[00:00:07] Speaker 01: Our first case today is 2016-1306 Technology Properties Limited versus Huawei Technologies. [00:00:19] Speaker 01: Mr. Cecil. [00:00:39] Speaker 03: Good morning, Your Honors, and may it please the court. [00:00:43] Speaker 03: Even if you push aside how problematic it would be to find that an alleged surrender is clear and unmistakable, when every court who construed a surrender construed it differently, the district's court construction should still be reversed. [00:00:57] Speaker 04: Is it a question of fact whether Magyar's clock generator could be considered an oscillator? [00:01:03] Speaker 03: No, Your Honor, because it's contained entirely within the intrinsic record. [00:01:07] Speaker 03: There's no extrinsic evidence that's considered. [00:01:09] Speaker 03: the prosecution history is limited to the comments of the applicant and the materials that are before the court. [00:01:16] Speaker 03: And so we're just looking at the intrinsic record, and this court has held that looking only at the intrinsic evidence is just a matter of a finding of law. [00:01:24] Speaker 03: So it's not a finding of fact, and we're still within a realm of de novo review. [00:01:28] Speaker 04: Huawei claims that you did not claim that the [00:01:33] Speaker 04: Magyar clock generator was not part of an oscillator during prosecution history, and instead that the clock generator oscillator comprised off-chip and on-chip components through the two pins. [00:01:50] Speaker 04: Is that an accurate reflection of the Magyar oscillator? [00:01:53] Speaker 03: I don't believe that it is. [00:01:54] Speaker 03: I believe that the Magyar oscillator, the clockton circuitry, is not an entire oscillator. [00:02:00] Speaker 03: And we actually have an agreed definition of what an oscillator is. [00:02:03] Speaker 03: It's a circuit capable of maintaining alternating output. [00:02:07] Speaker 03: And we're consistent in the prosecution history. [00:02:10] Speaker 03: Actually, we came back and we sort of, I would say, double-clarified this. [00:02:15] Speaker 03: At A2101, we made sure that we were clear. [00:02:19] Speaker 03: And we said, applicants' prior comments did not make clear the distinction between an oscillator and a clock as it applies to the McGaugh reference. [00:02:26] Speaker 03: As a self-contained on-chip circuit, McGarr's clock gen is distinguished from an oscillator, and at least that it lacks the crystal or external generator it requires. [00:02:35] Speaker 03: So the clock gen circuitry in McGarr is not an entire oscillator. [00:02:38] Speaker 03: And that's the issue. [00:02:39] Speaker 03: There's no entire oscillator on-chip in McGarr. [00:02:42] Speaker 01: OK, so let me just tell you what I think about this case and what I think your problem is. [00:02:47] Speaker 01: And then you can tell me why you can somehow get around this problem. [00:02:51] Speaker 01: What I think about this, this is going to be a long-winded question, so just get comfy. [00:02:54] Speaker 01: So what I think about this case is what your client invented was variability, a variable frequency signal going into the CPU. [00:03:08] Speaker 01: And that variability was by virtue of putting the oscillator on the chip such that it varied with temperature or conditions that affected the substrate generally. [00:03:19] Speaker 01: That's what he invented. [00:03:20] Speaker 01: That's what he sought to invent. [00:03:22] Speaker 01: That's what he invented and showed in his pictures. [00:03:24] Speaker 01: And that's why he isn't like Magmar. [00:03:28] Speaker 01: The problem is then you have this infringing device and the infringing device comes along and it has a crystal generated frequency off chip that's then fed into control circuitry and then fed further into the inverted ring oscillator, which causes it to become variable before it goes into the CPU. [00:03:48] Speaker 01: Do you disagree with my factual assertions thus far? [00:03:51] Speaker 03: It's that last part that I just want to make sure that I understand. [00:03:54] Speaker 03: So there's an off-chip frequency generator. [00:03:58] Speaker 01: Sure. [00:03:58] Speaker 01: Let's look at your picture and your brief, which demonstrates how the accused device works. [00:04:02] Speaker 01: Let's see what page it is. [00:04:04] Speaker 01: It's pretty straightforward. [00:04:05] Speaker 01: Page 21 of your brief, a simple diagram that shows the arrangement of the accused. [00:04:15] Speaker 01: Right? [00:04:15] Speaker 01: Isn't this what you think the accused device is? [00:04:18] Speaker 03: On page 21, Your Honor? [00:04:19] Speaker 01: Yeah, of your brief, that picture. [00:04:21] Speaker 03: That's right, that's a picture of what we believe the accused of it looks like. [00:04:25] Speaker 01: Which has a crystal clock external to the chip, creating the initial frequency that is fed into control circuitry, which just amplifies it, honestly. [00:04:38] Speaker 01: That's all it does is change it from 50 Hz to 200 Hz or whatever. [00:04:42] Speaker 01: That's all that control circuitry does. [00:04:44] Speaker 01: Then it sends it over into the ring oscillator. [00:04:46] Speaker 01: You've got a ring oscillator on chip, [00:04:48] Speaker 01: which changes what was a fixed frequency signal up until that point. [00:04:52] Speaker 01: Even out of the control circuitry, it was still a fixed frequency signal. [00:04:55] Speaker 01: And now suddenly, because it goes through the ring oscillator, it has morphed the signal into a variable signal. [00:05:01] Speaker 01: And so you have a variable frequency signal now going into the CPU. [00:05:06] Speaker 03: Right? [00:05:08] Speaker 03: I don't think that's a fully accurate description of what the invention is. [00:05:13] Speaker 01: I didn't describe what the invention is. [00:05:15] Speaker 01: I described what their accused device does. [00:05:17] Speaker 03: Or what the accused device does. [00:05:18] Speaker 03: So when that signal comes in from the quartz crystal, it feeds into the PLL control circuit. [00:05:26] Speaker 03: And coming out of that