[00:00:32] Speaker 03:
I think we're ready.

[00:00:33] Speaker 03:
Please proceed.

[00:00:35] Speaker 01:
Good morning again, Your Honors.

[00:00:36] Speaker 01:
There are four issues I would like to touch.

[00:00:38] Speaker 01:
There's a lot in the briefing, but I'm going to try to get through some of the key issues that I do.

[00:00:43] Speaker 01:
These issues are the means plus function language, element in claim 14, the construction of streaming, the issue related to priority, and then finally, the lack of analysis related to two claims on two grounds.

[00:00:57] Speaker 01:
For the means plus function element found in claim 14, it was error for the board

[00:01:01] Speaker 01:
to make its determination that this claim is invalid.

[00:01:04] Speaker 01:
First, the CFRs, 37 CFR 42.104, sub B, sub 3, required petitioners in the petition to provide the construction for this means plus function claim element.

[00:01:17] Speaker 01:
They did not.

[00:01:18] Speaker 01:
And then when that issue was, so the petition should have been denied at the outset for their failure to comply with the requirements.

[00:01:24] Speaker 01:
Then the board compounded this error by once this issue was raised, the petitioners for the first time in their reply brief raised the issue

[00:01:31] Speaker 01:
that either this was not means plus function, which was an argument rightfully rejected because the limitation is means for recharging the internal battery.

[00:01:39] Speaker 01:
It is a quintessential means plus function limitation.

[00:01:42] Speaker 01:
Or a construction under means plus function where it was what it is and then how that was found allegedly in the references.

[00:01:50] Speaker 01:
And what the board acknowledged in its opinion on page 50, that this was new argument raised for the first time in the reply brief.

[00:01:58] Speaker 03:
The regulations were- Why do I think that somewhere maybe Red Brief cited it that there was an oral reply or an opportunity for you to have an oral reply and that you were asked that and you had no response?

[00:02:10] Speaker 03:
I may be confusing it with another case, but I think that's what somebody said or happened here.

[00:02:15] Speaker 01:
Am I misleading it?

[00:02:17] Speaker 01:
No, you are correct.

[00:02:18] Speaker 01:
That's a mischaracterization of the record, Your Honor.

[00:02:21] Speaker 01:
We had asked for a reply, a surreply, on this issue.

[00:02:25] Speaker 01:
What the board said we got to do was

[00:02:27] Speaker 01:
file a five page brief identifying the new arguments, and that was it.

[00:02:32] Speaker 01:
And then they got to respond.

[00:02:33] Speaker 01:
And then we got a surreply on the priority issue, because the board agreed we bore the burden of proving priorities, so we got the last word on that issue.

[00:02:42] Speaker 01:
But we did not get a surreply as we had requested.

[00:02:45] Speaker 03:
Am I wrong?

[00:02:46] Speaker 03:
I mean, typically, whether they provide a construction or not, the board is free to come up with its own construction.

[00:02:52] Speaker 03:
notwithstanding whatever the petitioner says, right?

[00:02:55] Speaker 01:
That may be.

[00:02:56] Speaker 01:
But in this case, isn't that right?

[00:02:58] Speaker 01:
But they're not allowed then to make the determination in the analysis that the petitioner should have done as to where that under that construction is found in the reference.

[00:03:07] Speaker 01:
They stepped into the shoes of the petitioner.

[00:03:09] Speaker 03:
I'm sorry, but when you say they, are you talking about the board?

[00:03:12] Speaker 01:
Yes, the board stepped in the shoes of the petitioner and said, we're going to do your homework for you.

[00:03:16] Speaker 01:
We're going to offer construction, and then we're going to do the analysis of where the reference is allegedly disclosed.

[00:03:22] Speaker 01:
That construction, that was improper.

[00:03:24] Speaker 01:
That was an abuse of discretion.

[00:03:24] Speaker 03:
Well, I thought you just told me, though, that they are free to do their own, come up with a new and different construction on their own.

[00:03:32] Speaker 03:
And when they do that, by necessity, they need to explain where the construction came from?

[00:03:39] Speaker 01:
Totally fine for them to come up with where the construction came from.

[00:03:42] Speaker 01:
What they can't do is the second step, is then saying, OK, we now have this construction.

[00:03:46] Speaker 01:
Here in the references is where to stop.

[00:03:49] Speaker 01:
That is what they cannot do without argument being presented by either side.

[00:03:53] Speaker 01:
That did not occur here.

[00:03:55] Speaker 01:
And that was fundamental error.

[00:03:57] Speaker 01:
And because, again, the reply brief

[00:04:00] Speaker 01:
should have been stricken.

[00:04:01] Speaker 01:
The office patent trial guide.

[00:04:03] Speaker 02:
So I understand your argument that Samsung didn't do what it was obligated to do at the outset.

[00:04:10] Speaker 02:
But part of what I'm struggling with is the board seemed to have virtually adopted your proposed construction and the structures it pointed to are the very structures you pointed to in your patent owner response.

[00:04:25] Speaker 02:
So while Samsung had an obligation, no doubt about it.

[00:04:29] Speaker 02:
Nonetheless, what the board did, the board didn't come up with these structures on their own.

[00:04:33] Speaker 02:
You're saying the board stepped into the shoes of Samsung, looked in the prior art, and came up with the structures, but I thought it adopted the ones you suggested.

[00:04:41] Speaker 01:
We did not offer construction art.

