[00:00:01] Speaker 04: Our final case is number 232185, Lynx Labs, Inc. [00:00:06] Speaker 04: versus Home Depot, USA. [00:00:45] Speaker 00: Thank you, Your Honor, and may it please the court. [00:00:46] Speaker 00: I'm Stephen Bride for PatentOwner Link Labs, and with me are Jim Carmichael and Steve Schreiner. [00:00:53] Speaker 02: Can I just ask you a preliminary question, which is, you heard the options we discussed in terms of how we would handle the first case. [00:01:00] Speaker 02: Does that have, what we do in the first case, have any bearing about anything going on in this case? [00:01:05] Speaker 00: So, in the first case, I think [00:01:08] Speaker 00: As briefed, the district court's construction of forward voltage was not challenged. [00:01:15] Speaker 00: Here we are challenging the district court's construction of forward voltage, or I'm sorry, the board's construction of forward voltage. [00:01:22] Speaker 00: So that's the only issue is that we have argued that the board's construction of forward voltage is incorrect here. [00:01:32] Speaker 00: And that may have an impact on the other case, depending on what that construction is. [00:01:40] Speaker 00: Does that make sense, Your Honor? [00:01:42] Speaker 02: Just go ahead. [00:01:44] Speaker 00: We believe that the final written decision should be reversed without remand. [00:01:48] Speaker 00: The appeal has two issues of alleged impossibility. [00:01:51] Speaker 00: First, they're for claims 4, 11, and 18, and second, for claims 3, 10, and 17. [00:01:58] Speaker 00: Both of these issues are essentially claim interpretation, so they are de novo review. [00:02:03] Speaker 00: In both cases, the board is interpreting facially possible claims as impossible. [00:02:10] Speaker 00: That is, the claims when you read them are clearly possible, and the board has come up with interpretations of the claims that render them impossible. [00:02:17] Speaker 00: Constructions that create impossibility should be viewed with extreme skepticism. [00:02:23] Speaker 00: For the first set of claims, the limitations at issue are directed to an arrangement similar to a desk land. [00:02:28] Speaker 00: You have an LED lighting device. [00:02:30] Speaker 00: It claims 4, 11, and 18. [00:02:33] Speaker 00: We have an LED lighting device. [00:02:35] Speaker 00: It comprises a switch. [00:02:36] Speaker 00: So a switch is part of the device. [00:02:38] Speaker 00: And the switch is connected. [00:02:39] Speaker 00: It is connected between the power source and the lighting device. [00:02:43] Speaker 00: This is similar to a desk lamp, a desk lamp that has a switch and has a wire to the wall. [00:02:48] Speaker 00: That's all this is. [00:02:49] Speaker 00: That's all claim, the limitation of claim four is talking about. [00:02:53] Speaker 00: A desk lamp is not impossible. [00:02:56] Speaker 00: For the second set of claims, [00:02:57] Speaker 00: The claim language requires, quote, at least two different DC forward voltages, end quote. [00:03:05] Speaker 00: The board has created impossibility by construing two different DC forward voltages to mean one single voltage. [00:03:13] Speaker 00: And that's the board's construction of the forward voltages, the minimum forward voltage, as interpreted by petitioner, to mean one single minimum forward voltage. [00:03:24] Speaker 00: So going back to claims 411 and 18, the board has interpreted these claims to create impossibility when none exists. [00:03:32] Speaker 00: Again, claim one requires an LED lighting device comprising a switch. [00:03:39] Speaker 00: This is, for example, a desk lamp that has a switch. [00:03:42] Speaker 00: You just take it out of the box and stick it on your desk and plug it in. [00:03:45] Speaker 00: Claim four, which is a dish jill, recites the LED lighting device of claim one. [00:03:49] Speaker 00: So that's the desk lamp, wherein the switch is connected between the AC voltage power source and the LED lighting device. [00:03:58] Speaker 00: So in this case, you have a switch that is part of the desk lamp. [00:04:02] Speaker 04: So if you lose on the claim construction, you lose, period, right? [00:04:08] Speaker 00: Yes, impossibility is entirely the plane construction issue, so if the planes are impossible, we do not have a target output. [00:04:16] Speaker 00: But we believe that the planes are facially possible, if that makes sense, Your Honor. [00:04:22] Speaker 00: So the desktop has a