[00:00:00] Speaker 01:
Our next case for argument is 23-1741, Sunspeck Alliance versus Tegel Energy.

[00:00:09] Speaker 01:
Mr. Marsh, please proceed.

[00:00:28] Speaker 03:
Thank you.

[00:00:28] Speaker 03:
Good morning, Your Honors.

[00:00:29] Speaker 03:
May it please the court.

[00:00:31] Speaker 03:
Philip Marsh on behalf of the Sunspec Alliance.

[00:00:35] Speaker 03:
The decisions on the appealed claims below should be reversed for at least three reasons.

[00:00:40] Speaker 03:
First, the board erred by failing to construe the predetermined number of skips limitations, or what I'm going to refer to by shorthand as the skips limitations, that were the basis for all of the board's decisions that are on appeal here.

[00:00:54] Speaker 03:
Second, the board legally erred

[00:00:57] Speaker 03:
in at least two ways when it concluded that the appealed claims were not obvious.

[00:01:02] Speaker 03:
And three, the board incorrectly found, contrary to the substantial evidence presented, that the appealed claims were not anticipated.

[00:01:11] Speaker 03:
Let me start with the first argument, that the skips limitations were not construed and should have been.

[00:01:20] Speaker 03:
It's undisputed that the parties

[00:01:23] Speaker 03:
were disputing the SCIFS limitations.

[00:01:25] Speaker 03:
They were at the center of the arguments for each of the claims where the decision was made.

[00:01:30] Speaker 00:
But you were either IPI request or construction predetermined number.

[00:01:35] Speaker 03:
We did not, Your Honor.

[00:01:37] Speaker 03:
We filed the petition.

[00:01:38] Speaker 03:
And I wish that I had the foresight to know what I know now.

[00:01:42] Speaker 03:
But at the time that we filed the petition, we thought that they could be interpreted according to their plain meaning.

[00:01:49] Speaker 03:
They weren't interpreted according to their plain meaning.

[00:01:52] Speaker 03:
They were loaded with other meaning.

[00:01:54] Speaker 03:
But that didn't happen until later in the process.

[00:01:58] Speaker 03:
Tygo did not file a preliminary patent owner's response.

[00:02:02] Speaker 03:
They only filed a patent owner's response.

[00:02:03] Speaker 03:
So it was by the time we hit the reply below that we knew that there was a dispute at all.

[00:02:10] Speaker 03:
But nonetheless, even though there was a dispute, the board did not construe those claims.

[00:02:15] Speaker 00:
Can you point me to anywhere where you raised before the P tab that there would need to be an express construction of the predetermined number limitations?

[00:02:24] Speaker 03:
Well, we didn't know that there would need to be an express construction because in our view, we're reading the claims as the plain meaning and we think that they're... So the answer is there was never a request for express construction anywhere before the P tab?

[00:02:37] Speaker 03:
That's correct, Your Honor, yes.

[00:02:39] Speaker 03:
So now in retrospect though, what's happened,

[00:02:44] Speaker 03:
Those terms were in dispute for every single claim at issue here.

[00:02:49] Speaker 03:
And the meaning of those terms were disputed.

[00:02:53] Speaker 03:
So according to O2 Micro.

[00:02:54] Speaker 02:
O2 Micro says if there's a dispute in the construction, which you never presented to the board here, it would have to be construed.

[00:03:05] Speaker 02:
You didn't ask for a construction.

[00:03:06] Speaker 03:
Well, respectfully, we didn't ask for a construction.

[00:03:08] Speaker 03:
But the dispute was inherent to the arguments that were before the court.

[00:03:11] Speaker 02:
What do you understand the dispute to be?

[00:03:13] Speaker 02:
as to the different meanings?

[00:03:16] Speaker 03:
Yes, Your Honor.

[00:03:17] Speaker 03:
And what we have said is that these claims are system claims or apparatus claims, and that there's a recitation of different components that are configured to do something after a certain time period.

[00:03:32] Speaker 03:
That time period is measured against, in the claims, a predetermined number of allowed skips in the 326 patent or other language that's similar in the 770 patent.

[00:03:44] Speaker 03:
What Tygo has said, on the other hand, and what the board agreed with, apparently, without giving an express construction, is that those SCIPS terms needed to actually involve actual passage of the SCIPS, the actual counting of the SCIPS or monitoring of the SCIPS.

[00:04:05] Speaker 02:
Has it had the difference between the two of you that they say it requires counting and you don't think it requires counting?

[00:04:12] Speaker 03:
Correct.

[00:04:12] Speaker 03:
That's their argument based on the prosecution history and what the examiner stated during the prosecution history.

[00:04:22] Speaker 03:
They say that it's more than just the passage of a time period.

[00:04:26] Speaker 03:
It has to be.

[00:04:27] Speaker 03:
Otherwise, the claims will be invalid in view of the prior art that we've cited that measure the passage of a time period.

[00:04:32] Speaker 00:
Can you point us to somewhere in the PTAP decisions where we can see basically this dispute that you're contending is there?

[00:04:40] Speaker 03:
In the PTAB decision?

[00:04:42] Speaker 03:
Yes.

