[00:00:03] Speaker 02:
The argued case this afternoon is number 162222, ATI Technologies against Mattel as Acting Director.

[00:00:14] Speaker 02:
Mr. Farrin.

[00:00:15] Speaker 01:
May it please the court.

[00:00:17] Speaker 01:
Actual reduction to practice looks at the line between drawings and descriptions on the one hand and actual working systems on the other.

[00:00:26] Speaker 01:
And in this case, the inventors created an actual working system created in RTL code

[00:00:32] Speaker 01:
that worked to process graphics, and it was a graphics processing system.

[00:00:37] Speaker 01:
The RTL code included all of the elements recited in the claims of the patents.

[00:00:41] Speaker 01:
Below, LG did not dispute this issue, and accordingly, the board did not identify any limitation missing from the RTL code in its final written decision.

[00:00:52] Speaker 04:
The third feature of claim five of the 053 patent, it wasn't construed by the PTAB as a memory device?

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

[00:01:01] Speaker 04:
Is there evidence in the record that a memory device can be construed as software as opposed to hardware?

[00:01:08] Speaker 01:
The specification of the 053 pattern describes the memory device in functional terms.

[00:01:13] Speaker 01:
It has to be able to store and organize command threads.

[00:01:16] Speaker 01:
And indeed, there is no reason that it has to be a specific hardware device.

[00:01:21] Speaker 04:
You're not answering my question.

[00:01:24] Speaker 04:
Is there anything in the record that is evidence that it can be?

[00:01:33] Speaker 04:
You're reading me the description.

[00:01:37] Speaker 04:
To me, that sounds like lawyer argument.

[00:01:40] Speaker 04:
Did somebody say that?

[00:01:42] Speaker 01:
Yes.

[00:01:43] Speaker 01:
Dr. Wolf said that the memory device was embodied in the RTL code in his analysis of the RTL.

[00:01:48] Speaker 01:
Yes, he did.

[00:01:48] Speaker 01:
Where is that?

[00:01:51] Speaker 01:
Dr. Wolf's analysis appears.

[00:01:56] Speaker 01:
The analysis begins at appendix 4720.

[00:02:01] Speaker 04:
4720?

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

[00:02:05] Speaker 04:
OK.

[00:02:05] Speaker 04:
That's good enough.

[00:02:07] Speaker 04:
Then point me to any case law or industry evidence that says that.

[00:02:13] Speaker 01:
Well, the industry evidence was established, again, by Dr. Wolf and Mr. LaFave, the inventor, who described that the way that these integrated circuits are designed and initially built is in the code evidence, is with the RTL code.

[00:02:26] Speaker 01:
And so the case law, there's no case directly on point that a memory device may be embodied in RTL code, but in the industry... Well, Your Honor, in fact, the RTL code was also stored in a computer system, and so it was stored in memory, it was executed in a computer system as well.

[00:02:44] Speaker 01:
So when that occurred, there certainly was, you know, like a memory, a physical memory

[00:02:49] Speaker 01:
But the RTL code itself embodied the memory device of these claims as established by Dr. Wolff.

[00:02:54] Speaker 03:
But the board made specific findings with respect to Dr. Wolff's testimony saying that Dr. Wolff testified that the emulator code emulates the behavior of a graphics processing system.

[00:03:06] Speaker 03:
And they said based on his testimony, they believed that what he was saying is that the RTL code was merely a representation of a chip design.

[00:03:17] Speaker 01:
The board did make that finding.

[00:03:18] Speaker 01:
And the board pointed first to the Dr. Wolff's description of the emulator code, which as he described in his declaration at 4718 of the appendix is different than the RTL code.

[00:03:31] Speaker 01:
And also, yes, the RTL code is a description of a integrated circuit fabricated in silicon.

[00:03:39] Speaker 01:
However, it is within the scope of these claims.

[00:03:42] Speaker 01:
And that was where the board went wrong.

[00:03:44] Speaker 01:
The test for reduction of practice is whether an embodiment was created

[00:03:47] Speaker 01:
as within the scope of the claims at issue.

[00:03:49] Speaker 01:
But the board applied a specific physical limitation, and that's where it went wrong.

[00:03:54] Speaker 03:
Yeah, you argue that the board basically applied the wrong law by saying that you always have to have a physical representation.

[00:04:06] Speaker 03:
But didn't really what the board say here is that in this particular case,

[00:04:11] Speaker 03:
we read the specification as claiming a physical graphics system.

[00:04:18] Speaker 03:
And if you claim a physical system, then you have to have a physical manifestation of it, right?

[00:04:23] Speaker 01:
I believe it's unclear from the board's opinion whether it did actually perform a claim construction for the first time in the final written decision that it had not performed earlier, or whether it introduced an additional limitation for the standard for actual reduction of practice of a physical element in addition to an embodiment that works for its intended purpose.

[00:04:40] Speaker 01:
The board did not make any claim construction in the proceeding that would disqualify the RTL code from the scope of the claims.

[00:04:47] Speaker 01:
And indeed, it did not identify any specific limitation missing.

[00:04:50] Speaker 01:
And so however the board reached that conclusion, it was an error of law because it did not apply the proper standard.

[00:04:56] Speaker 03:
And when the board pointed to- So when the board said that what you're claiming is a hardware system as opposed to- that may have software components, but you're actually claiming a hardware system, you think that that was erroneous.

[00:05:10] Speaker 01:
I do think that was erroneous.

[00:05:11] Speaker 01:
I don't think the claims are so limited.

[00:05:13] Speaker 01:
The board's claim constructions are not so limited.

[00:05:15] Speaker 01:
The board did identify any specific element missing, and the claims encompass the RTL code embodiment created by the inventors here.

