[00:00:20] Speaker 00:
Please proceed, Mr. Pollack.

[00:00:24] Speaker 03:
Thank you, Your Honor.

[00:00:25] Speaker 03:
May it please the Court, Howard Pollack of Fish and Richardson for Appellant Patent Owner Power Integration.

[00:00:32] Speaker 03:
We have two issues I'd like to discuss this morning related to the Board and the Patent Office's rejection of the claims that are at issue.

[00:00:40] Speaker 03:
The first is the issue of claim construction, which addresses all of the claims.

[00:00:44] Speaker 03:
and we believe forms a basis for reversal of the entire action by the Patent Office.

[00:00:50] Speaker 03:
And then there's also a second issue that has to do with how the Patent Office applied the prior art to claims 17 and 19.

[00:00:58] Speaker 03:
So it's limited to those two claims.

[00:00:59] Speaker 00:
Can I ask you just a couple of procedural questions?

[00:01:03] Speaker 00:
Is it true that the District Court opinion on coupled and the conclusion it reached

[00:01:12] Speaker 00:
was presented to the office during this re-exam?

[00:01:18] Speaker 03:
Yes, Your Honor.

[00:01:19] Speaker 03:
During the re-exam, the applicant, patent owner, told the patent office that the proper construction, based on the intrinsic evidence, was the district court's construction, which is the construction that we are advocating here and have always advocated at the office.

[00:01:34] Speaker 00:
And you argued to the office that it ought to follow the district court's

[00:01:41] Speaker 00:
in construction or that, I mean, it's certainly relevant and... Exactly.

[00:01:45] Speaker 03:
Not that it was bound and not that it needed to follow, but that the evidence of that construction showed that in light of the intrinsic evidence, that was really the only reasonable construction of the claim and that the original construction, the construction that we're dealing with today from the board was unreasonably broad.

[00:02:03] Speaker 00:
Well, and I just don't see anything in the board opinion that even referenced the district court's opinion

[00:02:10] Speaker 00:
or treated it or discussed it in any way.

[00:02:14] Speaker 00:
Did I miss anything?

[00:02:17] Speaker 00:
No, Your Honor, you didn't.

[00:02:18] Speaker 00:
Is there anything in the course of the re-exam where the office expressly explained why it thought the district court's opinion ought to be rejected?

[00:02:28] Speaker 00:
I mean apart from

[00:02:29] Speaker 00:
Granted, they're applying a different standard.

[00:02:31] Speaker 00:
Whether it's the correct standard or not, maybe it's left for another day.

[00:02:35] Speaker 00:
But they're applying a different standard.

[00:02:36] Speaker 00:
But at the same time, I just would have felt like this was something important and relevant.

[00:02:41] Speaker 00:
And as long as you did argue it, right?

[00:02:43] Speaker 00:
Yes, you're right.

[00:02:44] Speaker 00:
And you presented it to them.

[00:02:45] Speaker 00:
Yes.

[00:02:46] Speaker 00:
I just am sort of flabbergasted at the lack of addressing it.

[00:02:51] Speaker 03:
Well, I can't speak for the office.

[00:02:55] Speaker 03:
I mean, I think that the

[00:02:56] Speaker 03:
A clear message that comes out in the office actions, especially at the board in response to the briefing, is this idea that the broadest reasonable construction can be informed by a generalist dictionary definition.

[00:03:10] Speaker 03:
And if there's no express definition in the patent specification to the contrary, then the board can just stop.

[00:03:20] Speaker 03:
And it doesn't really need to dig into the details of the disclosure.

[00:03:24] Speaker 03:
We feel that that really is the error here, that the board looked at the dictionary definition.

[00:03:28] Speaker 00:
But the district court here relied on the specification and said, according to the specification, it would inform its understanding of the claim term, right?

[00:03:38] Speaker 00:
That's exactly right.

[00:03:38] Speaker 00:
I mean, he didn't necessarily go so far as to say lexicography or disavowal or anything like that, but he relied heavily on it.

[00:03:46] Speaker 03:
Yes, Your Honor, he did.

[00:03:48] Speaker 03:
And in fact, this court, in addressing the issues on appeal in the parallel case,

[00:03:54] Speaker 03:
which the claim construction, I think it should be really clear, the claim construction that was applied at the district court was the claim construction that my client advocated for.

[00:04:03] Speaker 03:
And so technically we won at the district court.

[00:04:06] Speaker 03:
That construction was not appealed by the defendant.

[00:04:08] Speaker 00:
And so... Well, the defendant actually pursued anticipation against you too and then dropped it.

[00:04:13] Speaker 00:
Correct.

[00:04:13] Speaker 00:
And didn't appeal the claim construction or the anticipation issue.

[00:04:17] Speaker 00:
Exactly, Your Honor.

[00:04:17] Speaker 00:
And then they decided to go after you.

[00:04:19] Speaker 00:
I mean, I have to say when I opened the brief and I said, wait a minute,

[00:04:22] Speaker 00:
The district court found no obviousness.

[00:04:26] Speaker 00:
It appealed to us and we affirmed.

