[00:00:00] Speaker 00:
Inc.

[00:00:01] Speaker 00:
Corporation v. Netliff, Inc., case number 151179.

[00:00:07] Speaker 00:
As is becoming common around here, it's another appeal from the Patent Trademark and Appeal Team.

[00:01:08] Speaker 00:
okay uh... mister jacobin jacobin you want five minutes for a bottle?

[00:01:17] Speaker 03:
yes please okay you may begin may it please the court the claim amendments issued here today were made by netlist after the issued five three seven patent claims during re-examination were rejected based upon the

[00:01:39] Speaker 03:
and the contender and the examiner agreed that the prior art actually showed the original novelty of the invention.

[00:01:47] Speaker 00:
Let's get to the heart of your argument.

[00:01:49] Speaker 00:
I mean, you don't dispute that the spec in the 537 does distinguish among the various DDR, CS, CAS, RAS, and bank address, right?

[00:02:04] Speaker 00:
The various

[00:02:05] Speaker 03:
would agree that as to chip select, RAS, CAS, and bank address, it does distinguish those in embodiment, yes.

[00:02:15] Speaker 00:
Okay, but as I understand your argument, what you are saying is that you need an affirmative explanation as to why one is better than the other.

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before you can have a narrowing amendment.

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Is that right?

[00:02:29] Speaker 03:
No.

[00:02:31] Speaker 03:
What I'm saying is that because the prior art allows for raft and cast to also be used as chip select, if you were to use, for example, the manner in which the MPE would explain it,

[00:02:45] Speaker 03:
you would need to have an example of it being where chip selects was used with RAS and CAS, and an example where you had, as is what is in the patent, the separate chip select, RAS, CAS, and bank enable, which is just used throughout the specification.

[00:03:03] Speaker 00:
So what is it that they would have to have done to, in your mind, satisfy Santar's?

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They would have had to give a reason to exclude rather than just to distinguish.

[00:03:18] Speaker 01:
Does Santoros require a reason?

[00:03:21] Speaker 03:
It does.

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That's the Santoros standard.

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It requires a reason to exclude.

[00:03:26] Speaker 01:
The argument is that Santoros creates and establishes this bright line rule.

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that there has to be some reason to exclude that is within the originally filed specification and which was within the possession of the inventors at the time the application was written.

[00:03:45] Speaker 00:
My problem is that you say that Centaurus requires an explicit statement of a reason to exclude.

[00:03:52] Speaker 03:
I don't think that we're going that far, Your Honor.

[00:03:54] Speaker 03:
What I'm saying is that there needs to be something that allows you to distinguish, and what we have here is a specification that in, for instance, what the board relied on, Table 2 has it used as what it called an intrinsic exclusionary indicator, and then it pointed to an X, which of course everyone thinks X exclusion, but it's actually not.

[00:04:19] Speaker 03:
It's just a don't care state.

[00:04:23] Speaker 03:
then as well figure 9A, which again was for any kind of memory, but they're all consistently saying the same thing, that here's an environment which has CAS, RAS, chip select, and bank address.

[00:04:37] Speaker 02:
What if we were to interpret that logic table, table 2, as identifying an example where you have the chip select signal, but the other ones, CAS, RAS, bank address,

[00:04:52] Speaker 02:
When it says don't care, it contemplates necessarily that there could be, there's an example that the spec is contemplating where all of those other signals are just turned off.

[00:05:04] Speaker 02:
And so therefore what we have in the table is an example which is just exclusively using chip select signals.

[00:05:14] Speaker 02:
Okay, and not the others.

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The bank address signal, the CAS and the RAS.

[00:05:19] Speaker 03:
I agree that that would be an example.

[00:05:22] Speaker 02:
There's an argument, I think, that the board is making that this is demonstrating that the inventor is showing us that there's a reason to exclude those other signals in favor of just working exclusively with chip select signals.

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You would say that's not a good enough disclosure in the patent, because why?

[00:05:48] Speaker 03:
Well, there's a number of reasons.

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To begin with, in the prior art, and that's the reason that the original claims were rejected, which just said chip selects, that chip selects don't have to come from just a chip select signal.

