[00:00:39] Speaker 00:
Next case is number 16-20-10, Noll's Electronics LLC against Cirrus Logic, Incorporated.

[00:00:47] Speaker 00:
Mr. Rainey.

[00:00:48] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:00:50] Speaker 02:
I'm Richard Rainey on behalf of Noll's, the Appellant.

[00:00:53] Speaker 02:
We were here before this Court in May arguing about the claim term package and the impact of this Court's NEMSPEC decision.

[00:01:01] Speaker 02:
on the construction of that term by the board and we're back again.

[00:01:04] Speaker 05:
Will a decision in that one materially affect this one and vice versa?

[00:01:08] Speaker 02:
I think it depends on the decision.

[00:01:10] Speaker 02:
So our view is that to the extent, you know, we think Memstek was controlling that case and indeed the solicitor conceded it's controlling that case.

[00:01:18] Speaker 02:
They said it's controlling there, it's even more controlling here because we're talking about the same PAT, the 231 PAT, which was Pat Issuing Memstek.

[00:01:27] Speaker 02:
We would submit

[00:01:28] Speaker 02:
The fundamental mistake made by the board in that re-exam is essentially the same mistake made here, and that is ignoring the guidance of this court, ignoring the intrinsic record, and ignoring the clear and extrinsic record, which in fact the board here recognized set forth the most commonly understood meaning of the term package.

[00:01:49] Speaker 05:
And it seems to us... So if that case issues first, will we be bound and vice versa?

[00:01:55] Speaker 05:
And you're going to say, well, it depends if I win or not.

[00:02:02] Speaker 02:
Again, it depends on the precise holding of the court.

[00:02:04] Speaker 02:
But I can conceive of a holding from that decision that would bind this court.

[00:02:09] Speaker 02:
Because in my view, if Memstack is controlling in that case, it's controlling here, necessarily.

[00:02:14] Speaker 02:
To me, it's a stronger case.

[00:02:16] Speaker 02:
Although in that case, you had Memstack on the face of the patent.

[00:02:19] Speaker 02:
Here we have it.

[00:02:20] Speaker 02:
It's the same patent issued in appeal.

[00:02:22] Speaker 02:
So if that's the situation, then I think yes, you're right.

[00:02:25] Speaker 02:
So the situation we have here is equally compelling.

[00:02:32] Speaker 02:
We have extrinsic evidence that clearly points us to a package requiring a mounting mechanism.

[00:02:39] Speaker 02:
We would argue, in fact, that two specific types of mounting mechanisms are the only two that are known in the art, the only two described in the intrinsic record.

[00:02:46] Speaker 02:
But in any event, a device that doesn't have a mounting mechanism is not a package.

[00:02:52] Speaker 04:
We are looking at extrinsic evidence to understand the meaning of a term in a patent.

[00:03:01] Speaker 04:
We're supposed to give deference to the lower tribunal's findings as to the meaning and value of that extrinsic evidence, right?

[00:03:11] Speaker 02:
Under the Tevin decision, yes.

[00:03:13] Speaker 04:
That's right.

[00:03:15] Speaker 04:
So I guess what I'm trying to figure out is, assuming that the intrinsic evidence

[00:03:21] Speaker 04:
doesn't clarify things.

[00:03:24] Speaker 04:
And so now we're just left with trying to figure out what is the meaning of electronic package.

[00:03:29] Speaker 04:
And then sources of extrinsic evidence are now submitted to the board, and they've got to sort it out, all this competing extrinsic evidence.

[00:03:40] Speaker 04:
And they make a finding that based on the corpus of extrinsic evidence they're looking at,

[00:03:49] Speaker 04:
the term package to one of skill in this art isn't necessarily confined and restricted to having a second level connection that uses either through whole mounting or surface mounting on a PCB, then therefore they don't feel compelled to insert all of that language into the claim.

[00:04:20] Speaker 04:
Should we be giving deference to that?

[00:04:24] Speaker 04:
Or is that still de novo?

[00:04:27] Speaker 02:
Well, so I think there's two responses.

[00:04:30] Speaker 02:
One, we have a Federal Circuit opinion that talks about the importance of the second level in the mountable package here.

[00:04:36] Speaker 02:
Two, we have intrinsic evidence that I think does show us there are two types of mounting mechanisms through all of the service mounts.

[00:04:44] Speaker 02:
Those are the only two discussed in this spec, which is entirely consistent with all of the treatises.

[00:04:50] Speaker 02:
We have a problem in the findings as well on extrinsic evidence because the board acknowledged the two sources that it looked to, which I would argue don't crisply address the issue.

[00:05:02] Speaker 02:
They went up to an abstract point in those two treatises, which don't really address the question about the second-level connection directly.

[00:05:10] Speaker 02:
But the board found with both of those references that no second-level connection was even required.