[00:04:28] Speaker 00:
And the PTO is going to find on the basis of the identical reference that there's in fact anticipation.

[00:04:34] Speaker 03:
Exactly.

[00:04:35] Speaker 03:
That's exactly the situation we find ourselves in.

[00:04:37] Speaker 03:
And I agree with, I think, your reaction is how do you square those two ideas?

[00:04:42] Speaker 00:
And I guess their argument is BRI.

[00:04:45] Speaker 03:
Exactly.

[00:04:46] Speaker 03:
And our position here is that BRI is not unfettered.

[00:04:50] Speaker 03:
it's not that the board can look at the words in the abstract and apply a dictionary definition that's not even in the specific art and say, that's enough.

[00:05:00] Speaker 03:
And we hear you that there's language in the specification that would indicate that the patent might've meant something narrower, but we don't find an express disavowal, we don't find an express definition, so we can stop.

[00:05:15] Speaker 03:
In our view, that's an inappropriate analysis, that the analysis should have involved more detailed examination of the specification.

[00:05:26] Speaker 03:
We believe, and let me address, there's a couple issues that I think are important to clarify beyond just using a dictionary definition.

[00:05:35] Speaker 03:
The director appears to be pointing to- Do you think maybe they weren't aware of the district court opinion?

[00:05:40] Speaker 00:
I realize that, beaten a dead horse,

[00:05:43] Speaker 00:
But maybe we ought to vacate and remand so they get a chance to look it over and they can actually tell us why they're rejecting it.

[00:05:49] Speaker 00:
Because I'm just so floored that it wasn't addressed.

[00:05:52] Speaker 00:
Believe me, we've had opinions before, even when the standard's identical.

[00:05:55] Speaker 00:
Two different district courts construed the claim two different ways.

[00:05:59] Speaker 00:
But the second would never fail to address the first one and say what was wrong with it.

[00:06:02] Speaker 00:
And that's the part that is just really baffling me.

[00:06:06] Speaker 03:
Yes, Your Honor.

[00:06:08] Speaker 03:
We certainly made

[00:06:12] Speaker 03:
arguments and they're in the responses to the Office sections, the briefing to the Board, that lay out exactly the reasoning that is in the District Court's analysis.

[00:06:25] Speaker 00:
Isn't the purpose of BRI to shore down or nail down the scope of the claim so that nobody

[00:06:34] Speaker 00:
would be surprised by an unsuspecting assertion by a patentee of a claim scope that might be broader than what you otherwise think it is.

[00:06:43] Speaker 00:
Right?

[00:06:44] Speaker 00:
I agree.

[00:06:44] Speaker 00:
And in this case, the patentee is actually on record expressly defining what his claim scope is and winning, which it seems to me would absolutely require collateral estoppel.

[00:06:55] Speaker 00:
I can't see a way around collateral estoppel against you if you tried to seek a broader claim scope than that.

[00:07:01] Speaker 00:
In that circumstance, does BRI still make sense?

[00:07:05] Speaker 03:
Well, again, as you mentioned just a moment ago, whether BRI is the appropriate standard in re-exam is something that's actually being debated right now.

[00:07:15] Speaker 03:
We didn't make the argument that the Patent Office couldn't apply it because we don't think we need to get there.

[00:07:23] Speaker 03:
But I actually do agree with you.

[00:07:25] Speaker 03:
I think in the context of a re-exam, particularly where you have a construction that's been fully vetted in district court, that there's been an appeal

[00:07:33] Speaker 03:
which implicitly at least acknowledged and didn't change that result.

[00:07:42] Speaker 03:
For the patent office to turn around and essentially completely reconstitute the patent in a way that's contrary to all that went before doesn't seem the best use of resources.

[00:07:53] Speaker 02:
Let me take the other point of view here and just kick it around with you a little bit.

[00:08:00] Speaker 02:
The word couple is a broad word.

[00:08:03] Speaker 02:
and things could be directly coupled or indirectly coupled and you agree that there can be things in between.

[00:08:15] Speaker 02:
If two things are coupled together that doesn't mean they have to be directly connected.

[00:08:20] Speaker 02:
So what is it in the intrinsic record that provides an express definition that would add the

[00:08:31] Speaker 02:
of the limitations that the district court found appropriate.

[00:08:34] Speaker 03:
Yes, Your Honor.

[00:08:35] Speaker 03:
Thank you.

[00:08:35] Speaker 03:
I think that acknowledge couple in the abstract might be a broader claim.

[00:08:40] Speaker 03:
In this specific specification, we start with the language of the claim.

[00:08:44] Speaker 03:
And the claim specifically sets out a structural relationship between the components.

[00:08:50] Speaker 03:
The patent office said all it means is they joined in the same circuit.

[00:08:55] Speaker 03:
And with respect, we think that that totally reads out the coupling.

[00:08:59] Speaker 03:
It reads out

[00:09:00] Speaker 03:
the fact that you have these three components because the claim already says that it's a jittering circuit that comprises these three components.

[00:09:07] Speaker 03:
But they're connected in a certain way to allow each of the components to control in a specific manner other components in the circuit.

