[00:00:14] Speaker 02:
The next case for argument is 16-1143.

[00:00:25] Speaker 02:
Cisco Systems versus Syrac System.

[00:00:29] Speaker 02:
If I had one.

[00:00:44] Speaker 02:
Let's wait for everyone to get settled here.

[00:00:54] Speaker 02:
We've got a cross appeal here, so we've got split time on both sides, so we're going to try to hold to it if we can.

[00:01:00] Speaker 03:
Mr. McCombs?

[00:01:02] Speaker 03:
Yes, Your Honors.

[00:01:04] Speaker 03:
May it please the Court, on the record, I'm David McCombs here for Cisco Systems.

[00:01:09] Speaker 03:
In Cisco's appeal, the claims in question recite a planar light-guide circuit that equalizes or discreetly attenuates light energy that's traveling in its optical paths.

[00:01:21] Speaker 03:
The board erred in finding written description support for these claims because the patent never describes how these functions are performed in the planar light-guide circuit, or PLC.

[00:01:32] Speaker 03:
Recognizing this... Is that an enablement argument?

[00:01:35] Speaker 01:
This is a written description.

[00:01:37] Speaker 01:
Right, but when you say that the patent doesn't describe how it's being done, I guess I'm trying to figure out, does that mean you're actually arguing an enablement argument?

[00:01:48] Speaker 03:
Your Honor, I'm arguing possession of the invention.

[00:01:53] Speaker 03:
OK.

[00:01:54] Speaker 03:
And recognizing this lack of written description, during re-examination, the patent owner proposed a hypothetical example that was not disclosed

[00:02:02] Speaker 03:
It was not part of the specification to illustrate how these claim functions could be met using components outside the PLC.

[00:02:11] Speaker 03:
And in order for this example to fit within the scope of the claims, the board stretched the construction to broadly cover the situation where an external diverting element would be used to perform the functions, not by operation of the PLC.

[00:02:26] Speaker 02:
Well, the written description question is entirely a question of fact, right?

[00:02:30] Speaker 02:
Written description.

[00:02:31] Speaker 02:
Yes, Your Honor.

[00:02:32] Speaker 02:
And here we've got, I mean, the question is therefore correct if there's substantial evidence to support the PTAB's conclusions and findings on a question of fact, right?

[00:02:43] Speaker 03:
Yes, Your Honor.

[00:02:44] Speaker 03:
What we have, though, is we have a claim construction error that led to this written description issue.

[00:02:50] Speaker 03:
There's a distorted claim construction.

[00:02:52] Speaker 02:
Did the Board make explicit claim construction?

[00:02:56] Speaker 02:
finding or was this a sort of an implicit claim construction?

[00:02:59] Speaker 03:
The board was specific, Your Honor, in the sense that the board said that it applied this hypothetical embodiment, this hypothetical disclosure of this drop-leg hypothetical to support the concept that the claims were broad enough so that they could cover the situation where these external elements outside

[00:03:23] Speaker 03:
the PLC would be used to perform the function.

[00:03:27] Speaker 01:
Which external elements are you talking about?

[00:03:29] Speaker 03:
This would be the diverting element that would be used, it's external to the planar light guide circuit, and the diverting element was used... When you say diverting element, do you mean the gain flattening elements?

[00:03:41] Speaker 03:
No, this would be the diverting elements that is referred to in Figure 10 of the patent, and it was this diverting element that would be used to redirect a

[00:03:53] Speaker 01:
an extra signal, lambda 3 prime, back into the PLC that would be used to arguably provide the function of equalizing or... Right, and my understanding is the board relied on a particular statement in column 15, which pointed out that the attenuating material could be, instead of outside the PLC, it could be inserted inside the PLC, right?

[00:04:17] Speaker 03:
Yes, Your Honor, and the specific portion of the specification that you're referring to

[00:04:23] Speaker 03:
What it says there is, and I quote, that the attenuation material may be included to discreetly attenuate or equalize the light traveling in the optical paths as another approach.

[00:04:36] Speaker 03:
But, Your Honor, there's never a statement in the specification that says that this approach would even provide for equalization or specifically for discreet attenuation.

[00:04:46] Speaker 03:
It's referred to as another approach without any discussion of exactly what that would accomplish.