[00:05:23] Speaker 04:
If you proceeded to a tape out to produce the chip, at that point, are there other problems that might arise in the production process that would require rewriting the software?

[00:05:39] Speaker 01:
No, I don't believe there are, Your Honor.

[00:05:40] Speaker 01:
Once the process proceeds to tape out, it goes to silicon, it goes to a manufacturing process.

[00:05:47] Speaker 01:
So at that point, I'm not aware of any additional issues that would require rewriting of the software, which is why on the testing point, Your Honor, when the first triangle test occurred, it did demonstrate that the invention worked for its intended purpose.

[00:05:58] Speaker 01:
And again, the board erred on that point also as a matter of law by not reciting, not considering, not applying the invention's intended purpose, which is the appropriate legal standard.

[00:06:08] Speaker 01:
Instead, the board again focused on the idea of a physical, physical custom chip as the embodiment required, the error it made in the embodiment aspect of its decision.

[00:06:18] Speaker 01:
And so it focused on limited aspects of the test.

[00:06:21] Speaker 01:
For example, deficiencies, alleged deficiencies such as the absence of test input or output files, simulation run logs or input test parameters.

[00:06:30] Speaker 01:
But because it did not apply the correct standard or consider the inventions intended use,

[00:06:34] Speaker 01:
It did not link any of those things as to the question of whether or not they were relevant to demonstrating that the invention worked for its intended use.

[00:06:42] Speaker 04:
Is the triangle test related in any fashion to commercial readiness?

[00:06:47] Speaker 01:
It is one step in the process all along a continuous development process, but it is the first time for this invention, as Mr. Lefebvre testified, that the inventors were aware that the unified shader, the ability to process both pixel and vertex operations, worked for its intended use.

[00:07:04] Speaker 02:
Is it conceded all around that there's no question here of conception in that date of August 2000 and 2001 that we're talking entirely about reduction of practice?

[00:07:18] Speaker 01:
That's correct, Your Honor.

[00:07:19] Speaker 01:
Conception was not disputed, and the board found that ATI had established conception prior to all of the prior art references at issue here.

[00:07:27] Speaker 02:
So one thought which came to mind, perhaps only in retrospect, because it was clear that your

[00:07:34] Speaker 02:
target was an actual reduction to practice.

[00:07:38] Speaker 02:
But the idea of constructive reduction to practice, was that separately argued and litigated?

[00:07:46] Speaker 01:
Yes, it was, Your Honor.

[00:07:48] Speaker 01:
So ATI argued.

[00:07:49] Speaker 02:
But it's not in your briefs?

[00:07:51] Speaker 02:
You talk about diligence, but only diligence to actual reduction to practice, not diligence to constructive reduction.

[00:08:00] Speaker 02:
I believe the briefs.

[00:08:01] Speaker 02:
Have I missed it somehow?

[00:08:02] Speaker 01:
I believe the briefs do talk about diligence also to constructive reduction of practice.

[00:08:06] Speaker 02:
I'm going to talk about diligence at great length.

[00:08:08] Speaker 02:
But what about constructive reduction of practice?

[00:08:13] Speaker 02:
It's not a section heading.

[00:08:15] Speaker 02:
And perhaps in coming through it briefly, I've missed the term.

[00:08:22] Speaker 02:
Because it would seem to me, just to go ahead, that all of the issues that have been raised would disappear.

[00:08:31] Speaker 02:
if we're only talking about constructive reduction of practice.

[00:08:35] Speaker 01:
The blue brief at pages 55 and 56, Your Honor.

[00:08:39] Speaker 02:
Oh, maybe I didn't get that far.

[00:08:41] Speaker 01:
Explains, ATI exercise reasonably continuous diligence from conception through both actual and constructive reduction to practice of the claimed invention.

[00:08:49] Speaker 02:
Is that the only word, the only time that constructive reduction appears?

[00:08:55] Speaker 02:
Because obviously I missed this one.

[00:08:58] Speaker 01:
It appears.

[00:08:58] Speaker 02:
It seems as if it was not.

[00:09:00] Speaker 02:
of focus of the argument, was it as a matter of confidence in the evidence of actual reductions, so we don't bother with constructives?

[00:09:11] Speaker 01:
Well, if actual reduction of practice was found, then the remaining period between the actual reduction and the constructive reduction to practice would no longer be relevant, except for one exception for the 053 patent.

[00:09:22] Speaker 02:
Constructive reduction of... But you still provided evidence, a fair amount?

[00:09:27] Speaker 02:
Yes, Your Honor.

[00:09:27] Speaker 02:
I think of diligence all the way to filing.

[00:09:30] Speaker 01:
That's correct, Your Honor.

[00:09:32] Speaker 01:
The evidence was established that there was continuous work on the R400 project every business day from conception through constructive reduction to practice as of the filing dates of the priority applications.

[00:09:43] Speaker 03:
I'm trying to understand what evidence really does show on this.

[00:09:47] Speaker 03:
So one of the things the board said is you just can't tell.

[00:09:52] Speaker 03:
There might be evidence that work was being done, but you can't tell what work was being done.

[00:09:58] Speaker 03:
So what evidence did you present?

[00:09:59] Speaker 03:
I mean, I read that affidavit from Mr. McFarland.

[00:10:03] Speaker 03:
I don't see him other than saying we worked on the project.

[00:10:07] Speaker 03:
So the board's point is it might have been for marketing and commercialization purposes and not necessarily for continuing to reduce it to practice.

[00:10:17] Speaker 01:
Mr. Lefebvre testified as to the work was done on the sequencer and shader pipe blocks that correspond to the elements of the claim to invention, as described by Dr. Wolf.