switch, and the switch has a connection that runs from the lamp to the power source. [00:04:29] Speaker 00: And patent order has shown how these claims could be possible. [00:04:32] Speaker 00: It's shown annotations of page page 15 of appellant's brief, for example, which illustrates an arrangement similar to a desk lamp that is clearly possible. [00:04:42] Speaker 00: Anybody reading the claim without first assuming that the claim is impossible understands that this is what appellant is what applicant is claiming. [00:04:51] Speaker 00: And neither the petition nor the board ever squarely addresses patent owners construction interpretation here. [00:04:58] Speaker 00: Something like a desk lamp is connected to a power source. [00:05:03] Speaker 00: A petitioner argues that the claim requires the switches both within the LED lighting device and at the same time external to the LED lighting device. [00:05:13] Speaker 00: But those words aren't in the claims. [00:05:15] Speaker 00: The claims simply require that the LED lighting device comprises the switch, that it's part of the switch, and that the switch is connected to the AC power source. [00:05:27] Speaker 00: is connected between the LED lighting device and the AC voltage power source. [00:05:32] Speaker 00: It does not require that the switch itself is between the LED lighting device and the AC voltage power source. [00:05:41] Speaker 00: This court's precedent is clear that claims are not. [00:05:43] Speaker 04: So why was the board wrong in looking to the predecessor patent prosecution history for a definition of forward voltage that shows its minimum operative voltage? [00:05:56] Speaker 00: Right. [00:05:56] Speaker 00: Thank you, Your Honor. [00:05:58] Speaker 00: First of all, to clarify, that's for claims 3, 10, and 17. [00:06:01] Speaker 00: It doesn't really address claims 4, 11, and 18. [00:06:03] Speaker 00: So that's a separate issue. [00:06:06] Speaker 00: The reason the board was wrong is because the claims require at least [00:06:11] Speaker 00: And now I'm talking about planes 3, 10, and 17, at least two different DC forward voltages. [00:06:17] Speaker 00: So that's what the claim requires. [00:06:23] Speaker 00: When we have a claim here that is obvious, it's clearly possible. [00:06:27] Speaker 00: You can have two different DC4 voltages to a circuit. [00:06:31] Speaker 00: That's all the claim requires. [00:06:32] Speaker 00: There's two LED circuits and you provide more than one voltage to both of them. [00:06:38] Speaker 00: That's all we're doing, switching from three volts to three and a half or four volts, whatever. [00:06:42] Speaker 00: That's clearly possible. [00:06:44] Speaker 00: The board's construction of minimum voltage [00:06:48] Speaker 00: as a single minimum directly contradicts the plain language of the claims. [00:06:53] Speaker 00: So they are starting with the prosecution history rather than the plain language. [00:06:57] Speaker 04: I don't understand what you're saying. [00:06:59] Speaker 04: I mean, two forward voltages means two different voltages that are minimum for the operation of the LED circuit. [00:07:09] Speaker 00: I take Your Honor's point. [00:07:11] Speaker 00: That's not the way the petitioner is interpreting it. [00:07:13] Speaker 00: They're saying that this claim cannot be possible because you have [00:07:17] Speaker 00: because at least two different DC forward voltages cannot exist because you can only ever have one single forward voltage to a circuit. [00:07:25] Speaker 04: The problem is this case is presented to us on a simple question with respect to these claims as to whether the construction of forward voltage is correct or not. [00:07:35] Speaker 04: You seem to be straying into arguments that go beyond that. [00:07:39] Speaker 04: And my question to you is why isn't forward voltage properly construed based on the prosecution history of this predecessor patent? [00:07:48] Speaker 00: Because that is prosecution history disclaimer. [00:07:50] Speaker 00: So it has to be clear and unmistakable. [00:07:52] Speaker 00: Disavow. [00:07:53] Speaker 04: No. [00:07:53] Speaker 04: Now there are... I don't think so. [00:07:55] Speaker 04: I mean, it's just, what's the meaning of the claim? [00:07:59] Speaker 04: And if there's a statement by the patentee that the claim means such and such, [00:08:08] Speaker 04: in a predecessor patent using the same language, and that seems to carry over under our