[00:00:00] Speaker 01: 015-1293, Engartner versus Intel. [00:00:40] Speaker 01: Please proceed, Mr. Mann. [00:00:42] Speaker 02: Thank you. [00:00:49] Speaker 02: Good morning, Your Honor, and may it please the Court. [00:00:51] Speaker 02: Again, my name is Philip Mann. [00:00:53] Speaker 02: I'm here on behalf of the appellant, Rick Hangartner. [00:00:56] Speaker 02: In the proceedings below, Your Honor, the fundamental error that the district court made was misinterpreting the word element, or elements, as used in claim one of the 42 panels. [00:01:06] Speaker 04: Can I move past what you want to talk about? [00:01:10] Speaker 04: Certainly, Your Honor. [00:01:11] Speaker 04: I'm here to help court it. [00:01:13] Speaker 04: Frankly, the only thing that is centrally on my mind. [00:01:16] Speaker 04: For purposes of this question, assume that I think you're right about the language of the claim. [00:01:26] Speaker 04: taken as language of claim. [00:01:28] Speaker 04: Nevertheless, you added this element to overcome what amounts to an anticipation rejection. [00:01:37] Speaker 04: That is statutory double patenting. [00:01:40] Speaker 04: And under your view, the claim would include systems in which the synchronizing element doesn't synchronize two different non-deterministic logic elements, which would seem to be captured by the 518. [00:01:55] Speaker 04: How does that not amount to, let's call it a disclaimer, of single element systems that would be covered under your view? [00:02:05] Speaker 02: I'm glad you asked that question, Your Honor, because I think that I agree that's a simple question. [00:02:09] Speaker 02: If I may rephrase the question, it seems sort of common sense. [00:02:13] Speaker 02: How can you synchronize only one? [00:02:15] Speaker 02: If you have one element, how do you talk about synchronizing when there's only one? [00:02:19] Speaker 02: Doesn't synchronizing imply two? [00:02:22] Speaker 02: In essence, what's on your mind? [00:02:25] Speaker 04: Well, that's, I think, related to it. [00:02:26] Speaker 04: I mean, you can synchronize components, but let's assume for purposes of this question that I think that what is required to be synchronized in the last element of the claim is actually two different logic elements rather than the components that spit out a single [00:02:44] Speaker 04: single result of a logic element. [00:02:49] Speaker 04: So assume that in order for the synchronizing to be doing anything, there has to be at least two logic elements. [00:02:59] Speaker 02: Well, I would respectfully disagree with that characterization, Your Honor, for this reason. [00:03:05] Speaker 04: I'm interested in that dispute about the premise, but I guess I'm primarily interested in [00:03:13] Speaker 04: Let's assume, just for purposes of this question, that the synchronizing element here, element of the claim, has to apply. [00:03:22] Speaker 04: In order for there to be synchronizing, there has to be two logic elements. [00:03:28] Speaker 04: At that point, how is it that you didn't disclaim a single logic element system? [00:03:35] Speaker 02: Well, that's begging the question, Your Honor. [00:03:37] Speaker 02: It's basically saying if the claim requires two elements, if we're going to assume [00:03:42] Speaker 02: that the claim requires two elements, how can it be satisfied with only one element? [00:03:47] Speaker 02: And again, if the hypothetical is that the claim requires two, I can't answer that. [00:03:52] Speaker 02: That's sort of like saying, if we assume that two plus two equals five, how can it equal four? [00:03:57] Speaker 04: If it doesn't require two in order for, how does the claim not include systems covered by, I guess, what's it, the 518 patent? [00:04:09] Speaker 04: which was distinguished. [00:04:11] Speaker 02: Oh, the 518. [00:04:12] Speaker 02: Well, the difference is, I think what was happening here, that's not, it was a double patenting rejection. [00:04:17] Speaker 02: There was that, and they simply added the synchronizing means. [00:04:20] Speaker 02: Now, what the inventor has said, you know, this is not in the record, but what they did not intend to include synchronizing two separate elements. [00:04:30] Speaker 02: All they were doing was adding the synchronization means, which in our view, what that means is you've got these two cross-coupled [00:04:37] Speaker 01: Transistor inverters and in order to generate a random number You have to make sure the films inverters are both released very very close in time If you favor one over the other you're no longer, but that's true every time you want to generate a random number and the 518 Thereby captured the same thing because it claimed generating random numbers