[00:00:04] Speaker 01:
The first case for argument this morning is 15-1808 Intermec versus Alien Technology.

[00:00:11] Speaker 01:
Mr. Jones, whenever you're ready.

[00:00:21] Speaker 02:
Good morning and thank you, Your Honor.

[00:00:22] Speaker 02:
May it please the Court.

[00:00:24] Speaker 02:
With the Court's indulgence, I'm going to address three specific issues this morning.

[00:00:29] Speaker 02:
I'm going to address

[00:00:31] Speaker 02:
one error committed with respect to each set of claim rejections in the case.

[00:00:37] Speaker 02:
And I will address the first and third claim set rejections first, because the error committed there is sort of interrelated.

[00:00:44] Speaker 02:
And then I'll address the second one last, if that makes it difficult.

[00:00:51] Speaker 03:
Yes?

[00:00:52] Speaker 03:
I understand the first argument with respect to claims 1 and 7 to 15, and there seems to be agreement that the board misstated the situation and the question is whether we have to remand to have them clear that up.

[00:01:07] Speaker 03:
Does that, is that a separate issue that doesn't affect claims 25, 26, 28, 29?

[00:01:16] Speaker 02:
Your Honor, it does not affect those claims.

[00:01:20] Speaker 02:
They're separate claims.

[00:01:21] Speaker 01:
I didn't hear what you said.

[00:01:23] Speaker 02:
It does not affect.

[00:01:24] Speaker 02:
It does not affect the remand, although if you're sending back one set of claims for remand, you may as well send all of them back because everybody agrees that the board's opinion here and the board's rationale

[00:01:37] Speaker 02:
is very unclear.

[00:01:39] Speaker 03:
I mean even even alien says in one case... Well it's very unclear with respect to to 1 and 7 to 15 but as I understand what you're saying that's a separate issue from claims 26 etc.

[00:01:51] Speaker 02:
Yes your honor and if you'd like me to address claims 25, 26, 27, 28 first I'll do that.

[00:01:59] Speaker 03:
Whatever order I just wanted to see where we were in terms of the relationship.

[00:02:03] Speaker 01:
Yes your honor.

[00:02:04] Speaker 01:
Well can you tell us with respect to the board's misstatement

[00:02:07] Speaker 01:
Why that should matter at the end of the day for us?

[00:02:10] Speaker 01:
I mean, if we look at it, if we accept the other side's arguments with respect to what the prior work teaches, why, even if we all acknowledge that there is that misstatement, why that should affect the result here?

[00:02:22] Speaker 02:
Yes, Your Honor.

[00:02:23] Speaker 02:
Because of the lead case and the steepener step in case.

[00:02:26] Speaker 02:
I don't know which way it's pronounced.

[00:02:28] Speaker 02:
But we were not allowed the opportunity to contest and submit evidence

[00:02:34] Speaker 02:
in response to the requester's arguments that it's making now.

[00:02:38] Speaker 02:
You have to remember that this is not an inter-party's review.

[00:02:42] Speaker 02:
It's an inter-party's re-exam.

[00:02:44] Speaker 01:
But wait, are the arguments they're making here on appeal with respect to the prior art different than what they made before the board?

[00:02:51] Speaker 02:
No, Your Honor, not their arguments.

[00:02:53] Speaker 02:
Their arguments are the same, but the difference is what we're faced with

[00:02:58] Speaker 02:
is dealing with the board's rationale and the board's statements of fact.

[00:03:02] Speaker 04:
But didn't you already deal with that?

[00:03:03] Speaker 04:
Because the examiner had a different rationale, and so did your adversary.

[00:03:09] Speaker 04:
And so didn't you already know what that argument was, and didn't you already have to deal with it?

[00:03:14] Speaker 02:
No, Your Honor.

[00:03:15] Speaker 02:
We only deal with the arguments from the board at the board level.

[00:03:20] Speaker 02:
In other words, the examiner did not have the same arguments

[00:03:23] Speaker 02:
that alien had.

[00:03:26] Speaker 01:
In other words... But you've got to deal with aliens' arguments before the board, so I don't understand where the deprivation of you comes in.

[00:03:36] Speaker 02:
Your Honor, the deprivation is on review here are the board's findings and conclusions of law.

[00:03:43] Speaker 02:
That's what's on review here, and that's the only thing that we have had the opportunity to put in evidence for and to argue against.

