[00:00:00] Speaker 01:
The next case for argument is 24-1079, Nera Innovations versus Quarters.

[00:00:09] Speaker 01:
We're ready whenever you are, sir.

[00:00:12] Speaker 01:
Thank you, Your Honor.

[00:00:14] Speaker 04:
Good morning, may it please the court.

[00:00:16] Speaker 04:
Robert Octor here on behalf of Nera Innovations, the successor in interest to Scromoge Technology, which is the owner of U.S.

[00:00:24] Speaker 04:
patent number 7825537, which we will call the 537 patent.

[00:00:29] Speaker 04:
I say this for the benefit of the students, I know the court understands this.

[00:00:33] Speaker 01:
And you want to tell a little background just in terms of how we got here?

[00:00:37] Speaker 04:
Yes, Your Honor.

[00:00:38] Speaker 04:
The 537 patent is directed to inductive charging.

[00:00:42] Speaker 04:
Inductive charging is the way in which your cell phone in all likelihood gets charged without being directly plugged in.

[00:00:49] Speaker 04:
When you put it on top of a charger, induction is the process of magnetic fields going from the charger to your phone to charge the battery.

[00:00:58] Speaker 01:
I have a feeling that the students know all of this.

[00:01:01] Speaker 04:
It's entirely likely, Your Honor, but nevertheless.

[00:01:05] Speaker 04:
The 537 patent was subjected to an inter-party review that was petitioned by Apple.

[00:01:10] Speaker 04:
Apple has since settled the case and moved on, which is why the Patent and Trademark Office is here as the intervener to represent the decision of the board in this matter.

[00:01:22] Speaker 04:
The inter-party review found all challenge claims unpatentable.

[00:01:26] Speaker 04:
over various prior art patents and published patent applications.

[00:01:30] Speaker 01:
And was it obvious or anticipation?

[00:01:32] Speaker 04:
Both, Your Honor, depending on which claims and which references.

[00:01:35] Speaker 04:
There were about six references total involved.

[00:01:39] Speaker 04:
NERA is only challenging the findings for claims 16 and 1922, 19 through 22 of the 537 patent here.

[00:01:49] Speaker 04:
And we're only challenging those in the context of the combination of

[00:01:56] Speaker 04:
FLOWERDOO and JANG.

[00:01:58] Speaker 01:
FLOWERDOO is too good.

[00:01:59] Speaker 01:
You start with a plain construction argument, right?

[00:02:02] Speaker 01:
And on that argument, your argument, I think, is that you treat electrically connected and magnetically connected as two completely separate, mutually exclusive things.

[00:02:16] Speaker 01:
And where is there support for your proposed instruction as meaning only electrically connected with no magnetism involved?

[00:02:24] Speaker 01:
Where is there support there in the specification?

[00:02:27] Speaker 04:
The support in the specification is that the detailed description on the drawings only show a direct electrical connection

[00:02:37] Speaker 04:
between the inductive coil and the load, which are the subjects of claim 15.

[00:02:44] Speaker 04:
And to clarify, although we are discussing claim 16, claim 16 depends on claim 15, which in turn depends on claim 14, which in turn depends on claim 12, which is why the- Can you point us to a particular part of the patent to support up your argument you're making with respect to electrically controlled?

[00:03:04] Speaker 04:
Electrically coupled, first off, Your Honor, in the drawings, figures one and two, if you see the inductive, the first inductive circuit, the coil, is directly wired connected to the load, which is the box that's on the right, and the two figures.

[00:03:22] Speaker 04:
And then the word coupled appears approximately

[00:03:25] Speaker 04:
I think it was 19 times within the specification, the detailed description of 537 patent.

[00:03:31] Speaker 04:
And every one of those occurrences is either described as electrically coupled, specifically with the word electrically, or it refers to a direct electrical connection.

[00:03:42] Speaker 04:
And that is because, in some cases, it's referring to a DC connection, a direct current, which can only be done through a direct wire connection, cannot be inductively coupled, or

[00:03:54] Speaker 01:
Well, I think the board took what you're saying, your argument, to hurt you rather than to help you.

[00:04:01] Speaker 01:
Because there are other claims that use electrically connected, which in the board's view established that when they don't use the term, they knew how to use electrically connected when they wanted to limit to electrically connected.

[00:04:14] Speaker 01:
And the absence of the word electrically in the other claims demonstrates that it's not so limited.

