:04] Speaker 01: The Federal Circuit said no, different records. [00:02:06] Speaker 01: So I believe that this is the type of case that the Supreme Court was talking about, that this is ripe for issues. [00:02:14] Speaker 01: And therefore, we believe because there's a different record, it should be heard. [00:02:17] Speaker 01: But I think claim four avoids that whole issue. [00:02:19] Speaker 03: So I would like to just- Do you happen to know whether the PTO has taken the canceling step [00:02:29] Speaker 01: I don't know that, Your Honor. [00:02:32] Speaker 01: Sorry, Your Honor. [00:02:34] Speaker 02: So we're just going to focus on claim four and whether, I guess, Lamb teaches four? [00:02:42] Speaker 01: Yeah, Lamb's in it. [00:02:43] Speaker 01: Yes, that's what I would like to do today. [00:02:45] Speaker 00: And preamble issue is going to? [00:02:47] Speaker 01: We're not going to address that today. [00:02:49] Speaker 01: So the reason why we're here today is, I'm sorry, I forget where I left off. [00:02:52] Speaker 01: But the PTAB decided that attorney argument and no evidence [00:02:56] Speaker 01: On a key issue, and the issue is storing non-negligible amounts of energy, that that was sufficient to invalidate a patent. [00:03:04] Speaker 01: And that's just, in our view, not right. [00:03:06] Speaker 01: It turns the process on its head, and we think that's an issue the court should address. [00:03:10] Speaker 01: And I'll go through this. [00:03:11] Speaker 01: So we'll talk about claim four. [00:03:13] Speaker 01: So our view is claim four should be reversed. [00:03:16] Speaker 01: The decision and validity. [00:03:17] Speaker 01: We believe there was an Administrative Procedure Act violation, number one. [00:03:21] Speaker 01: Number two, we don't only think that there was no substantial evidence regarding the storage element limitation. [00:03:26] Speaker 01: and the requirement of non-negligible amounts of energy, but we believe there was no evidence. [00:03:32] Speaker 01: And we believe that the board had a backfill to deal with the fact that there was no evidence put forward by the petitioner. [00:03:39] Speaker 01: So quickly on the Administration Procedures Act's violation. [00:03:43] Speaker 01: During the proceeding... Can I just ask you a question? [00:03:47] Speaker ?: Sure. [00:03:48] Speaker 03: Did our December 2023 decision address one or the other or both of the two points that you're now making? [00:04:00] Speaker 01: No. [00:04:00] Speaker 01: It dealt with a reference called Taylor. [00:04:03] Speaker 03: No, but isn't the argument about material submitted in reply having come too late? [00:04:12] Speaker 03: I thought that was part of the different issue. [00:04:14] Speaker 01: It's a different issue here, yeah. [00:04:17] Speaker 01: It's a different issue here. [00:04:20] Speaker 01: Yes. [00:04:20] Speaker 01: There was an issue similar to that, but it's different facts. [00:04:22] Speaker 01: There's different issues here that had nothing to do with that case. [00:04:25] Speaker 01: So if I may, I could explain? [00:04:28] Speaker 01: Yeah. [00:04:28] Speaker 01: OK. [00:04:29] Speaker 01: So in this case that we're currently in, what occurred is the following. [00:04:35] Speaker 01: TCL raised a new argument for the first time in their reply brief. [00:04:43] Speaker 01: We moved to strike. [00:04:44] Speaker 01: That was denied. [00:04:45] Speaker 01: We're saying that was an abuse of discretion. [00:04:47] Speaker 01: So what happened exactly? [00:04:49] Speaker 01: So when TCL filed their original brief, their petition, [00:04:53] Speaker 01: What they attached to the petition was the district court's decision, which held that a storage element, at least the relevant part, stored non-negligible amounts of energy. [00:05:03] Speaker 01: That was in the district court's decision on claim instruction, an earlier decision from another case. [00:05:08] Speaker 01: They attached that to their petition. [00:05:10] Speaker 01: They then went ahead to talk about other of the district court's decision in their petition, and it was exhibit 1013, which was the markman order from the district court case. [00:05:20] Speaker 01: and that you can find in Appendix 4540. [00:05:23] Speaker 02: What is the new argument they raised in their reply? [00:05:26] Speaker 01: So, the first time