[00:00:44] Speaker 01:
Good morning, Your Honors, and may it please the Court.

[00:00:49] Speaker 01:
It would not have been obvious to simply substitute Young's delay elements in place of Nienaber's delay elements, exactly as Xilinx proposed, because that would render Nienaber unsatisfactory for its intended purpose, which is vertically centering an analog television picture, as reflected in Nienaber's title and throughout the document.

[00:01:11] Speaker 02:
You're saying this even if we agree

[00:01:13] Speaker 02:
with the claim construction below?

[00:01:18] Speaker 01:
Yes.

[00:01:19] Speaker 01:
The issue of combining Nina Burr and Young is independent of the claim construction issues in this appeal.

[00:01:25] Speaker 01:
Now, the board tried to avoid this conclusion in three ways, but all three are flawed.

[00:01:33] Speaker 01:
First, the board characterized PLL's arguments in this regard as based upon bodily incorporation of Young's delay elements into Nina Burr's circuit.

[00:01:43] Speaker 01:
However, that is exactly what Zylinks proposed.

[00:01:47] Speaker 01:
In their words, they said, quote, simple substitution.

[00:01:50] Speaker 01:
And that is all they proposed.

[00:01:52] Speaker 01:
That is what we had a trial about.

[00:01:54] Speaker 01:
We didn't have a trial about any other type of combination of Nienaber and Young.

[00:02:00] Speaker 01:
Second, Zylinks argues that there are other undesirable side effects that Nienaber aims to solve.

[00:02:06] Speaker 01:
And the substituting Young's delay elements would not make Nienaber unsatisfactory for those other aims.

[00:02:13] Speaker 01:
However, the substitution would frustrate centering of a television picture.

[00:02:18] Speaker 01:
And that by itself is enough to have deterred one with ordinary skill in the art from making the substitution.

[00:02:24] Speaker 02:
I just want to make one thing, Mr. Phillips.

[00:02:26] Speaker 02:
When you say what they were urging was substitution of an element for young into an element of my neighbor, I guess it is, it's talking about moving element 27

[00:02:41] Speaker 02:
in Young and switching it with 16 and 12 in nine neighbors.

[00:02:47] Speaker 02:
Is that correct?

[00:02:53] Speaker 02:
That is correct, Your Honor.

[00:02:56] Speaker 02:
I'm sorry.

[00:02:56] Speaker 02:
I just want to make sure I understood.

[00:02:58] Speaker 01:
Yes.

[00:02:59] Speaker 01:
Element 27, the delay element in Young, was proposed as being the replacement for delay elements 12 and 26 in Neenaberg.

[00:03:09] Speaker 02:
Oh, I'm sorry.

[00:03:11] Speaker 02:
Was it 12 and 26 or 12 and 16?

[00:03:13] Speaker 02:
12 and 26, Your Honor.

[00:03:17] Speaker 02:
12 and 26, okay.

[00:03:19] Speaker 01:
All right.

[00:03:23] Speaker 01:
Third, the board said that those skilled in the art would have made other modifications.

[00:03:27] Speaker 01:
In fact, they said, quote, any modification necessary to make the substitution acceptable.

[00:03:34] Speaker 01:
However, that is not what Xilinx proposed.

[00:03:36] Speaker 01:
We have no idea what those other modifications would have been or why they would have been obvious.

[00:03:42] Speaker 01:
We did not have a trial about that.

[00:03:44] Speaker 01:
Now, on a related note, the board tried to justify its obviousness conclusion in two ways.

[00:03:49] Speaker 01:
First, by referring to programmable delays in the admitted prior art of the 122 patent, and also citing an analog to digital modernization rationale.

[00:04:00] Speaker 01:
Again, however, those were theories that were not advanced by Xilinx, not in their petition.

[00:04:06] Speaker 02:
Where do we see the admitted prior art in the 122 patent?

[00:04:11] Speaker 02:
Exactly.

[00:04:12] Speaker 02:
I think I know, but I want to make sure I understand.