[00:04:42] Speaker 01:
It wasn't our burden.

[00:04:44] Speaker 01:
We didn't offer construction.

[00:04:45] Speaker 01:
They varied the burden of proof.

[00:04:46] Speaker 01:
We didn't offer construction.

[00:04:47] Speaker 01:
We said they failed to comply with the regulations, and therefore it should be dismissed.

[00:04:53] Speaker 01:
The board went on its own and curated its own construction based on no argument.

[00:04:56] Speaker 01:
It rejected petitioners and then made its own argument.

[00:04:59] Speaker 01:
We did not offer one.

[00:05:02] Speaker 01:
And so because of that, the reply brief in its entirety should have been struck.

[00:05:05] Speaker 01:
It was an abuse of discretion to not implement their very regulations, which is found in Appendix 5949.

[00:05:12] Speaker 01:
Any new argument in a reply brief, then the entire reply and supporting exhibits is stricken from the record.

[00:05:20] Speaker 01:
That's what should have happened.

[00:05:21] Speaker 01:
And without that, there was no evidence

[00:05:23] Speaker 01:
to go forward on this claim, we would ask this court reverse.

[00:05:26] Speaker 02:
What is the standard of review that I need to review this sort of procedural decision to move forward in the absence of Samsung having done everything perfectly?

[00:05:37] Speaker 02:
What is the standard of review I use to evaluate whether the board was permitted to do that?

[00:05:47] Speaker 01:
So I guess I'm a little unclear of whether they're permitted or not.

[00:05:49] Speaker 01:
The regulations are what the regulations are.

[00:05:53] Speaker 03:
But you're challenging here their denial of your motion to strike.

[00:05:56] Speaker 03:
Am I right about that?

[00:05:57] Speaker 01:
Correct.

[00:05:58] Speaker 03:
And what is the standard of reprimand?

[00:06:00] Speaker 01:
So I believe it's abuse of discretion.

[00:06:01] Speaker 01:
I think even under that deferential standard, they fail there.

[00:06:05] Speaker 01:
They admit in the brief, in their final decision, they admit this was new argument.

[00:06:09] Speaker 01:
Once they've done that, the regulation is clear.

[00:06:12] Speaker 01:
Strike the entire reply.

[00:06:13] Speaker 01:
There's no discretion available for them to only pull out parts or not parts.

[00:06:17] Speaker 01:
In fact, the regulation says don't do that.

[00:06:19] Speaker 01:
We don't want you getting the exercise because we want incentive on the petitioners

[00:06:23] Speaker 01:
to not put in new arguments.

[00:06:24] Speaker 02:
Is your entire argument this what I will call a procedural argument, or did you make any argument that it would not have been obvious to replace a regular battery with a rechargeable battery in the prior art, which is the heart of the merits?

[00:06:39] Speaker 02:
Did you make any arguments about why it would not have been obvious to do that?

[00:06:44] Speaker 01:
We did not, because we didn't get the opportunity to do that.

[00:06:48] Speaker 01:
We'll quickly then move into streaming.

[00:06:50] Speaker 01:
in the claim construction there, which is de novo review standard.

[00:06:53] Speaker 01:
The board here highlights the numerous fundamental principles of the claim construction law.

[00:06:57] Speaker 01:
They start with an extrinsic evidence and then work their way back.

[00:07:01] Speaker 03:
There's no case of that.

[00:07:03] Speaker 03:
Can I just ask you a technicality on that question?

[00:07:06] Speaker 03:
The invalidity, I think, in that case was based on references that predate the 2008-12 reference, right?

[00:07:13] Speaker 03:
So I'm just wondering, as a procedural matter, do we even have to reach that question about the 8-12 and what the priority date is, given that the references relied on were earlier?

[00:07:26] Speaker 01:
There are three combinations, Your Honor, that were issued.

[00:07:29] Speaker 01:
Two of the combinations all have predating references.

[00:07:31] Speaker 01:
There is one combination, the Amora combination, that has references that post-8-2000.

[00:07:37] Speaker 01:
So the priority issue still needs to be decided, because

[00:07:41] Speaker 03:
For an alternative, one of three alternatives.

[00:07:43] Speaker 03:
Correct.

[00:07:44] Speaker 03:
Why, if we agree with the other alternatives?

[00:07:49] Speaker 03:
I mean, if we agree with the, you're suggesting that we would say the other two alternatives are wrong, we would necessarily have to agree to a more.

[00:07:57] Speaker 03:
And that's a possibility, but not necessarily right.

[00:08:06] Speaker 03:
I mean, if we agreed with the board, if we adopted the board's invalidity arguments and conclusions with respect to the, there are prior references, a combination of which would have predated the 2000.

[00:08:18] Speaker 01:
So it may be possible not to reach the issue.

[00:08:19] Speaker 01:
But because of its implication and other continuing applications and whatnot, I believe this court should address the issue for a lot of the reasons that the PTO addressed of the inconsistencies here.

[00:08:29] Speaker 01:
But just focusing really quickly on the streaming issue, the intrinsic record is clear that streaming, let me step back just a second.

[00:08:38] Speaker 01:
The issue on streaming is whether or not language of immediately available for playback or processing should be included in the construction.

[00:08:46] Speaker 01:
That's the crux of the issue.

[00:08:47] Speaker 01:
The specification is clear that when it's talking about streaming, the mechanism of streaming, that's what streaming is.