[00:04:43] Speaker 03:
I don't know if I can point to it in the PTAB decision off the top of my head, but I can tell you that in our opposing counsel's brief, well, actually, if you look at our reply brief, we cited on pages, what was it, 15 and 16 in the footnotes every place that they mentioned that the claims required either monitoring, detecting, allowing,

[00:05:10] Speaker 03:
or counting of the skips.

[00:05:12] Speaker 03:
Those are footnotes six through nine.

[00:05:15] Speaker 03:
In addition to that, opposing counsel, in their brief, what they said is that the skips terms require two things, both a time period, which we agree with, and second, that they require a threshold number of allowed skips to elapse.

[00:05:34] Speaker 03:
We don't agree with that.

[00:05:35] Speaker 03:
That's the dispute.

[00:05:37] Speaker 03:
And they say that in the red brief at pages 28 and 40.

[00:05:40] Speaker 03:
So that was the crux of the decision for the court of law.

[00:05:47] Speaker 02:
Crumberg does have a time period that corresponds to a predetermined number of skips, right?

[00:05:53] Speaker 02:
I'm sorry?

[00:05:54] Speaker 02:
Crumberg has a time period that corresponds to a predetermined number of skips, right?

[00:06:01] Speaker 02:
Correct.

[00:06:02] Speaker 02:
Yes, this is anticipating one of my other arguments, yes.

[00:06:06] Speaker 02:
And but does Kronberg disclose the 770 limitation, which is a predetermined number of skips?

[00:06:15] Speaker 02:
It doesn't count the skips, right?

[00:06:17] Speaker 03:
Well, what it counts is it says it doesn't count the skips, right?

[00:06:22] Speaker 03:
I respectfully disagree.

[00:06:23] Speaker 03:
OK.

[00:06:24] Speaker 03:
What Kronberg says is that it counts a specified number of timing pulses.

[00:06:31] Speaker 03:
Those timing pulses are from a counter that is internal to the device.

[00:06:35] Speaker 03:
It only counts when the signal is missing, the external signal from the device is missing.

[00:06:42] Speaker 03:
So if you sync up that signal with the external signal, every timing pulse would correspond with the skip from the external signal.

[00:06:51] Speaker 03:
A skip just means a missing communication or pulse, as the board construed it.

[00:06:56] Speaker 03:
And so every single time that there's a pulse that gets counted,

[00:07:00] Speaker 03:
you know that that signal's missing, so that you know you've missed the same number of skips as the internal counting number of pulses.

[00:07:09] Speaker 03:
Does that make sense?

[00:07:10] Speaker 03:
Did I answer your question?

[00:07:12] Speaker 03:
Go ahead.

[00:07:13] Speaker 03:
OK.

[00:07:14] Speaker 03:
So that gets into it.

[00:07:16] Speaker 03:
Before I transition to obviousness, let me just say this.

[00:07:20] Speaker 03:
With respect to the claim construction, we've made our arguments.

[00:07:23] Speaker 03:
We believe it's a time period.

[00:07:24] Speaker 03:
We believe that's sufficient.

[00:07:26] Speaker 03:
We've made several arguments of why, if that's the case, we win on invalidity.

[00:07:31] Speaker 03:
But if this court disagrees with us, we would respectfully ask that either the court provide a clear construction or ring them to the board to provide a clear construction.

[00:07:42] Speaker 03:
The reason is

[00:07:43] Speaker 03:
There are multiple litigations that are pending right now.

[00:07:46] Speaker 01:
This is your problem.

[00:07:47] Speaker 01:
We can't solve your poor choices.

[00:07:50] Speaker 01:
You didn't ask the board for a construction.

[00:07:52] Speaker 01:
And so what the board did is they looked at the prosecution history.

[00:07:55] Speaker 01:
And they looked at particularly the fact that the prior art allowed for and measured interruptions.

[00:08:01] Speaker 01:
And you inserted to get around the interruption prior art, the predetermined number of skips.

[00:08:07] Speaker 01:
You then didn't ask them for a construction.

[00:08:09] Speaker 01:
And so I'm looking at the board opinion and I don't really see them doing much more, which is by the way a really good job on their part.

[00:08:17] Speaker 01:
Their job isn't to solve your litigation.

[00:08:20] Speaker 01:
Their job is to resolve the validity of the

[00:08:24] Speaker 01:
claims in light of the exact arguments you made in your petition.

[00:08:29] Speaker 01:
And I see them having done that.

[00:08:30] Speaker 01:
So no, you're not going to get a construction by me.

[00:08:32] Speaker 01:
You know why?

[00:08:33] Speaker 01:
You didn't ask them for one.

[00:08:34] Speaker 01:
You didn't argue one to them.

[00:08:36] Speaker 01:
And they decided exactly narrowly what they're supposed to decide, which is what you argued in your petition.

[00:08:44] Speaker 01:
Is it correct or not?

[00:08:46] Speaker 01:
And they decided that.

[00:08:47] Speaker 01:
The job of their job and my job is not to issue advisory opinions that will broadly help you for future litigation.

[00:08:55] Speaker 01:
It's to decide exactly what you argued.

[00:08:59] Speaker 01:
So, you're not going to get a construction.

[00:09:01] Speaker 03:
Well, if I may, what the claim term says in the 326 patent is, it says it's a time period.

[00:09:11] Speaker 03:
A time period.

[00:09:13] Speaker 03:
What kind of time period?