[00:03:50] Speaker 03:
What do you mean, put in evidence for?

[00:03:52] Speaker 03:
I mean, are you talking about

[00:03:53] Speaker 02:
your ability to argue the case on appeal?

[00:03:56] Speaker 02:
No, Your Honor.

[00:03:57] Speaker 02:
I'm talking about if this case is remanded, what will happen is it'll go back.

[00:04:01] Speaker 03:
Well, suppose, I guess the question we're asking, does it need to be remanded just because the board made a misstatement in the opinion?

[00:04:09] Speaker 03:
I mean, the prior art references are the same.

[00:04:13] Speaker 03:
We're not talking about a new rejection based on different prior art references.

[00:04:17] Speaker 03:
We're just talking about whether the board's misstatement is harmless error.

[00:04:23] Speaker 02:
Well, Your Honor, it's not harmless error, because we were not able.

[00:04:28] Speaker 02:
We're not able on this appeal to address things that were not found by the board.

[00:04:34] Speaker 01:
And as far as- How can that be right?

[00:04:37] Speaker 01:
I mean, you're up here on appeal, and you're making an argument with respect to why there should be no invalidated determination on these claims.

[00:04:46] Speaker 01:
And I think you already make the argument, but even if you didn't,

[00:04:50] Speaker 01:
Of course you would have to make the argument.

[00:04:52] Speaker 01:
The other side is here arguing that irrespective of that statement by the board, they were relying on the reality of the record as yadada.

[00:05:03] Speaker 01:
You obviously have an opportunity, and you took, I think as I recall, you took advantage of the opportunity to argue otherwise.

[00:05:10] Speaker 01:
It's an alternative ground for affirmance or whatever.

[00:05:13] Speaker 01:
I don't see what opportunity you should have had that you don't have.

[00:05:18] Speaker 01:
Your Honor, you're right.

[00:05:22] Speaker 02:
We did argue that in our briefs.

[00:05:24] Speaker 02:
We did argue against aliens' arguments as well as against the board's rationale.

[00:05:31] Speaker 02:
We took advantage of both.

[00:05:32] Speaker 01:
As you should and as you rightfully did.

[00:05:38] Speaker 01:
not had the ability to respond if in light of as Judge Dyke said on the hypothetical that we were to say we can affirm because notwithstanding the board's misstatement when you look at the arguments made by your friends, there's enough to support the result.

[00:05:56] Speaker 02:
Yes, Your Honor.

[00:05:56] Speaker 02:
We certainly responded to those, and that's the issue that I'd like to address.

[00:06:01] Speaker 02:
Even when you combine, let's take the first set of claims, the first rejection, independent claims one and nine, and their defendant claims, little child plus thinking zealot.

[00:06:13] Speaker 02:
Well, what you have there is you have a temporary memory in little child, a volatile memory that's admitted by Alanis and admitted by the board, said by the board as well.

[00:06:25] Speaker 02:
And then you have Finkenzeller, which is a non-volatile, readable, writable memory.

[00:06:33] Speaker 02:
And you have those separately in two different pieces of prior art.

[00:06:41] Speaker 02:
And so if you combine them, Your Honors, you're doing exactly what the prior art did and exactly what we distinguished over the prior art in the patent application.

[00:06:51] Speaker 02:
In other words, you've got your state information

[00:06:54] Speaker 02:
in Little Child is being put onto a single chip, onto the single electronic circuit of Finkenzeller.

[00:07:04] Speaker 02:
And so you actually are reinventing, if you will, with that combination, the prior art.

[00:07:11] Speaker 03:
In other words... I do not understand what you're saying.

[00:07:14] Speaker 03:
Do you agree that the invention here combines two things that were present in the prior art in Littlefield and Finkenzeller?

[00:07:24] Speaker 02:
No, Your Honor.

[00:07:26] Speaker 02:
That's not what the invention.

[00:07:28] Speaker 02:
It's not?

[00:07:28] Speaker 02:
No.

[00:07:28] Speaker 02:
In fact, it's exactly.

[00:07:30] Speaker 02:
OK.

[00:07:30] Speaker 02:
In what respect is it not the invention?

[00:07:31] Speaker 02:
It's exactly the opposite, Your Honor.

[00:07:34] Speaker 02:
The invention here is not combining things in the prior art.

[00:07:38] Speaker 02:
It's taking things apart.