[00:10:26] Speaker 01:
He also described that the work that he catalogued in the calendars

[00:10:29] Speaker 01:
was work related to being able to produce those two blocks, because those blocks could not be produced and worked on in isolation.

[00:10:36] Speaker 03:
They were very cryptic sentences, though.

[00:10:38] Speaker 03:
In other words, he said, we just kept doing this stuff.

[00:10:42] Speaker 03:
And I guess my point is, I looked at all those exhibits and the references to the metadata.

[00:10:47] Speaker 03:
How can you tell from the metadata what exactly was being done?

[00:10:50] Speaker 01:
Well, the metadata corresponds to the folder histories and logs.

[00:10:53] Speaker 01:
And Mr. LaFave explained what those were and the work that was being done.

[00:10:56] Speaker 01:
I think his testimony establishes that there was continuous work

[00:10:59] Speaker 01:
reasonably continuous because again we believe the board applied the incorrect legal standard on diligence.

[00:11:04] Speaker 01:
And then the metadata and specifications that he cited corroborate that testimony.

[00:11:08] Speaker 03:
Even if we agree with you that under perfect surgical, the board misapplied, because they were citing the same cases that were cited in perfect surgical that we said was an incorrect understanding of the law.

[00:11:19] Speaker 03:
But even if that's true, even if you don't have to show diligence on every single day, you do have to show that what you were doing related to the development of what ultimately matured into the claims, right?

[00:11:33] Speaker 01:
That's right.

[00:11:34] Speaker 01:
But I don't believe the board considered that analysis because it looked for unexplained lapses instead of looking at whether what Mr. LaFave said was- It did more than that, didn't it?

[00:11:42] Speaker 03:
Didn't it say that there's no way to tell what was being done?

[00:11:45] Speaker 01:
Yeah, I believe it did say that.

[00:11:47] Speaker 01:
But I don't think that finding is supported by substantial evidence in view of Mr. LaFave's testimony and the metadata.

[00:11:53] Speaker 03:
What's your strongest portion of his testimony?

[00:11:55] Speaker 03:
Because like I said, I didn't find it to be as persuasive as I think it is, or as thorough, anyway.

[00:12:02] Speaker 01:
His testimony is from pages 2648 through 2654 in his declaration in the appendix.

[00:12:14] Speaker 01:
I believe I've used my initial time, and I'd like to reserve some or four rebuttal, if I may.

[00:12:19] Speaker 02:
Yeah, will that answer your question?

[00:12:22] Speaker 03:
Sure.

[00:12:23] Speaker 03:
So I know where it is, but what do you think is the place where he says, this is what we were working on?

[00:12:32] Speaker 01:
Paragraphs 41 and 42 on Appendix 2654, where he says, my analysis shows that at least one person on the team worked on the design every non-holiday business day.

[00:12:41] Speaker 01:
Paragraph 42, he describes, this metadata shows work that was necessary for implementing the R400 design.

[00:12:48] Speaker 01:
He describes the metadata for the sequencer and graphics blocks in that paragraph, and then describes that the design and development of the R400 more generally was necessary to continue to work on the sequencer and shader pipe block, Your Honor.

[00:13:01] Speaker 03:
But you don't have any documents to support that conclusion.

[00:13:04] Speaker 01:
The supporting documents were the metadata itself, Your Honor.

[00:13:08] Speaker 04:
You reference exhibits.

[00:13:11] Speaker 04:
Within this, you reference exhibits.

[00:13:13] Speaker 01:
Yes, that's right.

[00:13:16] Speaker 04:
Let me ask you this.

[00:13:16] Speaker 04:
This is sort of my idle curiosity.

[00:13:21] Speaker 04:
I don't know.

[00:13:22] Speaker 04:
If you were demonstrating the RTL model to a potential customer,

[00:13:31] Speaker 04:
Could you just run that as if you were running a chip?

[00:13:34] Speaker 04:
Yes.

[00:13:36] Speaker 01:
Thank you.

[00:13:38] Speaker 02:
OK.

[00:13:39] Speaker 02:
All right.

[00:13:39] Speaker 02:
We will save you for rebuttal, and let's hear from you.

[00:13:42] Speaker 01:
Thank you.

[00:13:57] Speaker 02:
Mr. Krauss.

[00:13:59] Speaker 04:
May it please the court?

[00:14:00] Speaker 04:
Mr. Krauss, how can you distinguish the claimed elements in this case from cases like fantasy football, where we held that software claims in a patent could infringe a claim for computer playing football?

[00:14:16] Speaker 00:
Certainly software running on a general purpose computer constitutes an apparatus and therefore can be an embodiment of a claimed invention.

[00:14:24] Speaker 00:
In this case, that's not the way this case was presented to the board at all.

[00:14:28] Speaker 04:
Suppose the chip exists in a cloud computer.

[00:14:34] Speaker 00:
Is it ever embodied?

[00:14:39] Speaker 00:
One might use the word embodied to describe it, but I would not say that it's covered by the claims at issue here.

[00:14:46] Speaker 00:
What I want to emphasize is the claim interpretation that's being advanced now most prominently in the reply brief is an entirely new claim construction that was not

[00:14:54] Speaker 00:
presented to the board.

[00:14:55] Speaker 00:
As the board says on pages 8, appendix 26 and 27, also appendix 30, they never made the argument that the computer software code running on a general purpose computer satisfies the claim limitation.

[00:15:08] Speaker 00:
The idea was always that the RTL code is some kind of a representation that shows that the chip would work for its intended practice.

[00:15:19] Speaker 00:
They say they're not in the chip making industry.

[00:15:21] Speaker 00:
They're in the chip design industry.