is not some sort of 200 megahertz signal or 2 gigahertz signal. [00:05:31] Speaker 03: What's coming out of that is some control signal. [00:05:33] Speaker 03: which then allows the ring oscillator to... But it's still a fixed signal. [00:05:37] Speaker 01: What's coming out of there is still a fixed signal. [00:05:39] Speaker 01: There is no variability introduced until it gets into the ring oscillator. [00:05:42] Speaker 03: It's actually an output of a comparator, so it will change based on what's happening. [00:05:47] Speaker 01: You're not listening. [00:05:48] Speaker 01: It's still fixed. [00:05:49] Speaker 01: It's not variable. [00:05:51] Speaker 01: When you say it will change depending on what's happening, not what's happening with the substrate, right? [00:05:54] Speaker 01: It's a control signal which simply operates to change it from whatever number frequency it came in at to a different number frequency when it goes out. [00:06:02] Speaker 01: But it's still fixed, unlike a ring oscillator. [00:06:05] Speaker 03: Well, I think we'd probably end up disagreeing about infringement. [00:06:09] Speaker 03: But I don't think that it's actually necessarily what's at issue. [00:06:12] Speaker 03: I think the ring oscillator still has variability within it. [00:06:16] Speaker 03: And that's what we're saying matters. [00:06:17] Speaker 03: So the entire oscillator, the entire circuit. [00:06:21] Speaker 01: OK. [00:06:21] Speaker 01: But what you say is the ring oscillator, which is on chip, creates a variable frequency, which is then going to be fed into the CPU. [00:06:29] Speaker 01: And you think that's the crux of what your client invented, correct? [00:06:33] Speaker 01: And that would be different from MagR, clearly. [00:06:35] Speaker 01: Yes, Your Honor. [00:06:36] Speaker 01: Okay. [00:06:36] Speaker 01: But the problem is, and this is the problem for you as far as I'm concerned, is that your prosecution history, you clearly and unequivocally over disclaimed. [00:06:47] Speaker 01: You didn't need to disclaim as much as you did, but you didn't anticipate their infringing configuration. [00:06:52] Speaker 01: You were looking only at MagR and then you were looking at your device. [00:06:56] Speaker 01: And the sort of death knell for me of the prosecution history is a single sentence on page 2103. [00:07:06] Speaker 01: The Maggard teaching is well known in the art as a conventional crystal controlled oscillator. [00:07:14] Speaker 01: It is specifically distinguished from the instant case in that it is both fixed frequency being crystal based. [00:07:22] Speaker 01: That's the variability versus fixed frequency argument that you make throughout. [00:07:27] Speaker 01: and requires external crystal or external frequency generator. [00:07:34] Speaker 01: Well, whatever your disclaimer is precisely, it seems to read directly at least on the infringing device in this case, which while is not fixed frequency, is nonetheless using an external frequency generator in the form of the crystal. [00:07:54] Speaker 01: So whatever your disclaimer is, it's got two components. [00:07:57] Speaker 01: And this is the sentence in which you sum up all the arguments made across two different times when you described how you differ from Maggard. [00:08:06] Speaker 03: If I may attack this particular statement head on, Your Honor. [00:08:10] Speaker 03: So when I see this, the Maggard teaching is well known in that it's a conventional controlled crystal oscillator and that [00:08:16] Speaker 03: It is specifically distinguished that it's both fixed frequency. [00:08:19] Speaker 03: So that's the varying limitation that's within the claim. [00:08:23] Speaker 01: I know. [00:08:23] Speaker 01: And they have variability. [00:08:25] Speaker 01: So that's not a problem for you for infringement. [00:08:29] Speaker 03: And then it requires an external crystal. [00:08:31] Speaker 03: So it requires something that does not allow the McGar system to be the entire oscillator on the chip. [00:08:37] Speaker 03: Remember that in conjunction with this particular argument, there's an amendment made that says entire oscillator. [00:08:44] Speaker 03: We add the word entire. [00:08:46] Speaker 03: This is noting that the complete ability to maintain an alternating output must be on the chip. [00:08:53] Speaker 03: And so that's different from the McGarr situation, because in McGarr, they absolutely must have that off-chip crystal in order to get an alternating output. [00:09:04] Speaker 02: But do you see Judge Moore's question or thrust of her question that it looks like we can read this prosecution history pretty plainly as saying, [00:09:15] Speaker 02: We're looking at an onboard oscillator whose frequency is not fixed and does not rely on an external crystal or external frequency generator. [00:09:25] Speaker 02: Period. [00:09:27] Speaker 02: What's wrong with that reading of this sentence? [00:09:31] Speaker 02: I think that's actually a different reading than what the court... But I'm asking you, what's wrong with my reading of this sentence? [00:09:41] Speaker 03: Which is shared by me. [00:09:43] Speaker 03: I don't want to agree to a construction that I didn't hear exactly clearly. [00:09:47] Speaker 03: Would you mind just repeating that one more time? [00:09:49] Speaker 02: Oh, okay. [00:09:50] Speaker 02: Again, this key sentence on JA2103, why isn't the logical reading that your onboard oscillator has a frequency that's not fixed and does not rely on an external crystal or external frequency generator? [00:10:13] Speaker 03: So I think the question is, what does it mean that it's not fixed? [00:10:17] Speaker 01: We don't actually think that. [00:10:18] Speaker 01: I don't personally think that's a question. [00:10:21] Speaker 01: I don't have a problem with you on that. [00:10:22] Speaker 01: My problem is that you went further. [00:10:24] Speaker 01: You didn't stop and put a period there. [00:10:26] Speaker 01: You decided toward there and a separate requirement. [00:10:30] Speaker 01: And a separate requirement of our system is it doesn't require an