[00:08:55] Speaker 01:
Now, the board actually acknowledges that and says, yes, parts of your specification do suggest that.

[00:09:01] Speaker 01:
They go to hinge on one part of the specification, as petitioners raise in their issue, at column 8, line 31 through 35, to say, well, that's a little confusing.

[00:09:09] Speaker 01:
Thus, we're going to not adopt that portion of the construction.

[00:09:13] Speaker 01:
But that section in column 8, lines 31 through 35, actually provides no confusion.

[00:09:18] Speaker 01:
What that's describing, Your Honors, is types of information that can be transmitted.

[00:09:23] Speaker 01:
And it provides a list of things, one of them being streaming audio.

[00:09:26] Speaker 01:
That's one type of data that can be sent to the phone.

[00:09:31] Speaker 03:
It then goes on, and actually, if you read the next sentence, to say, these types of... Well, why don't you tell... I mean, sorry, you're talking about column 8 of the 641.

[00:09:37] Speaker 03:
Why don't you give us a line number so we can... Yeah, 641.

[00:09:40] Speaker 01:
Sorry, Your Honor.

[00:09:49] Speaker 01:
And there again, there's a column A, line 31 through 35, talks about a list of different things that can be sent.

[00:09:55] Speaker 01:
It then goes on, if you continue after that sentence, say these may be wirelessly communicated to electronic device.

[00:10:02] Speaker 01:
So it's not talking about the mechanism of transmission.

[00:10:05] Speaker 01:
It's just talking about the types of data.

[00:10:07] Speaker 01:
So there's nothing confusing you.

[00:10:08] Speaker 01:
There's no statement in here where the patent owner is saying streaming equals downloading.

[00:10:13] Speaker 01:
That is not here.

[00:10:14] Speaker 01:
What is here is streaming is one mechanism that's different than downloading mechanisms.

[00:10:18] Speaker 01:
And then if we look at the file history, the patent owner, again, makes an argument to the examiner of streaming means immediately available for playback or processing.

[00:10:28] Speaker 01:
And the board and the petitioners reject that statement by the patent owner simply because the examiner disagreed with the argument based on whether there are different characteristics of the type of information.

[00:10:41] Speaker 01:
There, the patent owner was arguing streaming audio has characteristics that are different than other data to be downloaded.

[00:10:50] Speaker 01:
And that was the argument that the examiner said, no, I think that the characteristics are the same or I don't see a difference.

[00:10:55] Speaker 01:
But the examiner was not saying was that the construction, that the definition of streaming or the mechanism including this immediately available for playback was wrong or incorrect.

[00:11:06] Speaker 01:
So when one looks at the file history and the whole intrinsic record, it's clear that this definition should have included immediate playback.

[00:11:13] Speaker 01:
And in fact, just moving quickly to the dictionary that they cite,

[00:11:17] Speaker 01:
First of all, no party cited this dictionary definition to the board.

[00:11:20] Speaker 01:
The board went out on its own and found it.

[00:11:24] Speaker 01:
Second, the board makes no attempt then to say that this dictionary definition was available at the time of the invention, or as a dictionary that one of skill would have looked at.

[00:11:34] Speaker 01:
It just simply went to Google, searched dictionary, then searched the term, and then said, here it is, with no basis for establishing that this would truly have been

[00:11:45] Speaker 01:
a dictionary that would have been available, the one at Skill in the Art, a timely invention.

[00:11:48] Speaker 01:
But then compounding the error is that definition they find says streaming includes immediately available for playback or download.

[00:11:57] Speaker 01:
And the board just strikes that section of this definition because of its alleged confusion related to call made.

[00:12:05] Speaker 01:
No basis for that.

[00:12:06] Speaker 01:
That was a legal error, and the claim construction's improper.

[00:12:09] Speaker 01:
Because under the proper claim construction,

[00:12:13] Speaker 01:
None of the combinations teach this claim element.

[00:12:16] Speaker 01:
So we'd ask the court to reverse in validity on those.

[00:12:20] Speaker 01:
I want to move real quickly, then, to the priority issue.

[00:12:23] Speaker 01:
The board had no statutory authority to decide priority.

[00:12:26] Speaker 01:
Congress was very clear when it defined the scope of IPRs in section 311, where it said, in an inter-party's review, may request to cancel as unpatentable one or more claims of a patent only

[00:12:41] Speaker 01:
on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

[00:12:51] Speaker 03:
No one's disputing here that they weren't deciding on grounds of validity a written description issue.

[00:13:00] Speaker 03:
That wasn't the basis.

[00:13:01] Speaker 03:
They didn't strike the stone on the written description grounds.

[00:13:05] Speaker 03:
They didn't strike the claim.

[00:13:06] Speaker 01:
Correct.

[00:13:07] Speaker 01:
But they're not allowed to do analysis under 120.

[00:13:10] Speaker 01:
Congress calls out.

[00:13:11] Speaker 02:
Why not?

[00:13:12] Speaker 02:
That's necessary in order to do an analysis under 102 or 103.

[00:13:17] Speaker 02:
You have to first decide what the critical date is, the date that you have to get before.

[00:13:23] Speaker 02:
So I don't understand how they can't do analysis under 120.

[00:13:26] Speaker 02:
Patent on its base claims a priority date.

[00:13:30] Speaker 02:
Are they just supposed to accept that priority date?

[00:13:32] Speaker 01:
Correct, Your Honor.

