[00:00:08] Speaker 04:
The law and the Patent Office rules impose certain requirements on an IPL.

[00:00:35] Speaker 04:
For example, a petition may be considered only if the petition identifies in writing and with particularity each claim challenged the grounds on which the challenge to each claim is based and the evidence that supports the grounds for the challenge.

[00:00:53] Speaker 04:
Further, and this is from 35 USC 312A3, in addition, each petition must include a full statement of the reasons

[00:01:04] Speaker 04:
for the relief requested.

[00:01:06] Speaker 03:
Okay, we know what the IPR is, how they operate, so what is it that you think is your best argument here with respect to alleged errors by the board?

[00:01:18] Speaker 04:
Well, the first error that the PTAT made, and probably the most serious one, is that the petitioner did not satisfy these rules that I just started reading and you're already familiar with.

[00:01:30] Speaker 04:
Instead, the petitioner

[00:01:32] Speaker 04:
For the means plus function, there were two means plus function claim limitations.

[00:01:36] Speaker 04:
The petitioner merely recited the claim language for the first and second processor means in one column of the table, and provided quotations from one reference, Martinson, in the other column of the chart.

[00:01:51] Speaker 04:
Now, I've done over 200 IPRs, and before I did all of these IPRs, I was a judge at the PTAP, and I was at the PTAP for three years.

[00:02:01] Speaker 04:
And I can honestly say I've never seen an IPR like this.

[00:02:04] Speaker 04:
It's not normal.

[00:02:06] Speaker 04:
For instance, I was involved in an IPR last year, which was... Can we talk about this case?

[00:02:12] Speaker 00:
I mean, the petitioner here, when it filed the petition, didn't understand these to be means plus function claims.

[00:02:19] Speaker 00:
So why would it put means plus function analysis in its petition?

[00:02:24] Speaker 03:
Right, because you said they weren't mean plus function claims initially.

[00:02:28] Speaker 04:
No, I don't think... At the district court?

[00:02:31] Speaker 04:
At the district court, they initially said, well, this is a very big difference.

[00:02:35] Speaker 04:
At the district court, which preceded the filing of the IPR, the petitioners said they were means plus function claims.

[00:02:44] Speaker 03:
Right, but the petitioner went to the IPR and said, okay, we'll buy the patent owner's contention that they're not means plus function claims.

[00:02:52] Speaker 03:
And then you went to the IPR.

[00:02:54] Speaker 03:
I mean, I don't think this is the best argument.

[00:02:56] Speaker 03:
You went to the board and said,

[00:02:57] Speaker 03:
know that now the district court, in a very thorough opinion, says they're means plus function claims.

[00:03:03] Speaker 03:
So now we want you to call them means plus function claims.

[00:03:06] Speaker 03:
So how could you have been surprised by the means plus function analysis that the board later engaged in, or surprised that they didn't hold that against the petitioner for not including means plus function analysis in their petition?

[00:03:18] Speaker 04:
Well, the petitioner has the burden to show that the claims are unpatentable.

[00:03:23] Speaker 02:
So I guess here's the problem.

[00:03:26] Speaker 02:
I'll try to simplify it even more.

[00:03:29] Speaker 02:
They allege in the petition that they're not means plus function claims and that they're invalid.

[00:03:37] Speaker 02:
You come back and say, no, they're means plus function claims.

[00:03:39] Speaker 02:
Why would it be wrong for them in the reply brief to say, well, even if you treat them as means plus function claims, they're still invalid.

[00:03:46] Speaker 02:
Even if we accept the petitioner, why would that be problematic in a reply under IPR rules?

[00:03:52] Speaker 02:
Because you're the one who alleged, your response was, they are means plus function, for them to say, either way, they're invalid.

[00:03:59] Speaker 02:
Why isn't that proper reply?

[00:04:01] Speaker 04:
Because in a reply, a reply isn't, as I indicated in the brief, a reply isn't intended to establish a prima facie case of obviousness.

[00:04:10] Speaker 04:
And in order to establish a prima facie case of obviousness of a means plus function claim limitation, you have to identify the function.

[00:04:17] Speaker 00:
But what if you legitimately don't think they're means plus function claims?

[00:04:22] Speaker 00:
You don't have to have some kind of second sight that the patentee is going to argue their means plus function, and the board's going to agree with them if you think they're not means plus function.

[00:04:33] Speaker 03:
Especially when the patentee argued they weren't at the district court.

