[00:00:00] Speaker 00:
7-5 Thomas versus Pippen

[00:00:58] Speaker 00:
Mr. Thomas, we're ready when you are.

[00:01:34] Speaker 01:
Good morning.

[00:01:35] Speaker 01:
May it please the court?

[00:01:35] Speaker 01:
My name is Doug Thomas, and I'm representing the appellants.

[00:01:39] Speaker 01:
This appeal is a consolidated interference proceeding initiated by Pippin against Thomas.

[00:01:46] Speaker 01:
There's two involved Thomas patents and two involved Thomas patent applications.

[00:01:53] Speaker 01:
And there's a single Pippin application with a single claim.

[00:01:59] Speaker 01:
One issue is whether the board erred as a matter of law.

[00:02:04] Speaker 01:
in presuming the Thomas patents, obvious from the count, which is Pippen's claim.

[00:02:12] Speaker 01:
Section 282 of the Patent Act specifically states, a patent shall be presumed valid.

[00:02:18] Speaker 01:
Thomas has two patents.

[00:02:21] Speaker 01:
They were presumed invalid by the board.

[00:02:27] Speaker 01:
We're submitting that that is an error of law.

[00:02:31] Speaker 03:
The Supreme Court, do you agree that the position, your position on that, would run counter to our precedence, either what we've said or what we've held?

[00:02:48] Speaker 03:
Which doesn't mean that it's wrong.

[00:02:50] Speaker 01:
I'm assuming that you're referring to, Your Honor, Brunning-Burce's heroes.

[00:02:54] Speaker 03:
Well, there have been about six or seven

[00:02:56] Speaker 03:
cases that have been discussed on this issue in the briefs.

[00:03:00] Speaker 03:
That's one of them.

[00:03:02] Speaker 03:
Is it the Apotex footnote that makes the general point?

[00:03:08] Speaker 03:
I guess I want to know how you read the precedents, whether we have done something, held something, stated something that your position would be inconsistent with.

[00:03:25] Speaker 01:
I believe my position is consistent with the Bruining case.

[00:03:33] Speaker 01:
The Apatox footnote is slightly broader, but that footnote is just pointing to the Bruining decision and has no authority on its own.

[00:03:47] Speaker 01:
In the Bruining decision, it was also an interference case, and there was a validity challenge.

[00:03:55] Speaker 01:
And in that case, the language sometimes gets a little confusing.

[00:04:03] Speaker 01:
But the holding was specifically this.

[00:04:09] Speaker 01:
Quote, this court holds, during an interference proceeding involving a patent issued from an application that was co-opending with the interfering application, the appropriate standard of proof for validity is the providence

[00:04:25] Speaker 01:
of evidence standard.

[00:04:29] Speaker 01:
So if we look also at the Supreme Court case, I4I in Microsoft, that case does go into some detail about distinguishing

[00:04:40] Speaker 01:
the burden of proof versus the standard of proof, specifically in the context of 282.

[00:04:45] Speaker 03:
I think I'm remembering right, but tell me if I'm wrong.

[00:04:47] Speaker 03:
I4I doesn't discuss interference proceedings or any other intra-PTO proceedings, right?

[00:04:54] Speaker 01:
Correct.

[00:04:55] Speaker 01:
That was a district court.

[00:04:58] Speaker 01:
But that battle was about not whether this burden of proof or the presumption applied.

[00:05:05] Speaker 01:
It's what the standard of proof should be.

[00:05:11] Speaker 01:
in our position today.

[00:05:13] Speaker 03:
And just one other point.

[00:05:16] Speaker 03:
On pruning, am I remembering right, the party that actually had the issued patents there was the senior party, not the junior party?

[00:05:24] Speaker 03:
The junior party was the attacking party.

[00:05:27] Speaker 03:
Right.

[00:05:27] Speaker 03:
So that wouldn't be, I mean, that is in some sense a mirror image of this, not sort of squarely on point in what it actually involved.

[00:05:37] Speaker 01:
So our position is that the Section 282 specifically says that the patent shall be presumed valid.

[00:05:48] Speaker 01:
It doesn't go into detail about what the standard of proof should be, and that's what most of the cases deal with.

[00:05:54] Speaker 02:
But every time the Patent Office accepts one of these post-grant processes, whether it's

[00:06:04] Speaker 02:
ex parte re-exam, inter parte re-exam, IPRs, CBMs, or interferences, that presumption evaporates.