[00:15:24] Speaker 00:
that all they needed to do was present this code that would show that this unified shader component of the invention would work.

[00:15:30] Speaker 03:
So isn't this the argument that, at least when it was being tested, it was being run on a general purpose computer?

[00:15:36] Speaker 00:
They've made that argument now.

[00:15:38] Speaker 00:
I see it starting in the blue brief.

[00:15:39] Speaker 03:
But the board addresses the argument.

[00:15:40] Speaker 03:
So how could they have not made it to the board?

[00:15:42] Speaker 00:
No, the board addresses the argument, the primary argument that they made, which was that there's no physical embodiment requirement.

[00:15:49] Speaker 00:
They said, they used the words, this invention is, quote, embodied in the code itself.

[00:15:54] Speaker 00:
They weren't making the argument that a general purpose computer running this software would constitute an embodiment of the invention.

[00:16:02] Speaker 00:
And that's actually not a very persuasive argument either.

[00:16:05] Speaker 00:
If you look at the specifications in all of these cases.

[00:16:08] Speaker 00:
I don't know.

[00:16:09] Speaker 00:
Well, if you look at all the specifications, they are all about chip design.

[00:16:12] Speaker 00:
The whole purpose of a unified shader is to speed up the processing and save real estate on a physical chip.

[00:16:19] Speaker 00:
The idea that a software embodiment running

[00:16:23] Speaker 00:
this kind of a unified shader embodiment on a general purpose CPU as well as a general purpose graphics processor doesn't make any sense.

[00:16:32] Speaker 00:
It doesn't speed up.

[00:16:32] Speaker 04:
Let me ask you about diligence.

[00:16:35] Speaker 04:
One of the arguments you make is that on page 51 of your brief that Mr. LeFevre was working on a second chip design to include an optional feature that one of the customers wanted.

[00:16:48] Speaker 04:
So that he can't demonstrate reasonable diligence.

[00:16:52] Speaker 04:
What shows that he wasn't working as well at the same time on the primary design?

[00:17:00] Speaker 00:
As Judge O'Malley pointed out, there's very scanty evidence on diligence to begin with.

[00:17:05] Speaker 00:
There are a lot of logs that indicate

[00:17:07] Speaker 00:
very cursory indications that work was being done.

[00:17:10] Speaker 00:
And then we have the inventor, Mr. LeFaber, trying to tie it all together.

[00:17:14] Speaker 04:
Sort of like a testimony about business records.

[00:17:17] Speaker 00:
Right.

[00:17:17] Speaker 00:
Well, he's sort of trying to corroborate the business records.

[00:17:20] Speaker 00:
There's nothing corroborating him.

[00:17:21] Speaker 00:
The requirement is that the inventor's testimony needs to corroborate it.

[00:17:26] Speaker 00:
He's trying to explain what these very sketchy diligence records

[00:17:31] Speaker 00:
show.

[00:17:31] Speaker 03:
And the bottom line is... What do you mean by that?

[00:17:35] Speaker 03:
It wasn't able to glean anything?

[00:17:37] Speaker 00:
Well, I mean he derived calendars from it and logs from it and he can come up and I believe this is probably the case that at least one engineer on every day during the relevant critical periods did some work on the R400 project.

[00:17:51] Speaker 00:
But that's not necessarily the invention here.

[00:17:55] Speaker 00:
The R400 project was never completed.

[00:17:57] Speaker 00:
That's the chip for Microsoft.

[00:17:58] Speaker 00:
We have from their blue brief that they only first commercialized a chip in November 2005.

[00:18:06] Speaker 00:
That's more than four years after conception.

[00:18:10] Speaker 02:
You're here representing the office and advising us on what the correct law should be.

[00:18:18] Speaker 02:
Is this something new?

[00:18:20] Speaker 02:
Here we have tens of thousands of patents that have issued without

[00:18:27] Speaker 02:
and have gone through assorted litigation processes and so on without being challenged that you don't have any reduction to practice that you can rely on because you don't have it embodied in a chip.

[00:18:41] Speaker 02:
You just have the drawing of the various steps of either the system or the method.

[00:18:49] Speaker 02:
So is this something new for the office that unless you have your software embodied in a physical

[00:18:57] Speaker 02:
chip which you can produce by some critical date that you haven't established invention?

[00:19:04] Speaker 00:
No, not at all.

[00:19:05] Speaker 00:
This is standard reduction to practice.

[00:19:06] Speaker 02:
But that's what you're saying.

[00:19:08] Speaker 00:
I'm not saying that anything has changed.

[00:19:10] Speaker 02:
You're saying there's no constructive reduction to practice, and there's no actual reduction to practice, although the weight of the evidence, there's no dispute in terms of conception.

[00:19:22] Speaker 02:
And then we have at least evidence that something was done every day

[00:19:26] Speaker 02:
We might get to argue about how much diligence is diligence when your only problem is a swearing back affidavit.

[00:19:35] Speaker 02:
And that's another question that I wanted to raise with you.

[00:19:38] Speaker 02:
We're not talking here about interference priority anymore.

[00:19:43] Speaker 02:
We're talking about getting behind a reference.

[00:19:45] Speaker 02:
And all you have to show, as I always understood it, to get behind a reference is that you possessed what was in the reference.

[00:19:55] Speaker 02:
and before whatever effective date of the reference.

[00:20:00] Speaker 02:
So I'm trying to put all of this together with what looks to me like something brand new, actual reduction of practice, a physical chip, a commercial embodiment, nothing further to be done to correct errors, even though from what I read, any routine software that you buy might have a billion

[00:20:26] Speaker 02:
errors into it that may or may not make a difference.