[00:04:16] Speaker 01:
In figure one, figure one is labeled as conventional.

[00:04:20] Speaker 01:
And then in figure two, there is a dashed line around certain portions of that circuit, which is also labeled as conventional.

[00:04:30] Speaker 02:
I see.

[00:04:30] Speaker 01:
OK.

[00:04:32] Speaker 01:
And what's shown as conventional in figures one and two are not exactly the same.

[00:04:37] Speaker 01:
We never got to this issue, but there is

[00:04:41] Speaker 01:
there would be some dispute about exactly what the admitted prior art is in the 1-2-2 patent.

[00:04:48] Speaker 01:
There's some ambiguity there.

[00:04:53] Speaker 01:
As I was saying, the analog to digital modernization rationale and the reliance on the admitted prior art in the 1-2-2 patent were not obviousness theories that Xilinx advanced in this case.

[00:05:10] Speaker 01:
They did refer to the admitted prior art briefly in the background portion of their petition, but they never relied on the admitted prior art in any sense in their combination of references for their obviousness contentions.

[00:05:24] Speaker 01:
So it was improper for the board to have taken these arguments and to base its decision on those theories.

[00:05:34] Speaker 01:
That's contrary to what this court has said is in intelligent biosystems.

[00:05:38] Speaker 01:
and Magnum oil tools, for example.

[00:05:43] Speaker 01:
I'd like to turn next to the issue of clock.

[00:05:47] Speaker 01:
The definition of one of ordinary skill in the art in this case comes right out of the mouth of Xilinx expert.

[00:05:53] Speaker 01:
And what he said is telling.

[00:05:55] Speaker 01:
And he said this before he realized that there was a problem with his definition of clock.

[00:06:00] Speaker 01:
He said a person of ordinary skill in the art, this art in this case, would have, quote, at least one year of experience

[00:06:08] Speaker 01:
relating to clock generation and synchronization in digital systems.

[00:06:14] Speaker 01:
And that's on appendix page 613.

[00:06:17] Speaker 01:
That defines the perspective from which the meaning of the term clock must be interpreted.

[00:06:23] Speaker 01:
That also defines a key element of the term clock, that it is used in a digital system.

[00:06:29] Speaker 01:
Indeed, Professor Hayes, PLL's expert, explained that clocks are universally employed in all synchronous digital systems,

[00:06:37] Speaker 01:
The clocks are the heartbeat of such systems that the term clock has acquired an established meaning to those skilled in the art.

[00:06:45] Speaker 01:
And when those skilled in the art refer to a clock, they have a definite understanding of what the term means.

[00:06:53] Speaker 01:
And that was undisputed.

[00:06:54] Speaker 01:
Dr. Alpert, the expert for the petitioner Xilinx, testified that he could not think of a synchronous digital circuit that did not have a clock.

[00:07:07] Speaker 01:
Yet the board stretched the meaning of the word clock to encompass clocks beyond the digital context and to include so-called clocks in the analog context.

[00:07:19] Speaker 01:
And that was there.

[00:07:20] Speaker 02:
Phil, you're getting into this because your point would be if you don't have a clock in Nine Aber, it's not eligible for combination with Young.

[00:07:33] Speaker 01:
Well, it's eligible, but the combination would not have a clock and thus would not

[00:07:37] Speaker 01:
reach the claims.

[00:07:40] Speaker 01:
And that's exactly right.

[00:07:42] Speaker 01:
The only evidence that Xilinx put forward regarding clock is a few documents that use the term analog clock or refer to a signal in an analog system as a clock.

[00:07:54] Speaker 01:
But this is the critical part.

[00:07:56] Speaker 01:
There was never any proof put on by Xilinx that that is an accepted or even acceptable usage of the term.

[00:08:05] Speaker 01:
There are over 9 million patents, hundreds of thousands of IEEE articles, and they found a handful that use the term clock in an analog context.

[00:08:14] Speaker 01:
They did not take the critical next step to show that that is an accepted or acceptable usage of the term in contrast to its universally recognized meaning in the digital context.