[00:04:53] Speaker 03:
The board finds 112 support for that only by a stretched claim construction that looks beyond the PLC to the diverting element to perform these functions.

[00:05:05] Speaker 03:
And what we have here, Your Honors, is a situation of envisioning how one might rewrite the disclosure to fit the claims that were drafted years later in reexamination.

[00:05:15] Speaker 03:
What we don't have is something that's pointing to any possession of the invention.

[00:05:19] Speaker 03:
the hypothetical, it goes way too far in many respects.

[00:05:24] Speaker 01:
What's your conception of what the invention is when you say that this claim or the inventors lack possession of this claimed invention?

[00:05:36] Speaker 01:
Is it your understanding, just so we're all on the same page, the invention is some kind of wavelength by wavelength attenuation in order to equalize

[00:05:49] Speaker 01:
and fine-tune the various light intensities among all the different wavelengths?

[00:05:55] Speaker 03:
Yes, Your Honor.

[00:05:55] Speaker 03:
If you look at the specific language of claim 56, for example, it says the planar light guide circuit is operative to equalize the light traveling in its optical path.

[00:06:06] Speaker 01:
So you have a multiplexed signal that's going into... Right, but the claim itself doesn't really speak in terms of equalizing wavelength by wavelength.

[00:06:17] Speaker 03:
It says that it's operative to equalize the light traveling in the optical paths.

[00:06:22] Speaker 03:
So the light traveling in the optical paths has to be equalized within itself.

[00:06:27] Speaker 03:
There's a multiplex signal.

[00:06:29] Speaker 01:
Right.

[00:06:29] Speaker 01:
So as I understand, what the board said and did was you put the attenuating material inside the PLC, then all the wavelengths that are together inside the PLC, they'll all get attenuated at the same rate, right?

[00:06:47] Speaker 01:
And then a new wavelength will enter the PLC and that wavelength will be already at the same intensity level of the now attenuated collection of wavelengths that were previously in the PLC.

[00:07:04] Speaker 01:
Is that, am I correct in understanding the board's understanding of how there would be possession?

[00:07:12] Speaker 03:
Your Honor, that is a correct statement, but that is not described in the patent specification.

[00:07:18] Speaker 03:
What was described, and again, what the board did there was they're talking about equalizing by referring to this extended spectral range that then would be made compatible with some other signal that's later brought in, this Lambda 3 prime signal.

[00:07:36] Speaker 03:
That's not performing equalizing

[00:07:37] Speaker 03:
by operation of the PLC.

[00:07:39] Speaker 03:
That's performing operation by use of this external diverting element and not occurring within the PLC.

[00:07:47] Speaker 03:
All of the light that is within the PLC is equalized in a collective fashion.

[00:07:54] Speaker 03:
There's no equalization of the discrete channels.

[00:07:58] Speaker 03:
And so what we have here is a situation where there is no possession of the invention as it relates to how

[00:08:06] Speaker 03:
by operation of the PLC, you would equalize light energy in the PLC.

[00:08:13] Speaker 01:
So what's your understanding then of what the patent was talking about when it talked about, in the same paragraph, about equalization and attenuating light intensity?

[00:08:24] Speaker 01:
What was it getting at when it was talking about how you can put the attenuating material in the PLC?

[00:08:29] Speaker 03:
Yes, so in that description that's pertaining to figure 13, of course,

[00:08:34] Speaker 03:
the attenuation material was described initially to be outside of the PLC, and to the extent that you would put the attenuation material inside the PLC, there may be adjustments, but that would not particularly relate, that would not provide for equalization, because if you had three channels, all of which were at different intensities, it might lower them all or raise them all, but it would not equalize them.

[00:09:01] Speaker 03:
So within the PLC, that was not a possibility.

[00:09:04] Speaker 03:
because the possession of the invention was not described.

[00:09:08] Speaker 03:
How would you, the technical solution of how would you, within the PLC, de-multiplex that light so that you could manipulate each channel separately?

[00:09:17] Speaker 03:
That was never part of the disclosure.

[00:09:20] Speaker 03:
And that's a completely different technical solution than what was proposed in the patent and how you might do that externally through what was described in figure 13.

[00:09:31] Speaker 03:
And that invention of how you would do that by the PLC, that was not in possession of the inventor at the time.

