[00:00:49] Speaker 04: Okay. [00:00:50] Speaker 04: The next argued case is number 15, 2056, synopsis incorporated against Mendo Graphics Corporation. [00:00:58] Speaker 04: Mr. Shelsky. [00:01:00] Speaker 01: Good morning, your honors, and may it please the court. [00:01:03] Speaker 01: This case comes to the court in a bit of an unusual fashion. [00:01:07] Speaker 01: We have the board, or at least one of the judges on the board, saying to the petitioner, you've left, quote, it up to us to figure out how to combine these things. [00:01:18] Speaker 01: That's the joint appendix, Judge Bisk, at A-539. [00:01:22] Speaker 01: And then in the briefing to this court, you have the petitioner, even though it prevailed, returning... Let me ask you about the claim here. [00:01:29] Speaker 02: Let's talk about claim one here, which has an inferring limitation in A and an incorporating limitation in B. We're not arguing about B, right? [00:01:39] Speaker 02: Correct, Your Honor. [00:01:40] Speaker 02: We're only arguing about A. And so the question is, what does inferring mean? [00:01:46] Speaker 02: What do you understand inferring to mean? [00:01:49] Speaker 01: Well, inferring means, and there's been some discussion in the briefing about claim construction, we're quite content with the construction that the board issued, which was the plain meaning of the term inferring, which was to, and here I'm quoting, to form an opinion or reach a conclusion through reasoning and information, or, and this was the critical portion of the construction, to convey an idea indirectly. [00:02:17] Speaker 01: And the idea being, and this was really the... So this would mean detecting, right? [00:02:21] Speaker 02: Detecting the existence of a resettable memory? [00:02:24] Speaker 01: Essentially, Your Honor. [00:02:25] Speaker 01: I mean, the board suggested a whole series of synonyms that might, as it put it in certain contexts, be a synonym for inferring. [00:02:35] Speaker 01: But the idea is that you are doing it through indirect information rather than being told directly. [00:02:41] Speaker 02: So what Vander Zanden doesn't [00:02:44] Speaker 02: uh, showed detecting a memory. [00:02:48] Speaker 01: I apologize, your honor. [00:02:49] Speaker 01: I didn't hear your question over the cough. [00:02:51] Speaker 02: Does Vander Zanden show detecting a memory? [00:02:55] Speaker 02: Now, leave aside resettable for the moment. [00:02:58] Speaker 02: Does it show detecting a memory? [00:02:59] Speaker 01: No, our view is that it does not, your honor. [00:03:03] Speaker 01: Why not? [00:03:03] Speaker 01: That Vander Zanden requires, indeed, it depends upon being told directly [00:03:12] Speaker 01: what resettable memory to use. [00:03:14] Speaker 01: If you look at the synthesis comments in van der Zanden... Oh, wait. [00:03:17] Speaker 02: I'm not talking about resettable memory. [00:03:18] Speaker 02: I'm saying detecting a memory. [00:03:20] Speaker 01: Any old kind of memory. [00:03:22] Speaker 01: Right. [00:03:22] Speaker 01: And I apologize, Your Honor. [00:03:24] Speaker 01: I misspoke. [00:03:25] Speaker 01: van der Zanden to operate relies upon these synthesis comments. [00:03:29] Speaker 01: van der Zanden says the synthesis comment is how van der Zanden is going to figure out what memory, resettable or not. [00:03:38] Speaker 01: And so if you look at A654, [00:03:41] Speaker 01: and A 656, van der Zanden is quite explicit in the way it talks about this. [00:03:46] Speaker 01: In 654, it talks about the requested architectural style. [00:03:51] Speaker 01: In 656, and this is sort of a summary after the description of the van der Zanden invention, it says the architecture, quote, selected by the designer. [00:04:02] Speaker 01: This is exactly the opposite. [00:04:04] Speaker 02: What does this have to do with detecting? [00:04:06] Speaker 02: I mean, there's testimony from the other science experts [00:04:11] Speaker 02: Vander sent Zanden and shows detecting a memory, right? [00:04:16] Speaker 01: Yes, your honor, but, and I want to hasten to finish the point, that is not something that the board ever found. [00:04:25] Speaker 01: And that's really the heart of the decision-making point that I was working my way to. [00:04:31] Speaker 01: The board's decision in the critical portions, there are two of them at A50 and A44, [00:04:38] Speaker 01: They are each a single sentence conclusory assertion. [00:04:43] Speaker 02: So basically you're saying that while there was testimony that Vander Zanden shows inferring or detecting a memory, that the board didn't rely on that testimony, right? [00:04:54] Speaker 01: Yes, and I would add to that, Your Honor, the board, had it believed that to be true, presumably would have concluded the opposite that it did on this question of anticipation. [00:05:05] Speaker 01: It's not an argument. [00:05:08] Speaker 05: You're dicing now the difference between detecting a memory and detecting a resettable memory. [00:05:15] Speaker 05: I think the way the board looked at this was that van der Zanden teaches detecting a memory. [00:05:21] Speaker 05: And the