[00:09:16] Speaker 03:
And it's so, for example, that the oscillator is recited as having a control input that varies the switching frequency.

[00:09:25] Speaker 03:
The digital analog converter is coupled to that control input.

[00:09:29] Speaker 03:
so that the output of the digital analog converter DAC controls the oscillator frequency.

[00:09:34] Speaker 03:
There's a coupling for the purposes of control.

[00:09:37] Speaker 03:
With regard to the counter that's coupled, it's coupled to the oscillator and in the description, the oscillating is what gets the counter to count.

[00:09:46] Speaker 02:
The counter counts.

[00:09:47] Speaker 02:
Well, coupled to the output of the oscillator.

[00:09:49] Speaker 02:
Exactly.

[00:09:49] Speaker 02:
So that's fairly specific recitation.

[00:09:53] Speaker 02:
But in terms of the input, it doesn't say anything is coupled to the input.

[00:10:00] Speaker 02:
The counter causes the digital analog converter to adjust the control input, but it doesn't talk about a direct connection from the output of the counter to the input of the converter.

[00:10:17] Speaker 02:
The counter is coupled to the digital to analog converter.

[00:10:21] Speaker 02:
That's all it says.

[00:10:22] Speaker 02:
It doesn't say the output is connected or the input is coupled.

[00:10:28] Speaker 02:
It just says that the two units are coupled.

[00:10:31] Speaker 03:
Right, the description though, it goes on to say that the counter causes the digital analog converter to perform in a certain way.

[00:10:39] Speaker 02:
But it should cause it through an intermediate circuit of some sort.

[00:10:45] Speaker 02:
I mean here you have a ROM or an EPROM and there's a causal connection.

[00:10:52] Speaker 03:
We actually disagree with the office and its interpretation of there being a causal connection because

[00:10:58] Speaker 03:
They basically argued that just because there's some action over here and an action occurs further downstream, that means the upstream action causes it.

[00:11:10] Speaker 02:
But if you actually... But isn't that what happens?

[00:11:12] Speaker 02:
That the counter will trigger something for the EPROM, the EPROM will cause the signal to

[00:11:22] Speaker 02:
trigger a change in the DDA converter, right?

[00:11:26] Speaker 02:
It's the output of the memory that is what's causing the change.

[00:11:30] Speaker 02:
No, but it's triggered by the input from the counter.

[00:11:34] Speaker 03:
Right, but the counter is triggered by the oscillator.

[00:11:38] Speaker 03:
The counter by itself wouldn't do anything.

[00:11:40] Speaker 03:
Without the oscillator oscillating, the counter would just sit there.

[00:11:44] Speaker 03:
And so the claim says it's the counter that causes the digital analog converter to vary the frequency.

[00:11:50] Speaker 03:
Not the oscillator, not something else.

[00:11:52] Speaker 03:
I see that I'm already in my rebuttal.

[00:11:54] Speaker 00:
Can I ask you one more question?

[00:11:55] Speaker 00:
I'll restore your rebuttal time.

[00:11:56] Speaker 00:
But one more question which is, this is again sort of going back to the idea of the board's opinion.

[00:12:03] Speaker 00:
One of the things that really caused me concern was I thought, I mean I went back and I read your appellate brief.

[00:12:10] Speaker 00:
I've got it open in front of me now.

[00:12:12] Speaker 00:
I read all the briefs below.

[00:12:14] Speaker 00:
And the board consistently throughout its opinion characterizes your argument as one that requires a direct connection between the two things and no intervening components.

[00:12:23] Speaker 00:
Am I wrong?

[00:12:24] Speaker 00:
I do not understand you to have proposed that construction at any point in time.

[00:12:29] Speaker 00:
I understood your construction to be about current voltage or, I'm sorry, yeah, current voltage or signal having to be unaffected.

[00:12:38] Speaker 00:
And you know when you say all of them, that is,

[00:12:41] Speaker 00:
I don't actually see the board's opinion ever addressing that construction at all.

[00:12:47] Speaker 00:
Yes, Your Honor.

[00:12:47] Speaker 03:
Is that correct?

[00:12:48] Speaker 03:
That's correct.

[00:12:49] Speaker 03:
You are exactly correct.

[00:12:50] Speaker 00:
The very construction the district court adopted, the very construction you argued throughout this proceeding, they never even mentioned.

[00:12:57] Speaker 00:
And they, in fact, attribute to you a totally different construction.

[00:13:01] Speaker 03:
That's correct.

[00:13:01] Speaker 00:
Is that correct?

[00:13:02] Speaker 03:
Okay.

[00:13:03] Speaker 03:
I just want to say a couple words on the other issue because it's sort of separate from the claim construction.

[00:13:09] Speaker 03:
Certainly if the claim construction is vacated or reversed, it would affect all the claims.

[00:13:15] Speaker 03:
With regard to claim 17, the board found a disclosure.

[00:13:20] Speaker 03:
This has to do with whether the input to the oscillator is a voltage, whether the oscillator is a voltage controlled oscillator.

[00:13:27] Speaker 03:
And the prior art, everyone agrees that the particular figure, it's figure five of the Habitler reference, it's shown in our brief at page six.