[00:20:30] Speaker 02:
So to try to understand this seems to me that there's something very different here in the first place by imposing interference standards rather than the traditional rule 131 standards and then the apparent insistence on a physical embodiment of an actual reduction to practice rather than

[00:20:54] Speaker 02:
diligence to constructive reduction of practice.

[00:20:57] Speaker 02:
So those are a lot of questions all at once.

[00:20:59] Speaker 02:
Let's start with the constructive reduction of practice and the position of the office.

[00:21:05] Speaker 00:
There clearly was.

[00:21:06] Speaker 00:
There's no question there was a constructive reduction of practice.

[00:21:09] Speaker 00:
The 05-3 patent application.

[00:21:10] Speaker 02:
Well, then why doesn't that end in?

[00:21:12] Speaker 02:
Their diligence started before the earliest date.

[00:21:15] Speaker 02:
That's not disputed.

[00:21:17] Speaker 00:
It was not reasonably continuous throughout the reduction of practice date.

[00:21:21] Speaker 04:
The reduction of practice date.

[00:21:22] Speaker 04:
If we think it was reasonably

[00:21:24] Speaker 04:
Continuous?

[00:21:25] Speaker 04:
Does that end it?

[00:21:27] Speaker 00:
I believe it would.

[00:21:28] Speaker 00:
But I think the testimony is crystal clear that it was not reasonably continuous.

[00:21:32] Speaker 00:
And let me just state to be clear.

[00:21:35] Speaker 03:
I think that the law the board applied was wrong.

[00:21:39] Speaker 03:
Because I think that perfect surgical explains that the board misunderstood the law.

[00:21:46] Speaker 03:
And I know that this board didn't have the benefit of perfect surgical at the time.

[00:21:49] Speaker 03:
But assuming that we say that requiring daily

[00:21:54] Speaker 03:
activity every single day with no gaps is wrong.

[00:22:00] Speaker 03:
The question is whether or not that could be harmless because the board separately said that the evidence didn't tell us what any of the activity really was.

[00:22:12] Speaker 00:
The board fully acknowledged the testimony that there was continuous activity on every single day as submitted by ATI.

[00:22:21] Speaker 00:
The problem the board had was not the problem in Perfect Surgical, where the board had identified certain gaps and said that's not continuously reasonable.

[00:22:28] Speaker 00:
The board here found continuous conduct but said that's not diligent reduction to practice.

[00:22:35] Speaker 03:
But I'm trying to determine whether one error could have affected another.

[00:22:40] Speaker 03:
So in other words, if the board thought it had to be every day, then is what the board's saying, because I don't know what you did every single day, then it doesn't matter if you did something

[00:22:51] Speaker 03:
throughout the whole period because any one of those days could have been just on commercialization or just on marketing.

[00:23:00] Speaker 00:
I don't think the board imposed a requirement that something had to be done every single day.

[00:23:05] Speaker 00:
I think it was a given that something was done every single day.

[00:23:08] Speaker 00:
Their question had to do more with what was done.

[00:23:11] Speaker 00:
You haven't shown me that you have actually been diligently reducing the claimed invention here, this unified shader, to practice.

[00:23:19] Speaker 00:
And one way we can see that is that they never did reduce it to practice.

[00:23:22] Speaker 00:
Now, again, we're assuming that the July 2002 reduction of practice was not valid.

[00:23:27] Speaker 00:
That's how we get to the diligence argument.

[00:23:31] Speaker 04:
You have inventor testimony.

[00:23:36] Speaker 04:
And it's corroborated with something that you say is insufficient.

[00:23:44] Speaker 04:
But the problem I have is that the inventor testimony then goes back and says, well, this is what these numbers and letters mean.

[00:23:55] Speaker 04:
And you don't have anything that says that the inventor is incorrect in his analysis of that.

[00:24:03] Speaker 04:
You just say, well, you're not showing me enough.

[00:24:06] Speaker 00:
His analysis doesn't show that work on the unified shader was reasonably continuous

[00:24:13] Speaker 00:
from the relevant period.

[00:24:15] Speaker 00:
And there are the three critical dates at issue here.

[00:24:17] Speaker 00:
And just returning to Judge Newman's question, I've always wanted to say the constructive reduction of practice date on the 053 application was September 29, 2003, and constructive reduction of practice for the other ones was a date in November 2003.

[00:24:31] Speaker 00:
So we don't deny that patent applications were filed.

[00:24:34] Speaker 00:
What we don't have is any indication for the critical periods, and that's

[00:24:38] Speaker 00:
before the date of the Lindholm reference is the one that applies to all of them.

[00:24:42] Speaker 00:
So we can just look at that.

[00:24:43] Speaker 00:
From June 25, 2003 to September 29, 2003, there's no evidence that they were diligently working on the unified shader during that part.

[00:24:55] Speaker 02:
Could there be a statement?

[00:24:56] Speaker 02:
Wasn't it the opponent's burden either to say, let me see your notebooks, or this or that?

[00:25:02] Speaker 02:
I mean, at what point, when there is no opposition,

[00:25:09] Speaker 02:
then what kind of additional burden after burden after burden.

[00:25:14] Speaker 02:
Again, we're not talking about an interference or competing inventions.

[00:25:19] Speaker 02:
All they have to do is get behind a reference date with as much information as is in the reference, not with everything else, but to show that they had what the reference had before the publication of the reference.

[00:25:36] Speaker 02:
And I didn't see anything to say

[00:25:38] Speaker 02:
that that burden was not met?

[00:25:42] Speaker 00:
I don't think that's entirely accurate.

[00:25:43] Speaker 00:
They had to show from the time period after, these are 102E references, it's not publications.