[00:06:06] Speaker 02:
Let's assume for the moment that Table 2 is differentiating between chip select signals and the rats and the cats.

[00:06:13] Speaker 03:
But I would agree with you that it does.

[00:06:16] Speaker 03:
Okay, so then... And so what I'm saying is that because, to use an analogy maybe, you can teach golf as a sport, but that doesn't exclude you teaching all sports, meaning that doesn't mean you haven't taught football.

[00:06:34] Speaker 03:
I mean, the point here is that the chip select is a very broad term.

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Netlist itself, in litigation with respect to the parent patent to this particular patent, parent patent was a 386 patent, I believe,

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they construed chip select as an address signal that enables the input and output of data to and from a memory device, their opposition at page 16, A1244 for the record.

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And so they've already

[00:07:13] Speaker 03:
by that instruction, showing that chip select can be very broad.

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It can be many things.

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But don't both Johnson and the MPEP itself provide for the proposition that the patentee has the right to determine the scope of its claims.

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And if the patentee chooses to not continue with that argument as to the breadth of its claims and agree that its claims exclude certain things,

[00:07:42] Speaker 00:
Why don't they have the right to do that as long as the specification supports it?

[00:07:46] Speaker 03:
I would agree with you as long as the specification supports it, but what the MPE contemplates is that you give alternatives.

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And so that you say there's one way of doing it, and then there's another way of doing it.

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And so because there's these two different ways, I will let you have this one way and exclude the other.

[00:08:03] Speaker 00:
We have here... Well, you agreed with me as the opening proposition that these are listed as alternative in the specification.

[00:08:10] Speaker 03:
No, I would not agree with that, Your Honor.

[00:08:12] Speaker 03:
These are listed as a combination of signals that can implement a memory device signaling, if you want to call it that, in a particular way.

[00:08:23] Speaker 00:
But what you argued in your brief, and if you look specifically in your gray brief, you say that actually it doesn't matter if you list something in a specification as alternative.

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You actually have to have expressed a preference for one or the other.

[00:08:36] Speaker 03:
If we did, I believe that is an overstatement, Your Honor.

[00:08:40] Speaker 03:
That is not my understanding of the law.

[00:08:43] Speaker 03:
I believe you need to have some

[00:08:48] Speaker 03:
reason to exclude there, but I do not believe that it needs to be expressed.

[00:08:54] Speaker 02:
And just so I understand your case, if we conclude that there is substantial evidence in the record to support the board's fact-finding that differentiates chip select signals from RAS and CAS,

[00:09:08] Speaker 02:
then do you lose?

[00:09:10] Speaker 03:
Not necessarily.

[00:09:11] Speaker 03:
It depends if you also believe that as a matter of law, the board also properly found a reason to exclude.

[00:09:18] Speaker 02:
So, I think that's part of your case is, you know, there maybe are competing conceptions of what Santoris meant when it said reason to exclude.

[00:09:29] Speaker 02:
What's your conception?

[00:09:31] Speaker 03:
Well, in my conception, you have a case in Santoris

[00:09:34] Speaker 02:
where the original patent... Let's just talk about what, if you were to do an interpretation of the phrase reason to exclude, what is the legal principle that you think we should be adopting for what does reason to exclude mean for a negative limitation with respect to written description?

[00:09:53] Speaker 03:
I think that there needs to be something in what was originally filed in this specification at the time of the original filing.

[00:10:01] Speaker 03:
that shows some support for the exclusion that is being contemplated, whether it's via the examples that the MPEP suggests.

[00:10:12] Speaker 03:
I mean, of course it would be fabulous if it would be expressed, but I'm not suggesting that it goes that far.

[00:10:17] Speaker 03:
I believe that the patent office and patent practitioners do need to have the ability to sort of reword their claims based upon what is, I'll say, inherent in the specification.

[00:10:29] Speaker 03:
Okay.

[00:10:29] Speaker 02:
So I just wanted to make sure that you're not urging a position that the specification has to be advocating for one particular...