[00:13:36] Speaker 03:
does not specify what the inputs to the triangle generator, which is the oscillator equivalent, are.

[00:13:43] Speaker 03:
The board tries to pull pieces from the reference and says, well, it says voltage over here.

[00:13:48] Speaker 03:
It says voltage over here.

[00:13:49] Speaker 03:
We cited a case that the board can't do that.

[00:13:52] Speaker 03:
They can't combine in volume.

[00:13:53] Speaker 00:
No, but here's the problem.

[00:13:54] Speaker 00:
A little earlier in that reference, when I was reading, it talks about H of V or V of H. It talks about voltage.

[00:14:02] Speaker 00:
And what you're asking for now is that

[00:14:05] Speaker 00:
me to conclude there's no substantial evidence for a fact finding by the board about what a reference discloses.

[00:14:11] Speaker 00:
I agree with you.

[00:14:12] Speaker 00:
Certainly at the place of the figure, it's uncertain and unclear, but a little earlier in the reference, it does seem to talk about a voltage.

[00:14:20] Speaker 00:
And I don't feel like they're choosing from two different embodiments, whether I agree with it or not, or would construe the reference that way or not.

[00:14:27] Speaker 00:
I feel like it's hard to say there isn't substantial evidence for that determination by them.

[00:14:31] Speaker 03:
I would say if you go back and look carefully,

[00:14:35] Speaker 03:
Everything that the office points to has to do with an output of either the PWM circuit or an output of the oscillator, which we agree are voltages.

[00:14:47] Speaker 03:
The problem is that those don't educate at all, or you can't infer from that, that the input to the oscillator is a voltage.

[00:14:57] Speaker 03:
And it's not disputed, the patent itself, our patent shows that you can have a current controlled oscillator

[00:15:02] Speaker 03:
or a voltage-controlled oscillator, or actually other kinds of oscillators that are controlled.

[00:15:06] Speaker 03:
So the input is the key.

[00:15:09] Speaker 03:
And the reason there's no substantial evidence is because nothing that the board pointed to can inform on the question of the input to the oscillator.

[00:15:18] Speaker 03:
And as we argued below, in fact, looking at the figure, a person with ordinary skill would conclude otherwise.

[00:15:25] Speaker 00:
OK, thank you, Mr. Pollack.

[00:15:28] Speaker 00:
Ms.

[00:15:28] Speaker 00:
Nelson?

[00:15:41] Speaker 01:
May it please the court?

[00:15:44] Speaker 01:
Good morning, Your Honors.

[00:15:47] Speaker 01:
The issue that we have here at bottom is really the power integrations wants to construe this term couple to in a way that will allow it to give it the freedom to go after offenders that have something, an intervening component, but they want to read out the prior art that has this memory that's in between.

[00:16:07] Speaker 01:
And the board simply

[00:16:10] Speaker 01:
Power integration simply can't get there by relying on construction of the term coupled to.

[00:16:17] Speaker 01:
The board construed that term in its most reasonable way, and certainly it's brought us reasonable construction.

[00:16:26] Speaker 01:
The claim does not recite directly coupled to.

[00:16:29] Speaker 01:
It doesn't require direct coupling.

[00:16:32] Speaker 00:
The specification doesn't.

[00:16:33] Speaker 00:
But that's not what he argued.

[00:16:35] Speaker 00:
Not before us.

[00:16:36] Speaker 00:
Not before the office.

[00:16:38] Speaker 00:
Not before the district court.

[00:16:39] Speaker 00:
he never argued that it required direct coupling.

[00:16:42] Speaker 00:
And that is one of my largest problems with this case is I feel like the board totally failed to appreciate the claim construction argument he was proffering because they never mentioned it.

[00:16:56] Speaker 00:
And all of his documents are clear about what it was.

[00:16:59] Speaker 00:
Maybe this case would be different if they actually paid attention and didn't misattribute to him a construction he never

[00:17:06] Speaker 00:
Not only never asked for, but expressly disavowed.

[00:17:10] Speaker 00:
In his brief he says, we are not saying it's a direct connection.

[00:17:13] Speaker 00:
And yet the board quite clearly says, appellant argues, a direct connection is required.

[00:17:18] Speaker 00:
And he actually says the opposite in his brief.

[00:17:21] Speaker 00:
So my concern is that the board wasn't careful here.

[00:17:25] Speaker 00:
And so how can I be sure they'd reach the same conclusion when they clearly didn't appreciate what his argument was, even though

[00:17:33] Speaker 00:
it was crystal clear and there's no confusion in the document.

[00:17:37] Speaker 00:
And when you stand here and start off with saying, there's no direct connection, you don't think there needs to be.

[00:17:42] Speaker 00:
That's not relevant to the construction he argued.

[00:17:46] Speaker 00:
So why, forget about what the construction is, why shouldn't I vacate and remand this when it's apparent that the board didn't consider the argument made by the applicant?

[00:17:59] Speaker 01:
Respectfully, Your Honor, I disagree because

[00:18:02] Speaker 01:
looking to the appellant's brief, I think there was a little bit of variation in their arguments because they did talk about it many times, about simply requiring a control relationship.