[00:05:17] Speaker 02:
That can't be right in the context of this court's decision in Menstec, which says, in the absence of a second-level connection, you've got no package.

[00:05:25] Speaker 04:
Well, the board at the same time said it wasn't reaching or making a finding that no second-level connection is required for this term package.

[00:05:34] Speaker 04:
It was just making an observation about that particular piece of extrinsic evidence.

[00:05:39] Speaker 04:
But ultimately, what it rested on was concluding that there was extrinsic evidence

[00:05:46] Speaker 04:
authoritative dictionaries, technical dictionaries, that counseled against loading up the meaning of package to have all these very particularized types of connections.

[00:05:58] Speaker 04:
And so I guess in the end, putting aside your MEMS tech opinion, which I know we got to get to, I'm not sure how we can up here all of a sudden say, no, the board was

[00:06:13] Speaker 04:
lacked any substantial evidence to read the extrinsic evidence the way it did?

[00:06:20] Speaker 02:
Let me try responding in two ways to that.

[00:06:21] Speaker 02:
One, the board did find, I think correctly so, that the other extrinsic evidence which it brushed aside represented the most commonly understood meaning for a package with the details that you were talking about.

[00:06:37] Speaker 02:
If our exercise under BRI is to come to a conclusion about what a claim means,

[00:06:43] Speaker 02:
Recognizing what those of skill and the art understand the term means seems to me, brushing aside the most commonly understood definition, is itself an error.

[00:06:56] Speaker 02:
Second, the court did, I agree with you.

[00:06:58] Speaker 02:
The court didn't say, we're going to ignore a second little package.

[00:07:01] Speaker 02:
It made up, we would argue, a construction.

[00:07:06] Speaker 02:
Any electromechanical connection needs, whatever that means.

[00:07:09] Speaker 02:
It never explains what that is.

[00:07:11] Speaker 02:
But the any electromechanical connection means it's not a position anybody advocated.

[00:07:16] Speaker 02:
They just pulled it out of thin air, out of two treatises which the board admitted, to their view at least, didn't require any second-level connection at all.

[00:07:25] Speaker 02:
So how can looking at two sources, which the board says don't require any second-level connection at all, pulling a kind of second-level connection?

[00:07:36] Speaker 04:
Well, I mean, to be fair, the way the case was pitched to them was

[00:07:40] Speaker 04:
that all they had to resolve on claim construction was whether the word packaging, as that is used in the claim, necessarily requires that there be a second level connection using one of those two connection means to a PCB.

[00:07:58] Speaker 04:
And so then the board said, well, after we consult all of the extrinsic evidence under the broadest reasonable interpretation, we don't necessarily think the word packaging requires all of that.

[00:08:08] Speaker 04:
It could be any connection.

[00:08:09] Speaker 04:
not these two particular connections that Knowles wants us to read into the client.

[00:08:17] Speaker 02:
So I would argue, first of all, we very clearly argued that a mechanism of some type had to be there.

[00:08:25] Speaker 02:
And in fact, Halter and did not have any mechanism of any kind to mechanically hold the device in place.

[00:08:32] Speaker 02:
You're talking about a flexible substrate where you had contact pads disclosed on one side,

[00:08:38] Speaker 02:
and the microphone attached on the other side to kind of a flexible, well, it's a flexible substrate.

[00:08:45] Speaker 02:
The best analogy I could come up with is it's kind of like a TV with a plug, where if you hired an installer to mount your TV, flat panel TV, on the wall to watch a football game, and you came home and all the installer had done is plugged it in, you would be very unhappy with the installer because there's no mounting there.

[00:09:03] Speaker 02:
We very clearly, and on multiple occasions, made the point

[00:09:07] Speaker 02:
that a mounting mechanism of some kind has to be there.

[00:09:10] Speaker 02:
And there is nothing in Altering teaching a mounting mechanism there.

[00:09:14] Speaker 04:
Well, this gets to your claim construction again, right?

[00:09:17] Speaker 04:
Because clearly there is a connection going on in Altering with the contact pads.

[00:09:23] Speaker 04:
When you insert the end of that chip into some other device, the contact pads are making a connection.

[00:09:30] Speaker 02:
There might be an electrical connection there, but there's no mechanical connection.

[00:09:33] Speaker 04:
Right.

[00:09:33] Speaker 04:
And so that gets to your claim construction.

[00:09:36] Speaker 04:
you need the claim construction to be understood to require not only an electrical connection, but also some type of mechanical bonding connection.

[00:09:45] Speaker 04:
And that was the terms of the debate on whether or not the extrinsic evidence requires an understanding of packaging to have all of that, and the board found otherwise.