they raised statements that were made by the inventor, Mr. Sor, one of the inventors, in a Parker-Vision case from 2015, from years before this whole issue. [00:05:39] Speaker 01: Never heard about it before. [00:05:40] Speaker 01: So, they had the opportunity when they filed their petition to address the issue of non-negligible amounts of energy. [00:05:45] Speaker 01: They said nothing. [00:05:46] Speaker 01: Even though they knew about it, [00:05:48] Speaker 01: Markman ruling from a prior case about storage element and non-negligible amounts of energy, it was attached to their petition. [00:05:56] Speaker 01: They ignored it. [00:05:58] Speaker 02: Let me tell you what I'm understanding of this case. [00:06:03] Speaker 02: They didn't make this particular argument about negligible, non-negligible amounts of energy in their petition for the meaning of storage element. [00:06:16] Speaker 02: In the patent owner response, you had a very particular understanding of the term storage element. [00:06:21] Speaker 02: And it would mean something about energy transfer systems. [00:06:31] Speaker 02: And then they came back and said, no, you don't have to have an energy transfer system. [00:06:41] Speaker 01: inside of the claim, inside of storage elements. [00:06:45] Speaker 01: And non-edgable amounts of energy. [00:06:46] Speaker 01: So put the energy transfer argument aside. [00:06:49] Speaker 01: We were all addressing this non-edgable amounts of energy. [00:06:52] Speaker 01: It was an issue that they could have and should have discussed. [00:06:55] Speaker 01: They had the Fed Circuit decision. [00:06:57] Speaker 01: They knew about the Markman decision that talked about non-edgable amounts of energy. [00:07:01] Speaker 01: That's how you define storage element, the uncontested part. [00:07:04] Speaker 01: And so they didn't address it. [00:07:06] Speaker 00: Do we have any cases? [00:07:07] Speaker 00: I mean, we've got cases on the other side that say, no, it was OK as long as you had a chance to respond to it. [00:07:13] Speaker 00: I mean, you're talking about they should have raised it in the petition because there were other related cases or whatever going on. [00:07:21] Speaker 00: So they knew about it. [00:07:22] Speaker 00: They didn't know what you were going to raise in response to their petition. [00:07:27] Speaker 01: But now they're saying that's lexicography. [00:07:29] Speaker 01: So they knew about the definition. [00:07:31] Speaker 01: They're saying it's now lexicography that includes this non-negligible amounts of energy. [00:07:36] Speaker 01: and they decided not to address it. [00:07:37] Speaker 01: Now, we did get to respond on the sir reply, but we couldn't use our expert to specifically address the issue that they knew about, they could have and should have raised, and they never did. [00:07:48] Speaker 02: How is this different from our December 2023 opinion where we said it was [00:07:53] Speaker 02: It was more than fine for them to raise their argument about having a counterclaim construction in their petition and reply. [00:08:01] Speaker 01: Because in that case, they did not have a markman ruling. [00:08:04] Speaker 01: There was no markman ruling attached to their petition that they knew about, that they talked about, and they just avoided this one issue in that markman ruling. [00:08:11] Speaker 01: That was not in the prior case. [00:08:13] Speaker 01: There was no issue that they had some knowledge ahead of time. [00:08:16] Speaker 01: In that case, they said, well, we were just responding to what Parker Vision said. [00:08:19] Speaker 01: In this case, they knew ahead of time. [00:08:21] Speaker 01: They had a claim construction ruling. [00:08:22] Speaker 01: They knew it. [00:08:23] Speaker 01: They ignored it. [00:08:23] Speaker 01: They talked about other portions of the claim construction ruling in their petition, but they ignored that part of it. [00:08:28] Speaker 00: So your argument is because of this other stuff going on, they should have known what you were going to offer in [00:08:39] Speaker 00: included that in the petition? [00:08:40] Speaker 01: It's not that they should have known what we were going to say. [00:08:45] Speaker 01: It's that they had a claim construction. [00:08:47] Speaker 01: And they relied on the claim construction of the court for other