[00:00:01] Speaker 03: Our next case is number 23-1336, San Ho Corporation versus Kite Technology. [00:01:07] Speaker 03: Okay, Mr. Ludwig. [00:01:27] Speaker 04: Good morning. [00:01:29] Speaker 04: May I please the court? [00:01:30] Speaker 04: This case involves important matters of statutory interpretation regarding Section 102B2B, [00:01:38] Speaker 04: prior to which this court has not addressed and which the board in the below proceedings did not address either. [00:01:45] Speaker 04: These issues include, first, what does it mean to publicly disclose subject matter under Section 102B2B, particularly where the disclosure is not a publication? [00:01:57] Speaker 04: And second, if an inventor has made a Section 102B2B disclosure that overlaps with but is not identical to a later prior art disclosure, [00:02:08] Speaker 04: How is that overlapping subject matter defined such that an orderly and validity analysis of the remaining subject matter can follow? [00:02:18] Speaker 04: Appelli also argues. [00:02:20] Speaker 03: I confess to being confused about what the facts are here. [00:02:24] Speaker 03: And you suggest you offer two different interpretations of Kuo as involving a single chipset or a multiple [00:02:38] Speaker 03: chipset embodiment. [00:02:41] Speaker 03: And you seem to be suggesting that the hyperdrive shows a single chipset DTCM under that interpretation of CUO, which is a single chipset embodiment. [00:03:02] Speaker 03: And you say that on page 30 of your reply brief. [00:03:05] Speaker 03: But I don't see any support for that. [00:03:08] Speaker 03: Where is the support for the fact that the hyperdrive shows a signal chipset embodiment? [00:03:18] Speaker 04: Your Honor, in the below proceedings, the appellant provided images of the circuit board of the hyperdrive. [00:03:26] Speaker 03: Tell me where's the evidence. [00:03:32] Speaker 04: Your Honor, the evidence that the SLI chipset constitutes a DTCM was not rebutted in the below proceedings. [00:03:44] Speaker 03: No, no, no. [00:03:45] Speaker 03: That's not the question. [00:03:46] Speaker 03: We're dealing with a difference between a single chipset and DTCM and a multiple chipset DTCM. [00:03:55] Speaker 03: And my question is, assuming [00:03:59] Speaker 03: that COO is a single chipset DTCM. [00:04:03] Speaker 03: Where is the evidence that the hyperdrive includes a single chipset DTCM? [00:04:12] Speaker 03: We need to make these sweeping statements, and there's no support for it. [00:04:19] Speaker 04: Your Honor, the evidence submitted at the board included sworn declarations. [00:04:26] Speaker 03: Give me a page. [00:04:27] Speaker 03: Where is there evidence that the hyperdrive includes a single chip set? [00:04:39] Speaker 00: Are you thinking about the declarations that were provided? [00:04:43] Speaker 04: Yes. [00:04:44] Speaker 00: If you look at page A-6090, there's a picture there. [00:04:48] Speaker 00: But it doesn't look like a single chip to me. [00:05:07] Speaker 00: I'm sorry, did you say 6090? [00:05:15] Speaker 00: Yes. [00:05:16] Speaker 00: Is this the figure you would be thinking of? [00:05:22] Speaker 04: No, Your Honor, that is not the figure. [00:05:26] Speaker 03: What supports this argument that you make on that page of the reply brief? [00:05:31] Speaker 03: There's no site there. [00:05:36] Speaker 03: Your honor Indisputably doesn't cut it. [00:05:42] Speaker 03: That's not enough. [00:05:44] Speaker 03: Where's the evidence? [00:05:46] Speaker 04: I believe the evidence is presented in the opening brief your honor Our opening brief for example on page 10 of our opening brief Appellants identified the chip with a green box [00:06:02] Speaker 04: that corresponds to... Show me where in the appendix is the evidence that the hyperglia single chipset and body. [00:06:12] Speaker 04: That page corresponds to appendix 745, sorry, 754. [00:06:17] Speaker 04: 754. [00:06:32] Speaker 03: OK. [00:06:34] Speaker 02: Pointed at the same thing. [00:06:39] Speaker 02: Of course, the same green box as on page 10, right? [00:06:43] Speaker 02: Just another photograph. [00:06:44] Speaker 00: And what is this? [00:06:45] Speaker 00: It says right on it, A754 says, demonstrative exhibit, dash not evidence. [00:06:52] Speaker 00: How can you say that's the evidence? [00:06:54] Speaker 04: That's the evidence that was cited in that portion of the open brief. [00:06:58] Speaker 03: Well, that doesn't make it evidence. [00:07:01] Speaker 00: On the other hand, at the page that I cited to you, which is A6090, I think it's your inventor's declaration. [00:07:11] Speaker 00: And there, the Thunderbolt 3 USB-C is identified as the DTCM with a defined boundary that is distinct from other modules of the device. [00:07:24] Speaker 00: And it includes lots of stuff, not a single chip. [00:07:32] Speaker 04: Your Honor, the image on page 6090 identifies the various port units. [00:07:43] Speaker 04: The DTCM, depending on how it's interpreted, is the chipset or multiple chipsets on the circuit board. [00:07:55] Speaker 03: us to look at a photograph and interpret it, where's your expert testimony that that shows a single chipset? [00:08:05] Speaker 03: And that that's the hyperdrive. [00:08:11] Speaker 03: I mean, you can't come here and make statements