cases. [00:08:14] Speaker 00: Well, Your Honor, I think one point with that is that we have to start with the claim language. [00:08:21] Speaker 00: And we are taking a construction that directly contradicts the clear language of the claims, which says at least two different DC forward voltages. [00:08:30] Speaker 00: That's what the claim language says. [00:08:31] Speaker 00: The prosecution history is directly contradicting that. [00:08:35] Speaker 00: And there's case law that says a construction that renders the claimed invention inoperable, as here, that the board and the petitioner are arguing, should be viewed with extreme skepticism. [00:08:45] Speaker 00: That's the Talbot fuel systems case. [00:08:47] Speaker 00: We've cited that in our briefing. [00:08:49] Speaker 00: There are several of the cases that cited that and other cases along those lines we've cited. [00:08:53] Speaker 00: The talk about the starting point needs to be the claim language. [00:08:56] Speaker 00: And then when we look at the prosecution history, that's after the claim language and specification. [00:09:01] Speaker 00: And there you have to have a clear and unmistakable disavowal. [00:09:04] Speaker 00: the disavowal here is not clear or unmistakable. [00:09:09] Speaker 02: Why isn't this a lexicography argument? [00:09:11] Speaker 02: I mean, just the title we want to put on it, whether you put on it, we need clear. [00:09:16] Speaker 02: Why isn't this just lexicography? [00:09:19] Speaker 02: It's just a term we use to say, yes, there's a definition. [00:09:22] Speaker 00: It's lexicography. [00:09:23] Speaker 00: Yes, Your Honor. [00:09:23] Speaker 00: And when you look at Phillips, when you look at Thorner, when you look at the cases talking about prosecution as a disclaimer, [00:09:29] Speaker 00: Whether it's lexicography or disavowal you want to talk about, it's basically the same standard. [00:09:34] Speaker 00: You're limiting the claim based on something that's said in the prosecution or specification. [00:09:38] Speaker 00: So it's two sides of the coin, essentially, whether you talk about lexicography or prosecution history or disclaimer, since this is in the prosecution. [00:09:47] Speaker 00: A prosecution history disclaimer, you have to have a clear anonymous statement that disavows. [00:09:51] Speaker 04: Let's assume we reject that proposition. [00:09:53] Speaker 04: That's not how I read the cases. [00:09:55] Speaker 04: I read our cases as saying that you can interpret the claim in the light of the prosecution history. [00:10:01] Speaker 04: That's what Philip says. [00:10:03] Speaker 04: That's what they're doing here. [00:10:04] Speaker 04: They're saying the claim in the context of the prosecution history was set to mean by the patentee minimal operating voltage. [00:10:13] Speaker 04: We think that same definition applies here since it's a related patent. [00:10:17] Speaker 04: What's wrong with that? [00:10:19] Speaker 00: Your Honor, setting aside the contradiction with the claim language itself, when you look at the prosecution history, it's talking about as used in claim one of the claim in the parent application at that time. [00:10:35] Speaker 00: It's talking about, it's calving what it says in the prosecution history to that parent application. [00:10:48] Speaker 00: So that's one point. [00:10:49] Speaker 00: Let me get organized here. [00:10:53] Speaker 00: Yeah, there are a couple different things in that prosecution history that are different. [00:10:56] Speaker 00: It's a different situation that it's talking about. [00:10:58] Speaker 00: It's not talking about whether two different DC forward voltages means a single minimum forward voltage. [00:11:04] Speaker 00: It's talking about in that application, the prosecution history, whether forward voltage from a wall outlet like AC mains is a forward voltage. [00:11:13] Speaker 00: That's what that statement's talking about. [00:11:15] Speaker 00: is not saying that there can't ever be two different forward voltages to an LED circuit. [00:11:20] Speaker 00: That's the first thing. [00:11:21] Speaker 00: It involves different prior art. [00:11:22] Speaker 00: It's not really that important here, but the prior art there was different than anything in the PGR. [00:11:27] Speaker 00: And the third issue is here the claims specifically require two different forward voltages. [00:11:32] Speaker 00: In the claim language at issue in the prosecution