question then would be, would one of ordinary skill in the art have been inclined to incorporate the resettable memory that was in the prior art to van der Zanden? [00:05:34] Speaker 05: And there apparently was testimony to the effect that, yes, one ordinary school would have done that. [00:05:38] Speaker 05: It's sort of like if you go down to your work bench and you're trying to solve a particular type of problem and your patent is working on the same kind of problems that VanderZanden was working on. [00:05:48] Speaker 05: So then you say, well, did VanderZanden detect a memory to use in this process? [00:05:55] Speaker 05: Answer to the expert, yes. [00:05:58] Speaker 05: And your inventor has on his work table a shand, which is the very resettable [00:06:04] Speaker 05: memory that we're talking about, would they have put the two together? [00:06:09] Speaker 05: That's what the whole case is all about, right? [00:06:11] Speaker 01: So Judge Clevenger, let me answer the question. [00:06:14] Speaker 05: Isn't that what the case is all about? [00:06:16] Speaker 01: Yes. [00:06:17] Speaker 05: So if VanderZanden teaches, which is a question of fact, once there's substantial evidence, if it teaches inferring a memory, just any old kind of memory, [00:06:29] Speaker 05: And that one skill in the art had Shan there, would they have been inclined to use Shan with all of its advantages in solving these problems? [00:06:42] Speaker 01: So the answer to that is no. [00:06:43] Speaker 01: Let me answer it in two parts, because I think that each of them is critical, and they each go to these two passages that we were talking about. [00:06:49] Speaker 01: On this question about whether van der Zanden infers or detects, if you prefer, [00:06:55] Speaker 01: The only thing that the board says about this is that A44, and that is the statement that Mentor does not defend to this court. [00:07:04] Speaker 01: The board, in concluding that there was inferring, in concluding that there was detection, got the thing that does the inferring wrong. [00:07:13] Speaker 01: It said that it's the downstream circuitry rather than the synthesis tool. [00:07:18] Speaker 01: And the thing from which the inference is drawn, it also got wrong. [00:07:22] Speaker 01: And Mentor does not dispute that, and that's [00:07:25] Speaker 01: really quite telling. [00:07:26] Speaker 01: So that Judge Clevinger is the first part of the answer. [00:07:30] Speaker 02: But I want to get... At A-48, the board says, we determined that Vander Zanden discloses inferring a memory in accordance with our claim construction, but not a resettable memory. [00:07:41] Speaker 02: So they explicitly said that Vander Zanden teaches inferring a memory. [00:07:47] Speaker 01: Judge dyke at a 48 and and I'll even pile on at a 50 and again at a 59 in three separate places The board says we found inferring but each of them is referring back to that flawed passage On a 44 that I was talking about but judge clementer. [00:08:05] Speaker 01: I want to make sure I get to the second part of your question about the workbench [00:08:09] Speaker 02: So what you're saying is they did find that it teaches detecting a memory, but your theory is that somehow the reasoning that underlies that is flawed. [00:08:20] Speaker 01: Yes, Your Honor, absolutely so. [00:08:22] Speaker 01: And under settled principles of agency review going back at least 70 years to Chenery, but a dozen or more if this court's case is Ariosa, Cutsforth, Warsaw, Lee, Kahn, Thrift, if the reasoning is [00:08:39] Speaker 01: unsustainable, and the fact that Mentor doesn't defend it tells us that it is, then the only permissible result is to vacate and remand. [00:08:49] Speaker 01: And what's wrong with their reasoning again? [00:08:52] Speaker 01: Well, so this passage on A44, this is the only place in which anyone, including the board, says that the final written decision deals with conferring. [00:09:01] Speaker 01: At least in one state, downstream circuitry would recognize the circuit of Figure 4 as a memory. [00:09:07] Speaker 01: It is that downstream circuitry, it says, that does the inferring. [00:09:12] Speaker 01: But it's very clear from column five of the patent that it is the synthesis tool, not the finished circuit that infers. [00:09:19] Speaker 01: And what does it infer from? [00:09:20] Speaker 01: The patent, again, column five makes clear it infers from the behavioral description, not from the circuit itself. [00:09:29] Speaker 01: The circuit isn't looking at itself in a mirror and inferring something from the circuit. [00:09:34] Speaker 01: The synthesis tool is inferring something. [00:09:36] Speaker 05: Well, does it have to infer the same way? [00:09:40] Speaker 05: I'm sorry, Judge Clevenger? [00:09:42] Speaker 05: Is Vanders Andan capable of inferring from the down... They are doing their recognition from the downstream circuitry, right? [00:09:50] Speaker 05: No, Your Honor, but what's happening... So they are, in fact, inferring a memory. [00:09:54] Speaker 01: No, Vanders Andan, again, and this was the language that I quoted earlier from 654 and 