[00:04:39] Speaker 04:
The patentee argued they weren't, and then there was I didn't know the district court case, nor was I involved in the IPR.

[00:04:44] Speaker 04:
I'm just doing the appeal.

[00:04:48] Speaker 04:
What the patent owner did was at least rational.

[00:04:51] Speaker 04:
The patent owner said, we don't think initially of the district court that means plus function claims.

[00:04:56] Speaker 00:
And the district court said, you're wrong.

[00:04:57] Speaker 00:
They are means plus function.

[00:04:58] Speaker 00:
Why is it what the petitioner did equally rational?

[00:04:59] Speaker 00:
Because you were arguing in the district court that these weren't means plus function claims.

[00:05:03] Speaker 00:
So when it goes to the patent office, it doesn't want to take the chance that the district court says they're not means plus function.

[00:05:10] Speaker 00:
So it says, they're not.

[00:05:12] Speaker 00:
They're still invalid.

[00:05:13] Speaker 00:
But then when you come back and switch your position, they say, well,

[00:05:17] Speaker 00:
Again, even under that, they're still in balance.

[00:05:19] Speaker 04:
But I think in this case, if you look at the timeline, the patent owner switched its position after the district court said you were wrong.

[00:05:26] Speaker 04:
You know what?

[00:05:26] Speaker 00:
The switching the position is not going to get you anywhere because you switched your position too.

[00:05:31] Speaker 00:
Twice.

[00:05:32] Speaker 02:
And also, forget about all of that.

[00:05:35] Speaker 02:
The board ultimately said, we observed at the outset that this claim

[00:05:40] Speaker 02:
construction determination does not affect the patentability determination with regard to claims 1 to 7 and 18.

[00:05:46] Speaker 02:
So even after recognizing your argument that the reply brief improperly moved to a different claim construction, recognizing that you made that argument, not necessarily agreeing with it, but recognizing you made it, the board said either way, we come out the same way on patentability.

[00:06:02] Speaker 02:
So it wouldn't have affected us.

[00:06:04] Speaker 02:
So why then

[00:06:05] Speaker 02:
How can you complain about process when at the end of the day the board says under either construction they would come to the same conclusion?

[00:06:12] Speaker 02:
It's harmless error at best at that point.

[00:06:18] Speaker 02:
Whatever they added in the reply brief is at best harmless error if the board said they would have found against you under either construction.

[00:06:25] Speaker 04:
I don't think it's harmless error because, for example, if the petition would have included an appropriate means plus function analysis,

[00:06:33] Speaker 04:
we could, and this is the way it's supposed to work, then the patent owner says what's wrong with it and why they disagree with certain aspects.

[00:06:41] Speaker 04:
Now in this case, even if you look at the reply, we don't think the reply should be considered because we don't think a reply is the proper place to put a prima facie case of obviousness in.

[00:06:52] Speaker 04:
But even if it were considered, it's still lacking.

[00:06:55] Speaker 04:
If you look at the reply which is in the appendix, it doesn't identify the function, it doesn't identify the corresponding structure,

[00:07:02] Speaker 04:
and it doesn't say where in the prior art these items from the corresponding structure can be found.

[00:07:09] Speaker 04:
So even in the reply, there isn't a fundamental prima facie case of obviousness for why these means plus function claim limitations are not.

[00:07:21] Speaker 04:
And it didn't come out until the final written decision when the board put in a means plus function claim construction

[00:07:28] Speaker 04:
that I believe is correct for the reasons I indicated in the appeal brief.

[00:07:33] Speaker 04:
It wasn't until the final written decision that we received something that should have been in the petition.

[00:07:42] Speaker 03:
And even the final written... So what should they have done?

[00:07:45] Speaker 03:
Just file a new petition?

[00:07:47] Speaker 03:
Should they have filed a new petition?

[00:07:50] Speaker 04:
Well, I'll tell you what was done in the other case that I referred to.

[00:07:53] Speaker 04:
I pointed out, representing the patent owner,

[00:07:56] Speaker 04:
That's a means plus function claim.

[00:07:57] Speaker 04:
There's no means plus function analysis.

[00:07:59] Speaker 04:
This is not a prima facie case of obvious, and she should get rid of it.

[00:08:03] Speaker 04:
And the board, in that case, did get rid of it.