[00:25:49] Speaker 00:
These are 102E references.

[00:25:51] Speaker 00:
They had to show that from the period after the filing date of the 102E reference until they got around to filing their patent application, that's the only real reduction of practice they're relying on.

[00:26:02] Speaker 00:
They were reasonably continuous.

[00:26:03] Speaker 00:
And yes, they had engineers working on this, but there's no

[00:26:07] Speaker 00:
clear indication that they were working to bring this embodiment to practice.

[00:26:10] Speaker 00:
And let me tell you one reason why I think... Well, wait a minute.

[00:26:12] Speaker 00:
I've got a good one, but go ahead.

[00:26:15] Speaker 04:
You say there's no clear indication.

[00:26:17] Speaker 04:
There is a clear indication.

[00:26:18] Speaker 04:
That is the testimony of Mr. Lefebvre.

[00:26:21] Speaker 00:
The uncorroborated testimony of Mr. Lefebvre about logs which refer to generalized work on a commercial embodiment that ultimately would have embodied this technology but didn't have, that didn't actually get embodied.

[00:26:35] Speaker 04:
It is corroborated.

[00:26:36] Speaker 04:
You say it's uncorroborated, but it's corroborated by this documentation, which you then say is inexplicable.

[00:26:43] Speaker 04:
And the answer to that is he says, no, this is what it means.

[00:26:49] Speaker 04:
And you say, no, that's not corroborated.

[00:26:51] Speaker 00:
Corroboration is like what we had in the perfect surgical case.

[00:26:53] Speaker 00:
There, the inventor had his own testimony.

[00:26:56] Speaker 00:
The board thought it was uncorroborated.

[00:26:58] Speaker 00:
But the Federal Circuit, this court looked at it and looked at the patent attorney's testimony.

[00:27:02] Speaker 00:
The patent attorney filed a separate

[00:27:05] Speaker 00:
affidavit corroborating what the inventor said.

[00:27:07] Speaker 00:
If Mr. LeFabor or the applicant here, the patentee here, had shown emails or had shown testimony of anybody else backing up what Mr. LeFabor said all this meant, that would have been helpful.

[00:27:19] Speaker 00:
But now all we've got is him explaining some otherwise hard to explain logs.

[00:27:23] Speaker 03:
The logs aren't corroborating him.

[00:27:24] Speaker 03:
When you say corroboration, it doesn't mean that it has to exist independently of the inventor's testimony.

[00:27:30] Speaker 03:
So you had PowerPoints.

[00:27:31] Speaker 03:
You had all this metadata.

[00:27:33] Speaker 03:
And so there is corroboration.

[00:27:35] Speaker 00:
Again, the PowerPoints are a good example.

[00:27:37] Speaker 00:
That related more to the actual reduction to practice.

[00:27:41] Speaker 00:
But there, it would have been easy enough for him to get, for ATI to get the presenter of those PowerPoints to explain what those PowerPoints really meant, instead of having Lefebvre secondhand saying what he thought they meant.

[00:27:54] Speaker 03:
Let me give you one piece of evidence why I think... That takes this notion of inventor testimony having to be brought to a sort of absurd level.

[00:28:01] Speaker 03:
In other words, you're saying that even if he's got documents and everything else that support what he's saying, that we have to ignore everything because he said it.

[00:28:09] Speaker 00:
Again, the documents don't support what he's saying unless they focus on the particular embodiment.

[00:28:15] Speaker 00:
In this case, they focus on a commercial embodiment.

[00:28:17] Speaker 02:
This is inter-parties.

[00:28:18] Speaker 02:
Where is the burden on the other side to

[00:28:22] Speaker 02:
Inquire.

[00:28:23] Speaker 02:
After all, again, going back to the defunct interference practice, all that you need is somebody to sound read and understood on the bottom of every notebook.

[00:28:35] Speaker 02:
They don't have to show that they looked over the inventor's shoulder at every manipulation.

[00:28:40] Speaker 02:
That has never been the rule of corroboration.

[00:28:46] Speaker 02:
And corroboration has to do with that work was done on such a day.

[00:28:51] Speaker 02:
If there's nothing on his face to cause the testimony to be suspect, you're saying there's no burden on the other side.

[00:29:00] Speaker 02:
It's just keep on producing page after page.

[00:29:03] Speaker 02:
This is quite a record as it is for a board proceeding.

[00:29:08] Speaker 02:
And never mind if we don't whatever.

[00:29:12] Speaker 02:
I don't know if what.

[00:29:14] Speaker 02:
That's not enough.

[00:29:18] Speaker 00:
In this case, again, they never

[00:29:20] Speaker 02:
I mean, from the position of the board, of the office, for the objective advice that applicants can rely on, what else was needed here for corroboration?

[00:29:33] Speaker 00:
Let me say one thing is clear.

[00:29:35] Speaker 00:
The applicant, the patentee in this case, has the burden of proof.

[00:29:37] Speaker 00:
He is trying to take advantage of the exception that allows him to get around the filing date of the otherwise 102E prior art.

[00:29:44] Speaker 00:
I think the law is very clear on that.

[00:29:45] Speaker 02:
Is there a burden going forward which shifts when you make your prima facie case?

[00:29:50] Speaker 02:
And here we are.

[00:29:52] Speaker 02:
You're saying you never even had any prima facie case of continuous activities?

[00:29:55] Speaker 00:
I think the word prima facie case wasn't used, but I think that's an accurate representation of what the board's findings were.

[00:30:01] Speaker 00:
And those findings have to be upheld if substantial evidence supports them.

[00:30:04] Speaker 00:
And I think one of the strongest pieces, let me just, I can end with this, but I'd love to keep talking about it.