[00:10:38] Speaker 02:
saying no and denigrating the other alternatives.

[00:10:42] Speaker 02:
Correct, not advocating for that at all.

[00:10:45] Speaker 00:
So let's go back to your analogy.

[00:10:47] Speaker 00:
So putting aside obviousness questions, so if we had someone who claimed a particular strategy for football and said that, you know, a coaching strategy for instance, and then said

[00:11:02] Speaker 00:
You could also use this for soccer or hockey or basketball.

[00:11:06] Speaker 00:
Are you saying that you can't turn around and exclude everything except football?

[00:11:13] Speaker 03:
I was saying there that you at least talked about the other sports.

[00:11:15] Speaker 03:
Here what we have is silence.

[00:11:17] Speaker 03:
Here we have one way of doing it that had rats, cats,

[00:11:22] Speaker 03:
chip select and bank headers, but there was no discussion in any other ways and it's just silence and therefore it's not enough for the negative limitation that exists.

[00:11:30] Speaker 03:
I find that I'm under my time, so... You want to save your time?

[00:11:33] Speaker 03:
I'll save my time for this one.

[00:11:34] Speaker 03:
Thank you.

[00:12:00] Speaker 04:
May it please the Court, the Board's factual finding of British description support requires affirmance because it was based on substantial evidence.

[00:12:09] Speaker 04:
First, the Board correctly found that Table 2 and Figure 9A of the specification expressly exclude DDR chip select signals from RAS, CAD, and bank address signals.

[00:12:21] Speaker 02:
second the board found explicit excruciating what's going on in people too yet uh... now i think that you you agree that it's not lifting which is what

[00:12:40] Speaker 04:
Your Honor, it's certainly directed to synchronous DRAM devices, which include DDR.

[00:12:47] Speaker 02:
But these are not a whole list of different embodiments.

[00:12:52] Speaker 02:
Is that right?

[00:12:56] Speaker 04:
Well, Table 2 reflects one embodiment of the claimed invention, Your Honor.

[00:13:02] Speaker 04:
And if I may direct you, the column on the left is the chip select column.

[00:13:11] Speaker 04:
And then the next column is the RAS column, and the next column is the CAS column.

[00:13:16] Speaker 04:
I'm at A41, column 18.

[00:13:19] Speaker 04:
Our position is that each separate column reflects what is well known in the art, that each of these single signals in the SDRAM, specifically the DDR SDRAM space, have a separate and distinct function.

[00:13:35] Speaker 04:
And in the case of the chip select, it basically qualifies the other signals.

[00:13:40] Speaker 04:
So when the chip select is one, that means that the chip is not selected.

[00:13:45] Speaker 04:
When the chip select is zero, as in the second row,

[00:13:49] Speaker 04:
then the other signals, the values of those other signals, determine what the command will be to the memory device.

[00:13:56] Speaker 04:
For example, to activate a row, to read or write, and those commands are set forth here.

[00:14:02] Speaker 00:
So with your narrowing limitation, the chip select would always have to be at one, right?

[00:14:08] Speaker 04:
Well, the chip select in our view is, as a signal, exclusive of these other signals,

[00:14:16] Speaker 04:
CAS and in figure 9-8 the bank address signal.

[00:14:20] Speaker 04:
It always is on its own separate and distinct function and we had in the re-examination we had Dr. Seachin provide without rebuttal an explanation of these specific signals and how they would be understood to one of the ordinary skill in the art and he specifically stated and here I'll direct you to

[00:14:46] Speaker 04:
A 1831, paragraph 38, he said, there is no possibility that a PASIDA would confuse RASCAD and bank address signals with DDR chip select signals.

[00:15:03] Speaker 04:
In the context of DDR memory devices,

[00:15:06] Speaker 04:
Each of the above control signal names is a well-known term of art and associated with well-known distinct and separate functions performed by each type of signal.

[00:15:17] Speaker 04:
A POSIDO would understand that a DDR chip select signal does not include RAS, CAS or bank address signals, nor does it depend in any way on the RAS, CAS or bank address signals.