[00:09:56] Speaker 02:
But the extrinsic evidence that the board said reflected the most common understanding in term clearly shows

[00:10:02] Speaker 02:
when you're dividing the universe of packages into two families.

[00:10:07] Speaker 02:
They share a common characteristic.

[00:10:10] Speaker 02:
And the common characteristic is they have electrical connections, and also mechanical support is provided to the device.

[00:10:17] Speaker 02:
Otherwise, in the other terms we frankly mentioned in the definition, talk about providing mechanical support for the circuits.

[00:10:24] Speaker 02:
And in the case of a MEMS microphone, which is what's at issue in this invention,

[00:10:29] Speaker 02:
They're very sensitive electronic devices.

[00:10:32] Speaker 02:
And what makes, frankly, producing a MEMS device with a microphone, and it's such a remarkable breakthrough, was the ability, in this case, to have the package to protect that microphone, both mechanically as well as providing electrical... Do you agree with Siris, at least, that Haltern has two levels of interconnection, one between the

[00:10:55] Speaker 05:
the microphone and the flexible member and the other one between the flexible member and the external?

[00:11:00] Speaker 02:
No.

[00:11:00] Speaker 05:
No?

[00:11:01] Speaker 02:
We do not.

[00:11:03] Speaker 02:
In our view, altern is missing a second level interconnection, as we contend the term is understood by those who still in the ARC.

[00:11:11] Speaker 04:
And that's because it doesn't have this mechanical bonding connection.

[00:11:14] Speaker 04:
Well, it lacks that, or it's not

[00:11:17] Speaker 04:
It's not surface mounted.

[00:11:18] Speaker 04:
It's not just through holes.

[00:11:19] Speaker 02:
It's a fundamentally different structure.

[00:11:21] Speaker 02:
It has no mounting mechanism of any kind thought in the reference.

[00:11:25] Speaker 02:
And the board nowhere explains, which it's obligated to do, we would submit, where haltering meets its construction of any electromechanical needs.

[00:11:38] Speaker 02:
There's no explanation to that at all.

[00:11:42] Speaker 02:
The second issue I want to just briefly touch on is the issue of written description with respect to the side reflow claims.

[00:11:49] Speaker 02:
We believe the board erred here in several respects.

[00:11:54] Speaker 02:
One, the board brushed aside the evidence of what a person wondering still in the arbor would have understood the state of the art at the time of the invention here.

[00:12:03] Speaker 02:
This is a disclosure, we think, which very clearly satisfies this court's area

[00:12:09] Speaker 02:
case law that provides the blaze marks toward solder reflow in the following regard.

[00:12:18] Speaker 02:
These claims are directed to a surface mounted embodiment, which is what the disclosed embodiment is, with solder pads on the bottom in an array on the bottom of the package.

[00:12:31] Speaker 02:
The evidence we submitted, which is not disputed by anybody, makes it very clear that those who stole in the yard understood

[00:12:37] Speaker 02:
at the time of the invention that the primary method that one would use to attach a package like this would be solder reflow.

[00:12:44] Speaker 02:
This is not a situation where you have 15 or 20 or 50 different techniques and we just pick one out of thin air.

[00:12:50] Speaker 02:
This is the technique that those of us filming aren't really used.

[00:12:53] Speaker 02:
So we submit the word air here in its binding.

[00:12:58] Speaker 02:
In fact, Sirius concedes that the

[00:13:03] Speaker 02:
so that the pads would be capable of reflow, and that's all that was required below under the claim construction exam or the word applied.

[00:13:10] Speaker 05:
Are you going to touch on your Agilent argument at all?

[00:13:12] Speaker 02:
Happy to touch on that, Your Honor.

[00:13:15] Speaker 02:
The third issue we have here is that we believe that there's been a failure of proof.

[00:13:21] Speaker 02:
The record is devoid of evidence establishing that the two serious entities are the proper parties.

[00:13:27] Speaker 05:
Agilent framed the question as, does the third party have standing properly

[00:13:33] Speaker 05:
bring the appeal.

[00:13:35] Speaker 02:
How is it applicable here?

[00:13:39] Speaker 02:
So the issue here is the statute that we're relying on, and this is what the Agilent court made clear, says that only the third party requester is a proper party both before the board and before this court.

[00:13:52] Speaker 02:
We actually already know one of the serious entities is not a proper party.

[00:13:56] Speaker 02:
It's the parent company.

[00:13:57] Speaker 02:
So at least one of the two entities is conceded is not a proper party.

[00:14:02] Speaker 02:
The other entity, when they appeared below, what they filed were papers to say, we are the real party in interest, a different inquiry at the patent office.

[00:14:13] Speaker 02:
And in fact, they made a motion to participate in oral argument.

[00:14:15] Speaker 02:
That motion was not granted.

[00:14:17] Speaker 02:
And what the PTO said was, you can show up at oral argument.