[00:09:14] Speaker 03:
A time period that's longer than

[00:09:17] Speaker 00:
a or the predetermined number of allowed skips.

[00:09:33] Speaker 03:
That's the second of two arguments on obviousness.

[00:09:36] Speaker 03:
The first is that we have unrebutted expert testimony that was disregarded.

[00:09:40] Speaker 03:
But with regard to Cromberg... I'd like to maybe go with the argument that I just... Yeah, with regard to Cromberg, which is an obviousness reference, it's important.

[00:09:47] Speaker 03:
It's in three of the four obviousness grounds below.

[00:09:51] Speaker 03:
Cromberg recites a specified number of timing pulses.

[00:09:56] Speaker 03:
And remember,

[00:09:59] Speaker 03:
skips has been construed to mean a missed communication.

[00:10:03] Speaker 01:
I'm sorry.

[00:10:05] Speaker 01:
I think that what you're being asked to do is explain to us not why you might win on Cronberg if the board decided it, but rather, as I understand your argument, the board overlooked this in its entirety.

[00:10:19] Speaker 01:
We can't make a fact finding about what Cronberg does or doesn't disclose in the first instance.

[00:10:24] Speaker 01:
I think what we're hoping you'll do is articulate what I think is your argument that the board literally just erred in evaluating that one.

[00:10:32] Speaker 01:
Is that right?

[00:10:33] Speaker 03:
Yes, fair enough, Your Honor.

[00:10:34] Speaker 03:
The board did say that we were not relying on Cronberg for the predetermined skips limitations.

[00:10:43] Speaker 03:
That was incorrect.

[00:10:44] Speaker 03:
We did rely on Cronberg both in the petitions

[00:10:47] Speaker 03:
And based on our expert testimony, the unrebutted expert testimony on obviousness, that Cronberg did teach those elements.

[00:10:54] Speaker 03:
It was under bold headings that said the predetermined number of loud skips in the 326 or the corresponding claim terms in the 770 patent.

[00:11:03] Speaker 01:
But opposing counsel points to a sentence where you say something to the effect of, I can't remember the other reference because it was an M. Yeah.

[00:11:09] Speaker 01:
What's the other reference?

[00:11:10] Speaker 04:
Moin.

[00:11:10] Speaker 01:
Moin.

[00:11:11] Speaker 01:
Moin.

[00:11:11] Speaker 04:
Moyn.

[00:11:12] Speaker 01:
Well, where you say something like, well, we're not relying on Kronberg for anything beyond what Moyn did, or something like that.

[00:11:19] Speaker 01:
Can you articulate that better for me and help me understand why that isn't you basically waiving the argument you made in your petition?

[00:11:28] Speaker 03:
Yeah.

[00:11:28] Speaker 03:
Yeah.

[00:11:29] Speaker 03:
So what we said was that we, because we had asserted Moyn anticipated.

[00:11:35] Speaker 03:
And so what we were saying is the question, what we were quoted as saying

[00:11:41] Speaker 03:
is I forget the exact language.

[00:11:47] Speaker 03:
But the gist of the argument was what we were trying to say is that we are not trying to remedy a deficiency in Moyne.

[00:11:55] Speaker 03:
We didn't view Moyne as having a deficiency.

[00:11:58] Speaker 03:
We had asserted it as an anticipatory reference.

[00:12:02] Speaker 03:
And so what we tried to say, and maybe it wasn't as clear as it should have been, is what we were trying to say is that, nonetheless, if you need a traditional watchdog like the type in Kronberg, the combination of Moyne and Kronberg teach this limitation.

[00:12:17] Speaker 03:
And it referred back to earlier parts in the declaration and the petitions where that was the case, where it had been taught.

[00:12:23] Speaker 03:
That was our reply submission.

[00:12:25] Speaker 03:
I believe it was in the 326 patent, the reply submission, where we said that.

[00:12:31] Speaker 03:
We were just trying to avoid disparaging Moyne, which we still believed was anticipatory, but also then add the teaching of Cronberg.

[00:12:39] Speaker 03:
We did rely on it for those purposes.

[00:12:43] Speaker 00:
Did you do 3, 2, 1?

[00:12:45] Speaker 03:
Sorry?

[00:12:46] Speaker 00:
I'm just making sure I'm following.

[00:12:47] Speaker 03:
3, 2, 1.

[00:12:48] Speaker 03:
Sorry.

[00:12:48] Speaker 03:
Yes.

[00:12:49] Speaker 03:
3, 2, 1.

[00:12:49] Speaker 03:
I think I've said 3, 2, 6 a couple of times.

[00:12:52] Speaker 01:
Just making sure I'm on the same page.

[00:12:55] Speaker 01:
uh... yeah in fact you're into rebuttal time you know you're free to use your remaining two and a half minutes however you wish but do you want to save some?

[00:13:02] Speaker 04:
that's fine I'll save for rebuttal thank you your honor good morning your honors please the court I'm going to start where

[00:13:25] Speaker 04:
we'd just left off.

[00:13:27] Speaker 02:
So they did argue in the petition that Cronberg disclosed the predetermined number of skips, and they relied on Cronberg in the petition for that purpose, right?

[00:13:38] Speaker 04:
They relied on Cronberg, but they only relied on Cronberg to show that Cronberg detected an interruption.