[00:18:12] Speaker 01:
Now, admittedly, there were times where they went further and said, oh, and there has to be a signal that goes between, there has to be either a voltage or a current or some kind of control signal that goes between the two.

[00:18:24] Speaker 01:
But what the board has done here is it hasn't

[00:18:28] Speaker 01:
written, read out of the claim this control relationship.

[00:18:31] Speaker 01:
In fact, that's spelled out in the claim.

[00:18:34] Speaker 01:
And the board has required and looked to the priority.

[00:18:36] Speaker 00:
Do you disagree with me?

[00:18:37] Speaker 00:
The board expressly and repeatedly represented that their argument was one that required direct connection.

[00:18:46] Speaker 00:
Can you point me to anything in the board that would suggest that it appreciated that that was not in fact his argument and that his argument had to do with either a voltage current or signal passing?

[00:18:58] Speaker 01:
I think initially... Anything in the opinion?

[00:19:00] Speaker 01:
Any sentence that you think is ambiguous enough to possibly reach that conclusion?

[00:19:05] Speaker 01:
On rehearing, it seemed to understand that.

[00:19:07] Speaker 01:
On rehearing, the board did appreciate that because it said at A-18, it acknowledged that the appellant has said that coupled to 10, there can be the presence of intervening components, but it said basically,

[00:19:26] Speaker 01:
The prior art houses intervening components, so we're not sure where that gets him.

[00:19:30] Speaker 01:
And I think that's the problem with this case is that even if it requires those signals to go through, going from one component to the other, we still be stuck with the issue is can those signals, can they go directly or do they have to, are they required to go directly or can they go indirectly from the converter to the, I'm sorry, from the counter to the converter?

[00:19:54] Speaker 01:
So I'm not sure where even their construction gets them.

[00:19:57] Speaker 00:
But at the end of the day... Well, I'm not sure where their construction gets them either, but I feel like it seems clear to me from the record the board didn't consider it.

[00:20:04] Speaker 00:
And I'm nervous about me jumping to a conclusion that it wouldn't have mattered in the first instance.

[00:20:09] Speaker 00:
I don't like to take the board's job away from it.

[00:20:12] Speaker 01:
Well, the board was simply looking at the claim language and the specification and found that based on that and under the broadest reasonable construction, which it is bound to use,

[00:20:23] Speaker 01:
that there is nothing in there that would require them to find anything more specific and not even to require these signals going from one to the other.

[00:20:32] Speaker 01:
All that's required by the claim is that there's the control relationship, which is spelled out there, that the counter has to cause the converter to adjust the control input to vary the switching signal sequence.

[00:20:46] Speaker 01:
And that is done by the priority.

[00:20:47] Speaker 01:
I'd be happy to walk through that with you.

[00:20:52] Speaker 00:
I guess I don't even see on page 18, I'm sorry, I don't mean to be the dead horse, but where on page 18 did the board appreciate what the actual construction was that power integration was arguing?

[00:21:07] Speaker 01:
Well, basically at the top of 18, it recognized that their construction did not require that there be a direct connection.

[00:21:15] Speaker 00:
It says, even assuming that appellant's contention that elements are coupled with the presence of interviewing components is true,

[00:21:23] Speaker 00:
And further assuming that appellant's assertion that Habitualer discloses an intervening element between a counter and a converter is also true, it follows Habitualer would disclose a counter under appellant's proposed analysis.

[00:21:37] Speaker 00:
But that can't be true if appellant's proposed analysis was understood by the board because it wasn't just you could have an intervening component.

[00:21:46] Speaker 00:
It was that the signal, the voltage, or the current had to pass through unaffected.

[00:21:51] Speaker 00:
So the board didn't understand, based on that sentence, what their construction actually was, because it says even under their construction, Habliter would disclose that.

[00:22:02] Speaker 00:
And that's clear it doesn't.

[00:22:04] Speaker 00:
I mean, the EPROM absolutely, unquestionably affects the signal, the voltage, and the current.

[00:22:09] Speaker 00:
So there is no substantial evidence otherwise.

[00:22:12] Speaker 00:
So that can't be the case.

[00:22:14] Speaker 00:
So I feel like that doesn't actually demonstrate to me that the board appreciated

[00:22:18] Speaker 00:
power integration's construction.

[00:22:20] Speaker 01:
Well, I think that's because power integration was a little bit varied in terms of what its preferred construction is.

[00:22:29] Speaker 01:
They keep kind of changing and they did seem to even here before this court in the blue brief it repeatedly talks about this control relationship and you can't disrupt the control relationship and then I think a couple times

[00:22:41] Speaker 01:
it went and said something more and it said oh and it also requires like there has to be the signal that goes between the counter and the signal.

[00:22:50] Speaker 01:
I'd be happy to point to that because I have some of the sites here but I think that's part of the problem with what the board was struggling with.

[00:22:59] Speaker 01:
But I think at bottom that the board you know appreciated that it was tasked with looking to the specification, the ordinary meaning and the

[00:23:08] Speaker 01:
The claims, the specification, the ordinal meaning, and all of those pointed to a broader construction.