things. [00:08:50] Speaker 01: And they knew about it. [00:08:51] Speaker 01: It was attached to their petition. [00:08:53] Speaker 01: So there's no reason why they shouldn't have addressed this non-negligible amounts of energy. [00:08:57] Speaker 01: So the only thing they said in their petition, the only thing they said, capacitors are storage elements. [00:09:02] Speaker 01: That's it. [00:09:03] Speaker 01: Their expert didn't say anything about non-negligible amounts of energy. [00:09:06] Speaker 01: Where did that leave them? [00:09:07] Speaker 01: Then when we responded, they replied. [00:09:09] Speaker 01: They put new information in that we never heard of before. [00:09:12] Speaker 01: Our expert couldn't address those particular issues that they raised. [00:09:16] Speaker 00: My recollection of other cases is that, yes, while you're not allowed to introduce an expert report, you can file a request to do that move to be allowed [00:09:26] Speaker 01: I'm not aware that that happens. [00:09:28] Speaker 01: I'm not aware of the procedure. [00:09:30] Speaker 01: I know it's definitely not allowed as a right or anything. [00:09:32] Speaker 01: I don't know if there's a procedure to allow an expert to go ahead and file something later and how often that's even a thing, if it's even possible. [00:09:42] Speaker 01: So the bottom line is we weren't able to address the issue. [00:09:47] Speaker 01: But didn't you have an expert running all sorts of calculations? [00:09:52] Speaker 01: But not in response to the specific issue where they talked about this commercial viable system, which was that new issue that first came about when TCL filed their reply brief. [00:10:02] Speaker 01: We didn't know about these issues. [00:10:03] Speaker 01: So we didn't know about the issues. [00:10:05] Speaker 01: We couldn't anticipate what they were going to say. [00:10:07] Speaker 01: They should have addressed these issues in their opening petition. [00:10:10] Speaker 01: They did not do so. [00:10:11] Speaker 01: And so we were left in a situation where we had nothing to respond to. [00:10:16] Speaker 02: It seems to boil down to what is the correct understanding of this court's Parker-Vision versus Qualcomm opinion. [00:10:25] Speaker 01: It's partly correct, and that's the next issue I'm going to get down to. [00:10:29] Speaker 01: So I think we've talked about this issue, but they could have addressed it, they didn't address it. [00:10:34] Speaker 01: We had no ability to do a sir reply and have our expert address head-on the issues that they raised for the first time in the reply, and we think that's abuse of discretion. [00:10:41] Speaker 01: Now going back, if I could, to the point that I think you want to get to, which is the heart of the matter. [00:10:46] Speaker 01: So our position is that there is a reference to laminin. [00:10:51] Speaker 01: That's what was used to invalidate the claim for. [00:10:55] Speaker 01: And our view is that there was no substantial evidence, there was no evidence at all that the capacitors of laminin [00:11:01] Speaker 01: ends our storage elements and stores non-negligible amounts of energy. [00:11:06] Speaker 01: Dr. Steer, Parker Visions expert, was the only one that provided any testimony whatsoever on non-negligible amounts of energy. [00:11:13] Speaker 01: Their expert provided zero. [00:11:15] Speaker 01: They had an opportunity for their expert to provide in a reply to address this non-negligible amounts of energy, which was this new theory that they put. [00:11:22] Speaker 01: They could not even get an expert to opine to counter what Dr. Steer was saying on non-negligible amounts of energy. [00:11:28] Speaker 02: So there is no- Is that required as a matter of law? [00:11:30] Speaker 01: It's not required as a matter of law, but I'm going to get to the point. [00:11:33] Speaker 01: I'm going to get to the point in a minute. [00:11:36] Speaker 01: So what happened? [00:11:38] Speaker 01: Our view is they didn't meet their burden of proof. [00:11:40] Speaker 01: So what did the PTAB do? [00:11:42] Speaker 01: They had no evidence. [00:11:43] Speaker 01: So they went into the park revision Qualcomm case from 2015. [00:11:46] Speaker 01: They said, OK, what's non-negligible amounts of energy? [00:11:50] Speaker 01: Well, the Fed Circuit tells us that it's energy distinguishable from