So every single logic element in the 518 had to have two transistors firing at the same time or you wouldn't generate the random number [00:05:06] Speaker 02: I don't believe that was in claim. [00:05:08] Speaker 02: It certainly wasn't in the broadest claim of the 518 patent. [00:05:12] Speaker 02: And that may have been disclosed, because these were related disclosures. [00:05:16] Speaker 02: But the claims of the 518 patent, with all due respect, Your Honor, did not require that. [00:05:21] Speaker 01: That's why it was... They didn't require the synchronization element, but they did require a random number generation, correct? [00:05:27] Speaker 01: I believe that they did. [00:05:28] Speaker 01: And they required a logic element to perform that random number generation, correct? [00:05:31] Speaker 02: Well, they were... I'm not sure, but continue, please. [00:05:35] Speaker 01: Well, I guess because the argument goes if the only way the logic element can generate is by synchronizing two transistors to operate to cause the generation, then they do have the same scope. [00:05:49] Speaker 02: Well, then that's a different question. [00:05:50] Speaker 02: We've got to remember here, you know, we're jumping ahead here. [00:05:54] Speaker 02: The sole question in the proceedings below is what do these claims mean? [00:05:57] Speaker 02: Specifically, what does claim one [00:05:59] Speaker 02: of the 422 patent mean. [00:06:01] Speaker 00: Right, but we're supposed to look at the whole history. [00:06:03] Speaker 00: We're supposed to look at the prosecution history and the specification. [00:06:06] Speaker 00: We can't just say, I mean, you have some pretty good arguments from a grammatical standpoint, but that can't be the end of the inquiry. [00:06:14] Speaker 02: Well, again, Your Honor, at the risk of, I don't mean to be flippant, but we're getting a little bit ahead. [00:06:21] Speaker 02: Ahead of what? [00:06:22] Speaker 00: These are the questions that we want answered. [00:06:24] Speaker 02: What I'm saying is the proceedings below did not get into questions of [00:06:29] Speaker 02: what the patents are, whether the set of specifications support the claims, to validity in essence. [00:06:34] Speaker 01: Validity questions. [00:06:35] Speaker 01: These are questions of validity. [00:06:37] Speaker 01: These are questions of claim construction. [00:06:38] Speaker 01: We've got to figure out whether or not you can have a single logic element in this claim. [00:06:45] Speaker 01: And you've got somewhat contradictory language in this claim, some of which was added during prosecution. [00:06:52] Speaker 01: So we have to be sure that the language added during prosecution [00:06:57] Speaker 01: has meaning. [00:06:59] Speaker 01: We can't write it out of the claim because it is what allowed the patentability of your claim over the 101 rejection. [00:07:06] Speaker 01: And so we have to, as part of the construction, consider that language. [00:07:10] Speaker 01: And so that's exactly what we're doing. [00:07:12] Speaker 01: Whether the district court did a thorough job of considering it and explaining it is irrelevant. [00:07:17] Speaker 01: That's what we have to do in this case. [00:07:19] Speaker 02: I understand, Your Honor. [00:07:20] Speaker 02: And again, the only way I can answer that question is to say our position is the claim has meaning if you view [00:07:26] Speaker 02: synchronization means as meaning synchronizing the inverters of the logic element, a single logic element. [00:07:33] Speaker 02: I don't believe that that was claimed in the 518 patent. [00:07:37] Speaker 02: There's no claim in the 518 patent that goes directly to that. [00:07:41] Speaker 02: So even if you construe the claim as I propose to construe it, obviously I'm biased, but our proposed construction of the claim, meaning the synchronization, refers to synchronization of the inverter circuits within a single logic element. [00:07:55] Speaker 01: But nothing says that, right? [00:07:57] Speaker 01: Is there anything that you can point me to in the prosecution history that ties the synchronization to the inverter elements as opposed to [00:08:04] Speaker 01: tying the synchronization to a plural number of logic elements? [00:08:09] Speaker 01: Is there anything? [00:08:10] Speaker 01: Give me your best statement in the prosecution history. [00:08:12] Speaker 02: The best statement I can say to that is, for that to apply, there has to be a clear... No. [00:08:16] Speaker 01: I want to know, in the prosecution history, where can I look to find that it's the inverter elements as opposed to multiple logic elements? [00:08:27] Speaker 02: In the prosecution history, referring specifically