[00:14:22] Speaker 02:
If the panel wants to ask you a question or two, you can respond.

[00:14:26] Speaker 02:
And so that was the ruling.

[00:14:28] Speaker 02:
When they filed their notice of appeal, we immediately filed papers to have this case, have the record remanded so we could determine whether... Who filed the notice of appeal?

[00:14:38] Speaker 01:
I'm sorry, we filed the notice of appeal.

[00:14:40] Speaker 02:
You filed the notice of appeal, right.

[00:14:41] Speaker 02:
If I misspoke, I apologize.

[00:14:42] Speaker 02:
Okay.

[00:14:42] Speaker 02:
Yes, we filed the notice of appeal.

[00:14:43] Speaker 02:
They appeared and we immediately moved to have the record remanded for findings because the record had contained no evidence.

[00:14:52] Speaker 04:
But the problem there is that your side, or I don't know, were you there

[00:14:58] Speaker 04:
were you the lawyer below?

[00:14:59] Speaker 04:
I was not.

[00:15:00] Speaker 04:
Okay, well whoever the lawyer was below or the party itself never actually made a motion to say, wait a second, you put Cirrus on the caption of this interparties reexamination proceeding and that is wrong and I challenge this.

[00:15:17] Speaker 04:
I throw the gauntlet down.

[00:15:19] Speaker 04:
And so therefore the board was never actually

[00:15:23] Speaker 04:
confronted with having to answer this question.

[00:15:26] Speaker 04:
And then only after the board issued a decision, and then only after the board issued a reconsideration decision, and then after you filed your notice of appeal, did you then file a motion not below but to this court asking for something that you didn't actually ask below.

[00:15:48] Speaker 04:
And so I'm wondering whether now this is a waived situation

[00:15:53] Speaker 04:
in terms of whether you can now at this late juncture raise these types of arguments that were never actually put to the test below by presenting them to the board in the right vehicle.

[00:16:04] Speaker 04:
Yes, you did file an opposition to their desire to appear at the oral argument, but that opposition was confined to the question of whether or not Siris should be allowed to argue at the oral argument.

[00:16:18] Speaker 04:
It wasn't an actual

[00:16:20] Speaker 04:
formal challenge to whether they could be put on the caption.

[00:16:23] Speaker 04:
And as soon as they were put on the caption, your side remained silent for the whole way through.

[00:16:29] Speaker 02:
So respectfully, I believe we did properly object below.

[00:16:33] Speaker 02:
We were told we could not file any further papers on the issue.

[00:16:36] Speaker 02:
And in fact, their request to participate was denied.

[00:16:40] Speaker 02:
The fact that they were put on the caption, in fact, they're on the caption here, it does not make it accurate or correct.

[00:16:46] Speaker 02:
This is an issue they bear the burden of establishing.

[00:16:49] Speaker 02:
This is not our burden.

[00:16:50] Speaker 02:
It's their burden to establish that this corporate change here still allows them to be the third party in question.

[00:16:59] Speaker 04:
Well, it was accepted by the board.

[00:17:01] Speaker 02:
I don't know that there was any analysis by the board in this change.

[00:17:05] Speaker 04:
But necessarily, the caption was changed.

[00:17:07] Speaker 04:
And so therefore, it was accepted.

[00:17:09] Speaker 04:
And then that is where now, if you're unhappy with that, that's where you need to step in and say, wait a second.

[00:17:17] Speaker 04:
What happened here?

[00:17:18] Speaker 04:
And so that's the problem.

[00:17:21] Speaker 04:
is missing in this case.

[00:17:23] Speaker 04:
And so I don't know why it's permissible to overturn the work of the board, both in its initial decision and its recon decision, when this particular matter wasn't raised in front of it.

[00:17:38] Speaker 02:
Your Honor, there is no evidence in this record that the board made any analysis when arriving at who was putting in the caption.

[00:17:46] Speaker 02:
The best I can surmise is that's a ministerial task that was done

[00:17:50] Speaker 02:
with reflecting no analysis whatsoever.

[00:17:53] Speaker 02:
So I don't think one can read anything into how the caption was generated, just like the generation of the caption here is a mysterious task.

[00:18:02] Speaker 02:
So I don't think that reflects a substantive determination by anybody that, in fact, Sirius, and we know Sirius Parent is not a proper party.

[00:18:11] Speaker 04:
Do you get to lie in wait, though, and wait till you get to the next tribunal to make the challenge?

[00:18:16] Speaker 04:
well i i believe we raised the issue below are committed to filing for the papers i'm not sure what else but i mean you're not permitted to file a new project that's i think we did i mean what does it mean you didn't get and you weren't permitted filing for the papers uh... maybe you weren't allowed filing for the papers on the question of whether sears could appear at the real argument but that's a separate question from whether europe you had a right to contest the

[00:18:44] Speaker 04:
the change in party status?