noise. [00:11:53] Speaker 01: That's what the PTAB said. [00:11:54] Speaker 01: Then they say, OK, what's energy distinguishable from noise? [00:11:57] Speaker 01: How do you figure that out? [00:11:58] Speaker 01: They went back to the Fed Circuit decision in the Qualcomm park revision case, and they said, [00:12:03] Speaker 01: Fed Circuit said, transferring as much energy as possible to have a commercially viable system is proof that energy is distinguishable from noise. [00:12:11] Speaker 01: So now the issue became commercially viable. [00:12:14] Speaker 01: So now the piece that says, well, what's commercially viable? [00:12:17] Speaker 01: But there is, again, no evidence. [00:12:20] Speaker 01: TCL knew about this commercial viability issue. [00:12:23] Speaker 01: They did not have their expert applying on it at all. [00:12:26] Speaker 01: It's telling. [00:12:26] Speaker 01: They have an expert, probably spends hundreds of dollars an hour, and they could not get an expert to just say that it was a commercially viable system, and to say that what was in Lamb and Ends was a commercially viable system. [00:12:38] Speaker 01: They couldn't get an expert to do that. [00:12:40] Speaker 01: They had an opportunity and they didn't do it, which is telling. [00:12:43] Speaker 01: And so all that was on the record was what Dr. Steer said about non-negligible amounts of energy, what Dr. Steer said was unrebutted, what he said was they didn't question his credibility, they just ignored it. [00:12:54] Speaker 01: So how did they get to a result? [00:12:56] Speaker 01: What they did is they backfilled. [00:12:58] Speaker 01: They said, okay, [00:13:00] Speaker 01: Well, LAM and ENDS, or in particular LAM, talks about mobile handheld device. [00:13:06] Speaker 01: So it's enabled. [00:13:07] Speaker 01: So they had a backfill. [00:13:08] Speaker 01: There's no evidence. [00:13:09] Speaker 01: There's no evidence from the other side to say it's commercially viable system. [00:13:14] Speaker 01: So they're like, OK, we're going to backfill. [00:13:15] Speaker 01: So how do we get to the result? [00:13:17] Speaker 01: What do we say? [00:13:18] Speaker 01: It's enabled. [00:13:20] Speaker 01: LAM is enabled. [00:13:21] Speaker 01: And it talks in the background section, mind you, which the board did not say. [00:13:25] Speaker 01: Lamb talks about how the background of the invention is in the mobile space. [00:13:31] Speaker 01: And then Lamb talks. [00:13:32] Speaker 01: So it's aspirational. [00:13:34] Speaker 01: This is where our invention kind of lives. [00:13:36] Speaker 01: And they said, merely because of that, because the background section talked about a mobile device and patents are presumed to be enabled. [00:13:44] Speaker 01: All of a sudden, now the patents are presumed to be enabled. [00:13:47] Speaker 01: That equals to commercially viable. [00:13:49] Speaker 01: And there's no case law that I'm aware of ever that says that something is enabled means it equals, that means it's a commercially viable system. [00:13:59] Speaker 01: They should have had evidence on it. [00:14:00] Speaker 01: TCL should have presented evidence on it. [00:14:02] Speaker 01: And they didn't present evidence. [00:14:04] Speaker 01: And they had all the opportunity in the world. [00:14:05] Speaker 01: And the board had nothing to rely on. [00:14:07] Speaker 01: So what did the board do? [00:14:08] Speaker 01: They came up with, well, patents are presumed enabled. [00:14:11] Speaker 01: And therefore, we're going to backfill it with this enablement argument. [00:14:16] Speaker 01: And there's no case law that says you could say, [00:14:19] Speaker 01: Just because it says a mobile device in the background section, enablement just means it can downconvert, that LAM and ENDS can downconvert. [00:14:28] Speaker 01: But it doesn't mean that all of a sudden it's this commercially viable system. [00:14:31] Speaker 01: LAM and ENDS could be a test system. [00:14:32] Speaker 01: There's no evidence it's a test system, it's a real system. [00:14:36] Speaker 01: It's enabled from the point of view of downconversion. [00:14:40] Speaker 01: OK, I'll reserve my time. [00:15:03] Speaker 00: still cry, please proceed. [00:15:06] Speaker 04: Good morning, Your Honors. [00:15:07] Speaker 04: Christopher Reed on behalf of the appellate petitioners, the employees