[00:04:20] Speaker 01:
So that was the board's rationale.

[00:04:22] Speaker 01:
Why isn't that completely sensible?

[00:04:24] Speaker 04:
It was the board's rationale and partner, Your Honor.

[00:04:27] Speaker 04:
It was actually the term electrically coupled in this case.

[00:04:29] Speaker 04:
And that was in the two of the claims that were not at issue in this IPR.

[00:04:34] Speaker 04:
I think it was claims 26 and 27.

[00:04:37] Speaker 04:
And in that case, we argued that claim differentiation does not apply because there are substantial differences between

[00:04:45] Speaker 04:
those claims, 26 and 27, and the claims that are specific.

[00:04:48] Speaker 01:
I think it's claims 23 and 27, just for the record.

[00:04:50] Speaker 04:
Oh, 23, that's what I said.

[00:04:51] Speaker 01:
But it's not really just a claim differentiation issue.

[00:04:54] Speaker 01:
We have plenty of claim differentiations.

[00:04:56] Speaker 01:
It's the notion that when you mean something, as we assume, either you limit it or you don't.

[00:05:02] Speaker 01:
And if it's not limited, then it's not limited.

[00:05:04] Speaker 01:
So it's not so much a technically

[00:05:07] Speaker 01:
claim differentiation argument.

[00:05:09] Speaker 01:
It's just a demonstration of what you need to say in order to get a narrow claim construction, what the words in the claim say.

[00:05:16] Speaker 04:
Your Honor, our position is that because of the consistent use of coupled to only mean electrically coupled in this case, the fact that it has to mean electrically coupled in claim 14, because claim 14 involves a DC connection, therefore has to be a direct wire connection.

[00:05:36] Speaker 04:
The precept, or the concept, if you will, that one should construe a claim term consistently throughout a patent, that term being couple, either coupled or coupling, but still the word couple, necessitates construing the word couple consistently as being electrically coupled.

[00:05:53] Speaker 04:
Otherwise, you have two claims, but one claim, if you look at the way they incorporate by reference the dependent claims, using the word couple to do mean two different things.

[00:06:03] Speaker 00:
Do you have access to the patent?

[00:06:05] Speaker 00:
Because I want to just

[00:06:06] Speaker 00:
Make sure we kind of more ourselves in the actual language of the pad itself.

[00:06:25] Speaker 00:
And feel free to bring that binder on up back here to the podium.

[00:06:44] Speaker 00:
And then once you find all of that, I want to look at and follow up on Judge Proska's questions here about it looks like if you look at claims 14 and 15, I believe it even talks about coupling or coupled without the use of electric, electrically in front of it.

[00:07:04] Speaker 00:
Whereas if you look at claims 23 and 27, it has electrically coupled in front of, or electrically in front of coupled in each of those claims.

[00:07:13] Speaker 00:
According to your argument, I think you're saying...

[00:07:16] Speaker 00:
that whether we're looking at claims 14 and 15, we're just using the word coupled, or we look at claims 23 and 27, we use allegedly coupled.

[00:07:24] Speaker 00:
You're saying that's all going to be the same thing.

[00:07:26] Speaker 00:
Is that your argument on that?

[00:07:27] Speaker 04:
Yes, Your Honor, that's correct.

[00:07:28] Speaker 04:
And as we pointed out in our reply brief, the claim differentiation should not apply where there are substantial significant differences between the claims.

[00:07:37] Speaker 04:
And we identified the differences between claims 23 and 27 and the claims at issue.

[00:07:44] Speaker 04:
14, 15.

[00:07:44] Speaker 03:
If I could come back and put aside claim differentiation, what about common sense?

[00:07:50] Speaker 03:
What reason would the patentee have for calling out electrically coupled in claims 23 and 27 if the patentee meant coupled on its own to simply and always and only mean electrically coupled in all the other claims?

[00:08:08] Speaker 04:
The answer, Your Honor, is I believe that they were looking for a very specific description that pretty much corresponded to the specification in the later claims, and they were breaking it up into the dependent claims early on.

[00:08:22] Speaker 04:
But clearly, a person of ordinary skill in the art would have understood that you had to be electrically coupled in the context of claim 14, because that refers to the connection, the direct current connection.

[00:08:34] Speaker 04:
and before it's turned into an alternating current, which can be inductively coupled.