like it's indisputably the case, and you can't show any evidence to support it. [00:08:19] Speaker 00: Can I ask you a separate question? [00:08:21] Speaker 00: I mean, you did think about that one some more. [00:08:26] Speaker 00: why not, that if you had a prior public disclosure, is it required that it disclose the claimed invention? [00:08:37] Speaker 00: Or is it required that it disclose the intervening prior under the statute? [00:08:46] Speaker 04: Your Honor, our interpretation is that the statute requires the inventor disclosure to disclose the relevant aspect of the claimed invention. [00:08:57] Speaker 04: that the later prior art is then being used to disclose in the invalidity analysis. [00:09:03] Speaker 00: Does your claim require a single chip DTCM? [00:09:08] Speaker 04: The claims do not explicitly require a single chip DTCM. [00:09:15] Speaker 00: What did they require? [00:09:16] Speaker 00: Just that it be something that's distinct from the other modules of the device? [00:09:21] Speaker 04: Yes, Your Honor. [00:09:22] Speaker 04: And the claim was also construed to require a defined boundary. [00:09:28] Speaker 00: A defined boundary. [00:09:29] Speaker 00: A defined boundary. [00:09:29] Speaker 00: I guess that's kind of another way of saying that it's distinct from the other modules. [00:09:34] Speaker 04: Correct, Your Honor. [00:09:35] Speaker 04: Thank you. [00:09:38] Speaker 04: The parties seem to agree that a single chip would satisfy that requirement, but it's not necessarily limited to a single chip. [00:09:47] Speaker 04: In the district court proceedings, for example, there were disputes regarding whether a portion of a circuit board could be a DTCM as well, as is contemplated in certain of the 429 patents figures. [00:10:03] Speaker 00: Now, I clearly see that the board relied on whether [00:10:08] Speaker 00: the alleged public disclosure disclosed a single chip as required by code. [00:10:22] Speaker 00: But I don't see where you complained that that was an incorrect analysis in your briefing. [00:10:29] Speaker 04: Your honor, you're correct that the briefing focused on an interpretation that included a single chip in the [00:10:38] Speaker 04: in the hyperdrive. [00:10:39] Speaker 00: So there's kind of an assumption that we're going to just raise certain issues on appeal. [00:10:44] Speaker 00: And on this appeal, we're really just going to focus on whether a sale could be a public disclosure and the fact that the board didn't deal with that issue. [00:10:54] Speaker 00: Is that right? [00:10:57] Speaker 04: Correct, Your Honor, as well as how that sales disclosure maps on to [00:11:06] Speaker 04: the claims and unto quo as well. [00:11:22] Speaker 04: So regarding the issue of what constitutes a Section 102 B2B public disclosure, this matter of statutory interpretation should be settled by reference to the language of Section 102 [00:11:36] Speaker 04: and the case law interpreting the meaning of the term public in pre-AIA Section 102. [00:11:44] Speaker 03: Why? [00:11:47] Speaker 03: The two provisions have entirely different purposes. [00:11:53] Speaker 04: There is precedent for applying the language of a prior version of the statute to the later version. [00:12:02] Speaker 03: That's not the question. [00:12:03] Speaker 03: There's a new provision in the statute here. [00:12:05] Speaker 03: And it has an entirely different purpose than the on-sale bar did, which is to say that the patent owner can avoid prior art by showing that he or she publicly disclosed the invention or the relevant part of the invention before the prior art. [00:12:31] Speaker 03: That's an entirely different purpose. [00:12:34] Speaker 03: The idea is that the patent owner made this available to the public, which is quite a different inquiry than the whole on-sale bar inquiry. [00:12:47] Speaker 04: Respectfully, Your Honor, I agree that the purpose of the statute is different, but it still uses the same language. [00:12:57] Speaker 00: It doesn't, actually, does it? [00:12:59] Speaker 00: I mean, 102A says, [00:13:01] Speaker 00: a whole list of things, doesn't it? [00:13:05] Speaker 00: I mean, 102A says, the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public. [00:13:14] Speaker 00: And the on sale has been interpreted by the Supreme Court, right? [00:13:18] Speaker 04: Yes, Your Honor. [00:13:19] Speaker 00: And then here, we've got a different provision. [00:13:21] Speaker 00: And it says, has been publicly disclosed by the inventor, right? [00:13:28] Speaker 00: They're a different language. [00:13:30] Speaker 00: I mean, I understand there's some legislative history that says the intent was, at least, to have these two things be the same. [00:13:37] Speaker 00: But ultimately, what came out in the statute, which is the controlling thing, is different language. [00:13:42] Speaker 00: So how do you deal with that, with your argument today? [00:13:48] Speaker 04: Your Honor, the language public disclosure, or publicly disclosed in Section 102B2B, in appellant's view, is an attempt to reference [00:14:01] Speaker 04: what would be prior art if it were disclosed by a third party, for example. [00:14:09] Speaker 04: The inventor's disclosure is not prior art. [00:14:14] Speaker 04: So the statute does not refer