of the court. [00:15:14] Speaker 04: Let me just touch on one thing briefly. [00:15:16] Speaker 04: Claim three is cancelled. [00:15:18] Speaker 04: There's a final decision by this court. [00:15:20] Speaker 04: The claim three has been cancelled. [00:15:22] Speaker 04: There was no cert petition, nothing filed to keep that claim three alive. [00:15:25] Speaker 04: So I don't fully understand counsel's argument. [00:15:28] Speaker 04: as to why claim three somehow could be still viable. [00:15:31] Speaker 04: But for our purposes, claim three is canceled and the arguments regarding claim three. [00:15:36] Speaker 03: I realize this is not where the action in the case. [00:15:39] Speaker 03: I thought I don't have the statute in front of me in 318 or 319. [00:15:43] Speaker 03: The cancellation is a separate ministerial act of the director that takes place sometime after proceedings are complete where the proceedings result in a determination of unpatentability. [00:15:55] Speaker 03: That's what I meant by [00:15:57] Speaker 03: cancellation, that ministerial act that erases the claim from the books. [00:16:03] Speaker 03: Is that what you were referring to? [00:16:05] Speaker 03: And I thought, my general understanding, not based on much, is that the director does that, I don't know, twice a year or something, collects everything that needs to be canceled and cancels it. [00:16:16] Speaker 04: I was using the term cancel in terms of the board's decision, finally. [00:16:20] Speaker 04: Oh, OK, OK. [00:16:20] Speaker 04: So no, just to briefly answer your question. [00:16:27] Speaker 04: Turning to claim construction, as counsel said in arguing claim construction needs to be re-argued here. [00:16:33] Speaker 04: So I'll turn first to the alleged APA violation with respect to the reply brief. [00:16:41] Speaker 04: And Judge Shen, as you suggested, the Parker-Vision versus Vidal case addressed the same situation. [00:16:50] Speaker 04: The attempted distinctions are just non-material. [00:16:54] Speaker 04: And in particular, like in the [00:16:58] Speaker 04: Parker did inverse of a dog case. [00:17:00] Speaker 04: Our reply arguments responded to a construction that was first offered in this proceeding in their patent owner responses. [00:17:08] Speaker 02: I guess the patent owner is raising a potentially interesting question, which is, if there's something foreseeable that the petitioner could see that it needs to address in the petition, but then doesn't, [00:17:27] Speaker 02: then have they given up the right to make that argument at a later point in time in the proceeding? [00:17:34] Speaker 02: And here, what I'm being told is the fact that there was some kind of markman order in a district court proceeding that gave a very particular claim construction, the very claim construction that the patent owner proposed in its patent owner response. [00:17:55] Speaker 02: And there's no argument that you were not aware of that market order. [00:17:58] Speaker 02: In fact, you, for other reasons, cited and relied on that market order in your own petition. [00:18:05] Speaker 02: So then the question becomes, is that a situation where it was entirely foreseeable that you needed to address that adverse claim construction in your petition, but you didn't? [00:18:19] Speaker 04: To answer that question, the board actually looked at this question [00:18:23] Speaker 04: denying their motion to strike, our reply arguments. [00:18:26] Speaker 04: And the board found that it was not foreseeable and not a reasonable expectation for us to guess which of the myriad positions the Parker Division had asserted previously was going to be asserted in this particular IPR proceeding. [00:18:40] Speaker 04: And in particular, this claim construction order we're referring to was not from the underlying litigation behind this IPR. [00:18:47] Speaker 04: It was from the Intel case. [00:18:49] Speaker 04: It was not from our case. [00:18:51] Speaker 04: And in our case, in the complaints, this was acknowledged by the board, in the complaint, they did not assert that that was the proper way of reading storage elements. [00:19:00] Speaker 04: The complaint simply said, storage element, e.g., a capacitor. [00:19:06] Speaker 04: And that is the approach we used in filing our petition. [00:19:12] Speaker 04: We used the implicit definition