[00:08:28] Speaker 01:
And Nienaber does not disclose a clock under the correct interpretation.

[00:08:32] Speaker 01:
Nienaber's vertical sync signal is used to

[00:08:35] Speaker 01:
drive an analog CRT cathode ray tube in an analog television.

[00:08:43] Speaker 01:
And perhaps the board incorrectly interpreted clock because it did not follow a process respecting PLL's due process rights.

[00:08:52] Speaker 01:
I'd like to address that.

[00:08:54] Speaker 01:
The board did not allow PLL to file a surreply on the issue of clock.

[00:08:59] Speaker 01:
Now, in a regular case, if Xilinx had put its position and argument and evidence regarding clock in its petition, then we would have had an opportunity to respond in our response.

[00:09:11] Speaker 01:
That didn't happen.

[00:09:12] Speaker 01:
There was nothing in their petition.

[00:09:14] Speaker 01:
There was just a statement by their expert, not their petition, but in the expert declaration, that said Neenaburr's sync signal is a clock because it's a periodic timing control signal.

[00:09:28] Speaker 01:
So we came back in our response and proposed our own definition with supporting evidence.

[00:09:35] Speaker 01:
And then the reply came in from Xilinx with copious new evidence and arguments, more exhibits with their reply than with their petition on this very point.

[00:09:45] Speaker 01:
And we were not afforded an opportunity to respond to that.

[00:09:49] Speaker 01:
And that's a due process violation under the Administrative Procedures Act.

[00:09:56] Speaker 01:
And incredibly, Xilinx makes an argument that we waived this argument by not requesting a cert reply below.

[00:10:04] Speaker 01:
We certainly did.

[00:10:05] Speaker 01:
Mr. Cochran, at least, was present when I made the request in a telephone conference call.

[00:10:11] Speaker 01:
He opposed it, and the board agreed with him.

[00:10:14] Speaker 01:
The waiver argument has absolutely no merit whatsoever.

[00:10:20] Speaker 02:
Is the waiver argument made also with respect to the issue about

[00:10:25] Speaker 02:
combining the two references?

[00:10:29] Speaker 02:
Or is it not present there?

[00:10:30] Speaker 01:
I don't believe the waiver argument extends to that issue.

[00:10:33] Speaker 02:
With respect to the first point you were addressing in your argument?

[00:10:37] Speaker 01:
The waiver argument Xilinx is making, as I understand it, is only that we waive the argument that we had regarding the surreply.

[00:10:46] Speaker 01:
Does that answer your question?

[00:10:47] Speaker 02:
That would relate to the final decision, obviously, from the board.

[00:10:54] Speaker 01:
Of course, the board's final decision interprets clock based upon an incomplete record, because it didn't receive our surreply.

[00:11:05] Speaker 01:
Now, we did have an opportunity to respond in other ways.

[00:11:08] Speaker 01:
We responded.

[00:11:09] Speaker 01:
I responded as best I could at oral argument.

[00:11:11] Speaker 01:
But as your honors know, oral argument is not a substitute for briefing.

[00:11:16] Speaker 01:
We did also file observations on the cross-examination of Dr. Alpert

[00:11:22] Speaker 01:
cross-examining him on his reply declaration, and we filed those observations, but the board completely ignored them.

[00:11:29] Speaker 01:
They're not even acknowledged in the final written decision.

[00:11:32] Speaker 01:
So everything we could have done that we tried to do was inadequate.

[00:11:37] Speaker 01:
This is a case that really screams out for a surreply, if there ever was one.

[00:11:43] Speaker 01:
Finally, well, I want to quickly address the point of programmable and then reserve my time for rebuttal.

[00:11:51] Speaker 01:
The issue comes down to this, whether a programmable device must have memory.

[00:11:56] Speaker 01:
And the answer is yes.

[00:11:58] Speaker 01:
Now the board agreed that programmable is not the same as configurable or adjustable, but yet it conflated those terms when it said you can have programming without memory to store the programming.