to prior art. [00:14:20] Speaker 04: It just leaves open the interpretation to all public disclosures. [00:14:27] Speaker 00: It does not answer the question of what a public disclosure is, which requires looking to- All right, so you're suggesting that somehow the words public disclosure is supposed to be interpreted as covering everything in 102A1. [00:14:42] Speaker 04: Yes, Your Honor. [00:14:43] Speaker 04: That is correct. [00:14:45] Speaker 04: Because the statute refers to Section 102A1 disclosures to nullify them. [00:15:00] Speaker 02: Well, where does this get you? [00:15:01] Speaker 02: This gets you, doesn't it, to say that any sale qualifies as a public disclosure, right? [00:15:08] Speaker 04: Your Honor, not any sale constitutes a public disclosure. [00:15:14] Speaker 02: Any sale would. [00:15:15] Speaker 02: Isn't that what we're talking about? [00:15:16] Speaker 02: Here, the event that you're claiming was the public disclosure that's going to allow you to neuter, hopefully, part of this prior reference was a sale. [00:15:28] Speaker 04: Yes, Your Honor, it was a sale. [00:15:29] Speaker 02: Importantly, it was a public sale because it was- Well, I think your argument is that a Heisen sale qualifies. [00:15:36] Speaker 04: Excuse me? [00:15:37] Speaker 02: A sale, a single sale privately to one person not otherwise publicized in any way whatsoever. [00:15:50] Speaker 04: Your Honor, respectfully, it would not apply to a private sale. [00:15:54] Speaker 04: This was a public sale in the sense that [00:15:57] Speaker 04: There were no confidentiality expectations associated with sale. [00:16:00] Speaker 02: But not in any other respect was it public. [00:16:04] Speaker 02: It was an individual. [00:16:05] Speaker 03: It could have been made public, but it wasn't. [00:16:12] Speaker 04: Your Honor, the sale was, in effect, made public through the use of the Kickstarter website. [00:16:19] Speaker 04: The recipient of that sale, Mr. Chin, [00:16:23] Speaker 04: published on the Kickstarter website prior to Quo. [00:16:25] Speaker 03: Well, that's a different argument, and the board rejected that, right? [00:16:30] Speaker 04: The board rejected that the content that was posted to the Kickstarter website itself was an enabling disclosure of the hyperdrive. [00:16:43] Speaker 04: But the board did not address the issue that the disclosure on the Kickstarter website [00:16:53] Speaker 04: publicly disclosed the fact that the sale took place and showed the hyperdrive in operation. [00:17:00] Speaker 02: Is that in the record that you can point to as where the Kickstarter disclosure actually referenced the particular sale you're talking about? [00:17:10] Speaker 00: Didn't the board find that the Kickstarter campaign did not disclose all the elements of the invention? [00:17:19] Speaker 00: I mean, it didn't disclose all the elements of coal. [00:17:23] Speaker 04: Uh, yes, your honor. [00:17:24] Speaker 04: The board found that the specifically focusing on the images that were published on the Kickstarter website found that those images were not a sufficient resolution. [00:17:35] Speaker 00: So what does it matter? [00:17:36] Speaker 00: I mean, what I think you're saying is that there was a sale and the Kickstarter campaign was the public disclosure of the, of what was sold. [00:17:49] Speaker 00: Is that what you're saying? [00:17:52] Speaker 00: If the board already found that what was sold, what was described in the Kickstarter campaign, wasn't sufficient to satisfy the requirements of the statute, and you haven't appealed that, then how can you rely on it now? [00:18:08] Speaker 04: Your Honor, we are relying on the Kickstarter campaign as evidence of the non-confidentiality of the sale. [00:18:17] Speaker 04: Daniel Chin. [00:18:19] Speaker 02: Will you show me on the record where in the Kickstarter campaign there is reference to the specific sale that you're relying on under the statute? [00:18:29] Speaker 02: Your Honor, the... Do you understand my point? [00:18:30] Speaker 02: Yes. [00:18:31] Speaker 02: You said earlier that there was a disclosure by this gentleman in the Kickstarter campaign of the fact that he had made the purchase. [00:18:42] Speaker 02: You said that to me. [00:18:43] Speaker 04: Well, Your Honor, [00:18:45] Speaker 02: And I apologize if I misspoke, but the- Is there any evidence that this sale happened, we know that, a sale to the individual? [00:18:57] Speaker 02: Was there any publicity regarding that sale to anyone that's shown in the record? [00:19:05] Speaker 02: Your Honor, there- Yes or no? [00:19:11] Speaker 04: I'm not sure whether the- [00:19:14] Speaker 04: record shows that Daniel Chin said specifically that he purchased it from the inventor. [00:19:22] Speaker 03: What he did do in the... No, Judge Clavinter is asking you about whether the sale became public, the fact of the sale became public. [00:19:33] Speaker 03: Well, Daniel... You understand that question? [00:19:37] Speaker 02: If I understand you correctly... I sell something to you, right? [00:19:40] Speaker 02: We go out in the corner there and nobody else sees it, and I sell you my book. [00:19:46] Speaker 02: Right? [00:19:47] Speaker 02: Is that sale public? [00:19:50] Speaker 02: Yes or no? [00:19:53] Speaker 04: The sale, Your Honor, would be public if I, selling you the book, did not expect for you to keep that sale private. [00:20:06] Speaker 04: That there is no confidentiality involved. [00:20:09] Speaker 02: Is there any other evidence? [00:20:11] Speaker 02: Your Honor, well, the analogy- I sell the book to you, and I say, no restrictions on what you do with this. [00:20:17] Speaker 02: You can go ahead and make it public if you want to. [00:20:19] Speaker 04: Yes. [00:20:20] Speaker 02: But you don't. [00:20:23] Speaker 04: Respectfully, Your Honor, in this case, by analogy, I would have made the book public, even though if I'm answering, if I'm understanding your question correctly. [00:20:36] Speaker 04: So Daniel Chin, he received the hyperdrive [00:20:39] Speaker 04: He published information about the hyperdrive. [00:20:42] Speaker 02: I don't believe he said. [00:20:43] Speaker 02: I want to hear it up all the time. [00:20:44] Speaker 02: My understanding of your argument to us is that a sale to qualify as a public disclosure under this statute needs to be a sale in which there is no restriction on anybody making it public. [00:20:56] Speaker 02: There's no restrictions on him. [00:20:58] Speaker 02: So long as he isn't restricted, it's one sale. [00:21:01] Speaker 02: Nobody in the else world knows anything about it. [00:21:03] Speaker 02: It's public. [00:21:04] Speaker 02: That's your position? [00:21:05] Speaker 04: Correct, Your Honor, and that comes from the expert, B. Lipton. [00:21:08] Speaker 00: Is there any evidence about what happened to the 14,000 products that were part of the sale? [00:21:16] Speaker 00: On the record. [00:21:18] Speaker 04: The 14,000? [00:21:19] Speaker 00: I think there were 14,000 devices, hyperdrives, right? [00:21:23] Speaker 04: Yes, Your Honor. [00:21:24] Speaker 00: No evidence about how they were used, who they were given to, nothing, right? [00:21:30] Speaker 04: Your Honor, well, the hyperdrive products [00:21:35] Speaker 04: I know we're eventually sold into the general market. [00:21:39] Speaker 03: Is that in the record? [00:21:42] Speaker 00: Yeah. [00:21:42] Speaker 00: Can I ask what the record evidence was? [00:21:44] Speaker 00: That's all. [00:21:45] Speaker 00: I don't see any. [00:21:46] Speaker 00: I'm not aware of anything at all in the record that talks about the 14,000 products and what happened to them. [00:21:55] Speaker 04: Your Honor, I don't believe that the record says. [00:21:57] Speaker 00: Because I can imagine circumstances where, say, maybe they were sold to others [00:22:02] Speaker 00: Maybe they were used by 14,000 people. [00:22:05] Speaker 00: I just don't know, but there's nothing in the record. [00:22:10] Speaker 00: I have another question for you, which is when we talk about whether a sale publicly disclosed the invention. [00:22:21] Speaker 00: Does that mean that there has to be disclosure of the invention, or is it a public disclosure of a sale, hey, this product was sold, or is it public disclosure of the contours of what exactly the invention is, along with the sale? [00:22:38] Speaker 04: Your Honor, I believe that the statute requires a public disclosure of the relevant portion of the invention. [00:22:46] Speaker ?: Okay. [00:22:47] Speaker ?: Thank you. [00:22:47] Speaker 03: Okay, we're out of time. [00:22:50] Speaker 03: We'll give you a minute. [00:23:06] Speaker 01: Good morning, Your Honors. [00:23:08] Speaker 01: Appellee Kijet finds itself in an unusual position. [00:23:23] Speaker 01: After the briefing was complete in this case, Kijet and Appellant Sanhoe came to an agreement [00:23:29] Speaker 01: whereby San Ho gave Kai Jet a covenant not to sue on the 429 patent in order to dismiss all the claims related to the 429 patent from the district court litigation, which was stayed pending the outcome of this appeal. [00:23:42] Speaker 01: Because of that, Kai Jet no longer has any commercial interest in the validity of this patent. [00:23:49] Speaker 01: I am prepared to answer any questions related to the brief. [00:23:53] Speaker 01: We still stand by our brief, but are not aggressively advocating for them. [00:23:59] Speaker 01: regarding the validity of this patent. [00:24:06] Speaker 01: Or any other information, if the court would like me to promote it. [00:24:09] Speaker 01: I need to settle that, right? [00:24:11] Speaker 01: Yes, with respect to... I have no interest. [00:24:18] Speaker 00: Yes. [00:24:21] Speaker 00: What is your view of what publicly disclosed means in the statute? [00:24:26] Speaker 01: I think that there was a concurring opinion from this court on von Konheisen that described it very eloquently that they wouldn't need to say publicly disclosed if everything in 102A was a public disclosure. [00:24:47] Speaker 01: That would have been a redundant statement. [00:24:49] Speaker 01: They could have phrased it as anything in 102A done by the inventor would [00:24:56] Speaker 01: be enough to knock out a piece of prior art. [00:24:59] Speaker 01: But that's not what they said. [00:25:00] Speaker 01: They said publicly disclosed. [00:25:02] Speaker 01: The legislative history contemplated something akin to publication under pre-AIA 102 with the idea that they didn't want to limit it to printed publications in our digital