[00:15:30] Speaker 04:
This testimony was unrebutted, and we think that the distinction is very clear, both in the spec and from this testimony, of one ordinary skill in the yard to understand Table 2 and Figure 9-8.

[00:15:42] Speaker 00:
Now, you argue that those other drafts have

[00:15:47] Speaker 00:
that they would actually render the device inoperable, right?

[00:15:52] Speaker 00:
Correct.

[00:15:52] Speaker 00:
I don't see that in the specification.

[00:15:55] Speaker 00:
Where is that?

[00:15:56] Speaker 04:
Well, I think, Your Honor, that would be self-evident from Table 2, that each of those signals being in their separate column, and specifically with respect to Dr. Seachin's testimony, each of those signals has a separate and distinct function.

[00:16:12] Speaker 04:
And so when

[00:16:14] Speaker 04:
Professor Seachin says nothing replicates the action of a DDR chip select signal in paragraph 38.

[00:16:20] Speaker 04:
That means that if you try to substitute one of these other signals for a DDR chip select signal, it's going to fail.

[00:16:29] Speaker 04:
And I think it's very clear from the record that one of ordinary students will understand it that way.

[00:16:34] Speaker 00:
Your counsel on the other side today is focusing more on the fact that he

[00:16:40] Speaker 00:
doesn't believe that there is a differentiation between these signals that appears in the specification, either in Table 2 or otherwise.

[00:16:50] Speaker 00:
And in his briefing went on to say that even if there was a differentiation, that that's not enough in and of itself.

[00:16:58] Speaker 00:
What's your response to the second argument?

[00:17:00] Speaker 04:
My response to the second argument, Your Honor, is that we think that's sufficient under scent

[00:17:05] Speaker 04:
Santoris requires a basis for the limitation, just as in any written description support case.

[00:17:14] Speaker 04:
We think that the expressed distinctions in Table 2 and Figure 9A provide support for the negative limitation.

[00:17:22] Speaker 04:
If Your Honor believes that additionally a reason is required, we believe that the substantial evidence in the record establishes that there is a reason.

[00:17:32] Speaker 04:
Because as we explained, Professor Stichin said that nothing replicates the action of a DDR chip select signal.

[00:17:39] Speaker 04:
And that would tell one of ordinary skill in the art that if you tried to use one of these signals for a DDR chip select, the system would fail.

[00:17:47] Speaker 04:
And that's sufficient evidence in the record for a reason to exclude, if that's how you read Santor's.

[00:17:58] Speaker 00:
Well, let's go to how we read Santor's.

[00:18:01] Speaker 00:
you know it's always dangerous obviously to read a majority opinion in light of a dissent because a dissent can characterize a majority opinion any way it wants to and it's not necessarily what the majority said.

[00:18:12] Speaker 00:
But here we do have a dissent that very specifically and expressly characterizes the majority opinion and the majority opinion at least doesn't

[00:18:21] Speaker 00:
directly take that on.

[00:18:23] Speaker 00:
So why shouldn't we believe that the dissent view of the majority opinion is an accurate one?

[00:18:29] Speaker 04:
Well, I think if you're referring to Judge Newman's statement that there's a new rule that the specification must describe a reason for the claim limitation, I think counsel has conceded that you don't need an express reason in the specification.

[00:18:46] Speaker 04:
The specification under federal circuit law is always read in view of one of ordinary skill in the art.

[00:18:56] Speaker 04:
And we think that that disclosure, particularly table 2 on figure 9A, would make it very clear to one of ordinary skill in the art that if any of these signals were used for a DDR chip select signal, the system would fail.

[00:19:07] Speaker 04:
And that's enough of a reason.

[00:19:09] Speaker 00:
All right.

[00:19:09] Speaker 00:
The board relied on the JEDEC standard.

[00:19:13] Speaker 00:
But that's not actually required by the PEP, right?

[00:19:16] Speaker 04:
That's right, Your Honor.

[00:19:18] Speaker 04:
So why is that relevant?

[00:19:19] Speaker 04:
Why should we consider that?

[00:19:20] Speaker 04:
Because, Your Honor, the genetic specification simply states the state of VR here.