[00:08:39] Speaker 04:
Given that you have to construe coupled to mean electrically coupled and claim 14, then it follows that you have to

[00:08:46] Speaker 04:
construe the word coupled the same way as the same word appearing in the second claim.

[00:08:51] Speaker 03:
Or you should.

[00:08:51] Speaker 03:
I'm sorry.

[00:08:52] Speaker 03:
I thought the board's construction was broader than electrically coupled.

[00:08:57] Speaker 03:
So it would include electrically coupled.

[00:08:59] Speaker 03:
It's just not limited to it.

[00:09:01] Speaker 04:
It is broader, Your Honor.

[00:09:02] Speaker 04:
It actually necessarily includes inductively coupled because the board's construction was necessary for the sense coil to be

[00:09:11] Speaker 04:
identified as the load, which is what was done in the context of the flowerdew prior art reference, had it been electrically coupled.

[00:09:20] Speaker 03:
So is that responsive to your claim 14 point?

[00:09:24] Speaker 03:
Yes, sir.

[00:09:26] Speaker 03:
Okay, but doesn't that mean the board is correct?

[00:09:29] Speaker 03:
That coupled includes electrically coupled.

[00:09:32] Speaker 03:
And therefore claim 14 doesn't pose a problem for the board's analysis?

[00:09:36] Speaker 03:
That's correct, Your Honor.

[00:09:37] Speaker 04:
The issue is that we believe the word coupled should have been construed consistently in claims 14 and 15 as well.

[00:09:45] Speaker 03:
But it is not construed consistently to include but not be limited to electrically coupling, right?

[00:09:51] Speaker 04:
Except that you could not have inductive coupling in the context of claim 14 because of the physical constraints of the

[00:09:59] Speaker 04:
elements that are connected in claim 14.

[00:10:02] Speaker 01:
Okay, why do we move on?

[00:10:03] Speaker 01:
Your second argument with respect to the IPR is the absence of motivation to combine the references?

[00:10:10] Speaker 04:
Yes, Your Honor.

[00:10:16] Speaker 04:
With respect to claims 12 and 16, we can start with claim 12.

[00:10:23] Speaker 04:
The board held that there was a motivation to combine the Flowerdew and Jang references.

[00:10:29] Speaker 04:
in order to meet the claim limitations.

[00:10:32] Speaker 04:
The specific claim limitation that was being addressed with respect to claim 12 was 12.3, which is rather long, but it's a switch element configured for selectively applying a time-varying electric current to said first inductive element to produce a time-varying magnetic field, set time-varying magnetic field inducing electric currents, that second inductive element.

[00:10:57] Speaker 04:
The PTAB found that a person of ordinary skill in the art would have been motivated to combine Flowerdew and Yang, and specifically to use Yang's disclosure of electronically controlled switches in what Yang identified as a variable frequency resonant inverter for what was the charging circuit in Flowerdew as part of Flowerdew's inductive battery charger.

[00:11:24] Speaker 04:
Respectfully, that was error.

[00:11:29] Speaker 04:
And the PTAF found that the motivation to combine would have come from Flowerdu and Jang's description of a mechanism for providing AC flow to a charging coil.

[00:11:42] Speaker 04:
And second, that the use of Jang's switches was a known way to do that.

[00:11:50] Speaker 04:
The board then ruled that

[00:11:53] Speaker 04:
The petitioner only needed to show that Jang was a suitable option to be used, and that was sufficient to satisfy the motion, the motivation to comply.

[00:12:10] Speaker 00:
didn't use the right approach or test, what do you contend is what needed to be done by the board here with my vision back?

[00:12:18] Speaker 04:
That's correct, Your Honor.

[00:12:19] Speaker 04:
Our contention is that the board should have followed the now teachings of Virtec vision and considered whether or not there was evidence of a finite number of identified predictable solutions or a design need or market pressure consistent with KSR.

[00:12:38] Speaker 04:
In other words, there must be a reason for combining other than that these elements were simply known in the prior art.

[00:12:47] Speaker 04:
And they did not make any such finding.

[00:12:48] Speaker 04:
They simply said that it was sufficient, that it was there, and you could use it.

[00:12:53] Speaker 04:
And a similar ruling was made with respect to Claim 16, albeit with a different element, the limitation.

[00:13:02] Speaker 03:
I thought they said that one of the prior references is pretty general, and you could get the details from the other one.

[00:13:09] Speaker 03:
And that would give a person of skill and the art the motivation to put the details together with the general approach.