[00:07:40] Speaker 02:
The prior art had non-volatile, readable, writable memories that also had state information stored on that particular chip, on that particular electronic circuit.

[00:07:53] Speaker 02:
And so what this invention is, is taking the state holding cell information apart from the non-volatile, readable, writable memory.

[00:08:04] Speaker 02:
And that's what makes this invention tick.

[00:08:08] Speaker 02:
It allows for speed.

[00:08:10] Speaker 01:
It allows for... So everything was in the prior art, but you're saying, but what the invention is, is separating it out in a different manner?

[00:08:18] Speaker 01:
Well, that's part of the invention, Your Honor.

[00:08:20] Speaker 04:
Is it your position that in the prior art, it's a single memory?

[00:08:23] Speaker 04:
Whereas in your invention, you've got one non-volatile memory for the state-holding cell.

[00:08:27] Speaker 04:
Wait, I bet that reversed.

[00:08:28] Speaker 04:
A volatile memory for the state-holding cell and non-volatile memory for the other.

[00:08:33] Speaker 02:
Yes, Your Honor.

[00:08:34] Speaker 02:
That's exactly right.

[00:08:35] Speaker 02:
In the prior art, it was combined.

[00:08:37] Speaker 02:
In other words, you had state information.

[00:08:39] Speaker 02:
You had non-volatile, let me make sure I say it, non-volatile, readable, writable memory.

[00:08:45] Speaker 02:
And they were combined onto one.

[00:08:48] Speaker 02:
And now what's happened is the definition of a state holding cell is an electronic circuit for holding state information.

[00:08:55] Speaker 02:
And the claims are clear that that state holding cell has to be separate from and distinct.

[00:09:01] Speaker 01:
Can I?

[00:09:02] Speaker 01:
I'm sorry.

[00:09:02] Speaker 01:
I'm really confused.

[00:09:03] Speaker 01:
Yes, you are.

[00:09:04] Speaker 01:
Is it not the invention that it adds the non-violet call memory of Finkenzeller to the tag in the other little child?

[00:09:16] Speaker 01:
Right.

[00:09:17] Speaker 01:
Is that not the invention?

[00:09:20] Speaker 01:
Is that not the combination that results in the invention?

[00:09:24] Speaker 02:
No, Your Honor, because that combination of Little Child and Finkenzeller results in the state information residing on the non-volatile memory circuit.

[00:09:35] Speaker 03:
Well, why is that true?

[00:09:38] Speaker 03:
If I understand correctly, Little Child has a temporary memory to store state information, right?

[00:09:43] Speaker 03:
Yes, Your Honor.

[00:09:45] Speaker 03:
OK.

[00:09:46] Speaker 03:
Finkenzeller has the traditional non-volatile memory, right?

[00:09:50] Speaker 02:
That's correct.

[00:09:51] Speaker 03:
So why isn't combining them give you the invention?

[00:09:56] Speaker 03:
Because if you combine them, then you have the temporary memory for the state holding cell and the traditional non-volatile memory along with it.

[00:10:08] Speaker 02:
Well, first of all, Your Honor, you have to have a reason to combine.

[00:10:11] Speaker 03:
Well, no, that's a different question.

[00:10:13] Speaker 03:
But I just started out asking you whether

[00:10:15] Speaker 03:
combining them gave you the invention.

[00:10:17] Speaker 03:
And I'm not understanding why it doesn't.

[00:10:19] Speaker 02:
No, Your Honor, not combining them the way that the board combined them.

[00:10:24] Speaker 03:
Well, I understand.

[00:10:25] Speaker 03:
The board articulated it wrong.

[00:10:28] Speaker 03:
Everybody seems to agree with that.

[00:10:30] Speaker 03:
The question is whether, if you combine them, you get the invention.

[00:10:34] Speaker 03:
You do, don't you?

[00:10:36] Speaker 02:
You do not get the invention, Your Honor, because when you put those, there's no teaching to put those together.

[00:10:43] Speaker 03:
That's a different question.

[00:10:45] Speaker 03:
But save that for a minute, okay?

[00:10:47] Speaker 03:
I'm just saying, if you do combine them, you get the invention.

[00:10:52] Speaker 02:
If, if, if the combination results in a non-volatile, readable, writable memory that is separate and apart from a state-holding cell.

[00:11:04] Speaker 02:
So combining them would do that, right?