[00:06:11] Speaker 02:
Once you get through the doors of the PTO, for better or worse, right or wrong, all of the proceedings treated

[00:06:21] Speaker 02:
the same way.

[00:06:22] Speaker 02:
And so what you're asking for is some special role in interferences.

[00:06:27] Speaker 02:
You might say, well, because they're adversarial.

[00:06:29] Speaker 02:
Well, the same is not true for all IBMs and IPPRs and CBMs and everything else.

[00:06:36] Speaker 02:
I mean, I think that the rule that you're asking for would be at odds with the application the PTO has applied in all of those contexts.

[00:06:45] Speaker 02:
It would be a big change.

[00:06:47] Speaker 01:
Well, those cases aren't our case.

[00:06:50] Speaker 01:
And there's other statutory language to be dealt with in resolving that question.

[00:06:55] Speaker 01:
In this case, there's no additional statutory language.

[00:06:59] Speaker 01:
There is no exception for interferences.

[00:07:02] Speaker 01:
They are a multi-party dispute.

[00:07:06] Speaker 01:
And they are considered to be in the trial division, historically, of the Patent Office.

[00:07:15] Speaker 01:
So I don't see any reason for saying that there is no presumption, just because the trial proceeding is held before the Patent Office.

[00:07:30] Speaker 01:
In the case of Inrei Etter, that was a re-examination,

[00:07:35] Speaker 01:
and there is a decision there that the standard of proof should be preponderance.

[00:07:47] Speaker 01:
That case even doesn't say that there's no presumption.

[00:07:51] Speaker 01:
In that case, the challenger to validity always had the burden.

[00:07:57] Speaker 01:
And that's true on all the cases that are cited.

[00:08:00] Speaker 03:
Can I ask you about a different aspect of your argument?

[00:08:03] Speaker 03:
And that is the argument that two pieces of art which really weren't relevantly prior were considered by the board as prior art.

[00:08:18] Speaker 03:
This is Arai and Atkinson.

[00:08:20] Speaker 03:
This is, I guess, an argument that goes to six of your claims under the 190 and two of your claims under the 798.

[00:08:29] Speaker 03:
and the board relied on combinations that include Arai and Atkinson, which post-date your 1994 priority date.

[00:08:40] Speaker 03:
If I have that right, and tell me if I don't, why is that, assuming that's an error, not a harmless error?

[00:08:52] Speaker 01:
Yes, Your Honor.

[00:08:54] Speaker 01:
Generally have it correct.

[00:08:56] Speaker 01:
It can't be harmless to rely on

[00:08:58] Speaker 01:
Art is not prior art.

[00:09:00] Speaker 01:
That seems to be fundamental.

[00:09:02] Speaker 03:
Well, unless there's other art that does the same thing, and it's quite evident that the same conclusion would be drawn even without considering our argument.

[00:09:13] Speaker 01:
Well, we have to deal with the confines of the decision, I would think.

[00:09:19] Speaker 01:
Whether there's other art out there, we can't speculate.

[00:09:26] Speaker 01:
In the decision,

[00:09:29] Speaker 01:
opposing counsel in its papers has tried to say that there are, well, let me back up for a second.

[00:09:39] Speaker 01:
In deciding those motions, there were four references considered.

[00:09:45] Speaker 01:
Yamaka and Kanova are prior art, and the other two are not prior art, Ari and Atkinson.

[00:09:54] Speaker 01:
Those are the only four references.

[00:09:56] Speaker 01:
So those should be the only references in play.

[00:09:59] Speaker 01:
Opposing counsel is trying to pull in references that were discussed in other motions, albeit in the same decision.

[00:10:09] Speaker 01:
But even doing that, it would not be successful to show the limitations of the associated Thomas claims.

[00:10:19] Speaker 01:
So with respect to those motions, the presumption argument would be applicable as one reason why there was a legal defect on those motions.

[00:10:30] Speaker 01:
Secondly, the decision is rather weak in its obviousness analysis.

[00:10:38] Speaker 01:
It's not really clear how they are combining the references with the count.

[00:10:44] Speaker 01:
So this is an obviousness analysis, and there should be some articulated reasoning.

[00:10:49] Speaker 01:
The count is actually essentially the primary reference.

[00:10:53] Speaker 01:
And these other four references are the secondary references, two of which are not.

[00:11:01] Speaker 01:
The board never really gave us a good understanding of what they were doing.

[00:11:07] Speaker 01:
Third, if we look at the two remaining references in our prior art, they don't have the associated claim language which deals with the fan speed control based on a power management policy and use.