external crystal. [00:10:36] Speaker 03: This one does. [00:10:38] Speaker 03: And I think that there's also a reading here, and to answer your question Judge Chen, is that there's also a reading here that when you read the sentence in conjunction with the entire prosecution history, what you understand is that the external crystal or the external frequency generator is required to generate the signal. [00:10:54] Speaker 03: And so I think that in the... So what you're arguing is that in context it's ambiguous. [00:11:00] Speaker 03: Absolutely Judge Wallach, and I think that's consistent with [00:11:03] Speaker 03: some of this court's recent decisions. [00:11:05] Speaker 03: I think, for example, the MIT versus Shire decision that came out just a couple of months ago, the court here indicated that. [00:11:12] Speaker 02: So what's the sentence then in your estimation in the prosecution history that sort of defeats the apparent unambiguity or nonambiguity of this [00:11:26] Speaker 02: Sentence on J8-2103? [00:11:28] Speaker 03: I think on J8-2101 we say McGar's clock generator relies on an external crystal connected to terminals X1 and X2 to oscillate. [00:11:37] Speaker 03: So what that does is it mentions that the external crystal or the external frequency generator is required to generate a signal that's used by the oscillator. [00:11:48] Speaker 03: So there's more to it than just the fact that it can't have an external crystal or an external frequency generator. [00:11:53] Speaker 03: There's a purpose restriction [00:11:55] Speaker 02: I guess you're saying McGar is relying on an external crystal or external frequency generator. [00:12:04] Speaker 02: And then you're saying that, well, your claim is different because it doesn't rely on any kind of external crystal or external frequency generator. [00:12:13] Speaker 02: I guess I'm not seeing the ambiguity. [00:12:17] Speaker 03: We're saying that it doesn't rely on it and it doesn't use it to generate. [00:12:22] Speaker 03: the signal that's used by the CPU. [00:12:26] Speaker 03: The signal that's used by the CPU is generated by a on-chip oscillator that's entirely contained on the CPU. [00:12:34] Speaker 03: And it does not require or does not rely on that external crystal to generate the signal. [00:12:40] Speaker 03: I can see that I'm into my rebuttal time. [00:12:43] Speaker 04: So would you agree that to the extent that we've had this discussion [00:12:53] Speaker 04: Technology properties has disclaimed the use of an external crystal to cause clock signal oscillation. [00:13:01] Speaker 03: To cause clock signal oscillation, I think that we would feel that to the extent that means you're not generating the signal from that external crystal, yes, we would agree. [00:13:16] Speaker 03: If I might save the rest of my time for a little of course no problem. [00:13:20] Speaker 01: Don't worry We'll restore your full time. [00:13:22] Speaker 01: I asked you a lot of long-winded questions, so I ate up some of your time. [00:13:25] Speaker 06: Don't worry about All right, let's hear from closing council mr.. Fowler Thank your honor if it may please the court I'd like to pick up with the first question that was asked of council about [00:13:45] Speaker 06: what the oscillator is in MAGAR. [00:13:49] Speaker 06: So that's determined not by looking at MAGAR. [00:13:52] Speaker 06: The court's precedent says you don't go back in hindsight and look at the prior art. [00:13:55] Speaker 06: Since we're in disclaimer land, the issue is what did the applicant say MAGAR said. [00:14:00] Speaker 06: And that's very clear. [00:14:01] Speaker 06: In the February 1998 amendment at appendix 2-101, they started by saying MAGAR's clock generator relies on an external crystal connected to terminals x1 and x2 to oscillate. [00:14:15] Speaker 06: So the clock gen is oscillating. [00:14:18] Speaker 06: The signal is coming from the crystal, and together those are forming one oscillator. [00:14:25] Speaker 06: They then say on the next page, appendix 2102, the clock gen part of the oscillator circuit is clearly on the IC, but not the crystal. [00:14:33] Speaker 06: So again, they're talking about two parts making up one oscillator. [00:14:37] Speaker 06: And then on the next, or actually on the same page, 2102, again, they say thus while most of Maggar's clock generator circuitry is on the IC, [00:14:45] Speaker 06: The entire oscillator, which because it requires an internal crystal, is not. [00:14:50] Speaker 06: And they had made the same distinction earlier in the July 1997 amendment at appendix 2093 when they were contrasting Edwards, which is another prior art, where the oscillator there was the crystal and the circuitry off chip. [00:15:04] Speaker 06: And they're contrasting that with Maggar because Maggar had distributed oscillator circuitry. [00:15:10] Speaker 04: On page 20 of your red brief, you say [00:15:15] Speaker 04: that the, quote, mere fact that different tribunals chose different wording to capture the appellant's disclaimers is, quote, no barrier to the existence of a clear and unmistakable disclaimer. [00:15:32] Speaker 04: But you don't cite any authority for that. [00:15:34] Speaker 04: You got some? [00:15:35] Speaker 06: Well, no. [00:15:36] Speaker 06: There's no authority in the sense that this is a unique case in the sense that I'm not aware of any cases, Your Honor, where there has been such [00:15:45] Speaker 06: complete disclaimer, and multiple amendments, and multiple times within amendments. [00:15:50] Speaker 04: Wait, wait, wait, wait, wait, wait. [00:15:52] Speaker 04: There are some district courts that disagree with you on its completeness. [00:15:56] Speaker 06: With respect to the Federal Circuit law. [00:16:00] Speaker 06: So in this case, we have a situation where the applicants disclaimed over multiple amendments, sometimes within the same amendment, several times, choosing to use somewhat different words each time. [00:16:13] Speaker 06: But the substance is the same. [00:16:14] Speaker 06: And as the district court here found, using the district court's words, the