[00:19:28] Speaker 04:
It shows that this is a standardized distinction, as Professor Seachin said, without rebuttal.

[00:19:34] Speaker 04:
It's a standardized distinction of these four signals in the context of the DDR DRAM device, which our claims are limited to.

[00:19:41] Speaker 04:
And so we think that the genetic specification is simply consistent with how one of ordinary skill in the art would read table 2 and would read figure 9a.

[00:19:52] Speaker 04:
And that's exactly what Professor Cichin also said in his declaration at paragraphs 37 and 38.

[00:20:01] Speaker 02:
Your opposing counsel talked about how the term chip select signal is actually an umbrella term, that it includes

[00:20:10] Speaker 02:
chip select signals, but it also includes RAS and CAT signals.

[00:20:18] Speaker 02:
You don't have anything in your spec that specifically carves out real chip select signals from the umbrella term chip select signals.

[00:20:27] Speaker 02:
Do you follow what I'm asking, and what is your response?

[00:20:31] Speaker 04:
I would disagree with that, Your Honor.

[00:20:33] Speaker 04:
When we narrowed the claims to DDR DRAM devices, I think we made it very clear that we're in the SDRAM space.

[00:20:40] Speaker 04:
And in that space, the DDR chip select signal is distinct and separate from RAS, CAD, and bank address signals.

[00:20:47] Speaker 04:
And that's very clear from the specification as set forth in Table 2 and Figure 9A.

[00:20:51] Speaker 04:
And it's very clear from Professor Seacham's unrobotted testimony.

[00:20:57] Speaker 00:
would have been clear to one of skill in the arts, why did you even need the narrowing limitation?

[00:21:06] Speaker 04:
Your Honor, it was belt and suspenders.

[00:21:09] Speaker 00:
Oh gosh, we got that in the last argument.

[00:21:11] Speaker 00:
We don't need any more help.

[00:21:12] Speaker 04:
I kept hearing that and I kept thinking about that as well.

[00:21:15] Speaker 04:
But yes, it is Belton suspenders.

[00:21:17] Speaker 04:
And if you look at the board... You know it's really tacky to have Belton suspenders.

[00:21:21] Speaker 04:
Sorry.

[00:21:23] Speaker 04:
And if you look at the board's decision, particularly on the Wong and Johnson ground, they actually just rely... I mean, they refer to CHIP Select and then DDR CHIP Select, and they actually don't even refer to the negative limitation.

[00:21:35] Speaker 04:
I think it's, I think one of ordinary skill in the art would clearly understand that when you're claiming a DDR chip select, it's not RASCAS and bank address signal.

[00:21:45] Speaker 04:
And I think that's very clear from the spec and it's very clear from the testimony.

[00:21:49] Speaker 02:
Your table two, it doesn't say DDR chip select, it just says chip select.

[00:21:55] Speaker 02:
It just says CS.

[00:21:56] Speaker 02:
How do we know that in the inventor's mind, or one of ordinary skill in the art would claim that we're talking about a DDR chip select?

[00:22:05] Speaker 04:
Well, Your Honor, the telltale sign is that the chip select is being used in a command table.

[00:22:11] Speaker 04:
With the advent of synchronous DRAM devices, the chip select was used with other signals to establish commands.

[00:22:19] Speaker 04:
And you don't have to take my word for it.

[00:22:21] Speaker 04:
InFi's own expert, and I direct you to Dr. Wang's declaration,

[00:22:29] Speaker 04:
at A1183 in paragraph 12, the last sentence he says, in modern synchronous DRAM devices, a chip select is added so the chip select signal is used to enable read and write access by qualifying other signals at the rising edge of the clock signal.

[00:22:50] Speaker 04:
That's what Table 2 is showing, Your Honor.

[00:22:53] Speaker 04:
That brings Table 2 into SDRAM space, which DDR, SDRAMs are a part of.

[00:23:03] Speaker 04:
you have any further questions.

[00:23:06] Speaker 03:
Three point only.