[00:30:09] Speaker 00:
One of the strongest pieces is the November 2002 PowerPoint presentation by ATI, which said, we're going to have prototypes out by June 25.

[00:30:18] Speaker 00:
2003.

[00:30:18] Speaker 00:
So that's a half year time frame in which they themselves said, exercising presumably reasonable diligence, they should be able to get prototypes of the fully developed R400 chip.

[00:30:29] Speaker 00:
But instead, from November 2002, that's part of the critical period, all the way until November of 2005, they still had not produced a commercial embodiment.

[00:30:37] Speaker 00:
In the blue brief, we understand that a commercial embodiment first came out in 2005.

[00:30:41] Speaker 00:
We don't know when they reduced it to practice, but it was certainly after the constructive reductions to practice we're debating here

[00:30:47] Speaker 00:
And the point is, the diligence period, one can measure it by that six-month period that I just mentioned, coming from ATI itself.

[00:30:53] Speaker 00:
And the board, I think, reasonably said, you have to show where the diligence is.

[00:30:58] Speaker 00:
All they showed was that they were working very hard on a commercial embodiment for Microsoft that they ended up not producing.

[00:31:03] Speaker 00:
And that's engineering work, certainly.

[00:31:05] Speaker 00:
It justifies why they put this into logs.

[00:31:07] Speaker 00:
But it's not diligence to reducing this invention to practice.

[00:31:10] Speaker 00:
They had the conception.

[00:31:12] Speaker 00:
Remember, back in August of 2001, they could have filed a patent application

[00:31:15] Speaker 00:
that date and constructively reduced it to practice.

[00:31:19] Speaker 00:
They took a risk by, I guess, not filing a patent application, finally getting around to it years later, but there are a lot of periods here where the diligence is simply not explained by these logs and a more stringent requirement than they are suggesting must be applied.

[00:31:37] Speaker 00:
And I also want to be clear on the reduction to practice issue.

[00:31:40] Speaker 00:
So there's no debate.

[00:31:42] Speaker 00:
There was a complete waiver of that

[00:31:44] Speaker 00:
issue before the board again at A26 and A30 said that.

[00:31:50] Speaker 00:
If they actually wanted to present the argument that the RTL code running on a machine was an embodiment of this claim, they should have made it then.

[00:32:00] Speaker 00:
I'll make one more point on that.

[00:32:02] Speaker 00:
They point to the board's claim constructions, which seem to contemplate that there might have been a software aspect for each of the elements.

[00:32:11] Speaker 00:
The board never said all the elements would be software.

[00:32:14] Speaker 00:
And as the court has noted, all the elements certainly were not software.

[00:32:17] Speaker 00:
The board's full premise was the elements are hardware.

[00:32:20] Speaker 00:
But even beyond that, I don't think it would make the board's claim construction that they've pointed to was under the broadest reasonable interpretation, which is just an examination expedient to ensure that the claims that ultimately issue are appropriately cabined.

[00:32:34] Speaker 00:
It's not a claim construction to be applied in the reduction of practice.

[00:32:39] Speaker 00:
context.

[00:32:39] Speaker 00:
And the reason for that is quite simple.

[00:32:41] Speaker 00:
If we applied the broadest reasonable construction rule for reduction to practice, we would grant patents on things based on embodiments that were outside the true scope of the claim.

[00:32:54] Speaker 00:
So then the patent would issue would be instantly invalid under the Phillips standard.

[00:32:57] Speaker 00:
So that is not the claim construction standard for reduction to practice.

[00:33:01] Speaker 00:
And I'm happy to answer any questions about any of that.

[00:33:04] Speaker 00:
I see my time is up.

[00:33:05] Speaker 02:
Do I have any more questions for Mr. Crowe?

[00:33:08] Speaker 04:
No, just a comment, Mr. President.

[00:33:11] Speaker 04:
I know what we say up here is incredibly exciting.

[00:33:14] Speaker 04:
But you still have to wait for us to finish before you have to go.

[00:33:18] Speaker 02:
Thank you, Your Honor.

[00:33:23] Speaker 02:
Thank you.

[00:33:23] Speaker 02:
Mr. Farron-Crowe.

[00:33:27] Speaker 01:
May it please the Court.

[00:33:28] Speaker 03:
I want you to respond to the point that saying that you're working on R400 generally is somewhat meaningless when that is simply a particular commercial embodiment that was being designed for a particular customer.

[00:33:43] Speaker 03:
And it doesn't necessarily tie that testimony to actually working on the elements of the claims.

[00:33:51] Speaker 01:
Your Honor, I respectfully disagree.

[00:33:54] Speaker 01:
points to the portions we referred to earlier.

[00:33:56] Speaker 01:
Mr. Lefebvre's testimony points to the sequencer and graphics blocks as the metadata corresponding to that.

[00:34:01] Speaker 03:
All right.

[00:34:02] Speaker 03:
Ali says the metadata is not exhaustive of all sequencer shader pipe files that were edited during this time frame.

[00:34:12] Speaker 03:
But it shows that work was necessary for implementing the R400 design.

[00:34:17] Speaker 03:
Isn't that a general reference to a particular chip that never materialized?

[00:34:24] Speaker 01:
The R400 project was the entire context in which this invention arose, in which they were building the invention.

[00:34:30] Speaker 01:
So yes, ATI is a company that produces, ultimately, commercial products.

[00:34:34] Speaker 01:
But the invention arose in the R400, and hence Mr. Lefebvre's testimony that the metadata shows the work on the sequencer and graphics blocks, which Dr. Wolf, elsewhere, compared to the RTL, or compared the claims to the RTL, determined all the elements were present.