[00:12:10] Speaker 01:
And the board was led primarily astray in one respect.

[00:12:14] Speaker 01:
They misunderstood the 122's patents, reference to metal fuses, I'm sorry, metal masks and fuses.

[00:12:21] Speaker 01:
They believed that these were ways in which programming could be done without memory.

[00:12:26] Speaker 01:
The fact is that metal masks and fuses are ways to set the contents of memory.

[00:12:34] Speaker 01:
And that's what our expert explained, Dr. Hayes.

[00:12:37] Speaker 01:
That's what the patent says.

[00:12:38] Speaker 01:
It was simply a complete misunderstanding of that fact by the board.

[00:12:44] Speaker 01:
Unless there are further questions, I reserve to balance my time.

[00:12:46] Speaker 01:
Thank you.

[00:12:54] Speaker 00:
This appeal presents three substantive issues.

[00:13:00] Speaker 00:
The first two involve factual findings underlying claim construction, and the third involves the factual finding of a motivation to combine.

[00:13:08] Speaker 00:
All three of those issues are reviewed for substantial evidence, which means even if there's room for disagreement, as long as the board's findings are reasonable and supported by the record, they must be affirmed.

[00:13:19] Speaker 00:
They are.

[00:13:21] Speaker 00:
Then we have the procedural objections that are being raised.

[00:13:23] Speaker 00:
But both the board and Xilinx acted squarely within the statutes and the regulations that govern interparty's review of proceedings.

[00:13:31] Speaker 00:
So once again, there is no procedural violation here.

[00:13:34] Speaker 00:
And therefore, this court should affirm.

[00:13:37] Speaker 00:
Now, I'm actually going to zoom out a little bit and talk about the obviousness, the motivation to combine first, which is what I described as the third substantive issue.

[00:13:47] Speaker 00:
And I think we have to realize how this patent even got on the books.

[00:13:51] Speaker 00:
which is there was an application for this very incredibly broad phase locked loop circuit in which there was claimed essentially an oscillator, a reference path, a feedback path, and a programmable delay circuit on one of the paths alone.

[00:14:10] Speaker 00:
And that was rejected over the Young reference, which is one of the two references we're relying on here as prior art.

[00:14:16] Speaker 00:
And the board said,

[00:14:17] Speaker 00:
No, you actually have an anticipation issue here.

[00:14:20] Speaker 00:
That's already been disclosed by Young.

[00:14:22] Speaker 00:
And so to get around that rejection by the examiner, PLL said, OK, let's put another programmable delay circuit onto the reference path.

[00:14:32] Speaker 00:
So that's all they did is they added a programmable delay circuit, which was already known in the art, which is already conventional.

[00:14:40] Speaker 00:
That's shown from Figure 2 of the 122 patent.

[00:14:43] Speaker 00:
in which a programmable delay circuit is part of the conventional art already.

[00:14:47] Speaker 00:
That was already known.

[00:14:48] Speaker 00:
They just added it to the other path.

[00:14:51] Speaker 00:
So what we brought to the board's attention was another phase locked loop circuit reference in which there was a delay on both the reference path and on the feedback path.

[00:15:03] Speaker 00:
Now, what we're dealing with here is the art of phase locked loop circuits.

[00:15:07] Speaker 00:
These are common in both analog and digital applications.

[00:15:11] Speaker 00:
And we simply made clear that we already know that programmable delay circuits are conventional in the ART.

[00:15:17] Speaker 00:
And so all that happened here is that we had it added to the other path.

[00:15:21] Speaker 00:
But that's already been disclosed in the ART, in the Nienaber reference.

[00:15:25] Speaker 00:
So that's a perfectly appropriate obviousness analysis.

[00:15:28] Speaker 02:
So then let me ask, because I understand it.

[00:15:31] Speaker 02:
I'm trying to understand the argument here that's being made.

[00:15:35] Speaker 02:
The evidence in the petition was that you could substitute

[00:15:41] Speaker 02:
27 and Young, the position, substitute 27 and Young for 26 and 12 in Nienaber.