ultimate prime of claim construction in this kind of circumstance is to accurately capture what actually happened in the patent office. [00:16:26] Speaker 06: And so in this case, unlike maybe one other case where your honors might be faced with a single sentence. [00:16:31] Speaker 04: What happened when it was clearly a disclaimer as opposed to ambiguities? [00:16:38] Speaker 06: Well, your honor, our position is it's not ambiguous at all. [00:16:40] Speaker 06: It's very clear that they disclaimed. [00:16:43] Speaker 06: And if you look at all of the claims [00:16:45] Speaker 06: court rulings, the Eastern District of Texas, the HTC case, the administrative law judge in the ITC, the commission in the ITC, and in this present case, what's common about all of them? [00:16:56] Speaker 06: All of them found disclaimer. [00:16:58] Speaker 06: All of them found disclaimer of the use of an external crystal. [00:17:01] Speaker 06: And all of them found disclaimer of the control signal. [00:17:05] Speaker 06: The only difference is that in this case, the district court dove down a little deeper and looked at the exact words that were used. [00:17:14] Speaker 06: and found that the disclaimer issued a disclaimer construction that was closely mapping to what was actually disclaimed, which in the case of Maggar was the use of an external crystal to control the oscillator. [00:17:28] Speaker 06: That's what repeatedly was said. [00:17:30] Speaker 06: They said that three times in the February 1998 amendment, and they used those words in the same effect three times in the July 1997 amendment, concluding. [00:17:38] Speaker 02: So I guess what we have here are different wordings. [00:17:41] Speaker 02: So just to pick up on Judge Wallach's question, [00:17:45] Speaker 02: You would think, if it's such a clear and unmistakable disclaimer, that all these different tribunals would have articulated the exact same disclaimer, and yet they didn't. [00:17:56] Speaker 02: There's some variety in the language they use. [00:17:59] Speaker 02: And what I'm trying to figure out is, does the variety of the language suggest maybe there's some lack of clarity around the edges of what [00:18:15] Speaker 02: the scope of the disclaimer is. [00:18:16] Speaker 02: But then there's a core disclaimer in the middle that's very, very clear and unmistakable. [00:18:23] Speaker 02: If that's the case, and I think that's probably what your argument ought to be, to the extent that there's undoubtedly varying language being used by all these tribunals, can you identify what's the consistent thread that goes through [00:18:40] Speaker 02: all the different tribunals' disclaimers. [00:18:42] Speaker 02: What are those key elements that you can say without a doubt is very, very consistent with what they've all said? [00:18:49] Speaker 06: Well, Your Honor, again, what's common amongst all of them is two things. [00:18:52] Speaker 06: With respect to Maggard, it's the disclaimer of the use of an external crystal. [00:18:57] Speaker 06: That's common to all. [00:18:58] Speaker 06: And with respect to sheets, it's the use of the control signal. [00:19:02] Speaker 04: To some extent, your opposing counsel agreed with you. [00:19:08] Speaker 06: Well, they said there was no disclaimer at all, at least initially for both. [00:19:11] Speaker 06: And then they rapidly backpedaled for that, I think. [00:19:14] Speaker 06: But the disclaimer, I mean, what ultimately governs here with all due respect to the other decisions of the district court is not what those constructions were. [00:19:22] Speaker 06: None of those constructions came up to this court for review. [00:19:25] Speaker 06: And so what we're looking at is, what was the actual language used by the applicants? [00:19:30] Speaker 06: And with respect to MAGAR, I won't repeat the quote from 2103. [00:19:34] Speaker 06: We already heard that. [00:19:35] Speaker 06: where it was specifically distinguished as being both fixed frequency being crystal-based. [00:19:40] Speaker 06: So that's a crystal-based, that's a crystal fixing the frequency. [00:19:43] Speaker 06: That's what the judge here did, the district court, and external. [00:19:49] Speaker 06: So the court's construction of whose frequency is not fixed by any external crystal captures both aspects of that. [00:19:55] Speaker 06: That was lacking in some, but not all of the other decisions. [00:19:58] Speaker 01: But assuming that your infringing device operates [00:20:02] Speaker 01: to some extent, the way it is drawn on page 21 of the blue brief. [00:20:07] Speaker 01: Since there's a stipulation of infringement, I don't really know how your device operates, so I'm not so concerned with it. [00:20:12] Speaker 01: But assuming it does, I guess why did they argue that, why did they stipulate to infringement? [00:20:23] Speaker 01: Why didn't they say there is an entire oscillator on chip [00:20:28] Speaker 01: The ring oscillator is on chip and it's feeding a variable frequency into the CPU and that's enough. [00:20:33] Speaker 01: Why didn't, why, my question is why did they not, why did they stick to infringement? [00:20:39] Speaker 01: Why, why didn't they just say there's two oscillators here? [00:20:43] Speaker 01: You've got a crystal that's issuing a fixed frequency signal and then you've got an entire oscillator, the ring oscillator on chip. [00:20:52] Speaker 01: And that's all we need to have to avoid the disclaimer. [00:20:55] Speaker 06: Well, your honor, of course I can't peer into their [00:20:58] Speaker 06: their thought process, but what I can tell you is that both aspects of the construction require finding a non-entrenchment. [00:21:05] Speaker 06: And I think they quickly recognize that. [00:21:07] Speaker 06: I'm speculating because I don't know what's going on in their minds. [00:21:09] Speaker 06: But in the accused devices, you have a crystal that's generating a fixed frequency that is, in fact, controlling the frequency of the oscillator. [00:21:19] Speaker 06: And there's a bunch of evidence on that. [00:21:21] Speaker 01: It's not before your honor. [00:21:22] Speaker 