history, [00:11:36] Speaker 00: The claims at issue there were, quote, a forward voltage of 6 volts or greater. [00:11:43] Speaker 00: So the claim language there is talking about one single, arguably one single voltage. [00:11:47] Speaker 00: I don't know. [00:11:48] Speaker 00: That issue hasn't been addressed squarely, what the applicant actually meant in the context of those claims. [00:11:54] Speaker 00: But these claims are materially different, because you have two different DC forward voltages. [00:11:59] Speaker 00: So there, the patent applicant was talking about one single forward voltage. [00:12:03] Speaker 00: Here, the patent applicant is talking about two different [00:12:07] Speaker 00: DC forward voltages. [00:12:08] Speaker 03: Does the definition of forward voltage itself change or is it just there's in one scenario there's one forward voltage which is the minimum to do whatever for that and in the two forward voltages the definition for voltage is still the same it's the minimum to accomplish something but that minimum may be two different values because there's two different forward voltages. [00:12:34] Speaker 03: I your honor I think that that's a question and that that's a problem with the board's construction is because it is just saying you can only ever have one minimum voltage across an LED circuit and now what we've been screwed that's didn't answer my question I want to know what the depth what's wrong with the definition of for the term forward voltage as a minimum voltage blah blah blah is that an okay definition it seems to me your problem is not so much with that definition [00:13:03] Speaker 03: but how they then applied it to the two forward voltage claim language or whatever. [00:13:11] Speaker 00: Yes, that is the part. [00:13:13] Speaker 00: You're absolutely right, Your Honor. [00:13:13] Speaker 00: That is a part of the issue, is the application to the language. [00:13:17] Speaker 03: So is it proper to define forward voltage as the minimum and then spin out from there? [00:13:23] Speaker 03: I don't have the exact language. [00:13:25] Speaker 00: We don't think that's the right, the correct. [00:13:28] Speaker 00: I think when we look back at what the Athlon was actually saying in the prosecution history, the document is citing, it said forward voltage defines the minimum. [00:13:35] Speaker 00: So it's actually saying it's the minimum or greater until you reach that point where the LED blows out. [00:13:40] Speaker 00: That's what the document, the bald engineer document that we've cited in our... I don't understand the difference between what I said and you just said. [00:13:48] Speaker 03: If forward voltage is the minimum, [00:13:50] Speaker 03: the minimum by itself includes that it can be above. [00:13:56] Speaker 03: If that's not explicit, that certainly seems to me what the board meant, but for a voltage is the minimum to do something. [00:14:03] Speaker 00: The minimum or above? [00:14:04] Speaker 00: Yes, yes. [00:14:05] Speaker 00: I think that with that understanding, I think that that is something that the patent owner agrees with, the minimum or above. [00:14:13] Speaker 00: It's a certain range of voltages that you apply to operate the circuit, the LED. [00:14:18] Speaker 00: We used operating. [00:14:20] Speaker 00: Our construction with forward voltage is the operating voltage. [00:14:25] Speaker 00: But if you have a certain, you know, you start at the minimum and then you go to wherever is safe for the LED or LED circuit before the voltage gets too high and the LED burns out, that's what we're thinking of forward voltage at. [00:14:38] Speaker 00: That's what our operating forward voltage is, which is, you know, as your honor explained, the minimum or above. [00:14:45] Speaker 03: How's that different than what the words construction is? [00:14:48] Speaker 00: They're interpreting the minimum here to be one single. [00:14:53] Speaker 00: And that's the petition of page 30, for example. [00:14:55] Speaker 03: That's a different construction than what forward voltage means. [00:14:59] Speaker 03: That's a construction of the construction. [00:15:03] Speaker 03: Let me just ask you this. [00:15:06] Speaker 03: At least according to my notes, the definition of forward voltage is the minimum voltage difference required between the anode and cathode of the LEDs in the claim circuit to allow current to flow through the LEDs. [00:15:18] Speaker 03: What's your problem with