age, but still have sort of the same requirement that [00:25:23] Speaker 01: it be presented in a way that a person of ordinary skill in the art would have had an opportunity to access it. [00:25:30] Speaker 03: If you settled what you did, I thought there was a requirement notifying the PTO so they could intervene. [00:25:36] Speaker 03: Isn't that correct? [00:25:38] Speaker 01: So the issue is that the case entirely did not settle. [00:25:45] Speaker 01: We came to an agreement and amended our complaints [00:25:53] Speaker 01: our complaints and our counterclaims to remove this case, if there was a requirement under those. [00:25:58] Speaker 01: These were very unusual circumstances. [00:26:00] Speaker 02: Was there anything in the settlement agreement about your continued participation in this case? [00:26:05] Speaker 01: No, there was actually no settlement agreement. [00:26:10] Speaker 01: There was no settlement agreement. [00:26:12] Speaker 01: The appellant gave us a unilateral covenant not to sue, which [00:26:21] Speaker 01: We had declaratory judgment actions related to the 429 patent. [00:26:24] Speaker 00: Did you agree that you were going to come here in court and not present a strong defense? [00:26:30] Speaker 00: Why are you getting up before the court and saying, oh, we've resolved things, so I'm just here to answer questions? [00:26:35] Speaker 01: So we actually tried to waive our oral argument and were ordered to appear. [00:26:40] Speaker 03: But what about my question? [00:26:42] Speaker 03: Why isn't the PTL here to defend the decision? [00:26:46] Speaker 01: I do not know. [00:26:47] Speaker 03: But were they notified? [00:26:49] Speaker 03: Is there an obligation to notify them? [00:26:51] Speaker 01: Not that I'm aware of. [00:26:54] Speaker 03: Because my experience in all these cases where there's a settlement or the one party no longer where the petitioner no longer has an interest that the PTO is notified, they intervene and they defend the board's decision. [00:27:09] Speaker 03: That didn't seem to happen here. [00:27:11] Speaker 03: Maybe because it happened. [00:27:15] Speaker 02: If you had settled the case entirely, would you have been obligated to notify the PTO? [00:27:21] Speaker 01: I believe that would have triggered certain obligations. [00:27:25] Speaker 01: We poured over the rules to try and find specifically what to do in this sort of unusual circumstance, whether or not we needed to withdraw our appeal, what happened to the IPR, and did not, I think because this is not the way [00:27:44] Speaker 01: Things usually happen. [00:27:46] Speaker 02: What happened when the IPR was dismissed? [00:27:49] Speaker 01: No. [00:27:49] Speaker 01: I think the IPR, as far as I understand the procedures, the IPR is complete and now is up on appeal. [00:27:59] Speaker 01: And if you were manned it back, then the IPR is now active again, and we'd have to figure out what happens in that circumstance. [00:28:08] Speaker 01: But my understanding is from the PTO standpoint, the IPR is closed. [00:28:12] Speaker 00: So can I ask you the same question that I asked? [00:28:15] Speaker 00: Yes. [00:28:17] Speaker 00: I want to know, what is your view on what the public disclosure has to be of what? [00:28:23] Speaker 00: What subject matter are we talking about? [00:28:25] Speaker 00: Is it the public disclosure of the invention, the climate invention, the inventor's invention, since we are looking at the inventor's early disclosure? [00:28:33] Speaker 00: Right. [00:28:34] Speaker 00: Or is it public disclosure of what is in the intervening prior art? [00:28:38] Speaker 01: It's the latter. [00:28:40] Speaker 01: And I think the fact that [00:28:41] Speaker 01: the statute uses two different terms to describe what needs to be disclosed. [00:28:47] Speaker 01: In 102A, they talk about the claimed invention. [00:28:51] Speaker 01: And in 102B, they talk about the subject matter of the disclosure. [00:28:59] Speaker 00: But the subject matter of the disclosure is the subject matter that anticipates or renders obvious the claims, right? [00:29:06] Speaker 01: Yes. [00:29:06] Speaker 01: And I think had the [00:29:10] Speaker 01: Disclosure of the hyperdrive been a disclosure of the claimed invention. [00:29:13] Speaker 01: This might have been a closer call. [00:29:16] Speaker 00: The problem is the board say that it wasn't a disclosure of the invention. [00:29:20] Speaker 00: I saw them say it wasn't a disclosure of a single chip, which is what Quo had. [00:29:25] Speaker 01: Right. [00:29:27] Speaker 01: So there were a couple of times that they looked at this as far as comparing the hyperdrive to the claims. [00:29:34] Speaker 01: The one was in the 102 B2B analysis. [00:29:38] Speaker 01: And the reason this single chip, multi-chip issue comes up is the way the claims are phrased [00:29:48] Speaker 01: It's a DTCM that has to connect to certain things. [00:29:52] Speaker 01: And so based on the module construction that it needs to be a distinct piece, the hyperdrive, and actually the Q's device, has a series of chips that all interconnect in different ways and connect to different ports, and it doesn't map the exact [00:30:13] Speaker 01: wording of the claim where it's a single thing that connects to. [00:30:18] Speaker 