[00:13:33] Speaker 01:
Just as there is to accept that there's patent-eligible subject matter, that there's written description, that there's enablement.

[00:13:38] Speaker 01:
Why?

[00:13:38] Speaker 02:
The priority date isn't 112.

[00:13:41] Speaker 02:
It isn't outside the scope of a 102 or 103 analysis.

[00:13:47] Speaker 01:
Priority analysis is 112 analysis.

[00:13:49] Speaker 01:
It says right in the statute, priority is established based on 112 paragraph 1 written description.

[00:13:54] Speaker 01:
It is a 112 analysis.

[00:13:55] Speaker 01:
Nobody disputes that it's a 112 analysis.

[00:13:58] Speaker 02:
It was a necessary predicate to decide the 102 issue, which is expressly what they were.

[00:14:03] Speaker 02:
But Congress does not say- Didn't we answer this question in NTP already?

[00:14:07] Speaker 02:
I remember being on a panel that answered this question.

[00:14:10] Speaker 01:
Yes, Your Honor.

[00:14:12] Speaker 01:
Let me address two points real quick.

[00:14:14] Speaker 01:
Congress calls out certain sections here.

[00:14:17] Speaker 01:
If Congress wanted 120 to be involved in the analysis, Congress would have said, this court cannot expand the scope

[00:14:23] Speaker 01:
of the express statute.

[00:14:25] Speaker 02:
I didn't say that in NTP.

[00:14:26] Speaker 02:
There was no reference to section 120.

[00:14:29] Speaker 02:
And yet, nonetheless, we held that they could do it.

[00:14:31] Speaker 01:
Right.

[00:14:31] Speaker 01:
And Your Honor, the reasons why I don't believe NRA NTP apply here is, first, look at the statutory framework for re-exam.

[00:14:37] Speaker 01:
Section 303 says, the director will determine whether a substantial new question of patentability affecting any claim or of a patent concern is raised by the request.

[00:14:46] Speaker 01:
Very broad language.

[00:14:49] Speaker 01:
There is no specific call out to certain sections.

[00:14:52] Speaker 01:
of Title 35, there's not use of the words in terms like only.

[00:14:55] Speaker 01:
And you have to give meaning to the words that Congress used.

[00:14:59] Speaker 01:
And so to say that, even just based on the plain language of statute, they're a different framework.

[00:15:04] Speaker 01:
But even looking back, as Your Honor correctly pointed, you were on the Henry and TP case.

[00:15:09] Speaker 01:
And in that case, one of the fundamental bases for that decision was that re-examination was supposed to be like original prosecution.

[00:15:19] Speaker 01:
That's not the case here with IPRs.

[00:15:21] Speaker 01:
The Patent Office has steadfastly said, time and time again, IPR is not examination.

[00:15:26] Speaker 01:
It's not original examination.

[00:15:27] Speaker 01:
It's not re-examination.

[00:15:29] Speaker 01:
Re-examination and original prosecution were said to be similar.

[00:15:32] Speaker 01:
Thus, it made sense for 120 to be dropped in.

[00:15:35] Speaker 01:
In addition, the statutory language was much more permissive.

[00:15:38] Speaker 01:
Whereas here for IPR, as Congress has specifically stated, it's only 102 or 103 and does not call it.

[00:15:44] Speaker 02:
It would make no sense to do what you're suggesting.

[00:15:48] Speaker 02:
What Congress has been really clear about is IPRs are supposed to be a substitute venue for district court litigation.

[00:15:54] Speaker 02:
So in what universe would it make sense to say, we want the PTO to decide all 102 or 103 issues, but with one eye covered?

[00:16:02] Speaker 02:
You can only decide them based on the priority date that Patney asserts you can't actually evaluate whether they're entitled to that priority date, even though it's part of the 102-103 analysis.

[00:16:11] Speaker 02:
And then here's the kicker.

[00:16:13] Speaker 02:
You're going to claim that there's a stop from raising this in a district court litigation afterwards.

[00:16:18] Speaker 02:
It's absurd.

[00:16:19] Speaker 02:
It's absurd.

[00:16:20] Speaker 02:
Anything that was decided or could have been decided, raised, or could have been raised.

[00:16:23] Speaker 02:
So according to that logic, they would not really even be probably able to raise this in district court litigation.

[00:16:29] Speaker 02:
It makes no sense.

[00:16:30] Speaker 02:
IPRs were supposed to be a substitute for district court litigation.

[00:16:33] Speaker 02:
When these discrete issues, PTO wouldn't handicap those issues.

[00:16:37] Speaker 02:
I mean, Congress wouldn't handicap those issues.

[00:16:39] Speaker 02:
It doesn't make sense.

[00:16:40] Speaker 02:
Because then you're going to have to either have repeat litigation, or worse yet, you're going to estoppel.

[00:16:44] Speaker 01:
Well, Your Honor, I would believe under Shaw Industries that estoppel would not apply.

[00:16:48] Speaker 01:
to 120, because since 120 was not an issue that could have been raised during the IPR proceeding, there would be a no estoppel.

[00:16:54] Speaker 01:
The estoppel in IPR, as this Court has said, is much more narrow to only the issues that you could have actually raised after institution.

[00:17:00] Speaker 01:
And so under this analysis, the 120 analysis would not have been done.

[00:17:06] Speaker 01:
Thus, there would be a no estoppel that would have applied.

[00:17:10] Speaker 01:
And again, had Congress wanted to include 120, they would have said it.