[00:23:13] Speaker 01:
And here they have an opportunity to amend their claims and to put in something there.

[00:23:17] Speaker 01:
They could have put in that there has to be the signal that goes from one to the other.

[00:23:21] Speaker 01:
I'm not sure that would change the anticipation rejection because I'd like to explain.

[00:23:25] Speaker 00:
Under the APA, the board is required under the APA to consider and explain how it addresses all substantial evidence submitted to it.

[00:23:35] Speaker 00:
That's an APA requirement.

[00:23:37] Speaker 00:
I assume you're familiar with it, but take my word for it for now.

[00:23:40] Speaker 00:
So I recognize that the district court's decision in this case is not, quote, evidence.

[00:23:46] Speaker 00:
It's authority, persuasive authority.

[00:23:49] Speaker 00:
I just don't understand for the life of me how the board could ignore it and not address it.

[00:23:53] Speaker 00:
I've never, ever seen a case where one court has disregarded another court's opinion on the identical issue.

[00:24:02] Speaker 00:
How could the board not at least mention it?

[00:24:06] Speaker 01:
Well, I don't think it's fair to say that they ignored it.

[00:24:10] Speaker 01:
I think it was there before them.

[00:24:11] Speaker 01:
They just simply didn't speak to it.

[00:24:14] Speaker 01:
And I think it pointed to the evidence which they thought was relevant in terms of construing the claim.

[00:24:23] Speaker 01:
And based on that, it arrived at the construction that it did.

[00:24:26] Speaker 01:
But to the extent that they argued and pointed to the district court construction,

[00:24:33] Speaker 01:
The board was aware of it, but it just didn't seem that that would change.

[00:24:36] Speaker 00:
If the claim construction that district court opinion had been appealed to us, and we had affirmed it, would the board have been free to deviate from that construction during re-exam?

[00:24:49] Speaker 01:
I think it would because, again, they're under the broadest reasonable construction.

[00:24:53] Speaker 00:
How can any construction be reasonable other than the one that we affirm as the correct construction under law?

[00:25:01] Speaker 00:
on a given term and a given patent at that point.

[00:25:03] Speaker 00:
Is anyone free to argue a different construction after that?

[00:25:09] Speaker 01:
Before the agency, again, I think that it's a different setting where they can amend their claims and where the agency is tasked with construing under the broadest reasonable construction.

[00:25:21] Speaker 01:
But that's not what we have here.

[00:25:23] Speaker 01:
What we have here is a case where the claim construction was not appealed.

[00:25:28] Speaker 01:
I will say that really the differences between these two, the prior arts, I'd like to walk you through that.

[00:25:33] Speaker 01:
The differences between the prior art and their invention is really not as significant as they make it out to be.

[00:25:42] Speaker 01:
I would point you to even your own summary of the prior art, which appears at 1359 of the Federal Circuit's prior opinion, where it describes essentially how

[00:25:56] Speaker 01:
how their invention works, and at the second paragraph that begins at the heart of the 876 patent, it explains that the counter, box 140, basically monitors the power supply's oscillating drive signal B, which is shown on the figure, which repeats periodically, and as the oscillating drive signal repeats, the digital counter counts the number of repetitions.

[00:26:19] Speaker 01:
And then over on the next column,

[00:26:21] Speaker 01:
it says the digital to analog converter generates an analog signal that's proportional to the counter's tally.

[00:26:28] Speaker 01:
So really all that's happening is the counter is using a number and based on the number it controls, it sends a signal to the converter and the converter makes an analog signal that's proportional to that and that then affects the oscillator's switching frequency.

[00:26:44] Speaker 01:
The only difference in the prior art is that instead of

[00:26:47] Speaker 01:
that number being derived from the number of signals that comes from the oscillator.

[00:26:51] Speaker 01:
It's a number that they get from a memory that stores random numbers.

[00:26:56] Speaker 01:
And those random numbers are what basically keys the signal that the converter's analog signal is proportional to that random number.

[00:27:09] Speaker 01:
So there's not really as big a difference as they try to make it out to be.

[00:27:15] Speaker 00:
Forgive me if I don't get the technology right, I'm gonna try my best.

[00:27:18] Speaker 00:
The pattern, the counter causes the digital analog converter and causes to vary the frequency.

[00:27:25] Speaker 00:
And the way it works is counting.

[00:27:27] Speaker 00:
One, two, three, very monotonously.

[00:27:30] Speaker 00:
And it results in a step function, look, right?

[00:27:34] Speaker 00:
Because from one to two is just one step up.

[00:27:36] Speaker 00:
And so the frequency is just kind of gonna go like a set of stairs.

[00:27:42] Speaker 00:
Because that's the way that the counter works.

[00:27:44] Speaker 00:
And one of the things this patent talks a lot about, and I realize this might be relevant for obvious but not in anticipation, is the value of reducing the number of components for efficiency purposes and otherwise.

[00:27:55] Speaker 00:
So what the prior art does is it uses an EPROM, which has a random number generated in each register, plot, you know, each little buffer register, whatever it is, it's a little plot.