[00:11:06] Speaker 02:
It would structurally put them together.

[00:11:09] Speaker 02:
Yes, Your Honor.

[00:11:10] Speaker 03:
Okay, so what's the, let's turn to the motivation to combine.

[00:11:14] Speaker 03:
What's the problem there?

[00:11:16] Speaker 02:
There's no motivation to combine.

[00:11:18] Speaker 02:
Everything's hindsight, your honor.

[00:11:19] Speaker 02:
There's no reason, there's no reason to put these two things together.

[00:11:25] Speaker 02:
There's no reason cited by, what the board says, I think, is it would be an acceptable, let's see, what the board said it would be

[00:11:40] Speaker 02:
would have been a routine application of known techniques.

[00:11:49] Speaker 02:
Your Honor, that's not enough to combine references.

[00:11:51] Speaker 02:
I mean, just because I can physically put two things together doesn't mean that they should be put together.

[00:12:01] Speaker 02:
I mean, there has to be some motivation.

[00:12:03] Speaker 02:
There has to be some reason.

[00:12:05] Speaker 02:
I mean, the board's right.

[00:12:08] Speaker 02:
Is it routine to take physically a state holding cell circuit and a non-volatile, readable, writable memory together and put them together on the same tag?

[00:12:20] Speaker 02:
Well, of course.

[00:12:21] Speaker 02:
It's easy to do.

[00:12:23] Speaker 02:
But the question is, why would you do it?

[00:12:25] Speaker 03:
Well, I guess the theory is that there's some advantages to having a temporary memory in the state holding cell.

[00:12:34] Speaker 02:
You're right, Your Honor, to having it separate.

[00:12:36] Speaker 02:
And you're right, Your Honor, and those were the advantages recognized by our patentees, by our inventors.

[00:12:45] Speaker 02:
Before our inventors came along and invented this, nobody had done this.

[00:12:50] Speaker 02:
Nobody had thought that there was an advantage.

[00:12:52] Speaker 02:
Nobody realized that the advantage could be created.

[00:12:55] Speaker 02:
There's just no evidence of the motivation.

[00:12:59] Speaker 03:
But these tag systems all had these non-volatile memories, right?

[00:13:05] Speaker 03:
That was sort of standard.

[00:13:07] Speaker 02:
Yes, Your Honor.

[00:13:07] Speaker 02:
But during a power loss, what would happen is they would lose... No, we understand that.

[00:13:13] Speaker 01:
You're not making an argument that there were unexpected results when you combined these two, right?

[00:13:18] Speaker 01:
and they yielded predictable results.

[00:13:21] Speaker 01:
No, Your Honor, we're not, we're, I mean... Because KSR teaches us clearly it states if you're combining familiar elements according to known methods, it is likely obvious when it does no more than yield predictable results.

[00:13:35] Speaker 01:
How is that not a description of this case?

[00:13:38] Speaker 02:
Because KSR also says that just because the elements exist independently in the prior art does not make it obvious.

[00:13:46] Speaker 02:
There has to be some

[00:13:47] Speaker 02:
rationale there has to be some rationale is because they're seeking to solve the problem that you recognize the problem that was recognized in the industry but your honor we we solved it and if it had been so obvious if if the solution to the problem had been so obvious then somebody long ago would have come up with this before we did I mean

[00:14:13] Speaker 02:
There's just no rationale for combining them together.

[00:14:17] Speaker 04:
Okay, thank you.

[00:14:18] Speaker 04:
Earlier you said that there was a misstatement in the board's decision with respect to its switching of the volatile and non-volatile memories.

[00:14:26] Speaker 04:
So I just want to make sure I have that correctly.

[00:14:28] Speaker 04:
You think that's just a mistake on their part that they meant to say something different?

[00:14:32] Speaker 02:
No, I think they intended what they meant.

[00:14:34] Speaker 02:
I think they just got it wrong.

[00:14:36] Speaker 02:
It's not that what they did is they took the state information out of

[00:14:42] Speaker 02:
Little Child put it into Thinkin' Zeller and basically made the prior art.

[00:14:47] Speaker 02:
So then you have Little Child over here without any purpose, without any memory, without any data, without anything that it's doing.

[00:14:55] Speaker 02:
I think they intentionally did it.

[00:14:56] Speaker 02:
I don't think they made a mistake.

[00:14:58] Speaker 02:
I think they thought that that was the invention.