[00:09:41] Speaker 03:
Now that led to a framing error as well in the way the claims were framed.

[00:09:47] Speaker 03:
And what I mean by that is what the board did, and the board never said that the key concept of this invention, of doing this within the PLC, the board never said that was shown as being

[00:09:59] Speaker 03:
directly in possession and a description.

[00:10:03] Speaker 03:
What the board did, it always retreated to this diverting element, hypothetical, to perform that function.

[00:10:10] Speaker 03:
But the framing error here is that by doing so, the full scope of the claim, the full breadth of the claim, even if it did include that hypothetical, the core concept of the claim was also to have the PLC itself perform this function.

[00:10:25] Speaker 03:
There was never possession of that invention.

[00:10:28] Speaker 03:
There was never a specific technical solution that was described to perform that.

[00:10:33] Speaker 01:
And so what is the best case that you think really drives home and supports your understanding if, for example, there is an embodiment that is within the scope of the claim as construed that meets the limitations of the claim, but then there's another embodiment disclosed in the spec that

[00:11:00] Speaker 01:
that if you put it, you wouldn't really be able to put it into the claim.

[00:11:05] Speaker 01:
And a version of it that would fit in the claim is just not disclosed.

[00:11:10] Speaker 03:
I think, Your Honor, the Lizard Tech case is applicable.

[00:11:13] Speaker 03:
The Lizard Tech case had to do with compression algorithms.

[00:11:17] Speaker 03:
And in that case, there was a very specific solution of how to create the compression algorithm to work in a certain way.

[00:11:26] Speaker 03:
And there was a very specific

[00:11:29] Speaker 03:
embodiment for that.

[00:11:30] Speaker 03:
The claim then extended way beyond that and arguably would sweep in and cover other implementations, none of which were disclosed.

[00:11:39] Speaker 03:
And like this case, in that case from a policy standpoint, any later developed solution would cover that broader invention but without any disclosure for that.

[00:11:50] Speaker 03:
And so that would be ensnared by the claims and that would be improper under the quid pro quo for the patent bargain.

[00:11:56] Speaker 03:
where, to not have a disclosure for that, yet still have claims that would cover it.

[00:12:03] Speaker 02:
You're into your rebuttal, so why don't we hear from a friend on the other side.

[00:12:08] Speaker 02:
Thank you, Your Honors.

[00:12:10] Speaker ?:
Hello.

[00:12:19] Speaker 00:
Good afternoon, Your Honors.

[00:12:20] Speaker 00:
My name is Tarek Fahmy.

[00:12:22] Speaker 00:
I'm here on behalf of Syrix, the cross-appellant.

[00:12:26] Speaker 00:
may please the court.

[00:12:28] Speaker 00:
In contesting the board's affirmance of Claims 56 et al., Cisco basically makes or relies upon three points.

[00:12:39] Speaker 00:
First, they say the board erred by relying on an improper hypothetical implementation of what was claimed.

[00:12:48] Speaker 00:
Second, they say the board somehow improperly construed the claims.

[00:12:52] Speaker 00:
And third, they say the board erred in applying the law

[00:12:55] Speaker 00:
regarding written description.

[00:12:58] Speaker 00:
Cisco is wrong on all of these points and they're also wrong with respect to their argument concerning claim 57 when they say the board should not have found adequate support for the discrete attenuation limitation that appears in that claim.

[00:13:13] Speaker 01:
What does discrete attenuation mean to you?

[00:13:15] Speaker 01:
Discrete attenuation... After reading this patent, discrete attenuation to me means doing an attenuation wavelength by wavelength.

[00:13:24] Speaker 00:
Not exactly, Your Honor.

[00:13:25] Speaker 01:
Although it could be... If we don't read it that way, then there's really no work for the word discrete, the phrase discrete attenuation.

[00:13:34] Speaker 00:
It need not be limited to single wavelengths, Your Honor.

[00:13:37] Speaker 00:
It's discrete spectral regions.

[00:13:40] Speaker 00:
Exactly.

[00:13:42] Speaker 00:
It could be multiple wavelengths across a spectral region as defined from other wavelengths in a different spectral region.

[00:13:48] Speaker 01:
But it certainly can't be attenuating everything.