[00:28:07] Speaker 00:
And so the counter prompts the memory to spit out things.

[00:28:12] Speaker 00:
And then the frequency gets varied based on whatever the memory spits out.

[00:28:16] Speaker 00:
It is true that the counter prompted the memory to spit it out, no doubt.

[00:28:22] Speaker 00:
But the counter then didn't cause the variation in frequency.

[00:28:25] Speaker 00:
The counter in the claimed patent bears a direct, undeniable relationship to the variation in frequency that is.

[00:28:34] Speaker 00:
It's absolutely causing not only a variation in frequency, but the precise variation in frequency.

[00:28:40] Speaker 00:
The counter isn't doing that in the prior art, it's really the EPROM that's doing it.

[00:28:45] Speaker 00:
The counter is prompting the EPROM to do it, but the EPROM is determining the variation in frequency.

[00:28:51] Speaker 01:
At the end of the day, it's all about numbers.

[00:28:53] Speaker 01:
And it's whether the number is a number that's based on the number of repetitions of signals from the oscillator, whether it's a random number that's in the memory.

[00:29:02] Speaker 01:
At the end of the day, it's a rich number.

[00:29:02] Speaker 00:
You're saying it doesn't matter whether it's just the step or whether it's a totally random?

[00:29:06] Speaker 00:
Right.

[00:29:06] Speaker 01:
It would either go stepwise, as it does in there, as it goes stepwise.

[00:29:10] Speaker 01:
In the case of the prior art, it's jumping around because you have a random number as the oscillator.

[00:29:14] Speaker 01:
The signal from the analog signal from the converter would be somewhat random.

[00:29:19] Speaker 00:
It jumps around.

[00:29:20] Speaker 00:
And are you saying that all the patent cared about was varying?

[00:29:23] Speaker 00:
the frequency and not how it was varied.

[00:29:26] Speaker 01:
Right, exactly.

[00:29:27] Speaker 01:
That's the whole point of it was to vary the frequency to get rid of EMI noise and in both cases it does that.

[00:29:33] Speaker 01:
So there's really not this big difference and at the end of the day it's the counter or the clock that's really controlling the memory.

[00:29:40] Speaker 01:
It just stores information.

[00:29:42] Speaker 01:
It's not as the examiner and the board found, it's a passive device.

[00:29:46] Speaker 01:
It's not doing, it's the counter that's really controlling what's going on.

[00:29:52] Speaker 02:
The claims that are at issue, claim one and claim 17 to 19, don't have any details with regard to stepwise incrementation or direct correlation or anything of that sort?

[00:30:05] Speaker 01:
No, they don't, and that's exactly what they could have, and they resisted the opportunity.

[00:30:09] Speaker 01:
Here they were before the patent office, and they could have amended the claims to say that they were specified that it had to be a direct connection between them, or they could have specified that it has to have, and really the relevant distinction is it does the stepwise thing and that it's

[00:30:21] Speaker 01:
keyed off the signals that come from the oscillator.

[00:30:23] Speaker 01:
So it could have put those kind of limitations into the claims, but they resisted doing that.

[00:30:27] Speaker 01:
And the reason is that they want to be able to go after infringers that do things a little bit differently, that have intervening components, and they can't get it both ways.

[00:30:36] Speaker 01:
And that's essentially what the problem is here.

[00:30:39] Speaker 00:
But can you really say, I'm just wondering, I'm not suggesting that the board doesn't win under a possibly different construction.

[00:30:47] Speaker 00:
But the idea to me that any two things that happen to be in the same circuit are coupled feel really quite frankly excessively broad.

[00:30:59] Speaker 00:
I mean, these two things could be separated by hundreds of components.

[00:31:03] Speaker 00:
What is the output of one and the input of the other can bear no relationship to each other whatsoever.

[00:31:09] Speaker 00:
Are those two things really coupled?

[00:31:11] Speaker 00:
I mean, is that really a fair definition of coupled in the electrical arts?

[00:31:16] Speaker 01:
I believe it is, and I don't think the board actually went that far.

[00:31:22] Speaker 00:
That's not the case.

[00:31:23] Speaker 00:
You didn't have to go that far, but that is how far the board went.

[00:31:25] Speaker 01:
Well, the board didn't go that far, because all really was relevant here was whether or not you could have a memory in between.

[00:31:31] Speaker 00:
Didn't they say that the definition of coupled is any two things in the same circuit are coupled?

[00:31:36] Speaker 01:
Devices that are joined in a circuit, and that's because that's the definition.

[00:31:40] Speaker 01:
That's how one of ordinary skill and the art would understand it.

[00:31:43] Speaker 01:
But I don't think that it requires, I think there could be circumstances where things are in the same circuit and they're not necessarily coupled.

[00:31:50] Speaker 01:
Like a switch.

[00:31:51] Speaker 00:
A switch is present.

[00:31:51] Speaker 01:
Or you could have something over here that's using a memory and it only needs that memory for whatever it's doing, but it doesn't mean that that memory is somehow connected to or coupled to something over here that's doing something completely different.

[00:32:03] Speaker 01:
But in any event, I do want to point out too that this term is not that, it's obviously relatively common in the electronic arts.