[00:13:44] Speaker 04:
They alleged that that meant the skips language.

[00:13:46] Speaker 04:
No, no, no.

[00:13:48] Speaker 02:
They specifically discussed the predetermined number of skips and said it was disclosed by Cronberg, right?

[00:13:55] Speaker 04:
Yes, Your Honor.

[00:13:56] Speaker 04:
But if you look at how they said it, they said Cronberg Disclosure.

[00:14:00] Speaker 01:
Show us where.

[00:14:00] Speaker 01:
I'm in the petition.

[00:14:01] Speaker 01:
I think it starts at about page 144 or 145 of the appendix.

[00:14:05] Speaker 01:
Show me exactly.

[00:14:07] Speaker 04:
Let's go to 171, Your Honor.

[00:14:12] Speaker 04:
Just let me get there also.

[00:14:16] Speaker 04:
But on 171, I believe it's at the bottom of the page, if I'm remembering correctly.

[00:14:21] Speaker 04:
They explain that what they're looking for is the absence of a signal.

[00:14:27] Speaker 02:
On 169 under the heading, quoting the claim, it says, one teaches this feature,

[00:14:53] Speaker 04:
Yes, Your Honor.

[00:14:54] Speaker 02:
They're going together with Kronberg.

[00:14:55] Speaker 04:
Correct.

[00:14:56] Speaker 04:
So they're using that combination for the claim limitation overall.

[00:15:00] Speaker 04:
But if we scroll down, they discuss Kronberg.

[00:15:02] Speaker 04:
And if you scroll from where you're looking, down to page 171, and we look at the middle of page 171, the third line, they're explaining the basis for the combination, would merely be one of a finite number of solutions for detecting the absence of a signal.

[00:15:19] Speaker 04:
They go on, and then at the very last line of that page,

[00:15:23] Speaker 04:
which is, again, 171.

[00:15:25] Speaker 04:
Kronberg teaches a device that detects the absence of a periodic signal.

[00:15:30] Speaker 04:
Now, they go on to the next page when they talk about the timing pulses.

[00:15:34] Speaker 04:
What those timing pulses are doing is counting elapsed time.

[00:15:38] Speaker 04:
You can see this clearly in figure two of Kronberg.

[00:15:41] Speaker 04:
When it's looking for a signal, the timing

[00:15:46] Speaker 01:
Unfortunately for you, you might be exactly right, but you're asking me to make a fact-finding about Cronberg that is kind of tough for me on appeal.

[00:15:55] Speaker 04:
I am not asking Your Honor to do that.

[00:15:57] Speaker 04:
All I'm asking you to do is affirm what the board found.

[00:15:59] Speaker 04:
So they stated... Go ahead.

[00:16:03] Speaker 04:
Oh.

[00:16:04] Speaker 01:
Please keep going.

[00:16:06] Speaker 01:
I don't see where the board made a fact-finding about Cronberg.

[00:16:09] Speaker 01:
So I don't see how I'm affirming a fact-finding about whether Cronberg underground two does or does not teach

[00:16:16] Speaker 01:
or render obvious the predetermined number of skips.

[00:16:19] Speaker 01:
That's the problem.

[00:16:20] Speaker 01:
I think that's why she made that.

[00:16:22] Speaker 04:
You're right.

[00:16:23] Speaker 04:
And there are two decisions.

[00:16:24] Speaker 04:
And the fact finding about Comberg was in the other decision.

[00:16:26] Speaker 04:
In this decision, in 321, you're absolutely right, Your Honor.

[00:16:28] Speaker 04:
What the board did was rely on their statement in their reply brief, which I now that they were not relying on Comberg.

[00:16:35] Speaker 01:
What page?

[00:16:36] Speaker 01:
What page of the reply brief?

[00:16:37] Speaker 04:
So it's APX 1292.

[00:16:39] Speaker 04:
1292, yeah.

[00:16:51] Speaker 04:
I will get there in a minute.

[00:16:56] Speaker 01:
See, the header here is, combined teaching of Moyne and Cronberg disclose the predetermined number of allowed skips.

[00:17:02] Speaker 01:
Correct.

[00:17:03] Speaker 01:
That's the header.

[00:17:04] Speaker 01:
And then right beneath it, they say, we're not relying on Cronberg to remedy any failure of Moyne because they think Moyne already discloses it.

[00:17:14] Speaker 01:
And you know, you lawyers do this all the time.

[00:17:15] Speaker 01:
And it's really a very smart tactic, which is, hey, I think I went on ground one.

[00:17:20] Speaker 01:
And so I don't think you even need to get to ground two.

[00:17:21] Speaker 01:
But if I don't win on ground one, then I want you to get to ground two.

[00:17:24] Speaker 01:
And don't they go on to say, but to the extent that a traditional watchdog of the type described in Kronberg is required, then you've got to look at Kronberg?

[00:17:35] Speaker 01:
So see, like, isn't that the third sentence there?

[00:17:39] Speaker 01:
Look, we think we win on Moyne and Moyne alone.

[00:17:40] Speaker 01:
We don't even think you need to get to Kronberg.

[00:17:42] Speaker 01:
But if you don't agree, then get to Kronberg.

[00:17:46] Speaker 04:
So I do understand now.