[00:11:25] Speaker 01:
Pippin's expert even agrees that

[00:11:29] Speaker 01:
The central body examination unit considered the same art and also agreed.

[00:11:35] Speaker 01:
And beyond that, there's even additional language in the claims that the board didn't even comment on.

[00:11:43] Speaker 01:
And that's that in addition to the fans being based on the power management policies, there is additional language for citing that the different power management policies use different conditions.

[00:11:58] Speaker 01:
based on temperature of the processor.

[00:12:01] Speaker 01:
So there's a lot of defects with respect to those motions.

[00:12:05] Speaker 01:
As to the reliance on the other references somehow being used that weren't discussed, the two references that opposing counsel identified, DIN and SWAMI, do deal with fans.

[00:12:25] Speaker 01:
And there is some sort of fan speed control

[00:12:28] Speaker 01:
But it's not of the type recited in the claim.

[00:12:31] Speaker 01:
It is not based on a power management policy.

[00:12:34] Speaker 01:
And it is not based on, it has no notion of different conditions based on different temperatures.

[00:12:47] Speaker 00:
Mr. Thomas, you're starting to get into your rebuttal time.

[00:12:51] Speaker 01:
Do you want to give it a rest?

[00:12:54] Speaker 01:
Okay, I'll hold there.

[00:12:55] Speaker ?:
Thank you.

[00:13:03] Speaker 00:
Good morning and may it please the court, Mark Fleming with my colleague Brittany Amati on behalf of the appellee Jack Pippen and the real party in interest which is Intel.

[00:13:12] Speaker 00:
The board's decision is more than supported by substantial evidence and Mr. Thomas has not shown any reason for reversal.

[00:13:18] Speaker 00:
I will touch on the two points that Mr. Thomas discussed in his argument, but I'm of course happy to address any issues the Court would like to talk about.

[00:13:23] Speaker 03:
Can you specifically address the apparent reliance on two pieces of art that aren't prior art?

[00:13:29] Speaker 00:
Of course, Your Honor.

[00:13:31] Speaker 00:
We invoked those conditionally in the event that the Board agreed with our position that Mr. Thomas was not entitled to the 1994 benefit date that he was originally granted.

[00:13:40] Speaker 00:
The Board took no position on that.

[00:13:43] Speaker 00:
So we did not need to rely on those two references for the various claims that are in the count.

[00:13:50] Speaker 00:
But the board certainly did discuss them.

[00:13:53] Speaker 00:
So we think that is the epitome of harmless error, Judge Toronto, because one could take one's blue pencil and strike out all references to a Ryan Atkinson in the opinion, and the outcome would be exactly the same.

[00:14:03] Speaker 00:
How do we know that?

[00:14:05] Speaker 00:
The board relies on Yamaki and Canova and discusses them specifically.

[00:14:10] Speaker 00:
If one looks at

[00:14:12] Speaker 00:
the opinion and looks at the discussion where they first, where Arai and Atkinson first come up, it's on page 46 of the appendix, but if you look before that on page 45, there's a discussion of Yamaki and Kanova first, then after that the discussion of Arai and Atkinson, and then the concluding paragraph on 47 starting at line 16, based on these teachings, we conclude it would have been obvious to a person having ordinary skill to configure a computer system to utilize

[00:14:42] Speaker 00:
a first power management policy, citing then after that at line 21, Yamaki and Kanova first, and then Orion Atkinson.

[00:14:50] Speaker 03:
Do Yamaki and Kanova teach anything about taking temperature into account differently, depending on whether the computer is plugged into the wall or into a battery?

[00:15:01] Speaker 00:
They certainly do talk about having a different power management policy.

[00:15:06] Speaker 03:
Power management.

[00:15:07] Speaker 03:
Taking temperature to account?

[00:15:09] Speaker 00:
The count itself talks about having a temperature threshold.

[00:15:12] Speaker 00:
And so when you combine the two power management policies of Yamaki and Canova based on whether you're plugged into the wall or whether you're using a battery with the temperature thresholds that are used in the count, that is what the board relied on.

[00:15:26] Speaker 00:
And there's certainly no argument from Mr. Thomas that it would have been beyond the abilities of one of ordinary skill in the art to take the count.

[00:15:34] Speaker 00:
and improve it using the two different power management policies depending on the power source and use them for temperature.

[00:15:41] Speaker 03:
Beyond the skill of a skilled artisan only begins the inquiry.

[00:15:45] Speaker 03:
This is the question that remains, whether the skilled artisan would have a motivation to do what the artisan would be skilled at doing if sufficiently motivated.