[00:08:06] Speaker 04:
They said as, I'm quoting, petitioner did not provide the proper analysis for any of the means plus function limitations.

[00:08:14] Speaker 04:
That is, the petitioner did not identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claim function.

[00:08:25] Speaker 04:
let alone show how the prior law teaches such structure.

[00:08:29] Speaker 04:
When a petition does induce that for means plus function limitations, then the IPR should not be instituted on the means plus function.

[00:08:39] Speaker 02:
What makes you think the board actually adjudicated these as means plus function claims?

[00:08:46] Speaker 02:
I read the board opinion as being quite equivocal at best.

[00:08:50] Speaker 02:
saying that they basically lay out both and say, whether there means plus function or regular, your claims are unpatentable.

[00:08:59] Speaker 02:
And so they say, for convenience, we'll give you the district court's claim constructions.

[00:09:03] Speaker 02:
But I actually don't see the board as adopting the district court's claim construction.

[00:09:07] Speaker 02:
I see the board as sort of waffling, which I don't love.

[00:09:11] Speaker 02:
But under this circumstance, where either way you lose, I don't know how you win.

[00:09:19] Speaker 04:
Okay, I'll tell you how we win because I looked at the means plus function analysis in the final written decision, which I think it's kind of late to put the analysis for the first time that's at least legitimate in the final written decision.

[00:09:31] Speaker 02:
But I don't think they adopted a means plus function analysis.

[00:09:34] Speaker 02:
Do you?

[00:09:34] Speaker 02:
I mean look, pages 18 and 19.

[00:09:36] Speaker 02:
Did the board say we treat these claims as means plus function and therefore find the claims to be invalid?

[00:09:43] Speaker 04:
Well, I think, like you said, they were waffling, which

[00:09:46] Speaker 04:
To my mind, judges are supposed to make judgments.

[00:09:49] Speaker 04:
That's why the judges still have not yet.

[00:09:51] Speaker 02:
No, no, no, no.

[00:09:51] Speaker 02:
You used to be a judge yourself.

[00:09:52] Speaker 02:
You know if you can kill a claim in five different ways, you don't have to actually go through all of them.

[00:09:57] Speaker 02:
You can say this thing is dead.

[00:09:59] Speaker 02:
Just like on appeals, sometimes I can say, listen, I don't have to decide whether this is means plus function or not, because either way, this claim is dead.

[00:10:08] Speaker 03:
So what else do you think that they did wrong?

[00:10:11] Speaker 04:
I think it's clear that they are means plus function claims.

[00:10:14] Speaker 04:
I have a section in the appeal brief

[00:10:16] Speaker 04:
for why their means plus function claim limitations.

[00:10:19] Speaker 04:
In addition, the district court's reasoning for why their means plus function claim limitations is in the appendix.

[00:10:27] Speaker 04:
So I think it's clear at this point that everybody knows their means plus function claim limitations.

[00:10:33] Speaker 04:
And even when you look at the final written decision, there's limitations that are missing.

[00:10:38] Speaker 04:
There's components in the corresponding structure from the patent that are missing from the prior.

[00:10:44] Speaker 03:
OK, which ones?

[00:10:53] Speaker 04:
The EEPROM is missing.

[00:10:55] Speaker 04:
That's a component that was identified in the structure of the district court's claim construction and it was also included in the final written decision for the very first time in the process.

[00:11:06] Speaker 04:
The NVRAM is also missing and the bi-directional data bus is missing.

[00:11:10] Speaker 04:
Now, there's missing components but that's, you know, that doesn't even get them to first base.

[00:11:16] Speaker 04:
That's not, it's not sufficient to say that a means plus function claim limitation is obvious

[00:11:23] Speaker 04:
even if it had contained all, even if the prior art had contained all of the components.

[00:11:28] Speaker 04:
You have to show that there's structure in the way that it's described in the packet, because that's the corresponding structure.

[00:11:37] Speaker 04:
But they didn't even, they weren't even able to identify all of the components in the corresponding structure.

[00:11:45] Speaker 04:
Never mind get to the ultimate decision that does the prior art teach or suggest that all of the components

[00:11:53] Speaker 04:
that are in the corresponding portion of the specification, the corresponding structure, are in the prior audit.

[00:12:01] Speaker 04:
So there's components that are missing.

[00:12:05] Speaker 04:
And so if there's components that are missing, how could they possibly show that the corresponding structure is obvious in light of the prior audit?