that they have provided in the complaint in this matter. [00:19:18] Speaker 04: And the board acknowledged that. [00:19:19] Speaker 02: But you were aware of the Markman order that was in a different litigation, right? [00:19:25] Speaker 02: At the time of your petition. [00:19:26] Speaker 02: That's correct. [00:19:27] Speaker 02: And in fact, you were using pieces of it in your petition. [00:19:30] Speaker 04: It is referenced in the petition. [00:19:32] Speaker 04: That's right. [00:19:32] Speaker 04: Not on this issue, but yes. [00:19:35] Speaker 02: So then the question is, well, why didn't you address the pieces of the Markman order that were unfavorable to you in your petition? [00:19:48] Speaker 04: We didn't address because, based on what we had at the time, that was not the position they were taking in the litigation that preceded this particular IPR proceeding. [00:19:58] Speaker 04: Again, that's what the board held in denying their motion to strike. [00:20:04] Speaker 04: This is found in appendix 5012. [00:20:06] Speaker 04: It said that our position on determining the petition, the storage elements can simply be capacitors, is quote, [00:20:13] Speaker 04: substantially the same as Parker Vision's assertion as storage elements in the underlying district court complaint. [00:20:21] Speaker 04: So for that reason, the board said it wasn't incumbent on us to guess that they were going to assert a different position other than what they put in their complaint in our petition. [00:20:35] Speaker 02: What if it was in the same litigation? [00:20:38] Speaker 02: What if the Markman was in the underlying litigation against you? [00:20:44] Speaker 02: Would you, do you feel like you would have needed to address it in your petition? [00:20:49] Speaker 04: It would have been a more compelling case to address it in our petition. [00:20:53] Speaker 04: Now, to be clear, the construction that we use in our apply brief is not the same construction that they assert in their patent owner response. [00:21:05] Speaker 04: So we disagree with the construction in their patent owner response. [00:21:08] Speaker 04: And we disagree with the construction by the district court. [00:21:11] Speaker 04: So no point that we ever said that is the correct construction. [00:21:14] Speaker 04: And this court and the board disagreed with that construction in the Parker-Vision v. Vidal case. [00:21:19] Speaker 04: So that is not the proper construction. [00:21:21] Speaker 04: We responded to the construction they raised in their patented response, just like in the Intel matter. [00:21:27] Speaker 04: And we said it's wrong. [00:21:28] Speaker 04: We said the board got it right in its decision in the Intel case, which had already issued at that point. [00:21:33] Speaker 04: And then we applied that construction in our responsive arguments. [00:21:37] Speaker 04: And that is akin to what was described in both Axonics and the Parker-Vision v. Vidal case. [00:21:43] Speaker 04: We were simply responding to arguments raised in the patent owner response. [00:21:46] Speaker 04: And for that reason, the board denied their motion to compel and did not abuse its discretion in doing so. [00:21:54] Speaker 04: Turning to the second argument made by counsel that there's no evidence in this case to support a finding that the lamb or lamb plus ants [00:22:12] Speaker 04: discloses the claim of storage element. [00:22:14] Speaker 04: His argument today assumed something that's not correct with respect to what was required in the Parker revision versus Qualcomm case. [00:22:22] Speaker 04: As Your Honor indicated, we relied, yes, on Mr. Sorrell's position in the Parker revision versus Qualcomm case, which made its way into the holding, that to determine whether there's non-negligible energy, you look to whether the system, the receiver, successfully down converts. [00:22:40] Speaker 04: And we relied on that [00:22:42] Speaker 04: definition. [00:22:42] Speaker 04: Well, what he has read into in his argument today is he has added into that approach this idea of commercial viability. [00:22:51] Speaker 04: And that's exactly what they did below. [00:22:53] Speaker 04: Instead of taking the holding of Qualcomm versus, excuse me, of Park Region versus Qualcomm on its face, what it says, they instead interpreted or tried to reinterpret it to say that