01: It's controlling the frequency of that oscillator, which is an oscillator into itself. [00:21:28] Speaker 01: But then you've got the ring oscillator, which is affecting the frequency and it's its own. [00:21:33] Speaker 01: The claim just requires an entire oscillator. [00:21:35] Speaker 01: It doesn't prevent there being multiple oscillators. [00:21:38] Speaker 01: I mean, this is, this appears to me to be a two oscillator system. [00:21:41] Speaker 01: Am I wrong? [00:21:42] Speaker 06: Well, your honor, there's, there is in the accused devices, there is a frequency coming out of the crystal that's fixing the frequency. [00:21:51] Speaker 06: that ring oscillator that's that's the evidence that's unfortunately not before the frequency of the brain it determines it determines the frequency now there's control signals it determines the frequency in much the same way as if you apply voltage to a crystal it determines the frequency it's just the input signal and the input signal is fixed right isn't that all you mean well to a certain extent but then you have the other part of the construction which is sheets which is there's a control signal [00:22:16] Speaker 01: That's a separate issue. [00:22:18] Speaker 01: These are, as you just said, two separate infringement issues. [00:22:20] Speaker 01: I'm trying to understand why they stipulated to infringement on this construction. [00:22:25] Speaker 01: Like what is it about this disclaimer that you think renders your, because, because, I mean, if your entire case hinges on control signal, we'll move to that. [00:22:36] Speaker 01: But I thought that there was some stipulation of infringement that under the first part of the alternatives, you can't have this or this. [00:22:45] Speaker 01: that they seem to have stipulated to non-infringement. [00:22:47] Speaker 01: And I can't quite understand why. [00:22:49] Speaker 06: Well, Your Honor, again, I can't peer into their minds. [00:22:51] Speaker 06: But what I can tell you is before this case, the district court case, these same parties were involved in the International Trade Commission. [00:22:57] Speaker 06: It resulted in a decision of no infringement. [00:23:00] Speaker 06: And as you may recall in that instance, what happened is the initial claim construction was somewhat similar to what issued in the Eastern District of Texas. [00:23:07] Speaker 06: But it quickly became an issue in that case as to whether [00:23:11] Speaker 06: The more general statement about the use of an external crystal or clock generator to generate a circuit encompassed fixing the frequency with a crystal. [00:23:20] Speaker 06: And the administrative law judge quickly came to the initial determination that, in fact, those are part and parcel, that you can't generate a clock signal without fixing the frequency. [00:23:30] Speaker 06: It's like a metronome. [00:23:31] Speaker 06: One is going to happen without the other. [00:23:33] Speaker 06: The commission upheld that and found that there was disclaimer along the same lines as what the district court did here. [00:23:38] Speaker 06: So there's no substantive difference. [00:23:40] Speaker 06: And that was the basis of the non-infringement finding, because in that case, on that record, with that evidence, there was a finding that, in fact, the external crystal fixed the frequency of the onboard clock, and that there were control signals as well. [00:23:53] Speaker 06: So on that record, in that case, they lost on both. [00:23:57] Speaker 06: Now, the facts haven't changed. [00:23:58] Speaker 06: The record's not before you in terms of the accused evidence. [00:24:01] Speaker 06: I suspect, again, that they stipulated, because they realized they couldn't survive under either of the prongs. [00:24:10] Speaker 02: Just so I understand, if hypothetically we were to affirm on either of the two disclaimers found by Judge Craywall, either the one with respect to Magar or the one with respect to Sheets, then this is an affirm? [00:24:29] Speaker 02: We believe so, Your Honor. [00:24:31] Speaker 02: But I guess that's what I'm trying to figure out. [00:24:33] Speaker 02: They stipulated because of disclaimer one or disclaimer number two? [00:24:39] Speaker 02: they stipulated because both together ultimately renders the accused products non-infringing. [00:24:50] Speaker 06: They never said in the district court. [00:24:52] Speaker 06: They've never said in their briefs. [00:24:54] Speaker 06: What I know is they've challenged both prongs. [00:24:56] Speaker 06: And I think there's a good reason for that. [00:24:57] Speaker 06: It's like in the international trail ammunition, under either prong, they lose. [00:25:01] Speaker 06: And they haven't articulated to this court any reason why they would be able to survive an infringement finding under [00:25:08] Speaker 06: either prom, so we would say affirm without remand. [00:25:13] Speaker 01: Well, I mean, you would say that, but this is based on a stipulation. [00:25:18] Speaker 01: Yes, Your Honor. [00:25:19] Speaker 01: I mean, it would be one thing if the judge held summary judgment on two independent grounds, that if we affirm one of those two grounds, the case is over and we don't have to reach the other one. [00:25:28] Speaker 01: But I don't know what to do with this in the form of a stipulation. [00:25:31] Speaker 01: So why don't you tell me why you think the very, very broad disclaimer [00:25:38] Speaker 01: related to that does not require a control signal, why don't you point me to what you think is your very, very best prosecution history statement that they made that supports a broad thing that says does not require a control signal, not does not require a control signal to do a particular thing. [00:25:57] Speaker 01: but doesn't require a control signal. [00:25:59] Speaker 01: It's a really broad statement. [00:26:01] Speaker 01: So where is it, you think, that you think? [00:26:02] Speaker 01: Sure. [00:26:03] Speaker 06: So, Your Honor, I would say that it's the culmination of all three things we point to. [00:26:07] Speaker 01: I need to know specific