656, the designer is saying [00:10:03] Speaker 01: Here is the memory to use. [00:10:04] Speaker 01: And that's the opposite of inferring. [00:10:08] Speaker 01: Judge Clevenger, I do want to make sure to answer the second part of your question from earlier. [00:10:13] Speaker 01: You had said that this is the heart of the case, and it is certainly the heart of the second part of the case. [00:10:18] Speaker 01: And as I say, I want to make sure to answer it. [00:10:21] Speaker 01: So the reasoning that you laid out is exactly what the board says, again, in this single sentence on A-50. [00:10:28] Speaker 01: Vander Zanden gives you inferring, Shan gives you a memory, put them together and voila, you have inferring or a resettable memory. [00:10:36] Speaker 02: No, it's that there was testimony that someone skilled in the art would know to do that. [00:10:41] Speaker 01: And that is exactly the thing that is missing from the final written decision. [00:10:47] Speaker 01: If you look at that passage on A-50, that last sentence... Wasn't there testimony and a record to that effect? [00:10:55] Speaker 05: There was testimony in the record to that effect, and the board didn't... So does the board have to roll out and cite every piece of testimony that's in the record? [00:11:06] Speaker 01: Absolutely not, Your Honor. [00:11:07] Speaker 05: I want to make really clear about... So then come back to what Judge Deich was saying, was that there's testimony in the record that said one of ordinary skill and art would have made the combination. [00:11:17] Speaker 05: The board states that as a conclusion. [00:11:20] Speaker 05: There's evidence in the record to support it. [00:11:23] Speaker 05: What else is necessary? [00:11:24] Speaker 01: What is necessary, and this is the most fundamental thing here as a matter of administrative law or agency law, is that as this court put it in cuts forth, the decision maker has to explain why. [00:11:40] Speaker 01: It has to connect its premises to its conclusions and the board utterly fails. [00:11:47] Speaker 05: You say they crossed the lead cuts forth law. [00:11:50] Speaker 05: I'm sorry, Your Honor. [00:11:51] Speaker 05: You're saying that the absence of a citation in the board's opinion to this particular testimony crossed the Lee-Cutsforth line. [00:12:01] Speaker 01: I would put it just a bit differently, Judge Clevinger, because again, this is not just about a homework requirement. [00:12:08] Speaker 01: It is that what does appear on the face of the board is an absolutely bare conclusory assertion about this. [00:12:16] Speaker 01: It doesn't say why we are embraced. [00:12:19] Speaker 02: If we are conclusory assertions supported by evidence, why is it that sufficient? [00:12:24] Speaker 01: So the simple answer, Your Honor, is that this Court has said that that's not sufficient. [00:12:30] Speaker 01: In Warsaw, in Cutsforth, it is not enough to even say, a party argued this and we agree. [00:12:37] Speaker 01: That is what this Court has said, but here we don't even have that. [00:12:42] Speaker 01: What we have is this statement in the last sentence of A-50 where the board doesn't even explain how to bridge the divide between inferring and a resettable memory. [00:12:56] Speaker 05: Where did you argue below that van der Ven doesn't teach inferring and memory as opposed to inferring a resettable memory? [00:13:07] Speaker 01: So I want to answer this. [00:13:10] Speaker 05: There's a waiver argument here that's being made by your adversary. [00:13:12] Speaker 05: I mean, I look in the record below, and everything I saw you arguing to the board was that Mandarin doesn't teach inferring a resettable memory. [00:13:24] Speaker 05: And that's a different question from whether or not Mandarin infer any old memory. [00:13:29] Speaker 05: And then one of ordinary skill in the art would have grabbed chance. [00:13:31] Speaker 01: Right, Judge Clevenger. [00:13:33] Speaker 01: So let me answer the question, but just to be clear about the structure of the argument here. [00:13:38] Speaker 01: On A50, we're talking about the second piece, which is to say whether the combination gets you to inferring the existence of a resettable memory, whether you can fill this gap between inferring and resettable memory. [00:13:52] Speaker 01: The waiver question you're on or just asked about is what I've been referring to as the A44 point, just about inferring at all. [00:14:01] Speaker 01: And on that, I'd say a couple of things. [00:14:02] Speaker 01: First of all, it's certainly clear that the board thought that this was an essential part of the case. [00:14:07] Speaker 01: It talked about it. [00:14:08] Speaker 02: But the question is, did you argue that? [00:14:10] Speaker 01: Yes, Your Honor. [00:14:12] Speaker 01: So A, 399, and A, I think the passage is at 423. [00:14:16] Speaker 01: There are multiple passages where we're talking about these issues. [00:14:20] Speaker 01: But if I could just finish that. [00:14:21] Speaker 02: No, no, no. [00:14:22] Speaker 02: That kind of vague statement doesn't help. [00:14:25] Speaker 02: Show us exactly where