[00:15:51] Speaker 02:
Am I saying it right, Nienaber?

[00:15:53] Speaker 00:
Yeah, in Nienaber.

[00:15:54] Speaker 02:
OK.

[00:15:55] Speaker 02:
That's what the argument is.

[00:15:59] Speaker 02:
And as I understand, Mr. Phillips' contention is that it was never argued that a skilled artisan

[00:16:10] Speaker 02:
would have needed to modify Young's programmable delay to work within Knee Neighbor.

[00:16:17] Speaker 02:
And that the board kind of picked up on that and ruled on that basis, and that's something he didn't have a chance to address.

[00:16:26] Speaker 00:
Yeah, I don't think that's quite right.

[00:16:28] Speaker 00:
First of all, what the board said, among other things, because when the board walked through its motivation pine analysis, it first said, even if you didn't modify

[00:16:38] Speaker 00:
the programmable delay circuit from Young, and you did just bodily incorporate it into Nienaber, you would still, you know, it would still be operative for its intended use.

[00:16:48] Speaker 02:
Well, it wouldn't look that good.

[00:16:51] Speaker 02:
Would it be, you couldn't get the total vertical problem solved, could you?

[00:16:57] Speaker 02:
I mean, it wouldn't be, the argument is made that it wouldn't be an acceptable solution, because isn't in the, in somebody's brief, there's a picture of that man

[00:17:07] Speaker 02:
Half his face is on one image and half is on the other?

[00:17:10] Speaker 00:
Yes, I believe that was from a blog post, if I'm not mistaken.

[00:17:12] Speaker 02:
But it's illustrating this point that that person that looks unhappy in that picture, I guess they're illustrating the point that if you just did that, what you just described, here's what you'd end up with.

[00:17:26] Speaker 02:
That's not a really acceptable solution.

[00:17:30] Speaker 00:
Right, well, Nina Burr wasn't solely focused on the centering.

[00:17:34] Speaker 00:
Nina Burr talks about moving the image up and down on the screen and avoiding consequences.

[00:17:40] Speaker 00:
And it talks about things like picture linearity, which is not alignment.

[00:17:43] Speaker 02:
Whose picture is that again?

[00:17:44] Speaker 00:
It's from a blog post.

[00:17:46] Speaker 00:
I don't know the name.

[00:17:47] Speaker 02:
I wonder if it was anyone in the case.

[00:17:49] Speaker 02:
It looks like something out of a science fiction movie.

[00:17:54] Speaker 02:
Yes.

[00:17:54] Speaker 00:
I'm sorry, go ahead.

[00:17:57] Speaker 00:
So if you look at Nina Burr's purpose, it's not a matter of only for the centering.

[00:18:03] Speaker 00:
It's about moving the picture up and down.

[00:18:05] Speaker 00:
And with Young's exact circuit, it would do that.

[00:18:08] Speaker 00:
But you don't need Young's exact circuit anyway.

[00:18:10] Speaker 00:
That's just not the proper obviousness test.

[00:18:12] Speaker 00:
you look at what the teachings in the prior art would suggest to the ordinary skilled artisan.

[00:18:19] Speaker 00:
And the teachings would suggest that, OK, you could either have a couple of delays, you move it to a certain degree, not delays, a couple of options for the delay, or you could have more.

[00:18:30] Speaker 00:
And first, if you go past the fact that the board concluded that this would not be inoperative for the intended purpose of Neenapur based on Bottling Corporation,

[00:18:42] Speaker 00:
But if you go past that, you have to look at the fact that this would still be an obvious combination because it suggests that you could modify.

[00:18:50] Speaker 00:
That's clear.

[00:18:50] Speaker 00:
And this is where we have to go back to how this even came to be a patent, which is this programmable delay circuit, that was already conventional.

[00:18:58] Speaker 00:
It's known.

[00:18:59] Speaker 00:
And so to the extent that the board went ahead and said, all right, we have these other prior art references that were prior art for this exact patent,

[00:19:08] Speaker 00:
It said, we already know what programmable place circuits are.