[00:17:48] Speaker 04:
that that could be what was meant.

[00:17:49] Speaker 04:
I don't think the board understood that from this.

[00:17:51] Speaker 04:
That's the problem.

[00:17:52] Speaker 04:
I think the board understood something different.

[00:17:55] Speaker 04:
The board did find, though, that, and if you give me a moment, I'm going to find it, but the board did find in the other decision that Cronberg does not disclose anything about counting skips.

[00:18:09] Speaker 04:
Which is what you say is required.

[00:18:11] Speaker 04:
Which is what we say is required in both claims.

[00:18:12] Speaker 02:
But the claim language is different in the two patents.

[00:18:16] Speaker 04:
It is slightly different.

[00:18:17] Speaker 04:
But in both cases, there's a reference to skips.

[00:18:20] Speaker 02:
In one, it says time period corresponding to a predetermined number of skips.

[00:18:25] Speaker 02:
That's the 321.

[00:18:27] Speaker 02:
That's the one they didn't decide.

[00:18:28] Speaker 02:
And the other one talks about there being a predetermined number of skips.

[00:18:33] Speaker 04:
So if I can find the language, I believe the board found that Cromer only talks about interruptions.

[00:18:41] Speaker 04:
And interruptions is what we distinguished in the prior art, because that is, in fact, what all the Cronberg decides.

[00:18:46] Speaker 00:
Just focusing on the 321 for now, rather than trying to read in what was done in 770 IPR.

[00:18:56] Speaker 00:
If you just focus on the 321, do you agree that there was a failure on the board's part to address whether or not Cronberg discloses the predetermined number of allowances in the 321?

[00:19:09] Speaker 04:
No, I do not agree there was a failure.

[00:19:11] Speaker 04:
The board found that they didn't make that argument in their petition.

[00:19:14] Speaker 04:
And I was showing you earlier in my argument that what they argued to the board about Cromberg was that it discloses detecting the absence of a signal, which is an interruption, which is not what the claims require.

[00:19:29] Speaker 04:
The claims require more than an absence.

[00:19:31] Speaker 02:
I think the board's decision is saying that.

[00:19:32] Speaker 02:
I thought they relied on the abandonment of the argument in the reply brief, or supposed abandonment of the argument

[00:19:39] Speaker 04:
I don't read it that way, Your Honor.

[00:19:41] Speaker 04:
Where?

[00:19:41] Speaker 04:
Let me find it in the decision.

[00:19:58] Speaker 04:
Well, in the part that I think you're referring to, that is the only thing that is stated.

[00:20:02] Speaker 04:
And the part that you're referring to, I believe, is page 23 of the decision, APPX 23.

[00:20:08] Speaker 04:
Sorry, 23.

[00:20:11] Speaker 04:
But if you look up, it discusses what Cronberg does, and it explains what Cronberg does.

[00:20:22] Speaker 04:
And on the previous page, it refers, for example, to valid transitions in the signal.

[00:20:29] Speaker 04:
That's on page 22 of the decision.

[00:20:33] Speaker 04:
So those are valid transitions in the signal.

[00:20:35] Speaker 02:
The sentence, they say, petition does not rely on Kronberg quoting the reply.

[00:20:42] Speaker 02:
They seem to find that the reply gave up the argument, right?

[00:20:50] Speaker 04:
That sentence says that.

[00:20:52] Speaker 04:
If we look at the immediately preceding sentence, for example, where they cite the pages

[00:20:56] Speaker 04:
26 to 28 of the petition.

[00:20:59] Speaker 04:
That's what I was quoting to you earlier, where they were only arguing that Cronberg discloses an absence.

[00:21:04] Speaker 01:
I know.

[00:21:04] Speaker 01:
But then you look at the, so it's not even just that one sentence that Judge Steig pointed out, where petitioner does not rely.

[00:21:09] Speaker 01:
Look at the last sentence on the same page.

[00:21:12] Speaker 01:
Accordingly, because petitioner does not rely on Cronberg to remedy this deficiency in Moyne, the petitioner is not demonstrated by a preponderance of the evidence.

[00:21:18] Speaker 01:
It would have been unpatentable over this combination.

[00:21:21] Speaker 01:
Yes.

[00:21:21] Speaker 01:
So I mean, it just, look.

[00:21:24] Speaker 01:
Unfortunately for you, the board in this IPR just didn't appreciate one of their arguments and didn't address it.

[00:21:31] Speaker 01:
You're probably right that you're going to prevail on remand on this argument based on what they said about Cronberg, especially in the other IPR.

[00:21:40] Speaker 01:
But they didn't say it here.

[00:21:41] Speaker 01:
And I can't import a fact finding made in one IPR about a reference into a different IPR.

[00:21:48] Speaker 01:
I'm sorry that the board didn't more thoroughly

[00:21:52] Speaker 01:
resolve the case for you.

[00:21:54] Speaker 01:
I feel a little bad for your client in that regard.

[00:21:57] Speaker 01:
But I can't take a fact finding from one and move it over here.

[00:22:00] Speaker 01:
I don't know what to do.

[00:22:02] Speaker 04:
So that's fair, Your Honor.

[00:22:05] Speaker 04:
But what you can do, even if you decide that the board was not entitled to rely on that sentence and was not entitled to find that this argument had been waived, right?