[00:32:11] Speaker 01:
It has appeared in district court actions.

[00:32:13] Speaker 01:
Many district courts have found it means both direct or indirect coupling.

[00:32:16] Speaker 01:
And it, I think, almost on a daily basis.

[00:32:18] Speaker 01:
Well, we have a federal circuit case that says that.

[00:32:20] Speaker 01:
It's nonpractical.

[00:32:21] Speaker 01:
It says it quite clearly.

[00:32:22] Speaker 01:
Judge Harry wrote it.

[00:32:24] Speaker 01:
Yes.

[00:32:24] Speaker 01:
And the examiners see it almost on a daily basis.

[00:32:27] Speaker 01:
And so to require them to construe couple two as requiring a direct coupling would be very different from what they're doing now.

[00:32:36] Speaker 01:
They always read it broadly unless the specification indicates otherwise.

[00:32:39] Speaker 00:
I think we should give Mr. Pollack his rebuttal time.

[00:32:44] Speaker 00:
We have your argument, Ms.

[00:32:44] Speaker 00:
Nelson.

[00:32:45] Speaker 00:
Thank you, Mr. Pollack.

[00:32:50] Speaker 03:
Thank you very much, Your Honor.

[00:32:52] Speaker 03:
I just want to address a few points.

[00:32:54] Speaker 03:
The first, the idea that power integration somehow varied its construction.

[00:32:58] Speaker 03:
The construction has always been that two elements are coupled such that a voltage, current, or control signal passes from one circuit to the other.

[00:33:07] Speaker 03:
That's always been the construction.

[00:33:09] Speaker 03:
It was the construction of the district court.

[00:33:10] Speaker 03:
It was the construction in the patent office that was advocated by power integrations.

[00:33:14] Speaker 03:
This issue about whether intervening components are allowed was something that the court talked about in its opinion.

[00:33:21] Speaker 03:
It wasn't in the formal construction.

[00:33:23] Speaker 03:
But we agree that an intervening component is not precluded.

[00:33:27] Speaker 03:
What is precluded is an intervening component that breaks the control relationship, that

[00:33:33] Speaker 03:
prevents the counter from controlling the digital analog converter.

[00:33:38] Speaker 03:
Exactly what happens with a ROM.

[00:33:40] Speaker 03:
And one thing we mentioned and we talked about below is that the patent office can't point to any component that they would say would be an intervening component that wouldn't break the control relationship if a ROM doesn't.

[00:33:56] Speaker 03:
And we think that's an important point.

[00:33:58] Speaker 03:
If there was such a thing, they probably would have been able to come up with it.

[00:34:02] Speaker 03:
This point about, and I don't know whether it's appropriate, but it was brought up, is that the difference between the prior art and the patent isn't a big deal or it's not that big a difference.

[00:34:13] Speaker 03:
Under anticipation, if there's a difference, there can't be anticipation.

[00:34:18] Speaker 03:
It's different.

[00:34:20] Speaker 03:
This court has already ruled on the obviousness question that actually that difference is a lot bigger than one might presume from the face of the prior art, and it addressed that in detail in its opinion, and I believe correctly.

[00:34:33] Speaker 03:
As the court pointed out, the purpose of this invention was to achieve frequency variation in an economical circuit that reduces the number of external components and works in a way that allows the frequency to be spread in a predictable cyclical manner that varies it around a target frequency.

[00:34:54] Speaker 03:
That's discussed in the specification.

[00:34:56] Speaker 03:
I don't believe that you can read the specification and say, oh, the patentee contemplated that random variation using a ROM, which is by definition an external component, was something that was appreciated or suggested in any way in the patent.

[00:35:12] Speaker 03:
And as to the question of whether or not power innovations could have amended the claims, your court is very well aware that there was a copending litigation, a finding of infringement had already occurred, a finding of validity had already occurred,

[00:35:24] Speaker 03:
under the construction that we had.

[00:35:27] Speaker 03:
And so power integrations didn't believe that amendment was necessary, believe that the claims were clear.

[00:35:32] Speaker 03:
And also, practicality of it was that we believe that if we did make some sort of an amendment, as suggested by the office, that the party in the present case would be arguing that there was a material difference, and it would argue intervening rights, et cetera.

[00:35:48] Speaker 03:
And so the practicality is that it's not an unfettered

[00:35:52] Speaker 03:
ability to amend claims when you have a copending litigation.

[00:35:56] Speaker 03:
And so we actually did amend the claim to specifically address an issue that the examiner had raised about what he believed was unclear about the relationship between the counter and the digital analog converter.

[00:36:10] Speaker 03:
And so the claim did get amended to make it specific that yes, the counter and the digital analog converter are coupled.

[00:36:17] Speaker 03:
And it's that coupling which allows the counter to cause the digital analog converter to vary the frequency.

[00:36:24] Speaker 03:
I very much appreciate your time, especially the extra time I had when I was here.

[00:36:27] Speaker 00:
Thank you, Mr. Pollack.

[00:36:28] Speaker 00:
I thank both councils.

[00:36:29] Speaker 00:
The case is taken under submission.