[00:19:10] Speaker 00:
So there's absolutely nothing wrong with that analysis at all.

[00:19:14] Speaker 00:
That's just a proper obviousness analysis.

[00:19:17] Speaker 00:
And I think you have to go to KSR even, which talks about this being a flexible analysis.

[00:19:21] Speaker 00:
And instead, we're looking to really, and I think what PLL is looking to do, is really place these sort of boundaries around obviousness that haven't been appropriate since KSR.

[00:19:33] Speaker 00:
And one, I think, good line from KSR, quite frankly, on that point, is familiar items may have obvious uses beyond their primary purposes.

[00:19:43] Speaker 00:
And what we have PLL arguing here is, well, the primary purpose of Nienaber would be this vertically centering.

[00:19:50] Speaker 00:
And so if it wouldn't be good enough for that, if the young delay, just that one bodily incorporated young delay, wouldn't be good enough for that, then we don't have obviousness.

[00:19:59] Speaker 00:
That's not the test.

[00:20:00] Speaker 00:
That's not the way the law is under KSR.

[00:20:02] Speaker 00:
or any of this court's subsequent preferences.

[00:20:05] Speaker 00:
I think the Henry Icahn case from your honor does a great job explaining how this inoperable combination argument is supposed to work.

[00:20:15] Speaker 00:
And when you do that, you look at the fact that would it not have worked for the application that the claimant is seeking to create?

[00:20:24] Speaker 00:
And here, even if you did this, it would clearly work for the operation that is claimed in the 122 patent.

[00:20:32] Speaker 00:
Because the 1-2-2 pattern, once again, is incredibly broad.

[00:20:35] Speaker 00:
All it claims is a programmable delay circuit.

[00:20:38] Speaker 00:
And in the specification, it refers to that programmable delay circuit even being one-time programmable.

[00:20:45] Speaker 00:
So 2 would be enough for the application that was being traded here.

[00:20:51] Speaker 00:
So moving then back to clock.

[00:20:55] Speaker 00:
What's interesting here is there's really no dispute about the base definition of clock.

[00:21:01] Speaker 00:
Everyone agrees it's a periodic signal for timing control or synchronization.

[00:21:06] Speaker 00:
And that was disclosed in our petition.

[00:21:08] Speaker 00:
That's what Dr. Alpert said.

[00:21:11] Speaker 00:
The only thing that happened on the patent owner's response was there was an attempt by PLL to artificially narrow that construction and add on just to append in a digital system.

[00:21:24] Speaker 00:
Frankly, we would have had no way of knowing that that was going to be the argument PLL would make, because the concept of a clock being analog or digital, I think, is pretty well known to most people.

[00:21:35] Speaker 00:
So we had no reason to anticipate that argument.

[00:21:39] Speaker 00:
It's pretty clear, frankly, even from the extrinsic evidence that they relied on, because the intrinsic evidence is clear.

[00:21:46] Speaker 00:
Digital is never used anywhere in the patent, either in the claims or in the specification.

[00:21:51] Speaker 00:
And so PLL had to go ahead and dig up some extrinsic evidence to try to support their theory.

[00:21:57] Speaker 00:
But if you look at the IEEE dictionary, it does not use the word digital either.

[00:22:02] Speaker 00:
So then PLL has to go a step further, and they say, well, look at the C code.

[00:22:06] Speaker 00:
That's the category code for computer.

[00:22:08] Speaker 00:
Well, computers are digital.

[00:22:10] Speaker 00:
But lo and behold, the C category code in the IEEE dictionary also includes analog computers and hybrid circuits.

[00:22:18] Speaker 00:
in other things that reflect that you can have either analog or digital.

[00:22:23] Speaker 00:
So the claim construction issue, to the extent you even get to the extrinsic evidence, is certainly supported by substantial evidence.

[00:22:31] Speaker 00:
On the programmable delay circuit, then we get into this notion of, OK, even though the 122 patent specification clearly discloses that we could have a one-time programmable circuit, still there would be a memory required.