[00:13:14] Speaker 04:
Yes, Your Honor.

[00:13:15] Speaker 04:
Their assertion was that Flowerdew had a simplified explanation

[00:13:21] Speaker 04:
and version of it.

[00:13:22] Speaker 04:
And the issue there was there still wasn't a showing of any of a identified predictable solutions or any kind of design need or market pressure.

[00:13:31] Speaker 03:
But that's not the only basis on which KSR says there can be a motivation to combine.

[00:13:37] Speaker 03:
So those are examples where there is a motivation to combine.

[00:13:40] Speaker 03:
But they're not the only reasons, are they?

[00:13:42] Speaker 04:
No, Your Honor, they're not.

[00:13:43] Speaker 04:
There are a few other areas in KSR where they specifically identify.

[00:13:49] Speaker 04:
Pull them if you'd like.

[00:13:50] Speaker 04:
I haven't highlighted them.

[00:13:52] Speaker 04:
I'm sure this court's more than familiar with KSR.

[00:13:57] Speaker 01:
Anything further?

[00:13:58] Speaker 01:
We're entering a rebuttal time.

[00:14:01] Speaker 04:
No, Your Honor.

[00:14:01] Speaker 04:
Thank you very much.

[00:14:02] Speaker 01:
Okay.

[00:14:03] Speaker 01:
Save it.

[00:14:03] Speaker 01:
Thank you.

[00:14:16] Speaker 02:
Good morning, Your Honor.

[00:14:17] Speaker 02:
If I may please record, Roger Fry on behalf of the intervener, Director of the United States Patent and Trademark Office.

[00:14:24] Speaker 02:
I'd like to begin by addressing the claim construction issue.

[00:14:27] Speaker 02:
As you noted, the claim construction analysis begins with the intrinsic evidence.

[00:14:31] Speaker 02:
the claims, the specification, and the prosecution history.

[00:14:35] Speaker 02:
Here, all of those sources support the board's construction.

[00:14:39] Speaker 02:
As you noted, claim 15 simply recites coupling.

[00:14:42] Speaker 02:
It doesn't specify electrical coupling or inductive coupling.

[00:14:46] Speaker 02:
And there's no dispute that the claims encompass both.

[00:14:50] Speaker 02:
They can operate with the inductive coupling.

[00:14:53] Speaker 02:
If you look at claims 23 and 27, as you noted, when the patent owner wanted to recite electrical coupling, they did.

[00:15:01] Speaker 02:
And the fact that they didn't recite electrical coupling in claim 15 is strong support for the board's construction.

[00:15:08] Speaker 02:
If you look at the specification, the specification refers to both electrical coupling and inductive coupling and wireless coupling and coupling generally.

[00:15:17] Speaker 02:
There's no disclaimer or indication in the specification that the coupling going on in claim 15 requires electrical coupling or is limited to electrical coupling.

[00:15:28] Speaker 00:
So Council, can you respond to something that opposing counsel raised here?

[00:15:32] Speaker 00:
Because I think I just heard opposing counsel say we look at claim 14.

[00:15:36] Speaker 00:
that even though the actual language used there talks about coupling, that other parts of the claim language in Claim 14 require it to really be referring to electrically coupling.

[00:15:48] Speaker 00:
So if you could just walk me through your response to that, that would be helpful.

[00:15:53] Speaker 02:
Sure, so claim 14 is coupling a DC voltage source to a first inductive element.

[00:16:00] Speaker 02:
Claim 15 is coupling a load circuit to a first inductive element.

[00:16:05] Speaker 02:
So first of all, they're coupling different things.

[00:16:07] Speaker 02:
Second of all, claim 14

[00:16:09] Speaker 02:
recites coupling.

[00:16:10] Speaker 02:
It doesn't recite electrical coupling.

[00:16:12] Speaker 02:
It's not limited to electrical coupling.

[00:16:16] Speaker 02:
The board explained that even if claim 14 were limited and did require this electrical coupling limitation, that still wouldn't help the patent owner here because the elements being recited in claim 15

[00:16:31] Speaker 02:
it's conceded they don't require the electrical coupling.

[00:16:34] Speaker 02:
And the coupling limitation, as Judge Stark pointed out, is broad enough to encompass for claim 14 the electrical coupling, even if electrical coupling was required.

[00:16:45] Speaker 02:
So I don't think pointing to claim 14 really helps the patent owner in this particular case.