to that amendment, there is nothing in that that discusses that because the discussion of that element was [00:08:35] Speaker 02: There's no discussion period on it. [00:08:36] Speaker 02: There's very, very little discussion. [00:08:38] Speaker 02: So what I'm saying is I can't point to something for the simple matter that I don't believe there's anything in there. [00:08:43] Speaker 00: But the language of the claim itself says synchronization for synchronizing operation of the nondeterministic logic elements. [00:08:49] Speaker 00: And you're saying that, and it talks about the common synchronization means coupled to all of the nondeterministic logic elements. [00:08:59] Speaker 00: And you're saying that you're not synchronizing those elements, you're synchronizing the other [00:09:05] Speaker 02: No, what we're saying, the consistent interpretation we have is this. [00:09:10] Speaker 02: If you have a single, and I think there's no dispute that the prior part of the patent claim contemplates having a single non-deterministic logic element. [00:09:18] Speaker 02: I don't believe Intel even disputes that. [00:09:21] Speaker 02: Our focus is on the last paragraph. [00:09:23] Speaker 02: Our position, very simply, is if you have one and the claim [00:09:28] Speaker 02: in the first part of the claim says you can have one. [00:09:30] Speaker 02: If you have one, you're synchronizing the inverters in that logic. [00:09:35] Speaker 00: But the problem is that you added the synchronization language to overcome the prior act. [00:09:42] Speaker 02: But the synchronization language does not require two or more. [00:09:46] Speaker 01: But in every reference that I can find throughout the history of this claim, when you talk about synchronization in terms of two or more logic elements, I can look at the appellants [00:09:57] Speaker 01: opening brief before the board at page 220 where you explain the synchronization element. [00:10:03] Speaker 01: The circuit includes essentially two elements, one non-deterministic logic element for each variable to generate a random Boolean value and B, a common synchronization means that synchronizes operation of the non-deterministic logic elements and then you explain they have to be synchronized [00:10:22] Speaker 01: because each guess at a solution to the problem requires a random value be picked for every variable in the problem. [00:10:28] Speaker 01: And all of that language, I understand them to argue, suggests multiple elements have to operate simultaneously so you get different values for each variable at the same time. [00:10:45] Speaker 02: That is not inconsistent with a single, if you have a single variable and a single non-deterministic [00:10:52] Speaker 02: element, that language is equally applicable. [00:10:55] Speaker 02: The attorney saying that is thinking the general case of one to many. [00:10:59] Speaker 02: So instead of saying in the case of one, I'm going to talk about one, and now we're going to talk about two or more. [00:11:04] Speaker 02: It's the way the language works. [00:11:06] Speaker 02: When you're referring to one or more, it is common to thereafter refer to that as plural form. [00:11:14] Speaker 02: One or more people, the people in the car. [00:11:16] Speaker 02: One or more ice cubes, you know, ice cubes. [00:11:19] Speaker 02: And we pointed this out in our brief. [00:11:21] Speaker 01: This is how language. [00:11:21] Speaker 01: But your only articulation in the specification of one to many is iterative. [00:11:27] Speaker 01: It isn't simultaneous. [00:11:29] Speaker 01: Your only embodiment described in this spec of one to many, a single logic element that produces multiple variables, multiple random numbers for multiple variables, does it iteratively, doesn't do it synchronized in a simultaneous fashion. [00:11:44] Speaker 01: So all the other embodiments are one to one. [00:11:47] Speaker 01: Right? [00:11:47] Speaker 01: I mean, you're looking at me like I'm crazy. [00:11:49] Speaker 01: Am I misunderstanding the spec? [00:11:50] Speaker 02: I believe you're misstating what the spec says. [00:11:52] Speaker 02: I think the specification and the inventory have always talked in terms of one or more variables. [00:12:01] Speaker 02: And they have to talk about general case of when there's more than one. [00:12:05] Speaker 02: But they do point out. [00:12:06] Speaker 00: Then why did you need to add the word synchronization? [00:12:08] Speaker 00: If all it means is that each one of the logic elements is functioning properly, then why [00:12:17] Speaker 00: A, use the word synchronization, and Y, even add that language. [00:12:20] Speaker 02: Overcome the double patented rejection. [00:12:23] Speaker 