[00:18:48] Speaker 02:
Judge, I respectfully believe we contested that at the first instance we could.

[00:18:52] Speaker 02:
Did you raise it at the oral argument before the board?

[00:18:56] Speaker 02:
They weren't permitted to participate in the oral argument.

[00:18:59] Speaker 02:
I guess our view was by that time we had prevailed on the issue of whether they could participate.

[00:19:03] Speaker 02:
And it was left to the discretion of the board if they wanted to ask them some questions.

[00:19:07] Speaker 02:
So I guess to us, it had been decided in our favor

[00:19:11] Speaker 04:
So what had been decided in your favor?

[00:19:14] Speaker 02:
That they could not participate in oral argument.

[00:19:16] Speaker 02:
That seems like a decision on the merits, if there is a decision on the merits, that they weren't the proper party in the case.

[00:19:23] Speaker 04:
Well, the problem was is that they filed their request to appear at the oral argument very, very late in an untimely way.

[00:19:30] Speaker 04:
And so the board concluded, well, this is not timely.

[00:19:34] Speaker 04:
So the best we'll do is let them sit there in case we have questions.

[00:19:40] Speaker 05:
I'm fascinated by lawyers believing that they're barred from filing anything and not having anything in the record formally objecting to that due bar event.

[00:19:53] Speaker 05:
And you have to show me something that says you did it.

[00:19:57] Speaker 02:
The best argument I have on that, Your Honor, is I believe my client feels like it raised the objection below.

[00:20:03] Speaker 02:
And at the first instance here on appeal, you raised the objection.

[00:20:06] Speaker 02:
So that's the best answer I have to that.

[00:20:10] Speaker 00:
All right.

[00:20:11] Speaker 00:
OK.

[00:20:12] Speaker 00:
Let's hear from Mr. Spien.

[00:20:13] Speaker 00:
We'll save the assembly battle, Mr. Rainey.

[00:20:25] Speaker 03:
Thank you.

[00:20:25] Speaker 03:
Good morning, honors.

[00:20:26] Speaker 03:
David Spien on behalf of the appellees.

[00:20:28] Speaker 03:
I'm going to start in the same order that Noll's counsel went, but if there's any particular questions, if you'd like.

[00:20:32] Speaker 05:
Well, let's just start with the same question I asked at the beginning, with respect to the other pending Noll's litigation.

[00:20:40] Speaker 03:
I think that the construction of package from the other case will be highly relevant here.

[00:20:45] Speaker 03:
I do agree with Council for Knowles that there would be ways that you could imagine a holding would be presented that doesn't necessarily bind both panels.

[00:20:55] Speaker 03:
The key case that they point to repeatedly in the briefing in today's argument back in May is the MEMS technology.

[00:21:02] Speaker 03:
And I think what's important with the MEMS technology case is that we look at the fact that there was a specific construction reached by the MEMS technology panel

[00:21:09] Speaker 03:
And that construction is that one awarding spilling art would know that a package is a self-contained unit that has two levels of connection to the device and to a circuit.

[00:21:18] Speaker 03:
If there's only one connection, there is no baggage.

[00:21:21] Speaker 03:
Nothing in that claim construction refers to surface mounting or through hole mounting.

[00:21:25] Speaker 03:
There's simply nothing there.

[00:21:27] Speaker 03:
So if anything, the MEMS tech decision actually supports the board's construction, which said we need to have a second level connection, but the manner in which you achieve that second level connection is open.

[00:21:36] Speaker 04:
And that's what the extrinsic evidence is.

[00:21:39] Speaker 04:
Completely agree with you if that's all the MEMS tech opinion said, but it did say something else in a different section of opinion, right?

[00:21:47] Speaker 04:
And that's the part that Knowles is really leaning on.

[00:21:51] Speaker 04:
The fact that at some point in the opinion, the opinion said something about a mountable package.

[00:21:59] Speaker 03:
Correct.

[00:22:00] Speaker 03:
Earlier in the opinion when discussing whether or not the preamble is all about the preamble.

[00:22:05] Speaker 04:
So then what is the meaning and vitality

[00:22:09] Speaker 04:
of that aspect of the opinion that actually invokes the notion of a mountable package?

[00:22:16] Speaker 03:
Respectfully, I would suggest that the reference to mountable earlier in the opinion does not trump the explicit reference or the explicit claim construction position that the court adopted.

[00:22:26] Speaker 03:
If mountable earlier in the opinion, the author of the opinion clearly wrote mountable and then clearly affirmed that ITC's claim construction

[00:22:34] Speaker 03:
If they understood mountable to have some significance, such as requiring through hole mounting or surface mounting, which is the position that Knowles had took throughout the proceeding before the board, then they wouldn't have been able to affirm the ITC's construction because essentially it would be overly broad.