that? [00:15:20] Speaker 00: Because the way, well, as you've elaborated, Your Honor. [00:15:25] Speaker 00: No, no, no. [00:15:26] Speaker 03: Is that a proper construction of forward voltage? [00:15:29] Speaker 00: With the understanding that forward voltage can be the minimum or greater, yes. [00:15:33] Speaker 00: Yes, that understanding it is not just one single voltage for an entire LED circuit that might have 10 LEDs. [00:15:42] Speaker 04: Under that construction, you'd lose the last case, right? [00:15:48] Speaker 00: Well, Your Honor, I don't want to comment on the last case, if that makes sense, Your Honor. [00:15:58] Speaker 00: But I think that we did dispute below, in the last case, the construction for forward voltage. [00:16:04] Speaker 00: And I think in the last case, [00:16:06] Speaker 00: There's some realization that the forward voltage is the minimum or greater. [00:16:10] Speaker 00: But here, for this final written decision, the board is assuming that construction means one minimum voltage can ever be applied to a circuit. [00:16:20] Speaker 04: OK. [00:16:20] Speaker 04: I think we're out of time. [00:16:21] Speaker 04: We'll give you two minutes. [00:16:23] Speaker 04: Great. [00:16:23] Speaker 04: Thank you, Your Honor. [00:16:25] Speaker 04: Mr. Erickson. [00:16:32] Speaker 01: May I please the court? [00:16:32] Speaker 01: Brian Erickson for Appellee Home Depot. [00:16:36] Speaker 01: The court correctly construed the term forward voltage based on the disclaimer and definition in the final history. [00:16:48] Speaker 01: If the court affirms that construction, then there's no dispute that claims 3, 10, and 17 are invalid and the 341 patent is eligible for post-grant review. [00:16:58] Speaker 01: The board's correction was correct and should be affirmed because the definition and disclaimer is clear and unambiguous. [00:17:05] Speaker 01: In the appendix at page 2153, you see the claim at issue at the time recited a forward voltage of 6 volts or greater. [00:17:16] Speaker 01: The Prior Art Colby reference disclosed a voltage of 120 volts, and it was an operating voltage. [00:17:24] Speaker 01: the LEDs worked in Colby. [00:17:26] Speaker 01: So that's 120 volts as an operating voltage. [00:17:30] Speaker 01: To distinguish Colby, they put forward voltage in quotes and defined it, as was previously read into the record, as the minimum voltage difference required between the anode and cathode of the LEDs in the claimed circuit to allow a current to flow through the LEDs. [00:17:49] Speaker 01: Based on that definition, they distinguished Colby. [00:17:52] Speaker 01: They said, well, 120 volts is operating. [00:17:55] Speaker 01: It's clearly working. [00:17:57] Speaker 01: But there's no evidence that that was the minimum voltage. [00:18:00] Speaker 01: And so they did define forward voltage to be limited to the minimum voltage. [00:18:06] Speaker 01: And that was the only basis they had to distinguish Colby. [00:18:10] Speaker 01: And it worked. [00:18:10] Speaker 01: And that claim was granted. [00:18:13] Speaker 01: The limitation is identical. [00:18:15] Speaker 01: Forward voltage is identical in both patents. [00:18:18] Speaker 01: And the context in which it used is identical. [00:18:20] Speaker 01: It's describing an electrical property of an LED circuit. [00:18:25] Speaker 01: And in fact, it's the exact same LED circuit. [00:18:28] Speaker 01: If you look at the appendix at page 2153, the parent patent was at issue at the time of the disclaimer. [00:18:35] Speaker 01: claimed the first operating LED circuit and at least one additional LED circuit. [00:18:41] Speaker 01: Those are the exact same LED circuits claimed in the child patent and the claims that are at issue here. [00:18:47] Speaker 01: So we have the exact same claim term using the exact same context to define an electrical characteristic, an electrical property of an LED circuit. [00:18:56] Speaker 01: So the context is identical, and it means it's only the minimum. [00:19:00] Speaker 01: There is one value for that LED circuit. [00:19:03] Speaker 01: It's just the minimum. [00:19:04] Speaker 01: It's not the minimum or greater. [00:19:05] Speaker 01: The minimum or greater would include all the operating voltages, such as the 120 volts in Colby. [00:19:12] Speaker 01: So this definition was clear. [00:19:14] Speaker 01: It's unambiguous. [00:19:15] Speaker 01: It was the only basis to distinguish Colby, and it should