02: That was not to overcome any form of prior art. [00:12:25] Speaker 00: So are you saying in your prior art, all right, I refer to it as prior art, but in the earlier patent, you're saying the logic elements didn't have to operate properly? [00:12:37] Speaker 02: We're not saying that at all. [00:12:38] Speaker 02: What we're saying is in the absence of the synchronization means the elements that were previously stated [00:12:45] Speaker 02: in claim one were in the examiner's view the same as what was in claimed in the 518 patent. [00:12:51] Speaker 02: What they were doing simply is adding additional structure in order to overcome a double patenting rejection. [00:12:58] Speaker 02: Pure and simple. [00:12:59] Speaker 00: So you're saying in the first patent those logic elements did not have to operate properly because they weren't synchronized as you say? [00:13:09] Speaker 02: No, I'm not saying they were. [00:13:11] Speaker 02: It's a different [00:13:12] Speaker 02: It's a different rejection here. [00:13:14] Speaker 02: The examiner was saying that based on what you've got in claim one of the 422 patent as initially drafted, that is too close to what you're claiming in the 518 patent with something else in there. [00:13:26] Speaker 02: They're not saying it doesn't work. [00:13:28] Speaker 02: They're not saying this is what you have to put in to make it work. [00:13:30] Speaker 02: They're saying, give us something so the claims are not identical. [00:13:34] Speaker 00: Well, you can't just give them a word. [00:13:35] Speaker 00: There has to be something that actually changes the way the claims operate. [00:13:39] Speaker 02: No, the way the claims are specified. [00:13:41] Speaker 02: What they did, they did add. [00:13:42] Speaker 02: They added several words about the synchronization means. [00:13:45] Speaker 02: What they did not say is, we're going to go back and rewrite the first part of the claim to where it says one or more, we really mean two or more. [00:13:53] Speaker 02: That did not happen. [00:13:55] Speaker 02: Intel is trying to argue that that's what happened by the addition of the synchronization language, but that is not what happened. [00:14:02] Speaker 02: What happened was they simply added synchronization means that in its purest form, [00:14:08] Speaker 02: talks about synchronizing the inverters. [00:14:10] Speaker 01: And this happens in all. [00:14:12] Speaker 01: In this record, we don't have the examiner's actual rejection on the 101 grounds. [00:14:18] Speaker 01: What were his comments consistent with? [00:14:21] Speaker 02: I can't answer that, Your Honor. [00:14:22] Speaker 02: I don't have that in my fingertips. [00:14:24] Speaker 01: Is it in the record? [00:14:27] Speaker 01: not in our appendix, but is it part of the record of this case? [00:14:30] Speaker 02: I assume it was. [00:14:31] Speaker 02: I did not prosecute this patent application. [00:14:33] Speaker 02: I don't know. [00:14:33] Speaker 02: My assumption is that it is, but I can't tell you certainly that it is. [00:14:37] Speaker 04: Just in the district court, was either the entire file wrapper put into the record in the district court or even the double patenting rejection to which the response was a response? [00:14:49] Speaker 02: Again, my assumption is that it was. [00:14:52] Speaker 02: I'd be surprised if it wasn't, but again, I can't tell the court [00:14:56] Speaker 02: Absolutely that it was. [00:14:57] Speaker 02: It would be my assumption, but I don't know for a fact. [00:15:00] Speaker 01: OK. [00:15:01] Speaker 01: All right. [00:15:01] Speaker 01: Well, we better hear from Mr. Berman, and we'll restore a few minutes of rebuttal time for you, Mr. Mann. [00:15:06] Speaker 02: Thank you, Your Honor. [00:15:07] Speaker 01: Mr. Berman? [00:15:19] Speaker 03: May it please the court, David Berman, for intel. [00:15:22] Speaker 03: Intel has tried to simplify its response on appeal in terms of grounds for affirming the judgment below. [00:15:28] Speaker 03: And we have focused on the fact that Dr. Handgardner, as the court's questions have suggested, chose to add the common synchronization limitation to the rest of what is now claim one. [00:15:43] Speaker 03: If page 11 of our brief sets out claim one, [00:15:47] Speaker 03: and you'll see that the bulk of it is identical to a claim in the parent patent, in the 518 patent. [00:15:57] Speaker 04: Were we given the 518 patent? [00:16:00] Speaker 04: A lot of your material on pages 11 or 12 and 13 come without citation to anything in the Joint Appendix. [00:16:09] Speaker 03: I don't believe that we put the 518 in the joint appendix. [00:16:14] Speaker 04: I know that the prosecution history, the actual