successfully down converts actually means, and I quote here from the Blue Bridge Fest 69, [00:23:12] Speaker 04: Successfully down converts actually means it must meet certain specifications and telecommunication standards so that the system is commercially viable. [00:23:21] Speaker 04: And that's exactly what we heard argued here today. [00:23:23] Speaker 04: And there's no reason for the court to rewrite the Qualcomm holding in this way. [00:23:28] Speaker 04: Successfully down converts means exactly that. [00:23:31] Speaker 04: The receiver successfully down converts to recover the baseband signal from the carrier signal. [00:23:37] Speaker 03: And so putting aside this commercially viable business, what was your evidence that there was success in down converting? [00:23:50] Speaker 04: First, as found by the board at Appendix 64, the disclosure of LAM itself provides evidence that the identified capacitors constitute claimed storage elements. [00:24:01] Speaker 04: And in particular, the board noted that LAM discloses receivers [00:24:06] Speaker 04: that are high-speed receivers from narrow-band communication systems that are used in mobile handheld communication systems. [00:24:12] Speaker 04: That's at appendix 64, and it's citing appendix 2144, the LAM patent, at column 1, lines 6 and 7, and 19 through 25. [00:24:25] Speaker 04: Further, LAM discloses at appendix 2146, this is column 5, lines 50 through 60, that, quote, the receiver illustrated in figure 3, in accordance with the present invention, [00:24:36] Speaker 04: down converts the incoming RF signal into baseband components. [00:24:40] Speaker 04: That's exactly what's called for in the Parker Division versus Qualcomm decision. [00:24:45] Speaker 03: What page in the appendix? [00:24:46] Speaker 04: This is appendix 2146. [00:24:48] Speaker 03: Is this something the board found, or you're just looking at the underlying source? [00:24:56] Speaker 04: The board did include that in describing the party's arguments, yes. [00:25:01] Speaker 04: And with respect to the [00:25:05] Speaker 04: Again, this is column 5, lines 50 to 60. [00:25:07] Speaker 04: This is almost verbatim saying what Qualcomm says is required for showing non-negligibility. [00:25:13] Speaker 04: That the receiver, in accordance with the present invention, the present invention of an enabled US patent, down converts the incoming RF signal into baseband components. [00:25:24] Speaker 04: That is a successful down conversion. [00:25:26] Speaker 04: That demonstrates that there's non-negligible energy being transferred. [00:25:33] Speaker 04: That shows, so there is evidence in the record, substantial evidence of that being disclosed in LAM. [00:25:40] Speaker 04: Second, the board at appendix 58 through 59 and indirectly at appendix 64 relied on Dr. Shoemake's expert testimony that LAM teaches sampling circuits using sample and hold capacitors that both alone and in combination with them result in down conversion [00:26:01] Speaker 04: of the I and Q baseband signals. [00:26:03] Speaker 04: And in particular, the board directly cited to paragraphs 120 and 121 of Dr. Shoemake's testimony regarding the capacitors taught in LAM for down-converting an RF input signal. [00:26:16] Speaker 04: And that's at appendix 58 through 59 again. [00:26:19] Speaker 04: Further, the board indirectly cites Dr. Shoemake's testimony via citations to the petition and the reply brief, which of course then in turn cite Dr. Shoemake's testimony. [00:26:29] Speaker 04: For example, [00:26:30] Speaker 04: In the board's order at Appendix 64, it cites pages 17 through 19 of the reply brief below for the proposition that, quote, Lamb functions in practice and successfully down converts. [00:26:44] Speaker 04: Now those pages of our reply are found in Appendix 4529, and they expressly rely on paragraphs 102 through 104 of Dr. Shoemake's testimony in support of the same proposition. [00:26:55] Speaker 04: So given this presumption of enablement and given the disclosure of Lamb and given [00:27:00] Speaker 04: the reference to expert testimony, there is substantial evidence in the record that Lamb discloses the storage elements in view of the discussion of Park Division versus Qualcomm. [00:27:14] Speaker 04: Unless the Court has further questions, I'll conclude my argument. [00:27:19] Speaker 04: Thank you. [00:27:29] Speaker 