[00:23:22] Speaker 03:
We heard a number of times that

[00:23:26] Speaker 03:
their expert Dr. Sessions said without rebuttal that the claims as limited to DDR would be understood in this way and that they would be quote inoperable.

[00:23:38] Speaker 03:
What we have here truly is Dr. Sessions saying that DDR would be a JEDX standard DDR and that if you didn't then implement the invention without

[00:23:52] Speaker 03:
a separate chip select RASCAS and bank enable, then they would not be operable as it relates to a JEDEC standard DDR.

[00:24:02] Speaker 03:
The problem with that whole line of logic is that the claims are not limited to a JEDEC standard DDR.

[00:24:09] Speaker 00:
But the spec does incorporate by reference the JEDEC standard, doesn't it?

[00:24:15] Speaker 03:
Not for any specific reason.

[00:24:16] Speaker 03:
It incorporates a very, very large document and says, I incorporate it by reference with no statement whatsoever for what the purpose is, other than here it is.

[00:24:27] Speaker 00:
So the claim doesn't require that, but the specification certainly, that adds to the question of whether the spec or adds to the

[00:24:37] Speaker 00:
debate at least as to whether the spec contains a reason to differentiate.

[00:24:43] Speaker 03:
I would say that, Your Honor, that the reference to the JEDEC at best just merely supports the same example that they have but doesn't give a reason to exclude as required by Santeros.

[00:24:56] Speaker 03:
There is a heightened standard of scrutiny to a negative limitation that Santeros requires.

[00:25:02] Speaker 00:
Tell me what a reason to exclude would look like.

[00:25:07] Speaker 03:
A reason to exclude in this instance would look like an example that says there are other implementations because remember that the claims originally weren't directed to DDR.

[00:25:20] Speaker 03:
The point of novelty of the invention as sort of originally set forth is no longer in the case.

[00:25:25] Speaker 03:
The examiner has found that to be invalidated and the net list has acceded to that.

[00:25:30] Speaker 03:
So the translation aspect is no longer there.

[00:25:33] Speaker 03:
So what it would look like is here's an example with RAS and CAS being used as a chip select and also then having translations so that you could contrast the manner in which the DDR2 chip select operates from the manner in which other memories that also use RAS and CAS as a different chip select generically has historically been used.

[00:25:58] Speaker 00:
So you're going back to this

[00:25:59] Speaker 00:
comparative analysis.

[00:26:03] Speaker 03:
I'm comparing something.

[00:26:04] Speaker 03:
I'm not saying you have to distinguish.

[00:26:05] Speaker 03:
I'm saying you have to compare.

[00:26:07] Speaker 03:
You have to have an alternative.

[00:26:08] Speaker 03:
You have to have something there.

[00:26:09] Speaker 03:
You can't just have silence.

[00:26:12] Speaker 02:
You said that you think Centaurus announced the heightened standard for written description of a negative limitation.

[00:26:20] Speaker 02:
I'm just wondering why is that so?

[00:26:23] Speaker 02:
Centaurus didn't speak in those terms.

[00:26:26] Speaker 02:
He just talked about there needs to be a reason to exclude.

[00:26:30] Speaker 02:
Why can't that just be the historical notion of are there blaze marks in the speck that communicate that the inventor contemplated a certain outcome?

[00:26:47] Speaker 03:
Because if you're after the fact, as we are here, 10 years later, putting in a limitation to the claims, that clearly you don't know that the inventor was in possession of that at the time, then that is the problem.

[00:27:05] Speaker 03:
It gets back to whether the inventor actually had possession of this idea back at the time he wrote the specification.

[00:27:12] Speaker 03:
I've only got a couple minutes, less than one minute left.

[00:27:16] Speaker 03:
But the one thing that I did want to talk about was he said that it was a belt and suspenders as to why they put the negative limitation in.

[00:27:25] Speaker 03:
Our position is they can't have it both ways.

[00:27:28] Speaker 03:
They can't argue that one of ordinary skill in the art would know that DDR meant all these things, but then at the same time have added the negative limitation with no consequence.

[00:27:42] Speaker 00:
Okay.

[00:27:43] Speaker 03:
Thank you.