rejection is not in the appendix. [00:16:20] Speaker 04: Is it in the record in the district court? [00:16:22] Speaker 03: It is not in the record in the district court. [00:16:24] Speaker 03: Portions of the prosecution history are in there, including his response to the rejection. [00:16:33] Speaker 04: Suppose I thought that the single most important question to answer is, [00:16:38] Speaker 04: If the synchronization limit meant to require two logic elements in order to overcome the patent, the double patenting rejection, I need to be persuaded that that was actually necessary to overcome the double patenting rejection. [00:16:59] Speaker 04: How am I supposed to figure that out without even the material in the [00:17:03] Speaker 04: in the record? [00:17:04] Speaker 03: I think you need to know that something was necessary, something additional that wasn't already in the 518 claim or the rest of claim one in the 422 patent. [00:17:14] Speaker 03: And what that must be is what's described in the common synchronization limitation, which is that multiple elements, it uses elements in the plural twice, are coupled [00:17:27] Speaker 03: In common synchronization? [00:17:29] Speaker 04: Suppose I thought that just looking at the language, it is completely ordinary to put in a requirement that says, synchronize any of the logic elements, all the logic elements that you have. [00:17:43] Speaker 04: And sometimes you have one and so there's nothing to synchronize. [00:17:46] Speaker 04: That's a perfectly fine claim. [00:17:48] Speaker 04: So the only way that I can get [00:17:52] Speaker 04: suppose for these purposes, that the only way that I can get to an inference that there must be two is that there had to be two for this element to overcome the double patenting rejection. [00:18:03] Speaker 04: How do I figure that out? [00:18:04] Speaker 03: Because common synchronization must add something to the prior part of claim one. [00:18:10] Speaker 03: And for that to be true, there must be more than one element. [00:18:13] Speaker 03: Even if you toggle one of those elements off, as the specification does suggest you can do... I'm sorry, it does add something to the pre-amended claim elements. [00:18:24] Speaker 04: It says, when you have more than one, synchronize them. [00:18:28] Speaker 03: Which means it must be capable of dealing with more than one variable with more than one element. [00:18:34] Speaker 03: It has to be capable of that for the common synchronization limitation to add anything. [00:18:40] Speaker 03: As he's admitted, [00:18:41] Speaker 03: the 518 had to operate. [00:18:45] Speaker 03: It had to work. [00:18:46] Speaker 03: So synchronization must do something more than make one element work. [00:18:50] Speaker 03: And as the record in Joint Appendix 220, as Judge Moore pointed out, indicates, he explained that the way it does that is to synchronize plural elements. [00:19:02] Speaker 03: So for it to add something, it has to do it in that way. [00:19:05] Speaker 03: The plain language of that limitation, which has to have independent meaning, [00:19:10] Speaker 03: is what we base our case on. [00:19:13] Speaker 03: And that is not as far as the district court went, however. [00:19:17] Speaker 03: The district court pointed out that that's consistent with the intrinsic evidence. [00:19:22] Speaker 01: When you say the plain language of that, you don't really mean that, right? [00:19:26] Speaker 01: You said we base our case on the plain language of that claim element. [00:19:32] Speaker 01: mean, don't you, that we base our case on the disclaimer that occurred when that claim element was added for patentability purposes? [00:19:39] Speaker 01: Isn't that what you base your case on? [00:19:40] Speaker 01: Because if you base your case on the plain language of the claim in the absence of prosecution history, I promise you, you lose. [00:19:46] Speaker 03: There might be ambiguity. [00:19:48] Speaker 01: So what do you base your case on? [00:19:50] Speaker 03: There might be ambiguity absent the disclaimer. [00:19:53] Speaker 03: The disclaimer clarifies the ambiguity completely. [00:19:57] Speaker 03: But we would say [00:19:59] Speaker 03: that the language of the common synchronization limitation is plain. [00:20:03] Speaker 03: It refers to elements twice in the plural. [00:20:05] Speaker 01: It says the elements. [00:20:06] Speaker 01: The language of that element might be plain, but the language of that element in the context of this claim is not plain. [00:20:11] Speaker 03: But that limitation has to have some meaning. [00:20:14] Speaker 03: It is the limitation that we are construing in what's most relevant here. [00:20:20] Speaker 03: And the plain