be applied in the child patent, which uses the same term [00:19:23] Speaker 01: in the same context. [00:19:24] Speaker 01: In fact, in the appendix at page 31-12, this child patent, the claims that are issued now were rejected for obvious type double patenting over these claims in the parent and were allowed after the terminal disclaimer. [00:19:38] Speaker 01: So the context is identical, the claim term is identical, the express definition and disclaimer should be applied, and the board's construction should be affirmed. [00:19:47] Speaker 01: And there's no dispute under the board's construction [00:19:51] Speaker 01: There's no dispute that the claims 3, 10, and 17 are invalid and the patent is eligible for post-grant review. [00:20:01] Speaker 01: There are no questions about the forward voltage claims. [00:20:03] Speaker 01: I'll move to the other claims. [00:20:08] Speaker 01: Go ahead. [00:20:08] Speaker 01: The board correctly held that dependent claims 4, 11, and 18 contradict the independent claims from which they depend and therefore are invalid as indefinite and is lacking written description and enablement. [00:20:21] Speaker 01: Claim 1 defines the LED lighting device to include the switch. [00:20:25] Speaker 01: Claim 1 also recites that that LED lighting device is configured to connect to an AC voltage power source. [00:20:33] Speaker 01: So Claim 1 has defined the two endpoints already and said they're configured to be connectable. [00:20:40] Speaker 01: Claim 4 then recites that the switch [00:20:43] Speaker 01: is connected between the AC power voltage source and the LED lighting circuit. [00:20:49] Speaker 01: So claim four takes the two endpoints that were defined by claim one and says the switch is connected between those two endpoints. [00:20:57] Speaker 01: The board correctly recognized that that contradicted the definition in claim one that defined the switch to be part of one of those endpoints. [00:21:04] Speaker 01: It can't be one of the endpoints and be connected between the two endpoints. [00:21:09] Speaker 01: So the board did not construe the term per se. [00:21:15] Speaker 01: No one petitioner or patent owner has offered a formal construction of this term. [00:21:20] Speaker 01: The board didn't formally construe it. [00:21:21] Speaker 01: The board just applied the claim as written and recognized the contradiction. [00:21:28] Speaker 01: There are no other questions. [00:21:31] Speaker 01: I respectfully request the court affirm the board's decision and I'll return the remainder of my time. [00:21:37] Speaker 04: Okay, thank you. [00:21:39] Speaker 04: Mr. McBride. [00:21:50] Speaker 00: Thank you, your honor. [00:21:57] Speaker 00: Turning first are claims 411 and 18. [00:21:59] Speaker 00: I think this highlights [00:22:02] Speaker 00: What our problem with the board's decision was is the claim doesn't require the switch to be between the LED lighting device and the power source. [00:22:12] Speaker 00: It just requires the switch to be connected between the two. [00:22:15] Speaker 00: It just requires the connection, like a power cord or a plug or something like that, to be between the power supply and the device itself. [00:22:22] Speaker 00: So you could have a lamp with a switch attached to it that has a wire running out of it to the wall to a power source. [00:22:28] Speaker 00: And that switch is connected between the lighting device [00:22:32] Speaker 00: and the power supply. [00:22:37] Speaker 00: With respect to claims 3, 10, 11, 17, and the claim construction issue, I think, again, we do agree with your honor, Judge Hughes, that it's the minimum or greater. [00:22:50] Speaker 00: It's not one single minimum voltage. [00:22:53] Speaker 00: That's not what [00:22:54] Speaker 00: the applicant was trying to say in the prosecution history, he was first trying to distinguish that forward voltage is not generally AC mains. [00:23:03] Speaker 00: And that was the one issue he decided. [00:23:06] Speaker 00: So a forward voltage of six volts or greater, as used in the prosecution history, is materially different than the claim language here, which is at least two different DC forward voltages. [00:23:19] Speaker 00: And with that, Your Honors, if you have no further questions, I'll conclude my presentation. [00:23:24] Speaker 04: Okay, thank you. [00:23:25] Speaker 04: Thank you. [00:23:25] Speaker 04: Well, Council cases submitted that concludes our session for this morning.