00: Where is that in the board's decision? [00:30:23] Speaker 01: Sure. [00:30:30] Speaker 01: So they discuss in talking about quo, when they do their description of quo. [00:30:51] Speaker 01: It's A0029. [00:30:59] Speaker 01: They talk about having the number 22, which is the control system, and it talks about the various things that it connects to. [00:31:09] Speaker 01: And then when you get into the analysis, it discusses how that shows [00:31:18] Speaker 01: a DTCM operably connected to the various forces. [00:31:22] Speaker 00: My question is more about, not about Quo, but about the hyperdrive. [00:31:25] Speaker 00: I thought you were saying, and maybe I misunderstood, but I thought you were saying the board held that the hyperdrive doesn't map to the coin. [00:31:34] Speaker 01: So it definitely holds that with respect to it discusses the objective indica of [00:31:43] Speaker 01: non-obviousness. [00:31:44] Speaker 01: And in that, it does explicitly say it doesn't map to the claims. [00:31:48] Speaker 01: That issue was focused on whether or not it has a main port module, which is the first element of the claim. [00:31:56] Speaker 01: And so they got there, and they stopped. [00:31:58] Speaker 01: They said it doesn't have a main port module, so it doesn't map. [00:32:00] Speaker 00: And so it's not a good compare. [00:32:03] Speaker 00: In its analysis, it looked at whether the hybrid drive disclosed the elements of 12, regardless of what's claimed. [00:32:10] Speaker 01: Right. [00:32:11] Speaker 03: The question is what? [00:32:12] Speaker 03: whether it disclosed the elements of quo that are being relied on as prior art for the obviousness analysis. [00:32:19] Speaker 01: Correct. [00:32:20] Speaker 01: And so the question is whether or not it showed not only the appellant was talking about it shows this VSI chip. [00:32:32] Speaker 01: And I know there's an issue over whether or not the record is clear on that. [00:32:37] Speaker 01: But regardless of whether or not it shows a single chip, [00:32:42] Speaker 01: fact that it's a single chip operably connected to the things that it needs to be operably connected to. [00:32:47] Speaker 00: Where does the board say that? [00:32:50] Speaker 00: That's the question I had before. [00:32:51] Speaker 01: Right. [00:32:53] Speaker 01: And I am... There's a section where it goes through the 102 [00:33:13] Speaker 01: B2B analysis where I believe it is discussed. [00:33:25] Speaker 01: Let's see. [00:33:41] Speaker 01: Section 2E. [00:33:47] Speaker 01: OK, so beginning on page A0039, they talk about, as you discussed before, they talk about the photos and whether or not the photos disclose the information, but I believe they [00:34:13] Speaker 01: And I think they do, in fact, stop there. [00:34:16] Speaker 00: They do not. [00:34:16] Speaker 00: They say it doesn't disclose a single chipset DTCM. [00:34:21] Speaker 00: Do you think these claims require a single chipset DTCM? [00:34:26] Speaker 01: They require a module with a distinct boundary that has the correct connections. [00:34:33] Speaker 00: That's right. [00:34:34] Speaker 00: But it doesn't say single chipset. [00:34:36] Speaker 01: It doesn't say single chipset. [00:34:37] Speaker 01: Theoretically, you could have, if you had a [00:34:41] Speaker 01: separate circuit board with a distinct boundary. [00:34:44] Speaker 01: You could have multiple chips on it. [00:34:46] Speaker 01: You need something that can qualify as a module that's the data transmission control module and all the connections coming to that. [00:34:56] Speaker 01: And that's what Kuo showed and combined with the Kuan and O'Shea references. [00:35:04] Speaker 01: That's correct. [00:35:05] Speaker 02: And nothing else. [00:35:08] Speaker 02: There's wording in... I mean, basically. [00:35:13] Speaker 02: There's wording in... The three other chips are regarded as just being on the drawing. [00:35:22] Speaker 01: Correct. [00:35:23] Speaker 01: I think there are a couple other things in the specification that qualify the wording of describing the different units and then [00:35:33] Speaker 01: It says, I believe it calls it a hub. [00:35:37] Speaker 01: It has these units and is attached to the board. [00:35:41] Speaker 01: And then also, there are multiple embodiments where the control unit, number 22, has three different units or four different units. [00:35:49] Speaker 01: And they're not figures showing one labeled and two unlabeled and one labeled and three unlabeled. [00:35:58] Speaker 01: That's not disclosed. [00:35:59] Speaker 01: It's all just pointing to this. [00:36:01] Speaker 01: Number 22. [00:36:01] Speaker 01: And under the substantial evidence standard, that was a finding that the board made, was that this was a single chipset. [00:36:09] Speaker 01: They say that explicitly. [00:36:11] Speaker 01: And I think there's substantial evidence to support that finding. [00:36:14] Speaker 02: Is that fact enough alone for us to simply affirm? [00:36:20] Speaker 02: If there's nothing publicly disclosed. [00:36:23] Speaker 02: No, just to say they're basically saying that you [00:36:28] Speaker 02: They're not a single chip, right? [00:36:30] Speaker 01: Yes. [00:36:31] Speaker 02: They're trying to argue they are. [00:36:32] Speaker 