[00:15:54] Speaker 00:
Certainly, Your Honor.

[00:15:55] Speaker 00:
And the board does tell us what the motivation is.

[00:15:57] Speaker 00:
It's the motivation to count itself as serving, which was to reduce heat generation, to maximize performance speed.

[00:16:04] Speaker 00:
And the board specifically states that that is the reason for combining these.

[00:16:07] Speaker 00:
And let's remember, of course, and this goes to some extent to Mr. Thomas's first issue, that the burden is on him as the party trying to change the outcome once the interference is declared.

[00:16:18] Speaker 00:
And so there was incumbent upon him to show some evidence that a skilled artisan would not have been able to take these components in a very crowded field with a lot of prior art references

[00:16:29] Speaker 00:
The skilled artisan is not a high school student.

[00:16:31] Speaker 00:
It's someone with an advanced degree in electrical engineering and three to seven years of practical experience in this field.

[00:16:37] Speaker 00:
And take these very closely related elements and components, all of which are serving the same goals, which is to avoid overheating of computer components, and put them together to produce the Thomas claims improving the count to do so.

[00:16:51] Speaker 00:
And again, the board was well within its authority and is eminently supported by substantial evidence in reaching this conclusion based on Yamaki and Canova.

[00:17:00] Speaker 00:
And even if the court were to conclude that it should not have discussed Arai and Atkinson in the context of this opinion, I would submit it would be highly wasteful and the outcome would be foreordained to send it back to the board and say, all right, please reissue your opinion just without mentioning those two references.

[00:17:16] Speaker 03:
Well, presumably we wouldn't say that.

[00:17:18] Speaker 03:
We would say, we really can't tell because we didn't say what your finding would be if you didn't consider those things.

[00:17:26] Speaker 03:
We wouldn't do, we're not an opinion editing agency.

[00:17:31] Speaker 00:
Exactly right, Your Honor.

[00:17:32] Speaker 00:
And I think it's clear in reading this opinion that Yamaki, Canova, Arai, and Atkinson were all serving the same purpose in this opinion.

[00:17:40] Speaker 00:
Arai and Atkinson are never cited

[00:17:42] Speaker 00:
in any portion of the opinion.

[00:17:44] Speaker 00:
I mean, it's all just pages 47, 48, and 49.

[00:17:48] Speaker 00:
Every time Orion Atkinson are named, Yamaki and Canova are listed first in the same stream sites.

[00:17:55] Speaker 00:
And the discussion of the teachings on which the board is relying are all found in Yamaki and Canova.

[00:18:03] Speaker 00:
To go to the burden point just briefly, I think this court's precedent is

[00:18:09] Speaker 00:
clear and has stated many times that Section 282 does not apply in this context.

[00:18:14] Speaker 00:
It's not just Bruning and Apotex.

[00:18:16] Speaker 00:
As recently as last September in Dome Patent versus Lee, which is 799 Fed 3rd, 1372, this court was addressing the context of a re-examination that was being appealed to a district court under Section 145.

[00:18:30] Speaker 00:
And the court said that because the action before the district court did not involve a defense to a charge of infringement of an issued patent,

[00:18:37] Speaker 00:
Section 282 does not apply in this instance.

[00:18:40] Speaker 00:
And that's perfectly consistent with I4I, which itself was an infringement case.

[00:18:44] Speaker 00:
Section 282 itself appears in a chapter of the US Code entitled Remedies for Infringement of Patent.

[00:18:51] Speaker 00:
So we would respectfully submit that the operative governing provisions here are not Section 282, but rather the board's rules.

[00:18:58] Speaker 00:
They were properly promulgated under the board's authority.

[00:19:00] Speaker 00:
Mr. Thomas has not challenged

[00:19:02] Speaker 00:
the authority to promulgate the rules or their application in this case.

[00:19:05] Speaker 00:
So we would submit that the board quite properly placed the burden on Mr. Thomas to show, given that he conceded priority, that any of his claims did not correspond to the count or that there was some error in the declaration of the interference.

[00:19:21] Speaker 00:
And we believe the board correctly and it was well within its authority, based on substantial evidence, to find that he failed to carry that burden.

[00:19:29] Speaker 00:
Unless the court has further questions, we would respectfully submit that the judgment should be affirmed.

[00:19:34] Speaker 00:
Thank you.

[00:19:34] Speaker 00:
Thank you, Your Honor.