[00:17:13] Speaker 01:
They wouldn't have said only 102 and 103.

[00:17:15] Speaker 01:
Congress as well, where 120, they could have put it in.

[00:17:18] Speaker 01:
This court cannot read in parts into the statute, things that are not there.

[00:17:22] Speaker 03:
OK, thank you.

[00:17:23] Speaker 03:
I will restore two minutes of rebuttal.

[00:17:24] Speaker 03:
Thank you, Your Honor.

[00:17:36] Speaker 00:
You may please the court.

[00:17:37] Speaker 00:
I'd like to start with the means plus function analysis and to lay out a little bit more clearly what happened in the petition

[00:17:45] Speaker 00:
There are three claims of the 641 patent that relate to a rechargeable battery and an interface, a physical interface, with a path both to transfer data and to conduct power to recharge the battery.

[00:18:03] Speaker 00:
The first is claim one.

[00:18:04] Speaker 00:
Then it's repeated again in claim nine.

[00:18:07] Speaker 00:
By the time you get to claim 14, it just says recharge the battery in a means to recharge.

[00:18:14] Speaker 00:
means for recharging.

[00:18:16] Speaker 00:
In the petition, we laid out in detail where the prior art disclosed this rechargeable battery in claim 1D, as well as the physical interface and the conductive path for data and power supply to recharge the battery.

[00:18:34] Speaker 00:
In claim 9, we referred back to that discussion of claim 1D and E. And in claim 14,

[00:18:42] Speaker 00:
again, referred back to claim one and the discussion of the rechargeable battery and the physical interface and the path to conduct data and power to recharge the battery.

[00:18:56] Speaker 00:
When the patent owner filed their initial response, they didn't contest that we had adequately described the means for recharging claim 14.

[00:19:07] Speaker 00:
This was not raised.

[00:19:08] Speaker 00:
In one of the three institution decisions, the panel specifically called out that neither party had offered a construction of the means plus function claim.

[00:19:19] Speaker 00:
But the patent owner did, in their priority analysis, because they had to, point to what in the specification provided written description for the means for recharging.

[00:19:31] Speaker 00:
And when they did that, they pointed, Judge Moore, as your question indicated, to precisely the same

[00:19:38] Speaker 00:
structure that the board ultimately relied on as providing the physical interface and functionality of the means plus function claim.

[00:19:49] Speaker 00:
That's the same structure in the specification, by the way, to which the petition had pointed in its more general sort of analysis of where in the specification each of these various limitations in the various claims

[00:20:04] Speaker 00:
was to be found.

[00:20:05] Speaker 00:
So there was no hiding the ball.

[00:20:07] Speaker 00:
There was no question about whether the patent owner was put on notice that we were asserting that a rechargeable battery and physical interface and pads to recharge the battery and transfer data at the same time were present.

[00:20:22] Speaker 00:
There was a statement in the petition specifically with respect to 1E that said specifically

[00:20:33] Speaker 00:
It was well known to a person of ordinary skill in the art to use a physical interface to communicate data and receive a recharging power in a portable device.

[00:20:43] Speaker 00:
That's the precise structure and interpretation that the board gave to the Means Plus Function claim.

[00:20:51] Speaker 00:
And we had shown where it was in the prior art already in the petition.

[00:20:57] Speaker 00:
And the board addressed, to the extent that that was disputed, it was actually disputed

[00:21:01] Speaker 00:
only with respect to whether a USB could actually charge a phone back at that time.

[00:21:06] Speaker 00:
The board said yes with respect to claim one.

[00:21:09] Speaker 00:
And then when it gets to claim 14, it then says the USB was known in the art, and it would have been known to use it to recharge a battery.

[00:21:20] Speaker 00:
So this is not a question of the patent owner not having an adequate notice of the construction or of the evidence that

[00:21:30] Speaker 00:
in the priority that disclosed that.

[00:21:34] Speaker 00:
And with respect to the reply brief, what the board said was that to the extent that in the reply for the first time that Samsung had offered an alternative that you really didn't need to construe claim 14.

[00:21:50] Speaker 00:
You just say that it's a rechargement, something you could buy off the shelf.

[00:21:53] Speaker 00:
They said, well, that argument should have been in the petition.

[00:21:56] Speaker 00:
We're not going to consider it.

[00:21:58] Speaker 00:
And so when they ruled on the motion to strike, they said, that's new, because we're not adopting that construction.

[00:22:07] Speaker 00:
And so again, there's nothing here, certainly not an abuse of discretion.

[00:22:12] Speaker 02:
Can you tell me where the board adjudicated claim 10, and in particular, where it addressed the additional limitation added by claim 10, that the portable electronic device must be configured to accept an upgrade for the software application?

[00:22:27] Speaker 00:
Your Honor, as we said in our brief, claim 10 is not disputed.

[00:22:32] Speaker 00:
In the nuvasive case... What do you mean claim 10 was not disputed?

[00:22:36] Speaker 00:
Well, in this sense.

[00:22:38] Speaker 02:
In the patent owner response, the patent owner... If it wasn't disputed, the board sure as heck shouldn't have rendered it unpatentable, should it?

[00:22:44] Speaker 00:
No, it wasn't disputed in this sense.

[00:22:47] Speaker 00:
Let me be more specific.

[00:22:49] Speaker 00:
At appendix 597, this is the patent owner response.