[00:12:14] Speaker 03:
It doesn't even have the components.

[00:12:15] Speaker 03:
Did they cite to Dr. Franzen's testimony before the district court?

[00:12:23] Speaker 04:
But Dr. Franzen did not at that point, they weren't talking about a means plus function obviousness analysis.

[00:12:31] Speaker 04:
So that wasn't complete.

[00:12:33] Speaker 03:
But he said one of ordinary skill would have been able to derive the claims from the claims alone, the structures for performing the corresponding functions.

[00:12:41] Speaker 03:
Didn't he say that?

[00:12:46] Speaker 04:
I think he did say that.

[00:12:47] Speaker 04:
I think he was arguing why there would be support in the specification for the claims.

[00:12:53] Speaker 04:
But there's no, I think to do a means plus function analysis and to reach the conclusion that a means plus function limitation is obvious in light of the prior art, such sweeping statements out of context are not sufficient.

[00:13:09] Speaker 04:
Rather, you have to identify the function in the means plus function limitation.

[00:13:14] Speaker 04:
You have to identify all of the components in the corresponding structure that's in the specification.

[00:13:20] Speaker 04:
And you have to show that the prior art

[00:13:22] Speaker 04:
has those components arranged as they are arranged in the specification of the patent.

[00:13:29] Speaker 04:
That is what's necessary in order to find the means plus function claim limitation to be obvious.

[00:13:35] Speaker 04:
And that wasn't there throughout, even at the last thing that the PTAB does is to issue a final written decision.

[00:13:43] Speaker 04:
And even the final written decision doesn't have all the, doesn't identify all the components in the prior audit.

[00:13:51] Speaker 04:
that is in the corresponding structure of the specification.

[00:13:55] Speaker 03:
Well, do you think it was inappropriate for the PTAP to consider Dr. Franzen's testimony before the district court?

[00:14:01] Speaker 03:
It was in the record before them, right?

[00:14:03] Speaker 04:
It's in the record, but Dr. Franzen's testimony is not sufficient to show that these two means-post-function claim limitations are obvious, because the testimony doesn't identify all the components

[00:14:20] Speaker 04:
which are in the structure that corresponds to the function that's recited in the means plus function element, nor does he indicate that these components are arranged as they are arranged in the structure as described in detail in the patent.

[00:14:40] Speaker 03:
What else do you think the board thought wrong?

[00:14:52] Speaker 04:
Oh, so there's two claim limitations that are issue in this appeal.

[00:14:56] Speaker 04:
One is, well, there's two groups.

[00:14:58] Speaker 04:
One is the first and second processor means, which we've just been discussing.

[00:15:02] Speaker 04:
And the second is concurrently transmitting the alphanumeric data and commands to the base station.

[00:15:11] Speaker 04:
And for that claim limitation, we believe that the PTAB's claim construction is not correct.

[00:15:18] Speaker 04:
And we believe under the correct claim construction,

[00:15:22] Speaker 04:
that there's not sufficient evidence in the record to show that the prior rot meets that limitation.

[00:15:29] Speaker 04:
And if you can turn to the patent Claim 1, I can explain it to you.

[00:15:34] Speaker 04:
It's at Appendix 69.

[00:15:37] Speaker 04:
Claim 1 starts at the bottom of the right-hand column.

[00:15:45] Speaker 04:
And it goes on to Column 13, which is on the next page.

[00:15:52] Speaker 04:
So the claim, the particular claim limitation, which is not taught or suggested by the prior art, is on the top of column 13.

[00:16:02] Speaker 04:
Concurrently transmitting the alphanumeric data and commands to the base station.

[00:16:09] Speaker 04:
So this isn't that complicated.

[00:16:11] Speaker 04:
You look at the phrase alphanumeric data, you see that the word the precedes it.

[00:16:16] Speaker 04:
So then you're thinking, well, alphanumeric data, what alphanumeric data is it referring to?

[00:16:22] Speaker 04:
and if you go to the previous page, it tells you what it's referring to.

[00:16:27] Speaker 04:
It says, generating alphanumeric data from selected ones of key operations at the handset.

[00:16:37] Speaker 04:
So the phrase from column 13, concurrently transmitting the alphanumeric data and commands to the base station, in light of the previous limitation that I just read to you,

[00:16:51] Speaker 04:
requires concurrently transmitting the alphanumeric data generated by keystroke operations at the handset and commands to the base station.