00: We have to use that all the time. [00:27:31] Speaker 00: Well, we still have two minutes of rebuttal. [00:27:33] Speaker 01: Oh, thank you very much. [00:27:34] Speaker 01: OK, if I may? [00:27:36] Speaker 01: OK, so I'll work backwards from what he said. [00:27:38] Speaker 01: He just pointed you to a whole bunch of things in the record. [00:27:41] Speaker 01: None of them talks about non-mintageable amounts of energy, not one of them. [00:27:44] Speaker 01: So you asked, where is this evidence? [00:27:46] Speaker 01: There is no evidence. [00:27:47] Speaker 01: That's why the court had a backfill. [00:27:48] Speaker 01: That's why the board had a backfill and used this concept of enablement, which, by the way, is inherency. [00:27:55] Speaker 01: And they haven't met the, and we put that in our brief too, they haven't met the elements of inherency. [00:28:00] Speaker 02: That was in your gray brief. [00:28:00] Speaker 01: In our gray brief, I believe, yeah. [00:28:03] Speaker 01: Not your blue brief. [00:28:04] Speaker 01: I don't think it was in the blue brief. [00:28:05] Speaker 01: I don't recall. [00:28:06] Speaker 01: But the one thing I want to point to in terms... So he didn't address any of your question. [00:28:12] Speaker 01: He just pointed to a whole bunch of other stuff that had nothing to do with that. [00:28:15] Speaker 01: in terms of, going back to Judge Chen, your issue about foreseeability. [00:28:20] Speaker 01: They knew. [00:28:21] Speaker 01: It was stapled to their petition, and they knew that this construction was relevant. [00:28:27] Speaker 01: It was foreseeable. [00:28:28] Speaker 01: It's a common thread through all park revision cases. [00:28:31] Speaker 01: Every park revision cases, we talk about non-negligible amounts of energy. [00:28:35] Speaker 01: That's always what we talk about. [00:28:36] Speaker 01: That's part of the crux of the invention. [00:28:40] Speaker 01: And so they completely knew about it. [00:28:42] Speaker 01: And once they knew about it, [00:28:44] Speaker 01: They had the burden at the onset to address that issue and address this non-negligible amount of energy issue. [00:28:51] Speaker 01: And they failed to do so. [00:28:52] Speaker 01: They failed to do so. [00:28:53] Speaker 01: And even when they had the opportunity to do so, in the reply brief, they couldn't get a paid expert to contradict what Dr. Steer said. [00:29:01] Speaker 01: They couldn't get anybody to say, [00:29:03] Speaker 01: Yes, we're correct. [00:29:05] Speaker 01: And Dr. Steer is wrong. [00:29:06] Speaker 01: And by the way, it's commercially viable. [00:29:09] Speaker 01: It's a commercially viable system, laminins. [00:29:11] Speaker 01: And by the way, it discloses non-negative amounts of energy. [00:29:14] Speaker 01: And Steer got it wrong. [00:29:15] Speaker 01: They couldn't even do that. [00:29:16] Speaker 01: And in terms of the timing, their petition was filed, I believe, nine days after we first introduced in the earlier case the concept of all our calculations, which ultimately were struck. [00:29:29] Speaker 01: So there was a nine-day period in there. [00:29:33] Speaker 01: 26th of our grade brief disclosed the timing of when they should have known, when they had knowledge of things. [00:29:43] Speaker 01: So Judge Chen, as you said, completely foreseeable. [00:29:46] Speaker 01: They should have addressed it. [00:29:47] Speaker 01: This is nothing like what was going on in the previous case. [00:29:50] Speaker 01: They didn't address it. [00:29:51] Speaker 01: And there's no evidence whatsoever. [00:29:53] Speaker 01: Anything he just talked about, there is no evidence in that about non-negligible amounts of energy. [00:29:58] Speaker 01: And that's why the court, the board, when they were making their decision, they had to backfill. [00:30:02] Speaker 01: They had to come up with something else to get to the result they wanted, which was ultimately invalidated. [00:30:07] Speaker 01: They couldn't point to anything in the record because there wasn't. [00:30:09] Speaker 01: It was only Dr. Steer, unrebutted testimony, completely unrebutted, credibility not questioned. [00:30:16] Speaker 01: And they had the burden, and they failed to meet that burden. [00:30:19] Speaker 01: And that's all. [00:30:20] Speaker 01: Thank you. [00:30:21] Speaker 01: Cases submitted.