[00:13:52] Speaker 00:
I would agree with you.

[00:13:53] Speaker 00:
It can't be attenuating everything.

[00:13:56] Speaker 01:
And so that's the concern here is that what we have going on in your proposed embodiment that's not specifically disclosed in the spec is reliant on attenuation material inside the PLC that is attenuating everything, all the wavelengths inside that PLC at the same time at the same rate.

[00:14:22] Speaker 01:
regardless of what the relative light intensities are of each of those individual wavelengths.

[00:14:27] Speaker 01:
And then in order for you to make the argument that there's not attenuation of everything, you argue that the introduction of another wavelength after the attenuation occurs somehow, given that it wasn't attenuated, results in so-called discrete attenuation.

[00:14:52] Speaker 01:
in my understanding your argument?

[00:14:54] Speaker 00:
Well, I think you have all the essential points there, Your Honor, but I would take some issue with the way you started and suggest that the test of sufficiency is not merely the words on the page as they exist in the specification.

[00:15:10] Speaker 00:
The test of sufficiency is what the specification

[00:15:14] Speaker 00:
in it through its four corners reasonably discloses to the person of ordinary skill.

[00:15:19] Speaker 02:
But you didn't have any expert testimony about that, did you?

[00:15:22] Speaker 02:
You didn't offer any expert testimony?

[00:15:25] Speaker 00:
There was expert testimony below, Your Honor.

[00:15:27] Speaker 00:
I don't recall specifically whether it was on this point.

[00:15:31] Speaker 00:
However, I don't even think you need to... Did you have an expert?

[00:15:34] Speaker 00:
There was expert testimony introduced by the patent owner, Your Honor, yes.

[00:15:38] Speaker 00:
Okay.

[00:15:38] Speaker 00:
But you don't know whether

[00:15:40] Speaker 00:
I simply don't recall whether it was on this point or not.

[00:15:46] Speaker 02:
Don't you think that's a relevant question if the determination is based on what one's killed in the air would have understood?

[00:15:52] Speaker 00:
I think it could be, however, the testimony of an expert can't stray from what is fairly disclosed in the specification as

[00:16:05] Speaker 02:
But we don't know whether it's fairly disclosed in the specification because you're combining these two figures and doing something more.

[00:16:14] Speaker 02:
So it's not exactly disclosed in the spec.

[00:16:17] Speaker 02:
And your defense to that is to say, well, one skilled in the art would have been able to do this.

[00:16:23] Speaker 02:
That's not apparent from the face of the spec either.

[00:16:27] Speaker 00:
I suggest that it is apparent on the face of the patent.

[00:16:30] Speaker 00:
And it was so found by both the reexamination examiner and by the board.

[00:16:35] Speaker 00:
And earlier you looked at the passage from column 15 that discussed the attenuation material in the PLC.

[00:16:44] Speaker 00:
In the next immediate paragraph, there is discussion of what led the board to conclude that the add-drop hypothetical that was introduced by the patent owner would lead the person of ordinary skill to understand that that was disclosed.

[00:17:01] Speaker 00:
And that's discrete channel?

[00:17:04] Speaker 00:
Correct.

[00:17:04] Speaker 00:
That is the discrete attenuation limitation.

[00:17:06] Speaker 01:
But that paragraph makes a point about distinguishing discrete channel treatment versus collective channel treatment.

[00:17:17] Speaker 01:
And when you're inside the PLC and you're adding attenuation material in there, you're necessarily doing a collective channel approach, a collective wavelength approach.

[00:17:32] Speaker 01:
And so that's the concern I have about, as a logical matter, when you think it through, why would inserting attenuating material inside of the PLC produce this fine-tuning wavelength by wavelength type equalization and attenuation?

[00:17:50] Speaker 01:
It wouldn't.

[00:17:51] Speaker 01:
So that's the concern I have.

[00:17:54] Speaker 00:
Well, it would for whatever wavelengths

[00:17:57] Speaker 00:
are in the PLC at that point, it would attenuate them equally.

[00:18:01] Speaker 01:
It would attenuate all of them.

[00:18:04] Speaker 01:
Yes.

[00:18:04] Speaker 01:
But equalization, you're not suggesting that equalization in these claims in this patent suggest attenuating everything equally.