[00:17:02] Speaker 04:
So just any alphanumeric data is not sufficient to meet this claim limitation.

[00:17:10] Speaker 04:
Rather, there has to be concurrent transmission of alphanumeric data, a particular type of alphanumeric data,

[00:17:18] Speaker 04:
The alphanumeric data that was generated by keystroke operations at the handset.

[00:17:22] Speaker 01:
And the board found that Martinson disclosed that at 8.35.

[00:17:25] Speaker 01:
The board found that.

[00:17:27] Speaker 01:
So what's erroneous about that?

[00:17:34] Speaker 01:
The board found Martinson disclosed exactly that.

[00:17:40] Speaker 04:
Just getting to the proper page in my notes.

[00:17:49] Speaker 04:
OK, the board came up with a scenario, you were right, I read that portion of the final written decision, where they felt that if it were used in that scenario, it would meet the claim limitation.

[00:18:02] Speaker 04:
But there's really, I'll read the board scenario.

[00:18:11] Speaker 04:
You don't need to read it, we're all on it.

[00:18:14] Speaker 04:
OK, OK.

[00:18:15] Speaker 04:
But the mere selection, so the board is saying that,

[00:18:19] Speaker 04:
Well, if somebody has a handset and they're scrolling through telephone numbers and they press it to hit the talk key, by hitting the talk key, then that means that this claim limitation is met.

[00:18:33] Speaker 04:
But that does not mean the claim limitation was met, because the mere selection of one of a group of phone numbers at a handset, as disclosed in Martinson, that had been stored at the base station

[00:18:46] Speaker 04:
does not teach transmitting the alphanumeric data that had been previously generated.

[00:18:53] Speaker 02:
When they hit talk, it has to transmit to the base station an identification of what number to call.

[00:19:00] Speaker 02:
It doesn't have to transmit the phone number, but whether I have speed dial or whether my speed dial is Billy, my son's name, and I click Billy, it transfers Billy to the base station.

[00:19:09] Speaker 02:
And then the base station knows that Billy is associated with a particular number.

[00:19:14] Speaker 02:
So maybe all I've sent is Billy.

[00:19:16] Speaker 02:
In the scrolling, maybe all they said is a 1 or a 2 or a 3 corresponding to the speed dial punch button number, but that's still alphanumeric data.

[00:19:24] Speaker 02:
Whether it's the name Billy or it's a 1, a 2, or a 3, then you have to send the phone number back.

[00:19:29] Speaker 02:
It just has to send back alphanumeric data.

[00:19:30] Speaker 02:
In fact, the fact that it's called alphanumeric, what it's plain face means it's not necessarily the phone number, because the alpha part would fall away if it was.

[00:19:39] Speaker 02:
So all you know is you scroll down, hit talk, it doesn't automatically

[00:19:43] Speaker 02:
call, it has to send the signal back to the base station, and it has to identify which number to call.

[00:19:49] Speaker 02:
It may not be by phone number, but it's by some identifying characteristic, and that's alphanumeric.

[00:19:54] Speaker 04:
I think we both agree it wouldn't send the phone number to the base station, because the phone number is already at the base station, and that would be wasteful.

[00:20:00] Speaker 04:
But it has to send something.

[00:20:02] Speaker 04:
It has to send something, but there has to be concurrent transmission

[00:20:06] Speaker 02:
of that information plus the top command.

[00:20:09] Speaker 02:
That's enough.

[00:20:09] Speaker 02:
Well, I think that... First, under a substantial evidence standard, for me to review the board's decision on what a reference disclosure is.

[00:20:16] Speaker 02:
Seems like enough to me.

[00:20:19] Speaker 04:
Well, I would think that would just be one command and not both the command and the alphanumeric data.

[00:20:24] Speaker 04:
And then alphanumeric data, that was what was alleged to be the alphanumeric data by the petitioner was the phone number and not just some indication.

[00:20:35] Speaker 02:
Okay, do you have anything further?

[00:20:36] Speaker 02:
Because we are way over our time.

[00:20:39] Speaker 04:
No, Your Honor, thank you very much.

[00:20:42] Speaker 02:
Okay, thank you.

[00:20:43] Speaker 02:
The case is taken under submission.

[00:20:46] Speaker ?:
All rise.

[00:20:51] Speaker ?:
The Honorable Court is adjourned until tomorrow at four minutes.