language, if you look just at that limitation, is plural. [00:20:24] Speaker 03: It's common synchronization coupled to all of those. [00:20:27] Speaker 04: It's a means of plus function. [00:20:29] Speaker 04: So if you say in the claim, you have to synchronize all the logic elements you have, why does that imply that you have to have at least two logic elements? [00:20:46] Speaker 04: It seems to me it doesn't. [00:20:48] Speaker 03: It states that you have to have plural elements. [00:20:53] Speaker 04: It doesn't, though. [00:20:53] Speaker 04: It says you have to synchronize whatever number of logic elements you have. [00:20:59] Speaker 04: And if you have one logic element, there's nothing to synchronize. [00:21:03] Speaker 03: With all due respect, Your Honor, that's not the plain language. [00:21:06] Speaker 03: That's where the appellant gets by going back to the first part of claim one and saying you have to read in the antecedent one or more. [00:21:15] Speaker 03: But the antecedent one or more applies only to variables. [00:21:19] Speaker 03: And there is no need to go back to the prior part of claim one to determine numerosity. [00:21:25] Speaker 00: What does it apply only to variables? [00:21:27] Speaker 00: Because it says that you have [00:21:28] Speaker 00: one logic element for each one or more variable. [00:21:32] Speaker 03: That's the next step of the opponent's argument. [00:21:34] Speaker 00: So if you've got more than one variable, you necessarily have more than one logic element, but if you only have one, you have one. [00:21:43] Speaker 03: And the invention has to be capable of solving multivariable problems. [00:21:47] Speaker 03: That is the problem that was identified. [00:21:50] Speaker 03: That is certainly relevant intrinsic evidence to how to read the common synchronization limitations. [00:21:58] Speaker 03: And the specification, as has been pointed out, never describes a single logic element. [00:22:04] Speaker 03: What Appellant belatedly points to is that in terms of the evaluation circuit, which page six of his brief admits is separate from the generation circuit, the generation of the random variables or random numbers to match up with the variables, the testing or evaluation circuit can be run serially. [00:22:26] Speaker 03: But there is nothing that suggests that the generation is anything but parallel generation using multiple logic elements, toggling one off. [00:22:35] Speaker 03: Can you try to explain this to me? [00:22:42] Speaker 04: Suppose that I thought that the last element, just taking as its language, red with the rest, simply means on its face, synchronize [00:22:54] Speaker 04: any logic elements, non-deterministic logic elements that you have, tell me why, if that were read to cover a circuit that had just one non-deterministic logic element, it would not have overcome the double patenting rejection? [00:23:15] Speaker 03: It wouldn't have added anything as to the situation where there's one variable, one element, because it would still have to operate in that situation. [00:23:23] Speaker 03: So it would not be a proper construction consistent with that being added in to say in that situation the patent should be construed to apply. [00:23:34] Speaker 04: And is that because this is what I'm trying to get at. [00:23:41] Speaker 04: When you look at the 518 claim one as set out in your brief that [00:23:48] Speaker 04: that whatever the proper statutory double patenting analysis is that that would still be covered by the interpretation of the amended claim. [00:24:05] Speaker 04: Exactly, by appellant's interpretation. [00:24:08] Speaker 04: Even though synchronization of no sort is discussed in the 518. [00:24:15] Speaker 03: If all synchronization [00:24:16] Speaker 03: means if synchronization only applies when you have multiple elements, or if all it means is that it causes elements to operate, then it adds nothing. [00:24:27] Speaker 00: It adds nothing because in the 518 it said that the elements had to be able to generate a random Boolean value. [00:24:36] Speaker 00: Correct. [00:24:37] Speaker 00: So they had to operate. [00:24:38] Speaker 01: Correct. [00:24:38] Speaker 01: I find your argument at the podium today to be surprising. [00:24:42] Speaker 01: Because you're basically arguing the district court got at least a portion of its construction wrong. [00:24:49] Speaker 01: You're arguing the district court got a portion of this construction wrong. [00:24:53] Speaker 01: There's no other way for me to interpret your argument. [00:24:55] Speaker 03: We believe the district court should have accepted all our arguments. [00:24:58] Speaker 01: It only accepted one. [00:25:00] Speaker 01: No. [00:25:00] Speaker 