pages and specific sentences and specific statements they made. [00:26:11] Speaker 06: Sure. [00:26:12] Speaker 06: So at Appendix 2-117 in the April 1996 Amendment, they said the present invention [00:26:17] Speaker 06: does not similarly rely upon the provision of frequency control information to an external clock. [00:26:23] Speaker 01: Hold on, 2117. [00:26:24] Speaker 01: Don't worry about your time. [00:26:26] Speaker 01: Don't rush me. [00:26:27] Speaker 01: The present invention does not similarly rely. [00:26:29] Speaker 02: OK, to an external clock, right? [00:26:33] Speaker 02: And then it didn't. [00:26:35] Speaker 02: OK, let's get to that. [00:26:37] Speaker 06: And then they go on in that same page to talk about it obviates the need for the provision of the type of frequency control information described in sheets. [00:26:45] Speaker 06: And later on that same section. [00:26:47] Speaker 01: I'm sorry? [00:26:48] Speaker 01: 2117. [00:26:48] Speaker 01: 2117. [00:26:50] Speaker 01: Just give us a chance. [00:26:51] Speaker 01: Sure, I'm sorry. [00:27:02] Speaker 06: Should I proceed? [00:27:03] Speaker 05: Yes. [00:27:04] Speaker 06: They go on on that same page to say, sheet system for providing clock control signals to an external clock is thus deemed to be unrelated to the integral microprocessor system of the present invention. [00:27:14] Speaker 06: So here, in the first part, [00:27:16] Speaker 06: They're using both the phrase frequency control information and the phrase clock control signals to describe the same thing. [00:27:22] Speaker 06: And as Your Honor correctly pointed out, at this point, they're talking about sending something externally. [00:27:28] Speaker 06: But what happened is there was a rejection, nevertheless. [00:27:31] Speaker 06: And there was a disagreement between the examiner and the applicants as to whether, in sheets, the CPU and the clock were on the same circuit. [00:27:39] Speaker 06: So in response to that, what they said in the next amendment, which is the January 1997 amendment [00:27:46] Speaker 06: 2127 of the appendix. [00:27:50] Speaker 06: They said, even if the examiner is correct, the variable clock in Sheets is in the same circuit as the microprocessor system 100. [00:27:59] Speaker 06: That still does not give the claimed subject matter. [00:28:02] Speaker 06: In Sheets, a command input is required to change this clock speed. [00:28:06] Speaker 06: And they go on later. [00:28:07] Speaker 00: I don't know where you are right now. [00:28:08] Speaker 00: I'm sorry. [00:28:09] Speaker 00: I'd really like to be able to follow you. [00:28:10] Speaker 00: Sure. [00:28:10] Speaker 06: I apologize. [00:28:11] Speaker 06: 2127. [00:28:12] Speaker 06: 2127. [00:28:13] Speaker 06: Yes. [00:28:15] Speaker 06: If I misspoke, I apologize. [00:28:17] Speaker 00: No, 2127, top of the page, bottom of the page, where are you? [00:28:23] Speaker 06: It's near the bottom. [00:28:25] Speaker 06: I would say the bottom third, about maybe eight or nine lines up from the bottom where it starts in the middle of the paragraph, even if. [00:28:33] Speaker 06: So again, the context here is there was a disagreement. [00:28:36] Speaker 06: And Your Honor, I see I'm running out of time. [00:28:38] Speaker 06: Should I continue? [00:28:38] Speaker 00: No, no, I told you, don't worry about your time. [00:28:41] Speaker 06: They said, even if the examiner is correct that the variable clock and sheets is not the same circuit as the microprocessor of 100, that still does not give the claim subject matter. [00:28:50] Speaker 06: In sheets, a command input is required to change the clock. [00:28:53] Speaker 06: And then a little further below, it says no command input is necessary to change the clock frequency. [00:29:00] Speaker 04: Where did they disclaim control signals generally? [00:29:05] Speaker 06: What happened here, and this goes to what the district court did, is the district court looked at the language that was used both in the two excerpts I read and then also the excerpt that's- Because Judge Wallach's question, you realize, sort of hits the nail on the head, which is this says no command input is necessary to change the clock frequency. [00:29:23] Speaker 01: That's a very narrow little disclaimer. [00:29:25] Speaker 01: That's not no control signals. [00:29:28] Speaker 01: Sure. [00:29:29] Speaker 06: So I would say two things. [00:29:30] Speaker 06: One is frequency control information, clock control signals, command input. [00:29:35] Speaker 06: manual or programmed inputs. [00:29:36] Speaker 06: Those are the things that are used in the three amendments. [00:29:40] Speaker 06: All of those things together equate to clock signals. [00:29:45] Speaker 06: Appellants have not identified any space between control signals and those four things. [00:29:50] Speaker 06: In other words, they haven't identified a signal that wouldn't be one of those four things that's not also a control signal. [00:29:54] Speaker 06: And then to answer your more specific question, the context of the claim construction order makes it clear, even though it may not be in the words themselves of the construction, [00:30:05] Speaker 06: that the control signal is used to control the frequency of the clock. [00:30:11] Speaker 06: That's what Judge Graywall said. [00:30:13] Speaker 01: That's what Judge Graywall meant his disclaimer to be limited to, even though he wrote it broader. [00:30:18] Speaker 06: I believe so, Your Honor. [00:30:19] Speaker 06: If you look at pages 10 and 11 of the appendix, that's what he's talking about. [00:30:21] Speaker 01: Do you think it matters vis-a-vis your device? [00:30:24] Speaker 01: Since, again, we have a stipulation here. [00:30:26] Speaker 01: I don't have all the information I need to be able to understand how your device operates to figure out whether [00:30:32] Speaker 01: whether this linguistic, clearly I believe there is a disclaimer here. [00:30:36] Speaker 01: The question is, I personally think Graywall's disclaimer is broader than is otherwise appropriate. [00:30:41] Speaker 01: I think