[00:22:15] Speaker 01:
It wasn't waived.

[00:22:16] Speaker 01:
So they didn't waive it.

[00:22:18] Speaker 01:
There's no question in my mind the board aired.

[00:22:21] Speaker 01:
But the board has a lot of things to look at.

[00:22:22] Speaker 01:
These petitions are fulsome.

[00:22:24] Speaker 01:
And there's a lot of little details and things.

[00:22:26] Speaker 01:
And I don't view that as a waiver.

[00:22:28] Speaker 01:
So for me, I think that was an error to the extent the board did that.

[00:22:33] Speaker 01:
I'm just telling you right where you stand.

[00:22:35] Speaker 01:
But the hard thing is I just don't think I can give you the relief that you want in the alternative.

[00:22:41] Speaker 01:
And I'm not saying you're not entitled to it.

[00:22:43] Speaker 01:
But I kind of think the board has to do it in the first instance.

[00:22:49] Speaker 01:
I don't know, maybe I'm all by myself up here.

[00:22:51] Speaker 01:
Perhaps you have the other two judges.

[00:22:53] Speaker 01:
You're all right.

[00:22:55] Speaker 04:
I think I'll make a further argument to you about this, because this entire decision was in the context of only one kind of argument, the argument that the only thing that they need to teach

[00:23:13] Speaker 04:
is zero skips.

[00:23:14] Speaker 04:
That as soon as they teach us any interruption in the signal, they win.

[00:23:18] Speaker 01:
Why don't you jump to that argument?

[00:23:20] Speaker 01:
Because we had you start at the second, and you've got five minutes left.

[00:23:23] Speaker 01:
So why don't you pivot now to arguments about whether or not the board erred in not interpreting

[00:23:32] Speaker 01:
the predetermined number of skips in general, because that's their primary argument on appeal.

[00:23:36] Speaker 01:
This other little argument affects one ground of one IPR.

[00:23:40] Speaker 01:
So why don't you pivot and defend the board on that other ground for now?

[00:23:43] Speaker 04:
Sure.

[00:23:44] Speaker 04:
So they did construe this limitation.

[00:23:49] Speaker 04:
They provided on page 18 of the decision we've just been discussing a specific statement about what it required.

[00:23:56] Speaker 04:
And they said the middle paragraph on page 18

[00:24:03] Speaker 04:
In light of the specification, the claim language, a time period longer than a predetermined number of allowed skips is directed both to a time period in which communication cannot be verified and to a threshold requiring the predetermined number of allowed skips that defines the time period.

[00:24:20] Speaker 02:
Do you read the board as requiring counting of the skips?

[00:24:26] Speaker 04:
In the other decision, yes.

[00:24:29] Speaker 02:
In the 770?

[00:24:29] Speaker 02:
Yes.

[00:24:31] Speaker 04:
But not here.

[00:24:32] Speaker 04:
I think you have to know that there is a number of allowed skips, which implies counting the skips.

[00:24:40] Speaker 04:
So you have to... What happened is the claims was originally filed.

[00:24:46] Speaker 04:
If you just scroll back one page to appendix 17, you can see figure four of the patent.

[00:24:51] Speaker 04:
And in figure four of the patent, there's two diamonds.

[00:24:55] Speaker 04:
two decisions.

[00:24:56] Speaker 04:
The first decision is verify communication with central controller, question mark.

[00:25:01] Speaker 04:
Then if the answer is no, the next decision is number of allowed skips exceeded.

[00:25:07] Speaker 04:
So what the board did is it found that by adding the language to the claims in the prosecution history about allowed skips, it changed the claims, which were originally targeted at only detecting an interruption to detecting an interruption and

[00:25:22] Speaker 04:
that that interruption had lasted longer than the number of allowed skips, exactly as shown in this slide.

[00:25:27] Speaker 02:
But the trouble with your argument is that in Kronberg, that's exactly what happens.

[00:25:33] Speaker 02:
There's a time period that does correspond to an allowed number of skips.

[00:25:39] Speaker 02:
That's not true, Your Honor.

[00:25:41] Speaker 04:
If you look in Figure 2, and I can show you, I can get you the appendix page, and we can all look at it together.

[00:25:48] Speaker 04:
But in Figure 2 of Kronberg, you can see very clearly what happens.

[00:25:52] Speaker 04:
And the top line there, figure 2A, is the pulses that it's looking for.

[00:25:59] Speaker 04:
And figure 2G demonstrates the accumulation of timing pulses.

[00:26:06] Speaker 04:
It's counting timing pulses.

[00:26:07] Speaker 01:
What appendix page should you say I'm supposed to look at?

[00:26:09] Speaker 04:
902.

[00:26:11] Speaker 01:
I don't have an appendix page 902.

[00:26:12] Speaker 01:
My appendix goes from 900 to 907.

[00:26:15] Speaker 01:
What am I missing?

[00:26:16] Speaker 04:
You're missing figure two of Cromber.

[00:26:18] Speaker 04:
I don't know how to explain that.

[00:26:19] Speaker 01:
Do you have a page 902?

[00:26:20] Speaker 01:
No, I got 901 to 907.

[00:26:22] Speaker 01:
Yeah, we don't have any page 902.

[00:26:25] Speaker 01:
I mean, I'm sure there is a figure two, but it wasn't included in the appendix.