this was argued, since there's a waiver. [00:14:30] Speaker 02: Where did you argue that VanderZanden doesn't show inferring a memory? [00:14:36] Speaker 01: There is no sentence that says in those words, Judge Dyke, VanderZanden doesn't show inferring a memory. [00:14:42] Speaker 01: But it was an essential part of the arguments, and everyone understood that to be so. [00:14:48] Speaker 05: My understanding is the way the petitioner pitched the case from the get-go came in, they were looking at VanderZanden both as an anticipatory [00:14:58] Speaker 05: and also as a 103. [00:15:02] Speaker 05: And since everybody knows that the limitation in the claim that calls for a resettable memory is a no-brainer, because Shan was lying on your patentee's workbench when he wrote the patent, the only question is inferring a resettable memory. [00:15:17] Speaker 05: And from the get-go, your adversary was saying, well, clearly, we think that a Mandarin teacher is inferring a memory. [00:15:25] Speaker 05: And then the only question is, on an ordinary scale, would they have been inclined to pick up sham? [00:15:31] Speaker 05: And so there's testimony. [00:15:33] Speaker 05: That's the way the case is being presented. [00:15:36] Speaker 05: And as Judge Dyke pointed out, and you agree there's evidence in the record where the expert says, I would have made that combination. [00:15:43] Speaker 05: Then why isn't the board's decision saying, we agree with all of that, sufficient? [00:15:48] Speaker 05: So where you never argued directly to the board to say that [00:15:54] Speaker 05: The fault in the argument is that we think that van der Linden doesn't teach inferring of memory for one reason or another. [00:16:03] Speaker 01: So I'm into my rebuttal time now, but if I may finish answering the... So, I mean, again, there are two separate questions here in your honor's question. [00:16:12] Speaker 01: One is about the inferring, sort of inferring in and of itself when you ask about wave or on that. [00:16:17] Speaker 01: And then this separate question about how to bridge the gap between the two things. [00:16:22] Speaker 01: The reason that inferring was in the case, that everyone understood that it was in the case, that it appears all over the board decision... What's going to be in the case without it being an issue? [00:16:33] Speaker 02: If you didn't raise it, why would the board be concerned about it? [00:16:38] Speaker 02: That's the problem. [00:16:40] Speaker 02: You're saying that you can get away with not raising things and the board has to explain everything even though it wasn't raised. [00:16:48] Speaker 02: That doesn't seem right, does it? [00:16:52] Speaker 01: is not what we're saying. [00:16:54] Speaker 01: So the premise of the question you just asked is why, as you said to me, the board would have to be concerned about this. [00:17:03] Speaker 01: The board was concerned about this. [00:17:05] Speaker 01: It's not a counterfactual. [00:17:07] Speaker 01: It's in at least five different places in the board's decision, or four different places. [00:17:11] Speaker 01: So the board clearly understood it was here. [00:17:14] Speaker 01: It was so much a part of the case that Mentor put in this extraordinary supplemental [00:17:21] Speaker 01: expert report at the reply phase that was about this precise issue. [00:17:27] Speaker 01: And so this was, Judge Clevenger, absolutely part of the argument for the reason that you say, everyone knew that shand gives you the resettable memory. [00:17:38] Speaker 01: And so the critical part is what Vander Zanden, what work Vander Zanden is going to do with that. [00:17:44] Speaker 01: And inferring is a big piece of it. [00:17:46] Speaker 01: But I fear I still haven't answered your question about the gap filling. [00:17:51] Speaker 01: And the way you asked the question a moment ago was, if the expert said something about this, and if the board said, and you phrased it, I think, deliberately loosely, well, we agree with all of that, then why isn't that enough? [00:18:05] Speaker 01: The board didn't say, we agree with all of that. [00:18:09] Speaker 01: If the board had agreed with all of that, it would have found anticipation. [00:18:14] Speaker 01: It is not an accident. [00:18:15] Speaker 05: No, no, no, that's not true, sir, because no one has ever argued, ever argued, that Vander Zanden teaches inferring a resettable memory. [00:18:26] Speaker 01: Absolutely they have, Your Honor, and it is still all over the red brief to this court. [00:18:31] Speaker 01: Well, they may be arguing it, but the board didn't rest its decision. [00:18:35] Speaker 05: The board said we don't buy that. [00:18:37] Speaker 05: The board says Vander Zanden [00:18:40] Speaker 05: teaches inferring a memory like a memory called Ray, but it does not teach detecting a resettable. [00:18:48] Speaker 01: But Judge Clevenger, that's exactly the point. [00:18:51] Speaker 01: If the board had agreed with what you were hypothesizing a moment ago, if the board had agreed with everything their experts said, it would have accepted that anticipation argument. [00:19:04] Speaker 