02: There's no evidence they are. [00:36:33] Speaker 02: Yes. [00:36:34] Speaker 02: The subject matter asserted was a single chip. [00:36:37] Speaker 01: Yes. [00:36:37] Speaker 02: The other main showing you are one case is over. [00:36:39] Speaker 02: You don't qualify the neuter quote. [00:36:42] Speaker 02: Right. [00:36:43] Speaker 02: And I don't need to decide the nature of the sale. [00:36:45] Speaker 02: I don't need to decide whether this particular sale, assuming arguing it was a [00:36:50] Speaker 02: A disclosure doesn't do the trick. [00:36:53] Speaker 00: That seems inconsistent with the answer you gave me earlier, because what I asked you is whether under this statute you're supposed to compare the inventor's disclosure with the claim, or the subject matter that meets the claim, or whether you're supposed to look just at quote. [00:37:10] Speaker 00: I mean the inventor, even if the inventor disclosed it, saying hypothetically, that in this case they actually disclosed [00:37:18] Speaker 00: a multiple chip DTCM to the public and everything else in the claim. [00:37:24] Speaker 00: And let's assume for a minute that that satisfied the claim. [00:37:28] Speaker 00: Does it matter that Quo would teach a single chipset? [00:37:32] Speaker 01: I think you need a single chipset or some other way of calling it something with a sync boundary. [00:37:39] Speaker 01: My hypothetical was that it satisfies the claim. [00:37:42] Speaker 00: My hypothetical is that we're going to assume that something was disclosed that satisfies the claim. [00:37:47] Speaker 00: But it satisfies it as a multiple chip, particular boundary. [00:37:54] Speaker 00: It means every element of the claim. [00:37:55] Speaker 00: It's multiple chips. [00:37:57] Speaker 00: And Quo teaches a single chip. [00:37:59] Speaker 00: But they both satisfy the claim. [00:38:01] Speaker 00: Is it really true that the inventor's disclosure has to have a single chip? [00:38:05] Speaker 01: No. [00:38:06] Speaker 01: I think as long as what we use Quo to disclose was a module connected to these things. [00:38:14] Speaker 01: The way that it is a module is that it is a single chip set. [00:38:17] Speaker 01: There was a disclosure of a module, even in some other fashion. [00:38:21] Speaker 01: I think that would disqualify underwater TBT, assuming it's public. [00:38:25] Speaker 03: The question is not comparing the disclosure to the claims of the patent. [00:38:32] Speaker 03: The comparison is comparing it to QOE and what you relied on QOE for. [00:38:39] Speaker 01: Exactly. [00:38:39] Speaker 01: That's precisely the issue. [00:38:41] Speaker 02: And did you rely on QOE as a single chip? [00:38:46] Speaker 01: We did for the reason that a single... Exactly. [00:38:49] Speaker 02: I mean, did you cite something in quote that says, quote says, I'm a single chip? [00:38:55] Speaker 02: And that's the priority you're citing against these people? [00:38:59] Speaker 01: It did not. [00:38:59] Speaker 01: There's no explicit word in quote that says this is a DCTM with a single chip set. [00:39:05] Speaker 02: The specific pieces of quote that you relied on that you wanted to be applied in the 103 analysis didn't include the single chip issue. [00:39:14] Speaker 01: There was no debate back and forth on Quo. [00:39:17] Speaker 02: The single chip issue struck me as this background noise over here that was sort of created to be able to show, oh, well, there's a big difference between their invention, which is multi-chip, and Quo, which is single chip. [00:39:30] Speaker 02: But the actual pieces of Quo that you were citing that you wanted to get into a one-on-three analysis are clearly identified by the board in the Kickstarter analysis, right? [00:39:43] Speaker 02: So in order for the patentee to succeed, he needs to neuter each of the elements of quo that you're serving against him, because that's the way the statute works. [00:39:55] Speaker 02: Yes, that's correct. [00:39:55] Speaker 02: And a single chip, multiple chip, has nothing to do with that. [00:40:00] Speaker 03: Right, it's the... No, no, no, that's not true, right? [00:40:02] Speaker 03: I mean, you were relying on quo as showing a single chip. [00:40:08] Speaker 01: I would say... Not in your 103 analysis? [00:40:11] Speaker 01: No, in the 103 analysis we were relying on it showing... You were cherry picking. [00:40:17] Speaker 02: Assume Quo has 10 limitations and you pick three of them out and you said you put those three in a combo analysis and the pattern is dead. [00:40:26] Speaker 02: Correct. [00:40:27] Speaker 02: You didn't pick out, oh, Quo is a single chip invention. [00:40:32] Speaker 01: I think that we did describe that was the reason we used Quo. [00:40:36] Speaker 02: Why wasn't that done in the analysis by the board on the Kickstarter? [00:40:43] Speaker 01: So the board on the Kickstarter found that nothing about the layout of the hyperdrive device could be determined from that photo. [00:40:54] Speaker 01: And it's the specific configuration of what are essentially known computer technology [00:41:02] Speaker 01: that make up the claim of the 429 patent. [00:41:04] Speaker 01: And so what we had in Quan and O'Shea was the majority of the claims, they were just silent on how the hub worked or