[00:18:13] Speaker 01:
The whole point of this patent is fine-tuning a variety of light intensity across a series of wavelengths so that you even them out, you equalize

[00:18:23] Speaker 01:
the light intensity across all of those so that they're all of equal intensity, not attenuating them at the same equal rate.

[00:18:34] Speaker 00:
Well, I agree with you that the equalization is of the collective whole, but claim 56, for example, does not speak to discrete equalization.

[00:18:47] Speaker 00:
It speaks only to equalization of the intensives.

[00:18:52] Speaker 01:
As I understand it is used how many times in this patent?

[00:18:54] Speaker 01:
Once.

[00:18:56] Speaker 01:
And it's talking about equalizing the signal strength of each channel.

[00:19:04] Speaker 01:
It's a channel-based equalization where you're trying to have the signal strength be equal for each individual wavelength.

[00:19:16] Speaker 00:
Correct.

[00:19:16] Speaker 01:
Each individual channel.

[00:19:19] Speaker 01:
So reading this patent,

[00:19:21] Speaker 01:
It's clear that what the inventor conceived of was trying to do this channel-based equalization.

[00:19:32] Speaker 01:
That's what column 15 is all about.

[00:19:34] Speaker 00:
I agree.

[00:19:35] Speaker 01:
Now we think about, okay, now you've written some claims many years after the patents issue that talks about trying to do equalization inside the PLC, but the PLC can't do

[00:19:49] Speaker 01:
any type of fine-tuning on a channel-based individualized way.

[00:19:54] Speaker 01:
It has to do the attenuation to everything, the entire basket of wavelengths.

[00:20:01] Speaker 00:
I disagree, Your Honor.

[00:20:03] Speaker 00:
This is a core question, really.

[00:20:07] Speaker 00:
It is.

[00:20:09] Speaker 00:
But I think what's missing from your analysis, Your Honor, is that you're assuming the attenuation takes place only at one point in the PLC.

[00:20:20] Speaker 00:
And there's nothing that suggests that has to be the case.

[00:20:24] Speaker 00:
In fact, the attenuation, where exactly in the PLC the attenuation is implied, the board recognized, is not a requirement of the claim.

[00:20:35] Speaker 00:
And so attenuating material can be included in the PLC.

[00:20:38] Speaker 00:
We know this from column 15.

[00:20:40] Speaker 00:
And an example is provided as to how gain flattening elements can be used as attenuators and different gain flattening elements applied to different wavelengths.

[00:20:51] Speaker 00:
And so the company... Where's that?

[00:20:53] Speaker 00:
That is at the same part of column 15, Your Honor, beginning at line 7.

[00:20:57] Speaker 01:
Now it's discussed in an embodiment... In a channel-by-channel based way.

[00:21:03] Speaker 01:
Yes.

[00:21:03] Speaker 01:
Right.

[00:21:04] Speaker 01:
So you can't achieve that inside the PLC.

[00:21:08] Speaker 00:
No, I disagree, Your Honor.

[00:21:09] Speaker 00:
If we look at, for example, claim... excuse me, figure 13, we see that

[00:21:15] Speaker 00:
there is channel-by-channel attenuation.

[00:21:18] Speaker 01:
Right, when the attenuators are outside of the PLC.

[00:21:21] Speaker 00:
Yes, in this example.

[00:21:22] Speaker 00:
And then immediately in the next phrase, in the patent, we're told that that attenuating material, those gain-flattening elements, can be inside the PLC.

[00:21:33] Speaker 02:
The person of ordinary skill... Were you referring to...?

[00:21:35] Speaker 02:
Are we still on column 15?

[00:21:37] Speaker 00:
Yes, you're on column 15.

[00:21:39] Speaker 00:
The passage begins at about line 7 and carries through to about line 29 or so.

[00:21:45] Speaker 01:
But you have to agree with me that when you put the attenuating material inside the PLC, that attenuating material is affecting all of the wavelengths inside the PLC in the same way.

[00:21:58] Speaker 01:
Unlike figure 13, where now the light has been split into who knows how many wavelengths, let's just say 10 wavelengths.

[00:22:07] Speaker 01:
And each of those wavelengths, each of those channels has its own individualized attenuator.