[00:26:28] Speaker 04:
Well, then I can't.

[00:26:29] Speaker 04:
That's not useful.

[00:26:30] Speaker 01:
Not at this exact moment.

[00:26:32] Speaker 04:
You said you have 907.

[00:26:34] Speaker 04:
I think the description makes this point as well.

[00:26:37] Speaker 04:
And I think the description is on page 908, if you have 908.

[00:26:42] Speaker 04:
We do.

[00:26:43] Speaker ?:
OK.

[00:26:46] Speaker 04:
On page 908, it's discussing figure 2, beginning around line 19.

[00:26:54] Speaker 04:
And it points out that the waveform of figure 2... Yeah, but where's the operative language?

[00:26:59] Speaker 01:
Where's the thing you want me to say it's counting?

[00:27:02] Speaker 04:
OK.

[00:27:03] Speaker 01:
Not counting.

[00:27:04] Speaker 04:
So the input signal that it's looking at is figure 2A, which is the periodic... Which column are you in?

[00:27:11] Speaker 04:
What column are you on?

[00:27:13] Speaker 04:
Line 425 is where it explains figure 2A.

[00:27:16] Speaker 02:
Which column?

[00:27:17] Speaker 04:
Column 4.

[00:27:18] Speaker 04:
4.

[00:27:19] Speaker 04:
And line 25?

[00:27:20] Speaker 04:
24 and 25 refers to figure 2a, the waveform of figure 2a.

[00:27:27] Speaker 04:
It's a periodic waveform, so it has pulses.

[00:27:30] Speaker 04:
Now, if you go down, and it explains in the text that follows that, that there's a transition.

[00:27:39] Speaker 01:
Line number.

[00:27:44] Speaker 01:
That was a question, not a statement.

[00:27:45] Speaker 04:
I understood, Your Honor.

[00:27:49] Speaker 04:
I may have to go back for these event pulses.

[00:27:51] Speaker 04:
So I have to go back to column three at line 25, 26.

[00:28:03] Speaker 04:
Valid transitions in the signal are identified and marked by a series of short event pulses.

[00:28:08] Speaker 04:
So where that waveform changes, it issues an event pulse.

[00:28:13] Speaker 04:
And it shows those also in figure two, which makes this easier.

[00:28:15] Speaker 04:
I'm sorry we don't have it.

[00:28:16] Speaker 04:
The important part is that it's really in column four.

[00:28:23] Speaker 01:
Holy cow.

[00:28:24] Speaker 01:
I'm going to let you say your important part.

[00:28:26] Speaker 01:
But I just want to say that the board didn't say all this stuff.

[00:28:29] Speaker 01:
And you are at a level of fact finding and a prior reference that I feel woefully, inadequately prepared to try to figure out on my own.

[00:28:37] Speaker 04:
Fair enough, Your Honor.

[00:28:39] Speaker 04:
The argument that I do think is important on this, though, is that they only relied on Cronberg in their IPR papers, which you can see at APX.

[00:28:48] Speaker 01:
Are you still trying to argue ground to?

[00:28:50] Speaker 01:
For goodness sakes, did you pivot from what I asked you to turn to?

[00:28:54] Speaker 04:
So coming back to the construction, why is the construction correct?

[00:28:57] Speaker 04:
The construction is correct for the following reasons.

[00:29:00] Speaker 04:
First, the claim language.

[00:29:02] Speaker 02:
What's the construction?

[00:29:05] Speaker 04:
The construction is on APX 18, their statement.

[00:29:15] Speaker 04:
So there's a discussion that spans six pages, but the crux of it is on page 18.

[00:29:22] Speaker 01:
So is the construction you would like us to validate for the purposes of the 321 patent, the construction at page 18?

[00:29:32] Speaker 01:
that it's directed to both a time period and to a threshold requiring a predetermined number of allowed skips that define the time period.

[00:29:41] Speaker 01:
Is that what you think the construction of predetermined skips is?

[00:29:47] Speaker 01:
Because?

[00:29:49] Speaker 04:
What's the larger phrase?

[00:29:50] Speaker 04:
It's the controller configured to determine that the communication has been interrupted for a time period longer than.

[00:29:59] Speaker 01:
Right.

[00:30:00] Speaker 01:
So this is not a construction of predetermined number of skips.

[00:30:04] Speaker 02:
No, it's the larger concept.

[00:30:06] Speaker 01:
Yeah.

[00:30:06] Speaker 02:
And they go on to it.

[00:30:07] Speaker 02:
I think they're just proving that we need to send this back to the board.

[00:30:16] Speaker 04:
OK.

[00:30:20] Speaker 04:
So the conclusion, if you look the next two pages down on page 20, they find from Moen,

[00:30:27] Speaker 04:
that petitioner does not identify any disclosure in Moyn involving a predetermined number of allowed skips, but relies on Moyn's description of detecting the absence of a signal once a set timing has elapsed.

[00:30:39] Speaker 01:
Well, there's no question that they don't get interruption because that's what they overcame.

[00:30:45] Speaker 01:
That's why they put all of these limitations in that have to do with a predetermined number of skips is because the prior art covered interruption.

[00:30:54] Speaker 01:
And so what I really feel like the board did here was kind of say that, you know, I don't feel like they gave you any specific construction on predetermined number of skips.