[00:15:01] Speaker 02:
But then that's not the invention because then there's no separate non-volatile, readable, writable memory from the state holding cell because it's all on the same

[00:15:13] Speaker 02:
It's all on the same tag.

[00:15:15] Speaker 02:
We're just all on the thinking zone.

[00:15:17] Speaker 02:
I don't think it was a mistake in words.

[00:15:20] Speaker 02:
I think it was just a mistake in a binding.

[00:15:24] Speaker 01:
OK, thank you.

[00:15:24] Speaker 01:
I'll only store two minutes for re-binding.

[00:15:26] Speaker 01:
Let's hear it from the other side.

[00:15:34] Speaker 00:
Good morning, may it please the court.

[00:15:36] Speaker 00:
I'd like to first address one of the statements that was made by opposing counsel regarding the rejection as to claims 25, 26, 28, 29.

[00:15:44] Speaker 00:
We believe that that rejection is entirely supported by substantial evidence and that vacating remand would be appropriate under no circumstances.

[00:15:53] Speaker 00:
We believe that the record fully supports that and that this court may affirm as to that.

[00:15:58] Speaker 00:
as to that rejection.

[00:16:00] Speaker 00:
For some of the reasons that the court already just stated, we also believe that affirmance may be appropriate for both the first and the third rejections as well, but we understand that if the court disagrees with that, we believe that vacate and remand to the board in order to permit it to correct its decision would be the appropriate course of action.

[00:16:21] Speaker 01:
Do you agree that, is it your view that that was just an inadvertent error or that the board just kind of misunderstood what was going on or what?

[00:16:32] Speaker 00:
Well, it's a little difficult to understand because we have essentially a history of somewhat conflicting statements throughout the board decisions and also in the examiner decisions.

[00:16:44] Speaker 00:
So for example, if we look at the first board decision,

[00:16:52] Speaker 00:
where they actually articulate our argument, which is, this is an A46, if the court would like to refer to that.

[00:17:03] Speaker 00:
They say combining conventional non-volatile memory with a separate state holding cell, as in the 841 patent is a predictable variation.

[00:17:11] Speaker 00:
that is obvious under KSR.

[00:17:12] Speaker 00:
So that's a statement of what we're saying here.

[00:17:14] Speaker 00:
You put together the non-volatile memory, which Intermec's own patent admits is a common feature of our ID tag.

[00:17:22] Speaker 04:
But they're using something different on 844, right?

[00:17:25] Speaker 04:
There they express it the other way.

[00:17:28] Speaker 00:
That is correct, Your Honor.

[00:17:29] Speaker 00:
There are then statements where it is expressed the other way.

[00:17:33] Speaker 00:
So then turning to the board decision that is now on review,

[00:17:40] Speaker 00:
We again have the combination of statements that are stating it the correct way and then also a statement which we've all talked about here where the board transposed it.

[00:17:51] Speaker 00:
So for example, in the board decision that is on review, we have this is at

[00:18:01] Speaker 00:
A6, the board is articulating its understanding of alien's argument as being requester here.

[00:18:08] Speaker 00:
And everybody here agrees that below alien argued that it would be obvious to use a state holding cell as disclosed in little child in a conventional RFID tag that would have conventional non-volatile memory.

[00:18:24] Speaker 03:
Does the board say that it agrees with your argument?

[00:18:30] Speaker 00:
That then comes to the second statement.

[00:18:32] Speaker 00:
So there on A6, there is the correct statement of our argument.

[00:18:37] Speaker 00:
And then on A9, which your honor points out, the board says then it agrees with our argument.

[00:18:43] Speaker 00:
We agree with requester.

[00:18:45] Speaker 04:
But then they also say further down, we agree with requester that the use of such a separate non-volatile memory to store state information.

[00:18:53] Speaker 04:
So when they're saying they agree with you, they're saying a different view of the case.

[00:18:58] Speaker 00:
Exactly.

[00:18:59] Speaker 00:
But they can't agree with us that that's the view of the case, because we've never said that.

[00:19:03] Speaker 00:
And we never argued that.

[00:19:04] Speaker 00:
We always consistently argued that there would be the state holding cell and then the non-volatile memory.

[00:19:11] Speaker 00:
And that a state holding cell, as taught in the whole child, which Intermec admits discloses a state holding cell, would simply be used in a conventional RFID tag, which has non-volatile read-write memory, which Intermec's own patent admits.