whether or not there was a video attached to the hub. [00:41:20] Speaker 01: And so those are the things that we pulled in from Quan. [00:41:22] Speaker 01: Quan had more specifics about the layout [00:41:26] Speaker 01: of what they call the control device or the hub of their. [00:41:30] Speaker 02: So the AIA was passed a long time ago. [00:41:32] Speaker 02: There's a long history of IPRs, right? [00:41:36] Speaker 02: And other than this case, in my research, there's only been one other case that presented in Salem. [00:41:42] Speaker 02: It's Wilson, right? [00:41:45] Speaker 01: Are you aware of any other cases? [00:41:46] Speaker 01: I was not aware of any other cases. [00:41:48] Speaker 02: So in all these years, this issue has only come up twice. [00:41:52] Speaker 02: It's not a very commonly used example. [00:41:54] Speaker 02: Well, what I'm trying to get at is whether there's [00:41:56] Speaker 02: I think that it can. [00:42:05] Speaker 01: I think there are a number of off-ramps other than whether or not the public disclosure. [00:42:14] Speaker 01: One that we haven't discussed today is the discussion that appellant is using to try and show what [00:42:25] Speaker 01: the hyperdrive disclose is an undated picture and an undated block diagram when there's ample evidence in the record that there was a change in the device between the Kickstarter device and what is being sold today. [00:42:40] Speaker 01: And there's no evidence to indicate that the block diagram, besides a self-serving statement by, I believe, Mr. Chin, that the block diagram is exactly what was [00:42:55] Speaker 01: available as of the effective filing date of quo. [00:43:00] Speaker 01: And the board made a finding that it looked at the picture that was on the Kickstarter and it looked at the other picture that was being presented and said, these are not. [00:43:08] Speaker 00: And that's not on appeal. [00:43:10] Speaker 01: Nobody's arguing about that. [00:43:12] Speaker 01: And so what you have in effect is a sale, which if you assume is a public disclosure, and then backdating what they're selling today, [00:43:24] Speaker 01: to that sale with no evidence that that's what. [00:43:26] Speaker 00: They seem to be relying on the Kickstarter campaign documents to show what they were sold. [00:43:31] Speaker 00: But that doesn't make a lot of sense when the board found that that's not sufficient, right? [00:43:36] Speaker 01: Well, they found, A, that's not sufficient because it doesn't disclose what you were talking about, Judge Solis, the claim, the subject matter, as opposed to on sale on 102A, the claim convention. [00:43:50] Speaker 01: But then the other issue is that's what we know was being sold. [00:43:53] Speaker 01: or was available, whether it was part of the sale or not, on December 6, a few days before a quote was filed. [00:44:02] Speaker 01: The other evidence that they're using, we have no evidence to indicate that is the same as the device that was available on December of 2016. [00:44:12] Speaker 03: So just to be clear, you have no interest in the validity of the 429 patent because you have a covenant not to sue you on that. [00:44:20] Speaker 03: Correct. [00:44:21] Speaker 03: OK. [00:44:21] Speaker 03: Thank you. [00:44:24] Speaker 03: Mr. Ludwig, you have a minute here. [00:44:36] Speaker 04: Thank you. [00:44:38] Speaker 04: Referring to your honor's question earlier regarding the evidence that the hyperdrive contains a single chip BTCM, there is some evidence in the system block diagram that my colleague just referred to. [00:44:53] Speaker 04: which presents it. [00:44:54] Speaker 04: I'm not going to interpret a diagram. [00:44:57] Speaker 03: Do you have expert testimony? [00:44:59] Speaker 04: Your Honor, I was not able to locate expert testimony in the pages of the appendix that were submitted to the court. [00:45:09] Speaker 04: I don't have that. [00:45:11] Speaker 04: But the question of whether the number of chips in the hybrid drive DTCM versus closed DTCM [00:45:25] Speaker 04: is sort of a side issue in this case. [00:45:30] Speaker 04: First, as we explained in the briefing and as you were discussing with my colleague, Kuo discloses that there are multiple chips in the drawings and there's really no other disclosure in Kuo to suggest that there is a single chip doing all of this work. [00:45:49] Speaker 04: Therefore, for that reason, at least that reason, [00:45:54] Speaker 02: Do you have a fact-finding of the contrary by the board? [00:45:58] Speaker 04: Yes, Your Honor. [00:45:59] Speaker 02: So unless you're going to be able to show that that fact-finding should be ignored. [00:46:06] Speaker 04: Your Honor, respectfully, we don't. [00:46:09] Speaker 02: Yeah, it's a high-hill decline. [00:46:11] Speaker 04: Your Honor, it is a high-hill decline, but the drawings in quo [00:46:19] Speaker 04: show multiple units inside the disclosed control module. [00:46:24] Speaker 04: I believe that's in figure four, of quote. [00:46:26] Speaker 04: And then on the drawing of the circuit board itself, it shows four separate chips. [00:46:34] Speaker 03: OK. [00:46:34] Speaker 03: I think we're out of time. [00:46:38] Speaker 03: Thank you. [00:46:38] Speaker 03: Thank you, counsel. [00:46:39] Speaker 03: The case is submitted.