[00:22:44] Speaker 00:
Once again, to the extent that the specification refers to memory, because the claims say nothing of memory, but to the extent that the specification refers to memory, it says you may have memory, you can have memory, or you can have fuses or metal masks.

[00:22:59] Speaker 00:
And fuses or metal masks do not require memory.

[00:23:02] Speaker 00:
And Dr. Hayes even admitted that memory was not necessary for fuses.

[00:23:09] Speaker 00:
But once again, I think you can make that term not the intrinsic evidence alone,

[00:23:13] Speaker 00:
And to the extent you go to the extrinsic evidence, it's certainly supported by substantial evidence here.

[00:23:20] Speaker 00:
So then what we're left with is this procedural argument.

[00:23:25] Speaker 00:
On the waiver point, I don't know what the right word for it is.

[00:23:29] Speaker 00:
But what's clear is that there was no record of this request first or apply that was with the certified list of records that was sent for purposes of this appeal.

[00:23:39] Speaker 00:
We pointed that out.

[00:23:41] Speaker 00:
and then made the point that because there's no record, there is no way to actually ascertain whether the board abused its discretion.

[00:23:49] Speaker 00:
The Belden case makes this perfectly clear.

[00:23:53] Speaker 00:
It says, absent a board denial of a concrete and focused request for a SOAR apply, there's no basis to provide to find a procedural violation.

[00:24:05] Speaker 00:
Of course, here we can't have any way of looking to see whether there was a concrete

[00:24:10] Speaker 00:
or focused request, because there's just no record of it at this point.

[00:24:14] Speaker 00:
In any event, what Xilinx put in in its reply was completely responsive to the patent owner's response.

[00:24:23] Speaker 00:
To Judge Schall's question about whether this went beyond the clock, did this go to obviousness, the only evidence that they are angry about, that they're upset about, involves clock.

[00:24:35] Speaker 00:
But as I've already explained, you could find clock.

[00:24:38] Speaker 00:
is not limited to a digital system based on the intrinsic evidence alone.

[00:24:43] Speaker 00:
You could find that based on the intrinsic evidence and the expert testimony that was originally put in.

[00:24:50] Speaker 00:
Or you could find that on the extrinsic evidence, the expert testimony, and the IEEE dictionary, which was PLL's own evidence.

[00:24:58] Speaker 00:
So you've got no error there in any event, even if you were to assume

[00:25:03] Speaker 00:
that they made the showing that they say they made.

[00:25:06] Speaker 00:
And as to this notion of an opportunity to respond, they plainly had an opportunity to respond.

[00:25:13] Speaker 00:
They did cross-examine Dr. Alpert, and they did provide extensive observations on Dr. Alpert's testimony.

[00:25:23] Speaker 00:
And then they argued every single point that they're now arguing in the briefs, they argued that before the board.

[00:25:30] Speaker 00:
The only case in which this court has found that there was a procedural violation because of a failure to grant a surreply was the nuvasive case.

[00:25:42] Speaker 00:
In the nuvasive case, what's clear about the absence of opportunity there is one, you had a reply that was not wholly responsive to the patent owner's response.

[00:25:53] Speaker 00:
It actually relied on a figure from one of the prior references that it had never previously disclosed it would be relying on.

[00:26:00] Speaker 00:
And two, in the observations on the cross-examination that were submitted, the board actually struck various parts of those and said, we're not going to consider those.

[00:26:10] Speaker 00:
Then at the oral hearing, the board went ahead and it actually said, no, we're not going to hear argument on these various topics that you want to bring up.

[00:26:19] Speaker 00:
So there you really did have a due process violation because the patent owner was prevented from making various arguments that it wanted to make.

[00:26:28] Speaker 00:
Here we don't have that.

[00:26:29] Speaker 00:
We don't have any showing that they were prevented from making any argument that they wanted to make at the oral hearing or that they could not have done so through their cross-examination or through their observations on the cross-examination.