[00:16:53] Speaker 00:
And is all of the intrinsic support that you think is relevant to us just moved into what's in the claims or the spec, or is there anything in the prosecution history that would be material?

[00:17:03] Speaker 02:
So there's nothing in the prosecution history that helps the patent owner in this case.

[00:17:07] Speaker 02:
There's nothing that, you know,

[00:17:09] Speaker 02:
where they acted as their own lexicographer and made arguments that the coupling for this particular claim 15 requires the electrical coupling.

[00:17:16] Speaker 00:
For purposes of the audience, could you explain what a prosecution history is?

[00:17:19] Speaker 00:
Just kind of give you a little bit of background.

[00:17:21] Speaker 02:
Sure.

[00:17:21] Speaker 02:
So the prosecution history is just the administrative record between the patent applicant and the patent office where they're

[00:17:28] Speaker 02:
They file their initial application with their claims and their specification, and then the office will submit an office action explaining why or why not the claims are patentable.

[00:17:40] Speaker 02:
They may issue rejection like they did in this case, and that administrative record is the prosecution history.

[00:17:46] Speaker 02:
There can be cases where an applicant will make statements in the prosecution history that could limit the scope of the claim if they had argued or made a concession that coupling these specific components requires an electrical coupling.

[00:18:01] Speaker 02:
That would be an example of something that would be relevant in the prosecution history, but there's nothing like that here.

[00:18:08] Speaker 01:
Do you want to move on to motivation to combine?

[00:18:10] Speaker 01:
Sure.

[00:18:10] Speaker 01:
Can you talk a little about the Vertec case that Judge Stark mentioned before, because your friend rests on that a great deal?

[00:18:19] Speaker 02:
In the Vertec case,

[00:18:22] Speaker 01:
Well, that seemed to say, right, that just because there were two alternative arrangements out there, that's not enough to assess motivation.

[00:18:30] Speaker 01:
Exactly.

[00:18:30] Speaker 02:
And that is correct.

[00:18:31] Speaker 02:
If you simply have two references that disclose the elements, that alone is not sufficient to meet the obviousness standard, as this court has set forth in the cases we set in our brief, Intel v. Qualcomm, Intel v. Pack, and part of pharmaceuticals.

[00:18:45] Speaker 02:
you have to have an articulated reasoning with rational underpinning, which we have here, and also for the motivation to combine standard, the combination doesn't have to be the best option or preferred option, it just has to be a suitable option, and here the board explained

[00:19:05] Speaker 02:
why you would start with Flowerdue and appoint it to figure two of Flowerdue, which discloses that simplified circuit diagram.

[00:19:12] Speaker 02:
It doesn't have any details on the switching elements.

[00:19:16] Speaker 02:
Flowerdue also admits that one of Skil and the Art would look to other circuit diagrams and components to implement that simplified circuit diagram.

[00:19:28] Speaker 02:
And that's substantial evidence that supports the board's rationale in this case.

[00:19:34] Speaker 02:
If there's no further questions, I'll yield the rest of my time.

[00:19:37] Speaker 02:
Thank you.

[00:19:54] Speaker 04:
Thank you, your honor.

[00:19:55] Speaker 04:
To address the issue there, the board perhaps had alternative bases, other things they could have considered, but in their decision they said that

[00:20:06] Speaker 04:
The fact that it was a suitable option was enough.

[00:20:08] Speaker 04:
That was the board's basis for its decision.

[00:20:11] Speaker 04:
If there were more bases, or if they should have expressed more bases, then perhaps the case should be remanded for the board to further explore those, much as happened, for example, in the Intel VPTAC case, where, of course, there were different circumstances.

[00:20:25] Speaker 04:
There was a defined need for cash coherence.

[00:20:28] Speaker 04:
There was a showing that having

[00:20:31] Speaker 04:
The secondary caches was a useful thing to have, especially in the case of multiprocessor cache coherence.

[00:20:39] Speaker 04:
And of course, there were also two other bases arguments for what the motivation to combine was, although those were not addressed in the Federal Circuit's decision.

[00:20:47] Speaker 04:
But they were at least considered by the board on remand in that case.

[00:20:54] Speaker 04:
Anything further?

[00:20:55] Speaker 04:
No, Your Honor.

[00:20:56] Speaker 04:
Thank you.

[00:20:57] Speaker 01:
Thank both sides.

[00:20:57] Speaker 01:
The case is submitted.