01: It would have said, all right, fine, your expert tells us that Van der Zanden infers the existence of a resettable memory, [00:19:09] Speaker 01: were done and the board squarely rejected that. [00:19:14] Speaker 02: I don't follow that. [00:19:16] Speaker 02: You referred to column five earlier as showing that the premise for the board's inferring in memory was incorrect. [00:19:26] Speaker 02: Where in column five do I find what you're referring to? [00:19:29] Speaker 01: So the heart of the discussion here about [00:19:33] Speaker 01: Well, so I apologize, Judge Steck. [00:19:35] Speaker 01: Let me make sure I understand the question, because I think column five shows why the board was correct in its claim construction, which is to say that inferring is an indirect process. [00:19:47] Speaker 02: What you said was that the board's decision at 44 uses the wrong reasoning for concluding that Vanders Andan shows inferring of memory. [00:20:01] Speaker 02: And you say they relied on the downstream circuitry and that they should have relied on the synthesis tool. [00:20:07] Speaker 02: Where do I find that in column five? [00:20:17] Speaker 01: So there are two passages on column five, sort of back to back. [00:20:22] Speaker 01: One begins at line 33 and follows on at line 45. [00:20:29] Speaker 01: And that's really the heart of the description of behavioral descriptions and of synthesis. [00:20:36] Speaker 01: And you'll see in the second paragraph there in particular, it talks about the software design tool automatically inferring the use of resettable memory. [00:20:46] Speaker 01: It's the design tool that does it, not the circuit that is output on the back end. [00:20:54] Speaker 04: OK. [00:20:54] Speaker 04: OK. [00:20:55] Speaker 04: Let's hear from the other side. [00:20:56] Speaker 04: We'll have some rebuttal time. [00:20:59] Speaker 01: Thank you. [00:21:06] Speaker 00: May it please the court? [00:21:12] Speaker 00: First, I think I'd like to just clarify. [00:21:14] Speaker 02: Let's address the last point before we lose it. [00:21:17] Speaker 02: Okay, what's your answer? [00:21:18] Speaker 02: They say that the board misunderstood the functioning here of the software and that they said that the downstream circuit can do the inferring whereas it has to be [00:21:36] Speaker 02: the design tool. [00:21:38] Speaker 00: Yes. [00:21:39] Speaker 00: And that is not a misunderstanding of what's doing the inferring. [00:21:44] Speaker 00: Right here, the board was addressing the question of whether the particular circuit in Vander Zanden was a memory or not. [00:21:52] Speaker 00: And the terms of the patent say whether something is a memory or is not depends on how it's viewed by the downstream circuitry. [00:21:59] Speaker 00: So in answering that question, the board says the downstream circuitry would see this as a memory. [00:22:05] Speaker 00: And because van der Zanden synthesizes, at A40 the board had already found, van der Zanden synthesizes memories, it takes memories and processes them separately from the rest of the logic. [00:22:16] Speaker 00: So given that what is produced in figure four is a memory, it is inferring memories there. [00:22:23] Speaker 00: And I think the board's understanding of this point is clarified at A48 in its decision, where at the bottom it clearly states the [00:22:32] Speaker 00: obviousness argument posed by Mentor. [00:22:34] Speaker 00: And it says there, Mentor relies on van der Zanden's derivation of a memory circuit. [00:22:40] Speaker 00: We understand what's doing the, it's the process in van der Zanden that derives the memory circuit or detects the memory circuit as the court has phrased the term. [00:22:50] Speaker 00: And then we turn to Shan for the disclosure of a resettable memory. [00:22:55] Speaker 00: And so if that addresses the court's question as to whether the board understood this issue, [00:23:03] Speaker 00: I'd like to invite the court to the substantial evidence that shows that this combination does, in fact, suggest inferring a resettable from a behavioral description, which is the sole issue on appeal. [00:23:14] Speaker 00: So in particular, Mr. Detjens' testimony about Vander Zanden's steps three and four goes to this. [00:23:21] Speaker 00: And at A2452, which is paragraph 10 of his reply declaration, Mr. Detjens testifies that a skilled artisan would understand Vander Zanden [00:23:32] Speaker 00: to teach that because the terminology for describing a resettable memory was so well understood, a skilled artisan would have understood van der Zanden to teach recognizing whether the memory had the characteristic of being resettable. [00:23:47] Speaker 00: And he provides more detail. [00:23:49] Speaker 00: He refers back to paragraph six at A2449, where he explains in further detail how this occurs, that a skilled artisan would understand the process to include the writing that occurs upon a reset, [00:24:00] Speaker 00: and identifying the logic equations for the writing that occurs upon a reset. [00:24:05] Speaker 00: So this is substantial evidence showing that van der Zanden's