[00:26:43] Speaker 00:
And in fact, we've never had any proffer as to any sort of evidence that they would have wanted to put on.

[00:26:49] Speaker 00:
Frankly, that's another reason why Xilinx does submit that the supplemental appendix, these sort of emails that don't reflect any sort of proffer, should really not be part of the record either.

[00:27:03] Speaker 00:
In short, we're dealing with three substantive issues, all dealing with substantial evidence review.

[00:27:08] Speaker 00:
They should be affirmed and the court should also affirm that there was no procedural violation.

[00:27:13] Speaker 00:
Unless the court has any further questions, I'll leave it at two.

[00:27:25] Speaker 01:
Mr. Silveria began his argument by recasting the obviousness case in terms of the admitted prior art.

[00:27:32] Speaker 01:
But I want to remind your honors that that is not what the petition set forth.

[00:27:36] Speaker 01:
The petition set forth an obviousness case based upon Neenamber and Young, and in particular a simple substitution with no reliance whatsoever on the admitted prior art in the patent.

[00:27:49] Speaker 01:
Xilinx was the master of its petition.

[00:27:52] Speaker 01:
It could have if it so chose.

[00:27:53] Speaker 01:
presented an obviousness challenge that relied upon the admitted prior art.

[00:27:58] Speaker 01:
For strategic reasons known only to it, it chose not to do so.

[00:28:02] Speaker 01:
We did not have a trial about any obviousness case involving the admitted prior art.

[00:28:11] Speaker 01:
Secondly, I want to talk about obviousness and the notion that KSR allows us to inject flexibility into the analysis.

[00:28:24] Speaker 01:
That is absolutely true.

[00:28:25] Speaker 01:
However, in this type of proceeding, the point at which that flexibility should be injected is in the petition in how the obviousness case is formulated.

[00:28:36] Speaker 01:
It is a procedural due process violation for the board to inject that flexibility, sua sponte, in ways that the petition did not propose midway through the trial.

[00:28:48] Speaker 01:
And that is what happened here.

[00:28:53] Speaker 01:
Xilinx notes that the intrinsic evidence, the 1-2-2 patent, never says the word digital.

[00:28:59] Speaker 01:
And that's right.

[00:29:00] Speaker 01:
But it doesn't have to because the term clock carries that weight to those skilled in the art.

[00:29:05] Speaker 01:
Those skilled in the art know that it has a universal meaning as a signal that pulses or the heartbeat of a digital system.

[00:29:18] Speaker 01:
Xilinx also referred to the C category of the IEEE dictionary

[00:29:22] Speaker 01:
as having other subject matters included some terms from other subject matters such as analog computers and general circuitry.

[00:29:30] Speaker 01:
However, there was no evidence put forward by Xilinx in this case that the term clock belongs in any of those other categories.

[00:29:39] Speaker 01:
It clearly belongs in the digital category and no other.

[00:29:42] Speaker 01:
In fact, there were observations on that very point where we got Dr. Albert to agree.

[00:29:49] Speaker 01:
But again, the board did not consider those observations.

[00:29:54] Speaker 01:
And finally, on the waiver point, I would say that we never argued that the reply filed by Xilinx was improper.

[00:30:02] Speaker 01:
We never tried to strike the reply.

[00:30:04] Speaker 01:
We simply wanted an opportunity to respond in writing, and we were not granted that request.

[00:30:10] Speaker 01:
So we did the best that we could based upon the options that were available to us, namely responding an oral argument and filing our observations, but we were handicapped by doing so.

[00:30:23] Speaker 01:
We should have been able to file a surreply so that the judges on the panel could consider that in writing when they had an open mind, not just oral argument, when it was really too late.

[00:30:39] Speaker 01:
Thank you very much.

[00:30:40] Speaker 01:
Thank you.

[00:30:40] Speaker 01:
Thank you for the slides.

[00:30:41] Speaker 01:
The case is submitted, and that concludes our proceedings for this point.

[00:30:53] Speaker 00:
The Honorable Court is adjourned until tomorrow morning at 10 a.m.