[00:22:48] Speaker 03:
They would have to do something different to that construction.

[00:22:50] Speaker 03:
They didn't do anything of that nature.

[00:22:53] Speaker 03:
And what's also important here to recognize is that in the Memfect decision, the adopted construction was Knowles's construction.

[00:23:00] Speaker 03:
That's the construction that they advocated

[00:23:02] Speaker 03:
The party and their expert advocated that construction before the ITC because they thought it distinguished as Baumhauer reference.

[00:23:09] Speaker 03:
Now we're in this re-examination proceeding and we have a new reference, the Halter reference.

[00:23:13] Speaker 03:
And so those essentially want to wipe the board clean and start over and have a more narrow construction so that they can avoid the Halter reference.

[00:23:20] Speaker 03:
And if before they were satisfied with the construction, it only required a second-level connection, but not a specific type of second-level connection, we submit it should be, or at least the board has substantial evidence to have found that the term does not require the specific mounting techniques that Noel suggested below.

[00:23:39] Speaker 03:
And turning to the question of whether Coltrane actually has a mountable

[00:23:43] Speaker 03:
a multiple technique in some fashion.

[00:23:45] Speaker 03:
I've heard the hypothetical of if you watch football on TV and you ask them to mount it.

[00:23:50] Speaker 03:
Respectfully, I think the hypothetical is slightly off base.

[00:23:53] Speaker 03:
This is, we're talking about a device that's 15 millimeters in length.

[00:23:56] Speaker 03:
So it's not a long cord as might have been conveyed with the hand gestures.

[00:24:01] Speaker 03:
And what happens with halter-in is it connects the external device as a connector.

[00:24:06] Speaker 03:
So it'd be the equivalent of if you had a hole with a wall that had a hole in it that perfectly fit the TV.

[00:24:12] Speaker 03:
The TV's mountable in that wall and gets connected in behind it.

[00:24:15] Speaker 03:
That would be the type of mountable system that alternates disclosing.

[00:24:20] Speaker 03:
Of course, another way to look at it is through-hole mounting itself has pins, and those pins go into holes on the PCB board.

[00:24:28] Speaker 03:
So it's the same essential idea that you have a printed circuit board that's receiving with its holes the package.

[00:24:34] Speaker 04:
Is any of this necessary to your argument and to affirming the board's decision?

[00:24:41] Speaker 04:
No, it's not.

[00:24:42] Speaker 04:
This is more necessary just to respond to the argument.

[00:24:45] Speaker 03:
You're just having fun now.

[00:24:46] Speaker 03:
Not yet.

[00:24:48] Speaker 03:
Turning to, if I can, to the written description issue.

[00:24:51] Speaker 03:
I think context here for these claims is really important.

[00:24:56] Speaker 03:
The claims 23 through 27 were added

[00:24:58] Speaker 03:
into, added to the patent, late in the re-examination process.

[00:25:03] Speaker 03:
And as originally recited, they had a package with a substrate, and there were starter patents on the bottom of the substrate.

[00:25:10] Speaker 03:
Full stop, that was it.

[00:25:11] Speaker 03:
The examiner did not reject that claim for lack of written description.

[00:25:16] Speaker 03:
He rejected it for being anticipatable under 102 by Halterin and several other references.

[00:25:23] Speaker 03:
Knowles, in its next response, then amended the language to narrow it, such that those

[00:25:27] Speaker 03:
solder pads on the bottom of the substrate were configured for solder reflow.

[00:25:31] Speaker 03:
So by making that amendment, and we must presume that all claim terms have meaning, Noel's effectively is saying to the examiner and to the public, there are two flavors of solder pads on the bottom of the substrate, those that are configured for solder reflow, and those that are not configured for solder reflow.

[00:25:48] Speaker 05:
Do you read it as not allowing consideration of a posita's knowledge

[00:25:56] Speaker 05:
of the art at the time of filing.

[00:25:59] Speaker 03:
I don't read area as excluding any knowledge of the pose at that time.

[00:26:06] Speaker 03:
Assuming that the specification area is clear that you must look at the four corners of the specification.

[00:26:12] Speaker 03:
If the specification provides some hook for the pose's knowledge to become relevant, that would be applicable.

[00:26:20] Speaker 03:
Here, however, it's recognized and conceded

[00:26:23] Speaker 03:
that solder pads in the bottom, that's the blaze mark, that there's solder pads in the bottom, that at best, council said, it's principally done with solder reflow, but that means that there are other ways to do it.

[00:26:34] Speaker 03:
And so the disclosure of solder pads in the bottom of the substrate certainly is not an express disclosure of solder pads configured for solder reflow, and it's not an inherent disclosure of solder pads configured for solder reflow.