it should be limited to a command signal to change clock speed. [00:30:44] Speaker 01: That's what they can't have, command signal to change clock speed. [00:30:47] Speaker 01: So the question is, does that affect anything? [00:30:50] Speaker 06: I don't believe so, Your Honor. [00:30:51] Speaker 01: I believe that there should be an affirmance without... I know, but if they stand up and say it does because there's a stipulation, you realize I got to send you back, whether you're right or you're wrong, because I don't have all the data on how you operate. [00:31:01] Speaker 06: Let me just point you to one thing, Your Honor. [00:31:03] Speaker 06: Perhaps that will help. [00:31:04] Speaker 06: If you look at page 20 of Appellant's opening brief, under heading E, this is page 20, where they describe [00:31:16] Speaker 06: what they think the accused products. [00:31:18] Speaker 06: Now we don't necessarily agree with every word that they have in here, but if you go down six lines into that paragraph, it talks, it says this oscillator referring to the accused devices is not a free running oscillator as described in column 17 of the 336 patent, however. [00:31:35] Speaker 06: And it goes on to say PLL control circuitry is attached to the oscillator. [00:31:40] Speaker 06: This control circuitry serves two purposes. [00:31:43] Speaker 06: First, when desired, [00:31:44] Speaker 06: and maintains the clock signal at a relatively fixed frequency. [00:31:48] Speaker 06: It also can be programmed to cause the ring oscillator to generate a faster or slower clock signal, e.g., a program executing on the CPU can cause the frequency of the clock signal to increase or decrease as needed. [00:31:59] Speaker 06: So I take it from here, I think it's fairly clear, that they're conceding the fact that this control circuitry, which is what the control signals would emanate from, [00:32:08] Speaker 06: fixes the speed of the clock, or at least impacts the speed of the clock. [00:32:11] Speaker 06: And as a result, there doesn't seem to be a disagreement on this point before this court. [00:32:16] Speaker 06: So we would say that there would be no remand necessary if there was that adjustment to the court's claim construction, which we think was intended by the court in any respect. [00:32:26] Speaker 02: When you think when they are talking about a clock or maintaining the clock signal at a relatively fixed frequency, do you think they're referring to the ring oscillator? [00:32:37] Speaker 06: Yes, Your Honor. [00:32:39] Speaker 06: That's one of the reasons why they lost in front of the International Trade Commission is that there were signals that were controlling this. [00:32:46] Speaker 06: And just to step back to where the panel began with their discussion with appellants, the invention is a variable clock that varies according to operational characteristics or process characteristics. [00:32:59] Speaker 06: That's not what's happening with these devices. [00:33:01] Speaker 06: These things are being controlled by control signals that are on the chip and by a fixed frequency crystal off. [00:33:07] Speaker 06: There's no variability based upon [00:33:09] Speaker 06: operational characteristics or process characteristics. [00:33:12] Speaker 06: They're two completely different things. [00:33:17] Speaker 06: So, Your Honor, I'm way over my time. [00:33:19] Speaker 01: Oh, thank you. [00:33:20] Speaker 01: You helped us understand this better, so I appreciate it. [00:33:22] Speaker 01: OK, you have some rebuttal time, Mr. Cecil. [00:33:26] Speaker 01: Thank you. [00:33:26] Speaker 01: Give him three minutes. [00:33:30] Speaker 03: If I could, there were two questions, Your Honor, that I thought, or Your Honors, that I thought came up that I'd like to address quickly. [00:33:36] Speaker 03: And there might be one more that you all have for me. [00:33:39] Speaker 03: First, there was a question about what was common among the various disclaimers or what disclaimers could be clear. [00:33:46] Speaker 03: And Council for Epolize said that there was always a disclaimer of a control signal. [00:33:51] Speaker 03: And as Your Honor noticed, that there's specific types of control signals that there's an issue of disclaimer around. [00:33:57] Speaker 03: It's not broad control signals. [00:33:59] Speaker 03: But also, you mentioned- So wait. [00:34:00] Speaker 01: So if I were to limit the disclaimer to a command signal to change clock speed and say, that's all you disclaimed, [00:34:06] Speaker 01: Are you saying then the stipulation is no longer binding because, I mean, don't be technical and say just because if I change a single word of a term, even if everybody agrees on how the device operates, if you're going to tell me I have to remand, tell me there's a reason. [00:34:20] Speaker 01: That change materially is different because of the way the accused device operates. [00:34:26] Speaker 03: So the issue is whether you say it's required to change the frequency. [00:34:34] Speaker 03: If a control signal is required, then we think that we still have a successful infringement case, because there's variability within the ring oscillator. [00:34:47] Speaker 03: And so it's not necessary to have a control signal to change frequency. [00:34:50] Speaker 03: So that's why we feel that there's still a viable infringement case if you were to change that construction. [00:34:54] Speaker 02: What if it does not rely on a command signal, or does not rely on an input to change the oscillator's frequency? [00:35:05] Speaker 03: does not rely on a command signal. [00:35:08] Speaker 03: I believe that we would still feel that that's a viable infringement case, Your Honor. [00:35:14] Speaker 04: It seems to me you'd disclaim command input, not control signals. [00:35:19] Speaker 03: We agree with that, Your Honor. [00:35:22] Speaker 03: We were very specific of what we said with respect to command signals. [00:35:25] Speaker 03: And I think other courts recognize that. [00:35:27] Speaker 03: Similarly, I think that other courts, when they were talking about McGarr, each one of the prior