[00:22:53] Speaker 00:
With respect to claim 10, the patent owner says,

[00:22:56] Speaker 00:
Claim 8 is patentable over the proposed combinations such that claims 9, 10, and 14 are patentable as well.

[00:23:05] Speaker 00:
In other words, all of those claims, claims 9, 10, 14, they survive because claim 8 survives.

[00:23:11] Speaker 00:
Those are the dependent claims of independent claim 8.

[00:23:15] Speaker 00:
Then they go on to say, nevertheless, these claims are patentable for the separate reasons identified below.

[00:23:22] Speaker 00:
But below, they only offer independent reasons

[00:23:26] Speaker 00:
for upholding claims 9 and 14.

[00:23:29] Speaker 02:
I'm confused.

[00:23:31] Speaker 02:
Claim 10 has one limitation that it adds to claim 9, which is dependent on claim 8.

[00:23:38] Speaker 02:
One limitation.

[00:23:38] Speaker 02:
It has to be configured to accept an upgrade.

[00:23:40] Speaker 02:
That's the only limitation it has.

[00:23:42] Speaker 02:
It has nothing else.

[00:23:43] Speaker 02:
Are you telling me the board is free

[00:23:46] Speaker 02:
to render a conclusory opinion that says claim 10 had been proven by a proponency evidence to be obvious full stop with no analysis of claim 10 contained anywhere in the opinion.

[00:23:58] Speaker 02:
I know it's oversight.

[00:23:59] Speaker 02:
I know they just dropped the ball, screwed up, and forgot to address Claim Ten.

[00:24:03] Speaker 02:
And I have almost no doubt that on remand you're going to prevail on Claim Ten, but I don't see how I can accept under the APA, given all of the decisions we've rendered in the last year, saying a board has an obligation as an APA authority

[00:24:19] Speaker 02:
to articulate reasons and bases.

[00:24:21] Speaker 02:
I don't see how I can accept this.

[00:24:23] Speaker 02:
I know you want me to, and I know likely we're going to end up in the same place at the end of the day.

[00:24:27] Speaker 02:
But tell me how that jives.

[00:24:29] Speaker 00:
If I could, you're right.

[00:24:30] Speaker 00:
The cases to which you refer are all instances in which the issue that the board did not address was an issue on which the parties were disputing before the board.

[00:24:42] Speaker 00:
The board, like any adjudicatory body, relies on the parties to frame the issues that they're supposed to resolve.

[00:24:49] Speaker 02:
How tough is it?

[00:24:50] Speaker 02:
Clinton has one element.

[00:24:51] Speaker 02:
I don't understand.

[00:24:53] Speaker 02:
They didn't admit somewhere, did they?

[00:24:55] Speaker 02:
I saw no admission where they say, ah, this element is, in fact, present in the prior art.

[00:25:00] Speaker 02:
We're not disputing it.

[00:25:01] Speaker 00:
Well, I think that they come close to that.

[00:25:03] Speaker 00:
But if I could just, again, quote the language from Nubasev,

[00:25:08] Speaker 00:
Although the board did not make findings, so there as well, the board did not make findings as to whether any of the other claim limitations are disclosed in the prior art, it did not have to.

[00:25:22] Speaker 00:
Newvasive did not present arguments about those limitations to the board.

[00:25:27] Speaker 00:
That's at slip up 14.

[00:25:29] Speaker 00:
So I think what Newvasive stands for is that unlike those other instances where the parties are genuinely disputing something,

[00:25:36] Speaker 00:
Where there is no dispute about something in terms of how the parties have framed the issues, the board doesn't have to make explicit findings about that.

[00:25:46] Speaker 00:
And so with respect to claim 10, again, I go back to where the patent owner addressed it.

[00:25:53] Speaker 00:
What they said, in effect, is claim 10 rises or falls with claim 8.

[00:25:58] Speaker 00:
Because there really was no ground to dispute whether claim 10's additional limitation was satisfied.

[00:26:04] Speaker 02:
Now, they also... Did you argue to the patent office where the upgrade limitation of claim 10 appears in the prior art?

[00:26:12] Speaker 00:
We did.

[00:26:13] Speaker 00:
And what we talked about was we pointed to the other places in the prior art that showed the download of software to the portable electronic device.

[00:26:27] Speaker 00:
And our expert...

[00:26:30] Speaker 00:
Exactly.

[00:26:30] Speaker 00:
Our experts, and we didn't just leave it to the board to conclude that, our expert said that.

[00:26:35] Speaker 00:
That when you download the software, you would download the upgraded version of the software.

[00:26:39] Speaker 02:
So you didn't actually say any of the references expressly disclosed upgrading.

[00:26:43] Speaker 02:
You say they expressly disclosed something indicating they have the complete capacity to do the upgrade.

[00:26:48] Speaker 00:
They would download the software, and then the expert's testimony was that a person of ordinary skill in the art would understand that if you can download software, you can download an upgraded version of the software.

[00:26:59] Speaker 00:
So that's how we address that.

[00:27:01] Speaker 00:
And not surprising, I don't think, that the patent owner didn't dispute that.

[00:27:07] Speaker 00:
In fact, the patent owner did, in their discussion of claim 8, point to the same art that we were pointing to as, and conceded, that it showed downloading of the software wirelessly to the portable electronic device.

[00:27:23] Speaker 00:
And the board, in its discussion of claim 5, I realize it's not its discussion of claim 10,

[00:27:29] Speaker 00:
But in its discussion of claim five confirms the same analysis that the cited references disclose downloading software to a portable electronic device.