[00:26:47] Speaker 03:
If it was, then there would have been no need for them to amend the claim language in the first place, because they've already had a claim to solder pads on the bottom of the substrate.

[00:26:56] Speaker 03:
Rather than stay with that language, which, again, there was a written description for that broad genus, they went and tried to claim this very narrow species.

[00:27:04] Speaker 03:
Yet there's no description in the patent that the inventor at the time of finding, and let's keep in mind this patent was filed years ago, and it's now late in the re-examination process, in the middle of litigation,

[00:27:13] Speaker 03:
that they're now trying to claim this very specific invention of a solder pad that's configured for solder reflow.

[00:27:19] Speaker 03:
And frankly, the patent says nothing about what makes a solder pad on the bottom of the substrate configured for solder reflow versus one that's not configured for solder reflow.

[00:27:28] Speaker 03:
And because there's no description of how you figure out the two flavors, there's certainly no disclosure that at the time of filing, the inventor actually possessed that much more narrow invention.

[00:27:42] Speaker 03:
Turning to the Agilent questions that were addressed at the end of the argument, it's clear, in our opinion, that Wolfson Electronics filed this re-examination seven years ago.

[00:27:57] Speaker 03:
During the course of the re-examination, there's a corporate acquisition by Serious Logic bought Wolfson and changed Wolfson's name to Serious Logic International UK LTD.

[00:28:06] Speaker 03:
We submitted a notice to the board informing of that.

[00:28:10] Speaker 03:
We submitted a supplemental notice giving more details.

[00:28:13] Speaker 03:
At no point did the board say we need evidence, we need to see the merger agreement, we need to see some type of documents.

[00:28:18] Speaker 03:
They took that information and while they denied our right to participate at the hearing because there's a time link, they still allowed us to attend and answer any questions that they may have had about the third part of request for status.

[00:28:32] Speaker 03:
They had no questions.

[00:28:33] Speaker 03:
Then in the order,

[00:28:34] Speaker 03:
The initial order from the board, the board found us to be the third party requesters.

[00:28:39] Speaker 03:
And as the panel was highlighting during the earlier questions, there was no objection at that point from Knowles in every hearing decision seeking to somehow argue that we shouldn't participate in the appeal or in the process.

[00:28:52] Speaker 05:
Were you under the impression they were barred from doing that?

[00:28:56] Speaker 03:
I certainly do not believe that they would have been barred from raising it at any point prior.

[00:29:02] Speaker 03:
One key factual element to keep in mind here is that this acquisition occurred after the record was largely closed.

[00:29:09] Speaker 03:
The briefing to the board for reharing was done.

[00:29:12] Speaker 03:
The only activities that we have taken on behalf of Serious Logic and Serious Logic International have been to participate at the oral argument and participate in the sense that we showed up and were asked a few questions on the merits.

[00:29:26] Speaker 03:
And then participating in the reharing decision and then the briefing here with this court.

[00:29:31] Speaker 03:
At all other times, Wolfson Electronics was the third-party press that they were there the whole time.

[00:29:36] Speaker 03:
So they were essentially seeking a redo to send this back to inject further delay into this re-examination, which had been pending for years, so that they could run out the clock on the leg of the pad.

[00:29:46] Speaker 04:
When does this patent expire?

[00:29:47] Speaker 03:
I actually don't know.

[00:29:50] Speaker 03:
I believe 2022.

[00:29:54] Speaker 03:
would be when it expires.

[00:29:55] Speaker 03:
And so it's 2017.

[00:29:56] Speaker 03:
So if they can get, every year that they can get, get some closer to that date so that the re-exam would essentially be rendered a nullity for them.

[00:30:06] Speaker 03:
Unless the panel has any questions, I think I've addressed the main points that I'd like to address.

[00:30:10] Speaker 00:
Any more questions?

[00:30:11] Speaker 00:
Any more questions?

[00:30:12] Speaker 00:
Good.

[00:30:13] Speaker 00:
Thank you.

[00:30:13] Speaker 00:
Thank you, Mr. Steele.

[00:30:14] Speaker 05:
Unless you want to have more five minutes of fun.

[00:30:17] Speaker 05:
I'm good.

[00:30:18] Speaker 05:
Thank you.

[00:30:24] Speaker 02:
Just a few quick comments.

[00:30:29] Speaker 02:
On the Memstech decision, I believe counsel said your view is it supports the construction below.

[00:30:34] Speaker 02:
That is not the holding of the board.

[00:30:36] Speaker 02:
The board twice in its decision and honorary hearing viewed this court's Memstech decision as narrower than its construction.

[00:30:43] Speaker 02:
The second point I would make is, Judge, you talked about the amountable package part.