01: You agree. [00:25:01] Speaker 01: Because you are arguing to Judge Toronto and Judge O'Malley a one-to-one correspondence. [00:25:05] Speaker 01: And the district court rejected that and said it's a one-to-many. [00:25:10] Speaker 03: Actually, I think it's the appellant who's rejecting that. [00:25:13] Speaker 01: You just stood here and told Judge O'Malley there's a one-to-one correspondence between logic elements and variables. [00:25:19] Speaker 01: And the district court expressly rejected that. [00:25:21] Speaker 03: I'm trying to take the appellant's argument, which is that if you... What is your argument? [00:25:27] Speaker 01: Is your argument, do you agree with the district court that found one logic element can actually generate one or more variables in series and that that is the way to interpret [00:25:38] Speaker 01: the first element of claim one. [00:25:41] Speaker 03: We disagree with the conclusion that that's the way to interpret it. [00:25:45] Speaker 01: So you are standing here telling us the district court's construction is wrong. [00:25:50] Speaker 03: On that part, we believe the district court's judgment should be affirmed by rejecting that part of the district court's logic. [00:25:58] Speaker 03: We believe that in the common synchronization limitation, that both parties agree that it's a means plus function limitation. [00:26:08] Speaker 03: And it describes at the top of column seven in the specification in figure four and in common sense reading of the common synchronization limitation, the signal fanning out to more than one element. [00:26:22] Speaker 03: We believe that that is the proper construction of the patent. [00:26:28] Speaker 03: And we believe that the district court was correct when it looked beyond the language and the history in terms of the disclaimer type approach [00:26:36] Speaker 03: of the common synchronization limitation to the remainder of the intrinsic evidence, and concluded that when you look at the problem that the inventor said he was addressing, complex, combinatorial, multivariable issues. [00:26:51] Speaker 04: But you understand perfectly well that the claims can have different breadth, and some of them can address various things. [00:27:00] Speaker 04: Until you try to understand what the addition of the synchronization was doing, [00:27:06] Speaker 04: It seems to me actually quite plain on the face of the claim language that it covers single logic element claims. [00:27:15] Speaker 03: The only... If there had not been a prior history of his own patent and a prior art, that may be true. [00:27:21] Speaker 03: So I guess I'm... We would say it's at most ambiguous and in fact if you look at what... And we don't even have in the district court record the full prosecution history, right? [00:27:33] Speaker 04: That's my recollection, yes. [00:27:35] Speaker 01: So your argument is D delay is basically the structure for performing. [00:27:39] Speaker 03: I call it a structure, but it's a signal A. It's a signal, and it fans out through the inverters 80, as you see on Figure 4 and described at the top of Column 7. [00:27:50] Speaker 03: We believe all of that structure is necessary, is what's specified by the common synchronization limitation, and that that is admitted not part of... So the structure for producing D delay. [00:28:04] Speaker 01: is the structure for the synchronization means? [00:28:07] Speaker 03: It's actually the structure that causes D delay signal to flow through to all of the logic elements, all of them simultaneously. [00:28:15] Speaker 03: And that's that split, if you look at figure four, that's shown in the inverter 80 box. [00:28:21] Speaker 03: That structure, that fanning out in those inverters, we believe is a necessary part of that means plus function limitation. [00:28:28] Speaker 03: And it's admitted that that's not present in the Intel technology. [00:28:34] Speaker 03: So we also believe that it is important to look at what the inventor was trying to do to understand why it is logical that he would choose to add the common synchronization limitation when he faced the double pattening rejection. [00:28:49] Speaker 03: That was his way of addressing, as he makes very clear in the specification, of dealing with these complex problems. [00:28:59] Speaker 03: And the task that he was discussing was addressed by [00:29:02] Speaker 03: common synchronization coupled to all of plural elements. [00:29:09] Speaker 03: Up above in the remainder of claim one, it does say each element. [00:29:14] Speaker 03: But each is not an indefinite article. [00:29:16] Speaker 03: Each is a determiner, which means every one of two or more. [00:29:20] Speaker 01: It says one non-deterministic