[00:19:49] Speaker 01:
The dome patent decision mentioned by opposing counsel is similar to in-rate edder in that

[00:19:59] Speaker 01:
It was a re-examination context.

[00:20:02] Speaker 01:
And what I was trying to say before applies in this case.

[00:20:08] Speaker 01:
There's a little bit of misuse of language in our opinion.

[00:20:13] Speaker 01:
That decision is merely saying that the clear and convincing evidence standard of proof does not apply in re-examination.

[00:20:23] Speaker 01:
It is not saying that a patent can be presumed invalid.

[00:20:28] Speaker 01:
the challenger has the burden.

[00:20:37] Speaker 01:
There were also motions filed in this case for no interference in fact, which if you look at the underlying patents and applications and opposing counsels indicated as crowded art area, it's really hard to imagine why this is even interference.

[00:20:57] Speaker 01:
And the reason is because

[00:20:59] Speaker 01:
Crafty opposing counsel wants to take advantage of the burden of proof being applied to me to show that our patents are in fact valid.

[00:21:11] Speaker 01:
I've never seen a context in that scenario that puts the burden on the patent owner.

[00:21:20] Speaker 01:
As for the interference in fact motions, there were four of them and they were trying to

[00:21:28] Speaker 01:
showed that the two-way obviousness test for the interferences could not be met.

[00:21:35] Speaker 01:
And in doing so, it was argued that the Pippin claim was patentable over the Thomas claims.

[00:21:46] Speaker 01:
And in resolving those motions, the test does not permit

[00:21:56] Speaker 01:
looking to the specification.

[00:21:58] Speaker 01:
It's a claim comparison.

[00:22:02] Speaker 01:
But the board, in resolving those motions, looked to the Thomas specification.

[00:22:09] Speaker 01:
And they quoted a sentence from the specification, namely from the background.

[00:22:15] Speaker 01:
They relied on that.

[00:22:17] Speaker 01:
And they relied on the second thing.

[00:22:19] Speaker 03:
They relied on... Can I just say?

[00:22:20] Speaker 03:
Yes.

[00:22:21] Speaker 03:
The sentence... Am I remembering right?

[00:22:23] Speaker 03:
The sentence that was relied on from the specification.

[00:22:27] Speaker 03:
was a sentence about what is well known in the prior art.

[00:22:30] Speaker 03:
That is, the board didn't rely on a sentence from the spec, from the Thomas spec, for what it teaches, but rather as evidence of what is otherwise known in the prior art.

[00:22:41] Speaker 03:
And the otherwise known in the prior art, that's an acceptable source of the legal analysis, right?

[00:22:50] Speaker 01:
They didn't specify that they were doing that.

[00:22:54] Speaker 03:
I thought the sentence, this term says what's well-known.

[00:22:57] Speaker 01:
Yes, I'll read the sentence for you.

[00:23:01] Speaker 01:
Thomas's quote, temperature-sensing circuitry is well-known and therefore need not further describe, end quote.

[00:23:15] Speaker 01:
So that sentence is saying the temperature-sensing circuitry is well-known and it is.

[00:23:23] Speaker 01:
But the Pippin claim is not, well, first of all, the Thomas claim, which is the beginning of the analysis.

[00:23:33] Speaker 01:
It's a claim by claim.

[00:23:35] Speaker 01:
So opposing councils are trying to tell you that they can look to this for temperature sensing circuitry.

[00:23:44] Speaker 01:
But our claim doesn't recite temperature sensing circuitry.

[00:23:50] Speaker 01:
So they'll also tell you that

[00:23:52] Speaker 01:
Hey, we need to look to the specification for interpreting the language of the claim.

[00:23:57] Speaker 01:
But our claims is temperature monitoring.

[00:24:00] Speaker 01:
It's a method.

[00:24:02] Speaker 01:
So there's no reason to be looking to the specification.

[00:24:06] Speaker 01:
There's nothing unclear.

[00:24:07] Speaker 01:
There's no interpretation needed.

[00:24:09] Speaker 01:
Final thought since we're exceeded time?

[00:24:12] Speaker 01:
The final thought is the second aspect that the board looked to for the programmable thermal sensor of PIPIN was the testimony of

[00:24:21] Speaker 01:
our expert and we pointed out in our reply brief that that testimony is again associated with the discussion of the Thomas specification which is not permitted.

[00:24:41] Speaker 01:
Thank you.

[00:24:41] Speaker 01:
I want to thank both parties and the case is submitted.

[00:24:44] Speaker 01:
Thank you your honor.