method, when given the appropriate behavioral description, would infer a resettable memory. [00:24:14] Speaker 00: And there's no evidence to the contrary. [00:24:15] Speaker 00: There's no evidence that van der Zanden would not or could not infer a resettable memory if it was given the appropriate description. [00:24:24] Speaker 00: And that's because synopsis never argued as much [00:24:27] Speaker 00: to the board, which I think brings us to the waiver point, which is my colleague referred to A399 in the record as the location where Synopsys had argued. [00:24:39] Speaker 00: And this is also in their grade brief. [00:24:41] Speaker 00: This is the only location, A399, that they point to in their grade brief as saying where they preserved this inferring argument. [00:24:49] Speaker 00: And A399 is section B of patent owner's response to the board. [00:24:56] Speaker 00: raise this limitation, but they focus on Figure 3 in Vander Zanden and whether the memory in that particular description is a resettable memory. [00:25:07] Speaker 00: And if we turn to A400, this focus is made clear. [00:25:10] Speaker 00: In the middle of the page, they have Figure 3 from Vander Zanden, and they say, mentor is correct that Figure 3 is an example of an RTL description and that a memory can be inferred from this description. [00:25:21] Speaker 00: Mentor is incorrect, however, that Vander Zanden discloses inferring [00:25:25] Speaker 00: a resettable memory from this code. [00:25:27] Speaker 00: And the emphasis on Figure 3 and what Figure 3 discloses is made clear at the end of that section at A403 where they state, because the HDL code in Van der Zanden, Figure 3 does not describe the functionality of a resettable memory. [00:25:41] Speaker 00: Van der Zanden does not and cannot disclose the inferring step. [00:25:45] Speaker 00: My colleague was unable to identify anything in that passage. [00:25:49] Speaker 05: It was quite candid. [00:25:50] Speaker 05: giving credit for that, saying they never actually pointed and said to the board, they don't teach you memory. [00:25:58] Speaker 00: Yeah. [00:25:58] Speaker 00: And so what Synopsis has done on appeal is it's abandoned this argument and it's made several additional arguments as to why the combination of Van der Zanden and Shand would not satisfy [00:26:13] Speaker 00: this inferring claim limitation, step A. But none of those arguments were raised to the board, and so they were waived. [00:26:22] Speaker 00: And I'd also like to, if there are no other questions on the waiver point, I'd also like to address the adequacy of the board's decision. [00:26:31] Speaker 00: And I think, especially given the issues that were presented to the board, that decision is more than adequate. [00:26:38] Speaker 00: It's more than clear. [00:26:40] Speaker 00: At A50, [00:26:41] Speaker 00: It finds mentors' position persuasive. [00:26:45] Speaker 00: And in doing so, it discusses the motivation to combine set forth by mentors. [00:26:51] Speaker 00: And it also discusses that skilled artisans knew how to describe resettable memory so well that they would provide this behavioral description of a resettable memory. [00:27:02] Speaker 00: And then the board also cited to and found persuasive testimony from Mr. Detjens. [00:27:07] Speaker 00: mentor's expert, specifically paragraphs 10 to 15 of his reply declaration, in which he describes, again, this process for how Vander Zanden would infer, and that's at A2451 to 55. [00:27:21] Speaker 00: So the board found that persuasive, and that more than explains how this inferring process was done. [00:27:33] Speaker 00: And so because it clearly stated mentor's position, found that position persuasive, and also found the supporting evidence persuasive, this decision is clear and should be affirmed. [00:27:42] Speaker 00: And I think, moreover, especially given the issues presented by synopsis to the board, no further explanation on the inferring step was needed. [00:27:53] Speaker 00: If there are no further questions. [00:27:55] Speaker 03: Any more questions? [00:27:57] Speaker 05: Would Vanderland operate if it couldn't infer a memory? [00:28:03] Speaker 00: I'm sorry, I didn't hear the question. [00:28:04] Speaker 05: With van der Zandt, what van der Zandt is doing, my mistake, maybe I'm wrong, is that it can't achieve what it's trying to achieve unless it infers a memory. [00:28:16] Speaker 00: Yeah, the whole point of van der Zandt. [00:28:18] Speaker 05: It needs a memory, and whether you detect, infer, find, couple, add on, whatever, it's using a memory. [00:28:27] Speaker 00: Yeah, that's correct. [00:28:28] Speaker 00: I mean, the title of van der Zanden is Synthesis of Memories. [00:28:31] Speaker 00: It's not operational without a memory. [00:28:33] Speaker 00: Yeah, without a behavioral description of a memory, it's not operational. [00:28:37] Speaker 00: And in skilled utterances, new, we're very familiar with resettable memories. [00:28:41] Speaker 05: Once you get over the hump to say, well, does van der Zanden need a memory? [00:28:48] Speaker 05: And the inventor is down there trying to make his