[00:31:05] Speaker 01:
I don't think anybody asked for one either, by the way.

[00:31:07] Speaker 01:
I think you said plain meaning or they said somebody said plain meaning.

[00:31:11] Speaker 01:
But I do think they found that the priority didn't rise to the level beyond just interruptions.

[00:31:18] Speaker 04:
That's right.

[00:31:19] Speaker 01:
Now, Kronberg to the side for this one for you, unfortunately.

[00:31:22] Speaker 01:
But that's what I feel like they did here.

[00:31:24] Speaker 01:
Is that what you think they did?

[00:31:27] Speaker 04:
I agree completely.

[00:31:29] Speaker 04:
And for Kronberg, I understand we'll have to argue it again.

[00:31:32] Speaker 01:
OK.

[00:31:33] Speaker 01:
Thank you.

[00:31:33] Speaker 01:
Let's restore all of Mr. Marsh's rebuttal time, because we went over with Mr. Brown.

[00:31:43] Speaker 03:
Thank you, Your Honors.

[00:31:44] Speaker 03:
With respect to the obviousness argument, let me give you some sites that may be helpful.

[00:31:50] Speaker 03:
Which patent are you talking about?

[00:31:51] Speaker 03:
So first, for the 321 patent, the sites to where we argued it in the petition are appendix 173 to 176.

[00:32:02] Speaker 03:
And the supporting declaration for the 321 patent, those sites are appendix 242.

[00:32:07] Speaker 01:
What is this?

[00:32:08] Speaker 01:
What were you arguing what?

[00:32:09] Speaker 01:
What are you?

[00:32:10] Speaker 01:
Is this the Kronberg?

[00:32:11] Speaker 01:
Kronberg.

[00:32:11] Speaker 01:
Crown II?

[00:32:12] Speaker 03:
With respect to the skips limitations, correct.

[00:32:14] Speaker 01:
This is ground two of Cronberg.

[00:32:16] Speaker 01:
Don't waste any of your rebuttal time on that.

[00:32:18] Speaker 01:
If you're not reading the room, you don't have to waste your time on that issue.

[00:32:21] Speaker 01:
If you're talking about, if this is directed to whether the board addressed something that you did not waive, you don't need to spend your rebuttal time on that.

[00:32:28] Speaker 03:
OK.

[00:32:29] Speaker 03:
Talk about the 770 instead.

[00:32:31] Speaker 03:
OK, so then for the 770, the side of the petition

[00:32:35] Speaker 03:
where we argued it under the headings, appendix 2035.

[00:32:38] Speaker 03:
Where you argued what?

[00:32:40] Speaker 03:
To 2038, where we argued that Cronberg helped teach the SCIPS limitations of the 770 patent.

[00:32:47] Speaker 03:
And then the supporting declaration sites for that are appendix 2113 and 2122.

[00:32:57] Speaker 03:
Those encompass more than just the section on the predetermined skips limitations, because we refer back to prior description.

[00:33:05] Speaker 02:
But the issue with respect to the 770 is not whether you properly raised it.

[00:33:08] Speaker 02:
The board agreed that you probably raised it.

[00:33:10] Speaker 02:
The question is, was their decision wrong in finding that you didn't establish obviousness based on Cronberg?

[00:33:17] Speaker 03:
So let me address that.

[00:33:19] Speaker 03:
On Appendix 67, which we just saw, the board says

[00:33:23] Speaker 03:
To the extent that petitioner tries to identify a predetermined number of skips in Chromeburg, we do not find adequate support or reasoning for petitioner's assertion that a larger or smaller predetermined number of skips could be selected by choosing an appropriate resistor size.

[00:33:40] Speaker 03:
The board cites to the Dutton declaration, our experts declaration, at paragraphs 105 and 104.

[00:33:47] Speaker 03:
But if you go to those pages, those are on pages

[00:33:52] Speaker 03:
Those are on pages appendix 2119 and 2120.

[00:33:57] Speaker 03:
If you go to those pages, you'll see in that section, we refer back to an earlier section with more description about Kronberg.

[00:34:05] Speaker 03:
And the important part is in paragraph 94, which is on pages

[00:34:10] Speaker 03:
2115 and 2116, where our expert points specifically at the top of 2116 to Kronberg.

[00:34:18] Speaker 00:
What is your argument in a nutshell that there is some sort of error with respect to the 2770 patent?

[00:34:24] Speaker 00:
I appreciate the citations.

[00:34:27] Speaker 00:
My clerks know I love a good citation, but I want to know your argument in a nutshell right now.

[00:34:31] Speaker 03:
Yeah.

[00:34:32] Speaker 03:
The board said that there was no support for the expert's opinion, but didn't look back to what he had cited back to, which was

[00:34:40] Speaker 03:
column 11, lines 34 to 61 of Kroeberg, which lays out the choosing of the resistor sizes to choose different time periods, to choose the different amount of time or the different number of skips that would have been allowed during that time period.

[00:34:56] Speaker 03:
That's what they missed.

[00:34:57] Speaker 01:
Your time is up.

[00:34:57] Speaker 01:
I thank both counsels.

[00:34:58] Speaker 01:
This case is taken.

[00:34:59] Speaker 03:
Thank you, Your Honor.