[00:19:32] Speaker 00:
So I would also like to turn to the question of whether they had the opportunity to respond to this argument at various points during the re-examination.

[00:19:42] Speaker 00:
And they did, in fact, have that opportunity.

[00:19:45] Speaker 00:
And I would just like to point out a couple of places in the record where they did actually address aliens' argument.

[00:19:53] Speaker 00:
And so one of those, these are cited in our brief and a footnote, but just for the court's review, one of those is at

[00:20:01] Speaker 00:
A5466 and 67, they are addressing the combination that is articulated by alien, which is the separate state holding cell on the separate nonvolatile memory.

[00:20:18] Speaker 00:
And again, at A5750, they have addressed that argument.

[00:20:27] Speaker 00:
Intermec was clearly on notice that this argument was being presented, and it did have the opportunity to respond and submit evidence directed to this argument.

[00:20:42] Speaker 00:
Also, there was one statement that was made earlier regarding the teachings of Little Child that I may have heard it incorrectly, but I just want to make sure that the record is clear on this.

[00:20:53] Speaker 00:
Little Child

[00:20:54] Speaker 00:
actually discloses a state-holding cell in volatile memory.

[00:20:59] Speaker 00:
So I believe that council may have made a statement, and I'm sorry if I'm wrong, but I believe there's maybe a statement that in the prior art, the state-holding cell was actually in non-volatile memory, and what they did is separated it out and put it in volatile memory.

[00:21:14] Speaker 00:
And that's actually incorrect.

[00:21:15] Speaker 00:
Little child discloses a state-holding cell that is, in fact, in volatile memory.

[00:21:19] Speaker 04:
Where's your best site for that?

[00:21:32] Speaker 00:
So, Little Child begins at A157 at the appendix.

[00:21:49] Speaker 00:
And if you look at column 10 on A174, Little Child teaches

[00:22:01] Speaker 00:
So here, Little Child is talking about the loss of information and the undesirability of the losing that information.

[00:22:09] Speaker 00:
And it says, starting at column 39, a random access memory RAM.

[00:22:16] Speaker 00:
I'm sorry, at 39, column 39?

[00:22:18] Speaker 00:
Oh, sorry, line 39.

[00:22:19] Speaker 00:
I apologize.

[00:22:20] Speaker 00:
Column 10, line 39.

[00:22:22] Speaker 00:
A random access memory RAM or a dynamic random access memory

[00:22:28] Speaker 00:
DRAM, like memory, does not suffer from slow write.

[00:22:30] Speaker 00:
Time consumes little power.

[00:22:32] Speaker 00:
It will be appreciated that RAM will hold its data provided the supply voltage is maintained.

[00:22:37] Speaker 00:
And DRAM will hold its data for a short time after the supply voltages have been removed.

[00:22:41] Speaker 00:
Then turning to the column 11 at 39, sorry, at 38 again, there is a discussion

[00:22:57] Speaker 00:
of that preferred state holding cell.

[00:23:02] Speaker 00:
And then also at column 12, line 66, there is a reference to the muting information, which is the mute chip bit of little child being stored in temporary memory.

[00:23:21] Speaker 00:
So little child absolutely discloses

[00:23:24] Speaker 00:
that the mute chip that the state information is stored in volatile memory.

[00:23:29] Speaker 00:
It should be the temporary memory.

[00:23:31] Speaker 03:
I think they've pretty much conceded in the latter parts of the argument that the combination of little child and Finkenzeller gives you the invention.

[00:23:40] Speaker 03:
They're arguing that there's a lack of motivation to combine.

[00:23:44] Speaker 03:
And what's the motivation?

[00:23:46] Speaker 03:
Is it the same motivation specified in little child?

[00:23:51] Speaker 00:
Well, Little Child, in fact, actually suggests the presence of a separate non-volatile memory, and this is something that the board recognized.

[00:24:02] Speaker 00:
And in particular, in the board's decision on rehearing, it specifically said this at A17, that Little Child discloses both volatile and then the transponder's memory.

[00:24:19] Speaker 00:
And so Little Child itself is actually suggesting that one might want to have a non-volatile memory.

[00:24:30] Speaker 00:
And further, Intermec has actually admitted, and we cited this in our briefing, that one of ordinary skill in the art would be motivated to add a ROM to Little Child.