invention. [00:28:50] Speaker 05: He's got Shan in his right hand. [00:28:53] Speaker 00: Yeah, he's got Shannon in his right hand. [00:28:54] Speaker 05: An ordinary skilled person has Shannon in his right hand. [00:28:57] Speaker 05: With all the advantages of Shannon, why would you use a Model A memory when you have a Lamborghini? [00:29:06] Speaker 00: That's correct, yeah. [00:29:07] Speaker 00: On encountering a resettable memory, Shannon is the design that you're going to go with. [00:29:12] Speaker 00: And the 420 patent, too, doesn't treat resettable memories themselves, or memories really in general, as something special. [00:29:20] Speaker 00: Resettable memory could be considered like a four-wheel-drive car. [00:29:24] Speaker 00: It's maybe not the only type of, I mean, there's many other types of cars on the road, but people are familiar with four-wheel-drive vehicles, and they know when to use them. [00:29:33] Speaker 05: Was Shan the first resettable memory, or was it an improvement on previous resettable memory? [00:29:38] Speaker 00: Shan itself states that there are circumstances where resettable memories are needed. [00:29:42] Speaker 00: They were in use for a very long time. [00:29:45] Speaker 00: Mr. Detchins also testified that resettable memories were well-known. [00:29:49] Speaker 00: and well used, well prior to the 420 patent. [00:29:53] Speaker 00: And so what Shan was saying, even before the 420 patent, is, hey, let's come up with a better resettable memory design. [00:30:00] Speaker 00: And so somebody implementing VanderZanden, and this is how Mr. Detjens put it, he said, it's a no-brainer. [00:30:04] Speaker 00: I've got my VanderZanden toolbox for dealing with memories. [00:30:08] Speaker 00: I'm going to put that Shan design into the toolbox and use it when I need it. [00:30:14] Speaker 04: While you're here, would you comment on your opponent's [00:30:18] Speaker 04: position that since this is an administrative agency, there is a heavier burden to explain the reasoning than there might be on a trial judge, for instance. [00:30:30] Speaker 00: Yeah, and I think in this situation, my opposing counsel cited several cases. [00:30:34] Speaker 00: I would say this is far from the cases my colleague cited. [00:30:40] Speaker 00: I mean, this is not power integrations where the board completely ignored the patent owner's proposed claim construction below. [00:30:47] Speaker 00: This is not [00:30:47] Speaker 00: in Getter where the board addressed only a single limitation out of many in the claims, nor is it Ariosa where it's unclear what the board relied on as evidence. [00:30:58] Speaker 00: Here it's clear that the board was relying on both the teachings in Vanders and in Shand, but also it was relying on the evidence from Mr. Detjens and it's primarily paragraphs 10 to 15 in his reply declaration, but they also did cite to and quote [00:31:15] Speaker 00: paragraph 36 in his opening declaration where he sets forth the same reasons. [00:31:20] Speaker 00: In 36E of his opening declaration, which is quoted by the board, I believe at A46, or maybe it's A43, he states, you know, because VanderZanden teaches identifying the characteristics of a memory, and one well-known characteristic was whether the memory was resettable. [00:31:39] Speaker 00: And so that's the whole reason why a skilled artisan would understand VanderZanden [00:31:43] Speaker 00: to teach a method that infers resettable memories. [00:31:47] Speaker 00: And so I think this is more similar to cases like Huston, where it's clear where the board's going here. [00:31:54] Speaker 00: And the issues raised by synopsis for the first time on appeal may not be fully addressed, but the issues presented to the board are addressed, and the board laid forth clear reasoning for its obviousness determination. [00:32:08] Speaker 00: And I might make one further point on those paragraphs 10 to 15. [00:32:11] Speaker 00: Synopsis has characterized [00:32:13] Speaker 00: Detjens' reply declaration is some sort of drastic measure, but the board's rules provide for and allow a reply declaration. [00:32:21] Speaker 00: Synopsis had the right to depose Mr. Detjens after that reply declaration was submitted. [00:32:26] Speaker 00: They had the right to submit comments on that deposition, and in other instances, parties to a board proceeding have received the right to submit a surreply based on new expert declarations. [00:32:38] Speaker 00: So the board instead synopsis chose to move to exclude Mr. Jetson's declaration and the board on the basis that it raised new theories and the board rejected that motion to exclude at A-59 to 60 explaining no Mr. Jetson's is just further explaining the obviousness theory first raised by mentor in the petition and raised for example at A-66 or excuse me paragraph 66 in his opening declaration and so the [00:33:08] Speaker 00: the idea that this was something new. [00:33:10] Speaker 00: Synopsis had a chance to respond to Mr. Detgen's reply declaration, and it did not. [00:33:18] Speaker 03: Any more questions? [00:33:19] Speaker 03: Thank you, Your Honor. [00:33:31] Speaker 