[00:22:12] Speaker 01:
And that's how

[00:22:13] Speaker 01:
this invention discloses, you can fine tune the relative light intensity of each and every single one of those individual wavelengths.

[00:22:22] Speaker 01:
That's not something that you can accomplish inside the PLC once you stick in some attenuating material.

[00:22:29] Speaker 01:
Am I right?

[00:22:30] Speaker 01:
At least on that score, am I right?

[00:22:32] Speaker 00:
Your Honor, I don't disagree with your characterization of Claim 13.

[00:22:36] Speaker 00:
What I think is missing, however, is the part that

[00:22:43] Speaker 00:
recognizes that the attenuation will only be applied to the wavelengths that are incident upon that attenuating material.

[00:22:50] Speaker 00:
So adjusting the attenuating material within the PLC to accommodate different intensities would solve the problem that you are posing.

[00:23:00] Speaker 02:
Okay, the time is running out, so why don't we move on to your cross appeal so that you don't lose all your opportunity to raise that with us.

[00:23:06] Speaker 00:
Thank you, Your Honor.

[00:23:07] Speaker 00:
With respect to the claims that are on the cross appeal,

[00:23:10] Speaker 00:
Here the failure of the board was to consider the evidence concerning the figure 11 embodiment that was raised by the patent owner below.

[00:23:20] Speaker 00:
When the board looked at the specification to decide whether or not sufficient written description existed, it considered the figure 10 embodiment the figure 13 embodiment, but did not address the patent owner's arguments concerning figure 11.

[00:23:37] Speaker 00:
The representative claim was claimed

[00:23:40] Speaker 00:
and the figure 11 embodiment illustrates or made clear that the diverting elements could be within optical paths and the entirety of the patent discusses the optical paths being within the PLC so when considered in connection with figure 11 there are no optical paths outside the PLC the patent does not refer to

[00:24:10] Speaker 00:
those paths as optical paths, Your Honor.

[00:24:16] Speaker 00:
The only time the optical path is discussed is within the PLC.

[00:24:22] Speaker 00:
So I'm sorry, could you refer us again to the column and line number?

[00:24:27] Speaker 01:
Yes, Your Honor, so... That describes, you know, Figure 11.

[00:24:30] Speaker 00:
Yes, so it appears several times.

[00:24:33] Speaker 00:
First in Column 6, Lines 21 through 25,

[00:24:38] Speaker 00:
We're told that figure 11 is a diagram that illustrates an element in an optical path.

[00:24:44] Speaker 00:
Again, we're told that column 14, lines 46 through 51, that figure 11 illustrates the diverting element 1,000 within the optical path of a light circuit.

[00:24:59] Speaker 02:
We're also told... But that could refer to an optical path that's either inside or outside a PLC, correct?

[00:25:05] Speaker 00:
Well, the only optical paths, Your Honor, that we're told about in the patent... Well, can you answer my question?

[00:25:10] Speaker 02:
And then you can explain.

[00:25:11] Speaker 02:
Is that true that this could refer to an optical path that's either inside or outside of the PLC?

[00:25:15] Speaker 00:
It's not true, Your Honor.

[00:25:17] Speaker 00:
And the reason it's not true is the only optical paths that are described in the patent are those within the PLC.

[00:25:24] Speaker 00:
Outside the PLC, there's no reference to those traces being optical paths.

[00:25:33] Speaker 00:
So the only time

[00:25:34] Speaker 00:
that the optical path is invoked or used in the patent is in the context of being within the PLC, and therefore the disclosure concerning Figure 11 would suggest to the person of ordinary skill that it must be discussing a diverting element inside the PLC.

[00:25:50] Speaker 01:
So then you're saying Figure 11 is an embodiment devoted exclusively to a diverting element inside the PLC?

[00:26:02] Speaker 00:
Yes, Your Honor, that's correct.

[00:26:06] Speaker 00:
Unless there are other questions, I can reserve them.

[00:26:12] Speaker 03:
Mr. McCombs, you have the opportunity to respond twofold.

[00:26:18] Speaker 03:
Thank you, Your Honors.

[00:26:21] Speaker 03:
As we just heard from the Patent Order, the cross-appeal depends upon this Court overturning a substantial evidence finding.