[00:30:49] Speaker 02:
That's actually in the claim construction section where the court says,

[00:30:53] Speaker 02:
The requirement that the components listed in the claim body come together to form a mountable package is thus an important characteristic of the claim invention.

[00:31:00] Speaker 02:
And we agree, a mountable package is critically important here.

[00:31:03] Speaker 04:
Again, that was in the context of trying to figure out whether the preamble breathed life and meaning into the claim such that it should be considered an actual limitation to be given patentable weight.

[00:31:14] Speaker 02:
That's correct.

[00:31:15] Speaker 04:
But then there was, I guess, a couple of pages later, that's where we get into the heart of where

[00:31:22] Speaker 04:
You know, this court said, you know, we understand this term package to mean a self-contained unit with two levels of connection.

[00:31:29] Speaker 04:
One connection to the device, one connection to some outside circuit, parentheses, system, closed parentheses.

[00:31:37] Speaker 04:
That's right.

[00:31:37] Speaker 04:
And then period.

[00:31:39] Speaker 04:
So right there, it's talking about a connection to some external unit.

[00:31:46] Speaker 04:
It didn't say a connection that is a mountable connection.

[00:31:50] Speaker 04:
to that external unit.

[00:31:51] Speaker 02:
So my only comment here is one has to take all this in the context of what was being disputed at the time.

[00:31:58] Speaker 02:
In that particular case, they said there was no connection at all to the outside world with the particular prior art reference.

[00:32:04] Speaker 02:
That was the invalidity section of the opinion.

[00:32:08] Speaker 02:
But this is a problem we've seen here, taking words in these definitions out of context.

[00:32:14] Speaker 02:
This still is a package for a microelectronics device.

[00:32:18] Speaker 02:
We've tried to lay the groundwork of what a person of ordinary skill and power would understand these packages to mean.

[00:32:23] Speaker 02:
And to take away from the package the mounting mechanism, which is consistent across all of these, eliminates one of the fundamental characteristics of what these things have.

[00:32:35] Speaker 02:
It provides the support.

[00:32:37] Speaker 02:
for these devices, that's absolutely critical in terms of how these function.

[00:32:41] Speaker 02:
So again, we have to be careful about taking phrases and words in isolation without understanding the overall context of what a package is in this particular field of art.

[00:32:52] Speaker 02:
Just one last comment on the written description.

[00:32:54] Speaker 05:
Well, let me ask you this.

[00:32:55] Speaker 05:
Is it your position that solder reflow is the only realistic possibility or the only possibility?

[00:33:05] Speaker 02:
I believe, as a practical matter, it's the only possibility.

[00:33:09] Speaker 02:
So maybe realistic and practical.

[00:33:13] Speaker 02:
And the reason, I'm just going to get to this issue of blazemarks.

[00:33:15] Speaker 02:
I think Council said the only blazemark is solder pads on the bottom.

[00:33:18] Speaker 02:
That's not accurate.

[00:33:18] Speaker 02:
That's not what we say.

[00:33:20] Speaker 02:
There's a number of blazemarks in this.

[00:33:22] Speaker 02:
That's a very prominent one.

[00:33:24] Speaker 02:
But this was a microelectronics package from MEMS microphones that is a surface-mounted device.

[00:33:30] Speaker 02:
And in fact, in the background of the invention, the inventor makes very clear, I'm trying

[00:33:35] Speaker 02:
In fact, he says the through-hole approaches that have been used in the past, the DIP and the SLIC, are not as desirable because I'm looking to make one that can be manufactured.

[00:33:48] Speaker 02:
And in the manufacturing process, when you're talking about an array of solder pads, you're going to use surface mount.

[00:33:55] Speaker 02:
So at most, we're talking about two or three, we mentioned wave soldering and hand soldering, but those would not be used in a manufacturing process for a MEMS microphone.

[00:34:05] Speaker 04:
An expert declaration or anything like that?

[00:34:08] Speaker 04:
Saying everything that you're saying?

[00:34:10] Speaker 02:
There is tons of extrinsic evidence that we cited that the war just blew through because the war said, I'm not going to look at it.

[00:34:17] Speaker 04:
I'm sorry.

[00:34:18] Speaker 04:
Was there an expert declaration or anything like that?

[00:34:21] Speaker 02:
Standing here right now, I can't answer that question.

[00:34:24] Speaker 05:
I'm wondering if, for instance, hand soldering includes a robot doing it.

[00:34:31] Speaker 02:
I don't know the answer to that question.

[00:34:36] Speaker 02:
Okay.

[00:34:37] Speaker 02:
No further questions?

[00:34:38] Speaker 00:
No, I think we've exhausted it.

[00:34:40] Speaker 00:
Thank you, thank you both, in case you're sticking on your submission.