constructions talked about how the external [00:35:35] Speaker 03: crystal was used to generate. [00:35:36] Speaker 03: And this particular instance, we're a little bit different. [00:35:40] Speaker 03: And this goes back to Judge Moore's question. [00:35:44] Speaker 03: And you said, well, what's wrong with the current construction? [00:35:47] Speaker 03: Why did they say that there's an issue when you're fixed by an external crystal? [00:35:52] Speaker 03: That's the difference here. [00:35:53] Speaker 03: Now we're talking about our processor's frequency being fixed by an external crystal, which means that it [00:36:02] Speaker 03: that it can't be adjusted or regulated by an external crystal. [00:36:06] Speaker 03: And that's an issue for us, because there is some adjustment or regulation that goes on as a result of the external crystal. [00:36:13] Speaker 03: In the prior constructions that we were facing, each time there was a discussion of an external crystal, it was used to generate a clock signal, or it was used to generate the signal used to clock a CPU. [00:36:24] Speaker 03: Or again, in the Eastern District of Texas, it was an external crystal clock generated. [00:36:29] Speaker 01: I know, but the problem is, I feel like, [00:36:33] Speaker 01: The disclaimer that you said is undoubtedly broader than the disclaimer than you needed to say. [00:36:41] Speaker 01: But nonetheless, our law is really clear. [00:36:42] Speaker 01: It's what you tell an ordinarily skilled artist. [00:36:46] Speaker 01: It's not what I think you needed. [00:36:47] Speaker 01: It's not like, oh, well, let me only have them give up what I think they needed to give up. [00:36:51] Speaker 01: I agree with you. [00:36:52] Speaker 01: You did not need to give up what has been interpreted you having given up. [00:36:57] Speaker 01: But I'm not sure I agree with you that you didn't nonetheless give it up. [00:37:01] Speaker 01: So it's still that 2103. [00:37:03] Speaker 01: 2103 doesn't say requires an external crystal to fix the signal going into the clock or going into the CPU or whatever. [00:37:13] Speaker 01: You make a much broader statement. [00:37:16] Speaker 01: You say we're not fixed frequency and we don't require an external crystal. [00:37:21] Speaker 01: Full stop. [00:37:22] Speaker 01: You say two things. [00:37:23] Speaker 01: We're not fixed frequency and we don't require an external crystal. [00:37:28] Speaker 01: You didn't need to. [00:37:29] Speaker 01: You definitely didn't need to. [00:37:30] Speaker 01: You're right about everything you say about how you operate and what Magmar discloses. [00:37:36] Speaker 01: And in other points in the spec, you don't go as far. [00:37:38] Speaker 01: I mean, in the prosecution history, you have a lot of variability about what you say. [00:37:42] Speaker 01: But here is your culmination of why you're distinct from Magmar, Magar. [00:37:47] Speaker 03: And Your Honor, that leads me back to the point that because the prosecution history is an ongoing conversation between the applicant and the patent office, [00:37:56] Speaker 01: You know how many times I have a lot of people come in and they say a bunch of confusing stuff when they stand at the podium. [00:38:01] Speaker 01: And then at the end, they realize that I don't get what they're saying. [00:38:05] Speaker 01: They say, okay, let me be clear, your honor. [00:38:07] Speaker 01: Let me sum it all up for you. [00:38:11] Speaker 01: That's what you did here. [00:38:12] Speaker 01: So how do I say, okay, well, I'm not going to hold you to the sum it all up sentence. [00:38:16] Speaker 01: I'm going to dig through the confusing stuff from beforehand. [00:38:21] Speaker 03: I think every so often when you make those summary statements, Your Honor, you're going to abstract a few things necessarily, because I can't get into the detail of what I say. [00:38:29] Speaker 03: The prosecution disclaimer that any court finds has to be true to what the applicant said. [00:38:34] Speaker 03: And in many points, they're going to be very detailed as to what they say. [00:38:37] Speaker 03: But at the end, they're going to make some kind of summary statement which encapsulates everything. [00:38:41] Speaker 01: Well, hopefully this is a lesson to future prosecutors, isn't it? [00:38:45] Speaker 01: Because whether you win or lose, you got raked over the coals and your client paid a lot of money because of [00:38:50] Speaker 01: really broad, unbounded statements in prosecution history that were made by some attorney along the way that wasn't you, thank goodness, right? [00:38:58] Speaker 03: I'm glad it wasn't me, Your Honor. [00:39:03] Speaker 01: All right. [00:39:03] Speaker 01: Well, if you have anything else, I don't want you to end. [00:39:05] Speaker 01: I feel like I just made you end on a really bad note. [00:39:07] Speaker 01: So do you want to have a last sentence? [00:39:10] Speaker 03: Your Honor, regardless of whatever you do find, we do think- Sum it up broadly. [00:39:17] Speaker 03: We do think that a careful inspection of the district court's construction will show that what the district court found is much broader than what was actually said by the applicant. [00:39:26] Speaker 03: We did not say that the frequency was not fixed by an external crystal, and we did not disclaim all control signals. [00:39:33] Speaker 02: And just to confirm, if somehow there was an adjustment in the disclaimer that indicate that proclaims that at least part of the disclaimer is [00:39:47] Speaker 02: an oscillator whose frequency does not rely on an external crystal or external clock generator as an input, would you still say that we need to remand? [00:40:00] Speaker 03: I think if it did not rely on it, I think we would still feel that there's a need to remand. [00:40:07] Speaker 03: The word rely, I think, allows us to maintain an infringement case this way. [00:40:11] Speaker 01: Okay, I thank both counsel for the argument and I appreciate you being willing to answer my long-winded questions. [00:40:18] Speaker 01: Thank you for helping me understand the technology.