[00:26:28] Speaker 03:
And here, to the contrary, the Board did articulate sufficient evidence that the

[00:26:34] Speaker 03:
diverting element is indeed disclosed to be outside the PLC, not within the PLC, and therefore... And that's under Figure 11.

[00:26:42] Speaker 03:
Under Figure 11, that's correct.

[00:26:45] Speaker 03:
And if we look at what Figure 11 is, Figure 11 and 12 are a discussion of the diverting element that's shown in Figure 10.

[00:26:54] Speaker 03:
What we have is it's like a mirror that gets inserted and moved in and out, and either in Figure 11 you're showing that

[00:27:02] Speaker 03:
in figure 12 you're showing it's either in one of two positions, either one where it is interrupting the light or one where it is not.

[00:27:10] Speaker 03:
And this whole figure 11 argument... About optical path, can you say something about that?

[00:27:15] Speaker 03:
Yeah, so what the argument here hinges on are the words light circuit and this incorrect proposition that the only, the optical path of a light circuit, the only one is inside the planar light guide circuit.

[00:27:31] Speaker 03:
But there's clear discussion in the specification when it's discussing Figure 10 that the diverting element is configured as an optical cross-connect that is between two optical light circuits which are clearly outside the PLC.

[00:27:46] Speaker 03:
And this idea that you have this general light circuit that is referencing Figure 11, that that must somehow equate to the planar light guide circuit, that's a false argument.

[00:28:00] Speaker 03:
As we do see in

[00:28:01] Speaker 03:
in column 14, there's a specific discussion at about 14 line 10 and following as to what an optical circuit is and that there can be optical circuits that are outside, that are definitely outside the PLC.

[00:28:18] Speaker 03:
And the discussion with regard to figure 11 at column 14 lines 45 and following is just showing that the diverting element

[00:28:30] Speaker 03:
to be within the optical path of a light circuit.

[00:28:32] Speaker 03:
The light circuit is clearly, as shown in Figure 10, to be outside the PLC.

[00:28:39] Speaker 01:
So this patent spec, in your view, uses the phrase light circuit to refer to something different than PLC?

[00:28:49] Speaker 03:
Well, a light circuit can be a light circuit, as shown in Figure 10, which is outside the PLC, a planar light guide.

[00:28:58] Speaker 01:
a component of a light circuit?

[00:29:02] Speaker 01:
Is a PLC a component of a light circuit?

[00:29:06] Speaker 01:
Or is a PLC a light circuit?

[00:29:09] Speaker 03:
No, a PLC, a planar light guide circuit, is effectively a piece of glass that light energy is fed into.

[00:29:16] Speaker 03:
And there are light circuits, as we see in the figure, in figure 10, that is showing light circuits where you have diverting elements that can feed

[00:29:25] Speaker 03:
light energy into the planer.

[00:29:27] Speaker 01:
Right, everything that I see in figure 10, is that a light circuit as that term is used in the patent?

[00:29:35] Speaker 03:
Yes, the path showing that it is that diverting element element that's outside the PLC that is a light circuit, correct.

[00:29:43] Speaker 01:
I'm sorry, you're saying the diverting element is a light circuit?

[00:29:46] Speaker 03:
No, the diverting element is outside of the PLC and it is part of a light circuit.

[00:29:52] Speaker 01:
So the diverting element is part of a light circuit?

[00:29:55] Speaker 03:
That's correct.

[00:29:57] Speaker 03:
Is the PLC a part of a light circuit?

[00:29:59] Speaker 03:
The PLC has optical paths that are part of a light circuit, but there's nothing that could show that the diverting element could be inside the PLC.

[00:30:12] Speaker 03:
There's no disclosure of that, and there was clear discussion by the board that there was no recitation of that at all.

[00:30:20] Speaker 04:
Where is a light circuit defined?

[00:30:22] Speaker 03:
The light circuit is defined in column 14 at about line 10 and following.

[00:30:29] Speaker 03:
It says, light circuit, an optical circuit and introduce a new signal content represented by lambda 3 prime back into the optical circuit.

[00:30:40] Speaker 03:
And figure 11, continuing at column 14, lines 45 and following, figure 11 illustrates the diverting element within the optical path of a light circuit.