[00:24:41] Speaker 00:
So they have admitted that one would add non-volatile memory to Little Child already.

[00:24:46] Speaker 00:
So that really narrows the inquiry

[00:24:48] Speaker 00:
to really just whether or not that non-volatile memory would be read-write.

[00:24:53] Speaker 00:
And as Finkenzeller teaches, when one wants to be able to read data from a tag and also write data to the tag, one would simply use EEPROM as an ordinary choice, as a predictable variation.

[00:25:11] Speaker 00:
And again, Intermec's own patent is exactly in line with this.

[00:25:16] Speaker 00:
It also teaches that double EEPROM is a standard component of these RFID tax.

[00:25:32] Speaker 00:
So unless the court has any further questions regarding claims 1 and 7 through 15, I would like to, if I can, turn to claims 25, 26, and 28, 29.

[00:25:47] Speaker 00:
So for these claims, the board found these claims obvious over a combination of two references, little child and Stuart.

[00:25:56] Speaker 00:
And the only question here is whether Stuart discloses a state holding cell.

[00:26:05] Speaker 00:
And we believe that the board's determination that it does is supported by more than substantial evidence.

[00:26:12] Speaker 00:
And Stuart's disclosures make this very clear.

[00:26:16] Speaker 00:
So Stuart teaches

[00:26:17] Speaker 00:
that tags will face interruptions in power.

[00:26:20] Speaker 00:
It then states that one of ordinary skill in the art will recognize that any device that might suffer from the loss of power will benefit from a tenacious storage state or latch.

[00:26:31] Speaker 00:
It then goes on to describe this tenacious latch and it says that this circuitry maintains a particular state for a prolonged period of time.

[00:26:40] Speaker 00:
and that this can be used in applications such as enabling a circuit to continue to function in the event of a brief loss of power.

[00:26:47] Speaker 00:
It specifically says it maintains a state.

[00:26:50] Speaker 00:
And Stuart says, again, it teaches that it's important that certain states like sleep, wake, or other command states persist, even through short interruptions to the power supply.

[00:27:00] Speaker 00:
It's talking about a state persisting during an interruption of the power supply.

[00:27:05] Speaker 00:
And it teaches that the tenacious latch

[00:27:07] Speaker 00:
of Stuart can function as this sleep-wake latch.

[00:27:11] Speaker 00:
And so Stuart very clearly teaches that its genesis latch can be used to maintain state information during an interruption in power, which is all that claim 25 requires.

[00:27:30] Speaker 00:
And so for those reasons, we believe that the board's determination that claims 25, 26, and then 28, 29 are obvious over the combination of little child and Stuart is supported by more than substantial evidence.

[00:27:45] Speaker 00:
With my remaining time, unless the court has any questions regarding that, I would like to turn to claim 27.

[00:27:52] Speaker 00:
And as counsel noted with respect to claim 27,

[00:27:59] Speaker 00:
We do have a potential lack of clarity here, but again, it is Aliens' position that this rejection can, that the board's rejection can be affirmed on the grounds that are stated in the board's decision.

[00:28:14] Speaker 00:
So I would like to turn to the substance of what the board said here.

[00:28:19] Speaker 00:
And so for Claim 27, we have two different references at issue.

[00:28:23] Speaker 00:
We have this Iglese reference, and then we have again the Finconzella reference from before.

[00:28:28] Speaker 00:
which is the RFID handbook.

[00:28:33] Speaker 00:
And so the board found Claim 27 obvious over a combination of Igles and Finkenzeller.

[00:28:38] Speaker 00:
And so there's no dispute, and the parties agree, that Igles teaches a read-write nonvolatile memory, which is the EA ROM, in which it stores state information, and that it also does other things.

[00:28:50] Speaker 00:
So you can read and write data from it.

[00:28:54] Speaker 00:
And Intermec agrees with this.

[00:28:56] Speaker 00:
So essentially, in Iglese, you have one circuit element essentially performing both of these functions.

[00:29:04] Speaker 03:
Iglese adds the clock.

[00:29:06] Speaker 00:
Iglese does add the clock.

[00:29:08] Speaker 00:
And they have not contested the examiner's finding that Iglese discloses that clock.

[00:29:20] Speaker 00:
And so what Iglyse does is that it teaches the EA-ROM functioning as a state-holding cell and also performing other functions, functioning as a read-write non-volatile memory.