[00:34:48] Speaker 01:
Mr. Lefebvre also testifies

[00:34:50] Speaker 01:
that the design and development of the R400 generally was necessary to make progress on the sequencer block and the shader pipe block.

[00:34:57] Speaker 01:
So what he's testifying to here is that work was being done continuously around this invention to reduce it to practice.

[00:35:04] Speaker 01:
And it was constructively reduced to practice near the end of 2003 upon filing.

[00:35:09] Speaker 01:
And the evidence that he relies on does establish that every day work was going on in the project.

[00:35:15] Speaker 01:
And because the board applied the incorrect standard of continuous diligence instead of reasonably continuous diligence,

[00:35:20] Speaker 01:
The board was looking for specific gaps on a day-to-day basis.

[00:35:24] Speaker 01:
It was looking for unexplained lapses.

[00:35:27] Speaker 01:
And indeed, it didn't even consider, had there been an actual reduction of practice, the only diligence period that ATI would have needed to establish was through August 2002, and only for the 05-3 patent and the stuttered reference.

[00:35:40] Speaker 03:
reduction doesn't mean that the best you could ever hope for would be a remand to the board to apply the correct standard because there would be an awful lot of fact-finding for us to have to say what these metadata showed.

[00:35:54] Speaker 01:
I believe a remand would be appropriate your honor to apply the correct standard to this particular factual record because the board did not apply that standard and indeed it also didn't apply the correct standard for corroboration

[00:36:05] Speaker 01:
by saying, on the one hand, that the documents are not self-explanatory, and on the other hand, Mr. Lefebvre's testimony is uncorroborated.

[00:36:11] Speaker 01:
His testimony established what happened, and the documents corroborated that testimony.

[00:36:16] Speaker 01:
And so it is appropriate for a remand on the issue of applying the correct standard, because that continuous diligence, looking for unexplained lapses, and articulating that HCI board the burden.

[00:36:26] Speaker 03:
Your friend on the other side would say, we didn't.

[00:36:31] Speaker 03:
We assumed you worked every day.

[00:36:33] Speaker 03:
What we're saying is you didn't prove to us what you worked on.

[00:36:36] Speaker 01:
And I think even the application of the incorrect standard affects that analysis as well.

[00:36:40] Speaker 01:
The evidence as a whole is to be evaluated.

[00:36:44] Speaker 04:
What bothers me about that whole discussion is that you have a witness admittedly into the inventory.

[00:36:53] Speaker 04:
But he says, look, here's all the record evidence, and this is what it means.

[00:37:00] Speaker 04:
And nobody says, no, that's not what it means.

[00:37:03] Speaker 04:
That's what bothers me.

[00:37:04] Speaker 01:
Yeah, I agree with that, Your Honor.

[00:37:06] Speaker 03:
I still think you're being, and I don't know whether you're being vague on purpose or whether it's because you can't answer my question.

[00:37:15] Speaker 03:
But the problem, again, is assuming we believe everything that Mr. LaFey says, assuming that it's corroborated by the metadata, we can't tell.

[00:37:29] Speaker 03:
And the board couldn't tell what was being worked on.

[00:37:33] Speaker 03:
That just general reference to a project is not the same as working toward the claim limitations.

[00:37:40] Speaker 03:
And that's what the problem is.

[00:37:42] Speaker 03:
There's just the board found there was insufficient evidence that you were working toward the claim limitations.

[00:37:49] Speaker 03:
Right?

[00:37:50] Speaker 03:
And so where's your evidence that that's what was going on?

[00:37:52] Speaker 03:
If it's only those two paragraphs in Mr. Lefebvre's testimony, then I've got a problem with that.

[00:37:57] Speaker 03:
That's not enough in my views.

[00:37:58] Speaker 01:
Well, Your Honor, there's the evidence in Ms.

[00:38:00] Speaker 01:
Lefebvre's testimony.

[00:38:01] Speaker 01:
There's the corresponding metadata.

[00:38:03] Speaker 01:
There is the RTL code.

[00:38:04] Speaker 03:
Tell me what the corresponding metadata shows you.

[00:38:07] Speaker 03:
I can't tell.

[00:38:08] Speaker 03:
If it's just calendars and the fact that people were doing stuff, that to me doesn't seem like enough.

[00:38:14] Speaker 01:
The calendars refer to the sequencer folder, sequencer parts folder.

[00:38:17] Speaker 01:
And the sequencer is established in the evidence as corresponding to elements of the claims by Dr. Wolf and is explained the sequencer corresponds to the inventions in Dr. Lefebvre's testimony.

[00:38:27] Speaker 01:
There is also evidence in the record

[00:38:28] Speaker 01:
some of the PowerPoint slides that are in the record that refer to specific blocks being tested, for example, in the context of the first triangle test, like the sequencer and the shader pipe.

[00:38:37] Speaker 01:
And Dr. Wolf examined those blocks in the RTL code and described exactly how those each correspond to the claim limitations.

[00:38:45] Speaker 01:
So there is evidence in the record that the claim elements were being worked on during this period.

[00:38:50] Speaker 01:
And at a minimum, a remand is appropriate for consideration of that evidence under the proper standard.

[00:38:58] Speaker 01:
I see I have exhausted my time.

[00:38:59] Speaker 01:
I'll accept any further questions.

[00:39:01] Speaker 02:
Any more questions?

[00:39:02] Speaker 02:
Any more questions?

[00:39:03] Speaker 02:
OK.

[00:39:04] Speaker 02:
Thank you both.

[00:39:05] Speaker 02:
The case is taken under submission.

[00:39:07] Speaker 02:
That concludes this afternoon's argument for this panel.

[00:39:11] Speaker 02:
All rise.