[00:27:41] Speaker 00:
And that's an appendix 25 to 26.

[00:27:43] Speaker 00:
So there really is and was no dispute about this.

[00:27:50] Speaker 00:
And so it's not surprising that the board didn't make a separate finding.

[00:27:55] Speaker 00:
And under the Nubasive case, they didn't need to.

[00:27:58] Speaker 00:
And as Your Honor says, it would be a kind of pointless exercise to remand for them to simply say there was no dispute on that point.

[00:28:11] Speaker 00:
And claim 13 is the same.

[00:28:14] Speaker 00:
It's at page appendix 575 that there's the same sort of like it rises or falls with claim 8.

[00:28:26] Speaker 00:
dependent claims for which they offered separate arguments, but there was not any argument made with respect to claim 13.

[00:28:33] Speaker 00:
And again, with respect to that issue, to the extent that it was sort of teed up in other claims, the board made a specific finding, and this is at appendix 37, that the selected songs are delivered from a service center to the cellular phone and then retransmitted by the cellular phone

[00:28:56] Speaker 00:
to vehicle loaded acoustic equipment.

[00:28:58] Speaker 00:
So they are agreeing with our characterization of the prior reference at page 37.

[00:29:04] Speaker 00:
So again, I don't think there's any need for the court to make that finding.

[00:29:10] Speaker 00:
With respect to the streaming question, I think what the board did was very carefully analyze that streaming can have kind of two

[00:29:19] Speaker 00:
One focuses on the transmission of the data from point A to point B, and the second connotation kind of suggests what you do with it at the recipient device once it's been received.

[00:29:35] Speaker 00:
And the board correctly said that given that this is BRI and there would have to be some clear indication that the additional limitation was required,

[00:29:45] Speaker 00:
that they didn't find it because there are references to really both.

[00:29:50] Speaker 00:
And if you look specifically even at claim one, claim one says utilize the wireless communication module to, quote, stream a signal representing at least a portion of a song to the recipient device over a given asynchronous wireless channel.

[00:30:07] Speaker 00:
So the focus, again, is on the transfer of the data from A to B, not what you're going to do with it,

[00:30:15] Speaker 00:
once it's received.

[00:30:17] Speaker 00:
And, you know, although the patent owner faults the board for talking about the dictionary definition, when they talk about the dictionary definition, they clearly are using it only to confirm what they find in the 641 specification itself.

[00:30:32] Speaker 00:
And they say that the dictionary definition also says that the, you know, especially to mean playback, that that's an additional limitation that's not essential.

[00:30:43] Speaker 00:
And so they found it in the ordinary meaning.

[00:30:46] Speaker 00:
They found it in the specification history.

[00:30:48] Speaker 00:
Of course, they also pointed out that in the prosecution history of a grandparent patent, the examiner had specifically rejected this argument by the patent owner and said, it's just not there.

[00:30:58] Speaker 00:
You're trying to add an additional limitation.

[00:31:02] Speaker 00:
With respect to the priority issue, I think NTP forecloses the argument that it was inappropriate to

[00:31:13] Speaker 00:
engage in a Section 120 analysis to determine whether the referenced art was indeed prior art or not.

[00:31:21] Speaker 00:
And so I don't think we need to discuss that further.

[00:31:25] Speaker 00:
With respect to the issue as it was discussed in the prior argument about the 926 board's issue, of course, that would not be binding on Samsung.

[00:31:36] Speaker 00:
But we do point out in the brief that in that case, the board had been pointed to

[00:31:42] Speaker 00:
the claims of the 947 patent as they were issued, ultimately.

[00:31:50] Speaker 00:
That's not the specification as it was initially filed in the 812 specification.

[00:31:55] Speaker 00:
And this is at appendix 5556 to 57.

[00:32:01] Speaker 00:
And there's a citation to column 19, lines 39 to 42 and 45 to 50.

[00:32:09] Speaker 00:
There are no columns in the 812 application.

[00:32:13] Speaker 00:
they're referring to the 947 patent as issued, and specifically to claims in that patent, which were not part of the common specification of this continuation.

[00:32:23] Speaker 00:
So the board there just got it wrong.

[00:32:26] Speaker 00:
And to the extent that written description and what did a party have possession of that at the time, that is a question of fact.

[00:32:35] Speaker 00:
Different finders of fact can come to different conclusions on the basis of different records.

[00:32:41] Speaker 00:
anomaly explains the different conclusions.

[00:32:44] Speaker 00:
If there are no further questions, thank you.

[00:32:50] Speaker 01:
Thank you, Your Honor, for providing a short rebuttal.

[00:32:54] Speaker 01:
I'm just going to hit points real quick.

[00:32:56] Speaker 01:
On the 926, that is a completely misleading argument.

[00:33:00] Speaker 01:
The portions that were presented to the examiner were not limited to only the claims that had issued from the patent.

[00:33:07] Speaker 01:
There were four or five citations to the specification

[00:33:11] Speaker 01:
in addition to that, which the examiner relied on to then find that the claims were entitled to the priority date.

[00:33:16] Speaker 01:
So that is just a complete mischaracterization of the record on the 926 pattern.

[00:33:21] Speaker 03:
Do you have a response to your friend's arguments with respect to claim 10?

[00:33:25] Speaker 01:
As to claim 10, I think the APA requires the board to have written and articulated the reasons why it found that the claim 10 was invalid.