[00:30:53] Speaker 03:
So the light circuit would be, if you look at the figures and you look at what's shown in Figure 10, you'll see... I hate to belabor this, but the first part of Column 14 references an optical circuit.

[00:31:07] Speaker 01:
The second part of Column 14 references a light circuit.

[00:31:10] Speaker 01:
Are you saying optical circuit and a light circuit are the same thing?

[00:31:13] Speaker 01:
Yes, Your Honor.

[00:31:14] Speaker 01:
Okay, so you're saying these patents use those phrases interchangeably?

[00:31:18] Speaker 01:
Yes, Your Honor.

[00:31:25] Speaker 03:
Yes, my final point is that there is also a waiver, Your Honors, of the argument with regard to the indefiniteness rejection.

[00:31:36] Speaker 03:
There were two rejections, written description and indefiniteness.

[00:31:39] Speaker 03:
And with regard to indefiniteness, the claims were found indefinite because there was no clear statement of how you could feed light energy into the PLC as required by claim one when these rejected claims were cited.

[00:31:54] Speaker 03:
that the diverting element was already inside the PLC.

[00:31:58] Speaker 03:
And for this logical disconnect, the patent owner provided no traversal at all with regard to that other than to rely on the fact that there was a written description rejection that was not satisfied.

[00:32:13] Speaker 04:
If we disagree with you on it and find that the patent does not use optical circuit and light circuit synonymously, do your arguments fail?

[00:32:22] Speaker 03:
I don't believe so, Your Honor, because I think it's very clear from Figure 10 that you see what is a light circuit and a diverting element that is shown clearly in Figure 10 to be outside the planar light guide circuit.

[00:32:37] Speaker 03:
Okay.

[00:32:38] Speaker 03:
Thank you.

[00:32:38] Speaker 03:
Thank you, Your Honors.

[00:32:43] Speaker 02:
To even things out, we'll give you another two minutes, or a total of three minutes for rebuttal.

[00:32:47] Speaker 02:
Thank you, Your Honor.

[00:32:50] Speaker 00:
With respect to the claims...

[00:32:52] Speaker 04:
Optical circuit and light circuit, the same thing?

[00:32:55] Speaker 00:
They're not the same thing, Your Honor.

[00:32:57] Speaker 00:
Optical circuit includes things other than a PLC.

[00:33:00] Speaker 00:
The PLC is the light circuit.

[00:33:03] Speaker 00:
And it's for that reason that when figure 11, when the discussion of figure 11 refers to optical pass and the light circuit, it's talking about optical.

[00:33:11] Speaker 01:
But your evidence that light circuit means PLC instead of optical circuit is what?

[00:33:19] Speaker 00:
The only time the term light circuit comes up, Your Honor, is in connection with the discussion of Figure 11.

[00:33:26] Speaker 00:
However, the closest other reference to light circuits is with reference to the PLC, which is an acronym for Planar Light Guide Circuit.

[00:33:38] Speaker 00:
For example, Column 2 at about Line 48.

[00:33:43] Speaker 00:
So this is the only time in the patent where the term light circuit

[00:33:48] Speaker 00:
it appears is in connection with the PLC and the discussion of Figure 11.

[00:33:56] Speaker 01:
So you're saying that this patent, which uses the term PLC probably a hundred times, and then uses the term light circuit once, when it said light circuit it meant it's the same thing as the hundred references to PLC?

[00:34:14] Speaker 00:
Yes, Your Honor.

[00:34:18] Speaker 00:
Furthermore, in discussing the PLC, the patent indicates that the photolithographic techniques can be used to cast the optical paths within the PLC into desired circuit patterns.

[00:34:39] Speaker 00:
So this will be a further indication that when you're talking about a light circuit, you're talking about things that happen in the PLC.

[00:34:49] Speaker 00:
And as I say, the board's failure here was in its omission of any consideration with respect to this Figure 11 embodiment.

[00:35:01] Speaker 00:
And with regard to my friend's reference to a waiver, there was no waiver.

[00:35:08] Speaker 00:
Below the indefiniteness argument was addressed.

[00:35:14] Speaker 00:
It's also, in fact,

[00:35:17] Speaker 00:
addressed in this case.

[00:35:19] Speaker 00:
It's simply the case that the written description issues control in both situations.