01: Judge Clevinger, I want to start with your tool bench again and see if I can get my point across a little more clearly. [00:33:39] Speaker 01: Even if one takes as a given that Vander Zanden discloses inferring memory, that's not the same as inferring resetable memory. [00:33:49] Speaker 01: And merely because you present someone with a resetable memory doesn't mean you know how to infer that thing. [00:33:58] Speaker 01: My friend on the other side said that resettable memory is not special. [00:34:02] Speaker 01: That's not the way the patent viewed things. [00:34:05] Speaker 01: The patent talks about, and we cite in our opening brief at pages 16 to 18, all manner of different resettable memories. [00:34:13] Speaker 01: Moreover, the patent itself at the bottom of column four onto the top of column five talks about all the different sorts of resets that are going on. [00:34:22] Speaker 01: You may reset everything to a zero. [00:34:24] Speaker 01: You may want to reset some values [00:34:27] Speaker 01: And so let me suggest an analogy. [00:34:29] Speaker 01: If someone hands you a cat, you now have a cat just like Shantier has handed you a resettable memory. [00:34:37] Speaker 01: And you don't know anything about cats. [00:34:39] Speaker 01: You've just landed from outer space. [00:34:42] Speaker 01: Inferring a cat, telling someone all the rules for figuring out what makes something a cat, aren't self-evident just because someone's handed you the cat. [00:34:52] Speaker 01: You could say, four legs and two eyes. [00:34:54] Speaker 01: But that would give you a lizard also. [00:34:56] Speaker 01: You could say, four legs and two eyes and fluffy. [00:34:59] Speaker 01: But that might give you a llama. [00:35:01] Speaker 01: Inferring something is a lot harder than just being handed the thing. [00:35:07] Speaker 02: And so this is where the critical- Can I bring you back here for a moment to A400 before we run out of time? [00:35:12] Speaker 02: Your repository, Mr. Mason, pointed to the sentence, [00:35:17] Speaker 02: at the very bottom of 400 says, mentor is correct that figure three is an example of an RTL description and a memory can be inferred from this description. [00:35:26] Speaker 02: Isn't that an admission that the prior art here shows inferring a memory, van der Zanden? [00:35:37] Speaker 01: Right, so this is only on the inferring point, not inferring a resettable memory. [00:35:42] Speaker 01: Right. [00:35:42] Speaker 01: And I think the answer is no. [00:35:43] Speaker 01: This was not a clear and unequivocal waiver. [00:35:46] Speaker 01: All that was being said there is this is the kind of code from which a memory could be inferred. [00:35:52] Speaker 01: It was not meant to be a waiver of one of the key portions of the argument here. [00:35:58] Speaker 05: But Judge Clevenger on this... You're making an argument now that I think it's maybe something that's new. [00:36:05] Speaker 05: I certainly didn't see any evidence of it below, is that there's something very special about inferring a resettable memory as opposed to inferring any old... [00:36:14] Speaker 01: Judge Clevenger, respectfully, that is the heart of the argument. [00:36:19] Speaker 01: And that is exactly what's missing on A-50. [00:36:22] Speaker 05: Yeah, but when the argument by their expert below was saying he thought one ordinary skilled New Yorker would have not had any trouble inferring a resettable memory in Vander Zanden, then that would have been your time. [00:36:37] Speaker 05: to counter that by saying, well, their cats come from the moon and you see a cat, how many lives does it have? [00:36:44] Speaker 05: And make that whole argument. [00:36:45] Speaker 05: That argument wasn't made to the board. [00:36:47] Speaker 01: So the argument was made. [00:36:49] Speaker 01: And at A-50, and this is maybe the most critical thing to leave you with, my friend on the other side says the board accepted what Detjens said on this point. [00:36:59] Speaker 01: The board accepted Detjens as filling this gap between [00:37:04] Speaker 01: What they say is inferring memory in van der Zanden and being handed the shand resettable memory. [00:37:10] Speaker 01: The board doesn't say that. [00:37:13] Speaker 01: When the board says petitioner's position in Dr. Dechen's testimony is persuasive, if you look at what immediately persuades that, it is a statement that is quite different and that was not mentor's argument on this point. [00:37:28] Speaker 01: There it talks about a post of describing a resettable memory. [00:37:32] Speaker 01: That's just writing the behavioral description for shand. [00:37:37] Speaker 01: That's not inferring the existence of a resettable memory. [00:37:41] Speaker 01: And then it talks about a posa recognizing a resettable memory. [00:37:45] Speaker 01: Again, it is not Detjian saying, I can bridge this gap. [00:37:52] Speaker 01: That is exactly what is missing from the final written decision. [00:37:58] Speaker 04: OK. [00:37:59] Speaker 04: Thank you. [00:38:00] Speaker 04: Thank you both. [00:38:00] Speaker 04: The case is taken under submission.