[00:33:35] Speaker 01:
Regardless of whether we raised an issue or not,

[00:33:38] Speaker 01:
The board is required to articulate those reasons so this court, as a reviewing court, can understand the basis of the breaches.

[00:33:44] Speaker 03:
Well, what about, is there a difference between them just cutting and pasting the portions of the petitioner's briefing or saying, we agree with the petitioner?

[00:33:55] Speaker 01:
I think they have to lay out how they reach the conclusion, whether it's a

[00:34:00] Speaker 01:
saying, yes, it's found in the references.

[00:34:02] Speaker 01:
And that happens to mirror what was in the petition.

[00:34:04] Speaker 01:
That may be an option.

[00:34:04] Speaker 01:
But they've got to give this court something to look at.

[00:34:07] Speaker 03:
No, but my question is, why isn't that sufficient?

[00:34:10] Speaker 03:
If the petitioner says, this is obvious, and there was motivation for these reasons, and these are the pieces of the prior art, you rely on for the combination.

[00:34:18] Speaker 03:
And they lay it all out in detail.

[00:34:20] Speaker 03:
And then the board simply concludes, we agree with all of the arguments made by the petitioner.

[00:34:25] Speaker 03:
if they had said, and we incorporate those arguments by reference in our decision, is that sufficient?

[00:34:31] Speaker 01:
I'm not sure that that would be sufficient for this Court to then review whether or not the Board had articulated the reasons.

[00:34:39] Speaker 01:
Because there likely would have been some dispute

[00:34:42] Speaker 01:
amongst the parties as to the motivation or the references or something, and they would have to resolve that conflict.

[00:34:46] Speaker 03:
Well, was there a conflict here?

[00:34:48] Speaker 03:
Your friend pointed out that there wasn't a conflict here with respect to at least the additional limitation that Judge Moore pointed to.

[00:34:56] Speaker 01:
We definitely didn't concede that claim 10 was obvious.

[00:34:58] Speaker 01:
So there was a conflict.

[00:34:59] Speaker 02:
You do concede when you don't dispute it.

[00:35:00] Speaker 02:
You do concede that the limitation, if they say upgrade is present in the Hama-Kasas reference, and you don't dispute that, haven't you conceded that it's present there?

[00:35:12] Speaker 01:
No, I don't think so because we're we have a page limit that we had to deal with made a lot of issues And so we had to pick and choose which issues we have but that we didn't just simply by not saying But even if there was a case I still think they have the board has to do something more than just a claim ten is obvious I

[00:35:31] Speaker 01:
which is what they did here, and they have to do more.

[00:35:33] Speaker 03:
For the reasons stated in petitioners brief at page six and seven, which are incorporated by reference into this opinion, that's not sufficient?

[00:35:43] Speaker 01:
But they didn't do that even here.

[00:35:44] Speaker 03:
No, I didn't ask you if they did that here.

[00:35:46] Speaker 03:
I asked you if that was sufficient.

[00:35:47] Speaker 03:
I thought you had told me two minutes ago that it wasn't sufficient.

[00:35:51] Speaker 01:
It's hard to add.

[00:35:51] Speaker 01:
I don't know, Your Honor.

[00:35:53] Speaker 01:
Perhaps it may, but right now, the issue here is they did nothing.

[00:35:57] Speaker 01:
And I just may real quickly hear.

[00:35:58] Speaker 03:
Well, they did say, did they not, that for the reasons, maybe I'm misremembering this.

[00:36:04] Speaker 03:
I thought they did say for the reasons outlined by the petitioner.

[00:36:09] Speaker 03:
No?

[00:36:22] Speaker 03:
Yes?

[00:36:24] Speaker 01:
I'm sorry.

[00:36:25] Speaker 03:
Yeah, that's all they say.

[00:36:27] Speaker 03:
We find the petitioner demonstrated correspondence of the evidence.

[00:36:31] Speaker 01:
Right.

[00:36:31] Speaker 01:
And they have to do something more than that.

[00:36:33] Speaker 01:
That's not particularly how the petitioner has done it.

[00:36:36] Speaker 01:
That's simply the conclusion that they had done it.

[00:36:38] Speaker 01:
I do want to just real quickly, I know I'm way over my time, and I appreciate your answers, indulge me.

[00:36:43] Speaker 01:
On the means plus function, I misspoke.

[00:36:45] Speaker 01:
It's page 28, or appendix 28.

[00:36:47] Speaker 01:
And the board says, we agree with Pat in order that petitioner's identification of corresponding structure and its argument that 112.6 does not apply

[00:36:54] Speaker 01:
to the term, means for recharging internal battery, should have been in the petition and not presented for the first time in the reply.

[00:37:02] Speaker 01:
There was no assumption, as counsel had stated.

[00:37:05] Speaker 01:
They found it was a new argument.

[00:37:06] Speaker 01:
The whole reply brief should have been out right then and there.

[00:37:09] Speaker 01:
It was abuse of discretion not to strike it at that point.

[00:37:12] Speaker 01:
And lastly, on streaming, claim one, which counsel didn't exactly highlight to the court, stock talk about after you've received this audio signal that you're playing the song.

[00:37:24] Speaker 01:
So it's talking about the reason for having this immediate playback or processing.

[00:37:28] Speaker 03:
Thank you.

[00:37:28] Speaker 03:
We thank both sides and the case is submitted.