[00:29:35] Speaker 00:
And it's also undisputed here that Finkenzeller teaches multiple memories on separate circuit elements.

[00:29:40] Speaker 00:
In fact, Iglyse teaches them as well.

[00:29:42] Speaker 00:
If you look at the diagrams of Iglyse, which we've cited, and also Iglyse's description, there's also RAM and ROM and other types of memory in there.

[00:29:50] Speaker 00:
So really what the board is saying is that it is obvious when you have one AOROM doing two things to split that into two elements, each doing a separate thing.

[00:30:02] Speaker 00:
So the extra AOROM would not be redundant, it's performing the function of serving as the non-volatile memory and reading and writing other data, whereas the other AOROM is functioning as a state-holding cell.

[00:30:16] Speaker 00:
And that's okay here because

[00:30:18] Speaker 00:
there is no requirement that the state-holding cell be, while it certainly can be implemented in volatile memory, there is no requirement that it be in volatile memory.

[00:30:31] Speaker 00:
And so we believe that that determination is fully supported by substantial evidence, both by the teachings of Eglise and by the teachings of Figenzeller, and also, again, as the court remarked, that this is the predictable use of prior art elements according to their established functions.

[00:30:48] Speaker 00:
And that is the epitome of obviousness.

[00:30:53] Speaker 01:
Times up.

[00:30:54] Speaker 01:
Thank you.

[00:30:54] Speaker 00:
Thank you, Your Honors.

[00:31:03] Speaker 02:
Thank you, Your Honors.

[00:31:05] Speaker 02:
Four very quick points.

[00:31:06] Speaker 02:
In answer to Judge Stoll's question about was it a mistake, if it was a mistake, the board did it three times.

[00:31:13] Speaker 02:
And they committed the same mistake three different times.

[00:31:17] Speaker 02:
With respect to the remand, Your Honors, here's the case that I think is on all fours with this.

[00:31:23] Speaker 02:
It's the Rambas versus Rhea case from the Federal Circuit 2013.

[00:31:26] Speaker 02:
It's cited at page 25 of our brief in a footnote number three.

[00:31:32] Speaker 02:
It explains that even a new theory of supporting a combination of references constitutes a new ground of rejection and that the APA requires affording us, the patent owner,

[00:31:43] Speaker 02:
an opportunity to respond.

[00:31:44] Speaker 02:
And the reason for that is because this is an inter-parties re-exam.

[00:31:48] Speaker 02:
It's not an inter-parties review.

[00:31:53] Speaker 02:
Third, Your Honors, I heard from Aliens Council the use of the term predictable use.

[00:31:59] Speaker 02:
Well, that's the question.

[00:32:01] Speaker 02:
It really is the question on motivation.

[00:32:04] Speaker 02:
How is it predictable that you can put these two memories together?

[00:32:08] Speaker 02:
How is it predictable?

[00:32:10] Speaker 02:
I mean, sure, you can put them together, and it would be easy physically to put them together.

[00:32:16] Speaker 02:
But where's the prediction to put them together?

[00:32:19] Speaker 02:
Where's the predictable use come from?

[00:32:21] Speaker 02:
And that's what's missing here, Your Honors, is in fact the prediction, the predictable use of these, of Thinkin' Zealot and Little Child together.

[00:32:32] Speaker 02:
And then finally, Your Honor, with regard to Stewart and the Tenacious Latch, Stewart's not a state holding cell.

[00:32:38] Speaker 02:
The Tenacious Latch is not a state holding cell.

[00:32:40] Speaker 02:
And it's not a state holding cell, primarily for two reasons.

[00:32:43] Speaker 02:
Number one, in Stewart, every five seconds it has to be reset.

[00:32:48] Speaker 02:
There has to be a new signal sent, a new signal received.

[00:32:52] Speaker 02:
And that's the whole purpose of the 841 invention, is so that you don't have to send and receive resetting signals.

[00:33:00] Speaker 02:
And that happens in Stuart, whether power is owned or whether power is lost.

[00:33:05] Speaker 02:
The other issue is the present state issue, and that's discussed in our reply brief at pages 19 through 20, I think.

[00:33:13] Speaker 02:
And I'll just leave that for the court's reading.

[00:33:16] Speaker 01:
Thank you.

[00:33:17] Speaker 01:
Thank you.

[00:33:17] Speaker 01:
We thank both parties and the cases submitted.