logic element. [00:29:23] Speaker 01: It's not each. [00:29:24] Speaker 01: It's the word one. [00:29:25] Speaker 01: One non-deterministic logic element. [00:29:29] Speaker 01: It doesn't say A. It doesn't say logic elements. [00:29:33] Speaker 01: It says one, the number one. [00:29:36] Speaker 03: It's actually their argument that it says A. And what it says, it starts off with one non-deterministic logic element for generating a random Boolean value for each one. [00:29:48] Speaker 03: And then it says, and each non-deterministic logic element comprises. [00:29:53] Speaker 03: The only antecedent that is needed to understand the common synchronization limitation is what [00:29:59] Speaker 03: is the nature, not the numerosity, of the logic elements. [00:30:04] Speaker 03: Common synchronization limitation determines numerosity. [00:30:08] Speaker 03: It indicates that they are plural and that they need to be commonly synchronized by this fanning out of the signal coupling all of them together. [00:30:17] Speaker 03: For those reasons, because it is undisputed that Intel does not infringe on that construction, Intel asks you to affirm. [00:30:25] Speaker 01: Thank you. [00:30:25] Speaker 01: Thank you, Mr. Berman. [00:30:27] Speaker 01: Mr. Mann. [00:30:28] Speaker 01: How much time is left? [00:30:29] Speaker 01: Very brief, Your Honor. [00:30:33] Speaker 02: Sitting here listening to this, what struck me in this is I think the court's precedent is clear that if a patent applicant is going to disclaim certain subject matter, it has to be done clearly. [00:30:45] Speaker 02: It has to be done intentionally. [00:30:46] Speaker 02: There's got to be a clear indication. [00:30:48] Speaker 02: Now, if the prosecution history in this case had included something where Dr. Hangartner comes in and says, [00:30:55] Speaker 02: I am distinguishing the prior art. [00:30:57] Speaker 02: That only has one logic element. [00:30:59] Speaker 02: I have two. [00:31:00] Speaker 02: That is why my patent is different is because I have two and prior art only has one. [00:31:05] Speaker 02: We'd be clear. [00:31:06] Speaker 00: Then what else is different? [00:31:07] Speaker 02: We don't have that. [00:31:08] Speaker 00: What we have here... What is different between the 518 and this patent? [00:31:13] Speaker 02: In the claims, this one has synchronization. [00:31:16] Speaker 02: In the independent claim, it has the synchronization means. [00:31:19] Speaker 02: That is what is different. [00:31:21] Speaker 00: But that goes back to your argument that all you're doing is synchronizing internally. [00:31:25] Speaker 02: to make it operable. [00:31:28] Speaker 00: But didn't the 518-1 logic element have to be operable in order to generate a random Boolean value? [00:31:35] Speaker 02: I don't know whether it does or does not, but it's not in the claim. [00:31:38] Speaker 02: So you're not adding anything. [00:31:38] Speaker 02: It's not in the claim. [00:31:40] Speaker 02: What we have to say is it's double patenting. [00:31:41] Speaker 02: It's not a double disclosure. [00:31:43] Speaker 02: It's a double patenting. [00:31:44] Speaker 02: The claim did not include the synchronization means. [00:31:48] Speaker 02: So when you add the synchronization means, even if it's only synchronizing a single logic element, that distinguishes the claim [00:31:55] Speaker 02: That obviates the double patenting rejection. [00:31:59] Speaker 04: Let me see if I'm understanding right. [00:32:02] Speaker 04: It's really quite wrong to think about this double patenting rejection and 518 in a prior art sense, which covered single logic element situations. [00:32:17] Speaker 04: That's not what statutory double patenting doctrine says. [00:32:23] Speaker 04: statutory double patenting doctrine require is that the objection is overcome as long as the claim language substantively is different, even if the earlier one would cover some of the same stuff. [00:32:38] Speaker 02: Absolutely, Your Honor. [00:32:39] Speaker 02: That's our interpretation of it. [00:32:42] Speaker 02: And by adding the synchronization means that is enough to say the claim is different. [00:32:46] Speaker 02: Mechanically it's different. [00:32:48] Speaker 02: You have elements A, B, and C. Now we have elements A, B, C, D. [00:32:51] Speaker 02: However trivial D is, that may get into other issues, but to overcome the double patenting, same invention double patenting, that does it. [00:33:00] Speaker 02: Absolutely, Your Honor, that's how we interpret this. [00:33:03] Speaker 01: Okay, thank you. [00:33:04] Speaker 02: Thank you, Your Honor. [00:33:05] Speaker 01: Thank both counsel. [00:33:06] Speaker 01: The case is taken under submission.