[00:00:02] Speaker 01:
Mr. Leach, please proceed.

[00:00:04] Speaker 01:
You're reserving two minutes, correct?

[00:00:07] Speaker 03:
Yes, I am, Your Honor.

[00:00:10] Speaker 03:
This is a case involving devices for supplying power and avoiding phantom loads when the power's turned off.

[00:00:18] Speaker 03:
I want to focus on what I think is the most important issue in my limited time, and that's claim 11.

[00:00:24] Speaker 03:
Specifically with respect to claim 11, I want to focus on the

[00:00:28] Speaker 03:
claim limitation of circuitry for converting the input power voltage to the output power voltage and for determining an off state of the circuitry.

[00:00:40] Speaker 03:
In this case, there's an issue as to whether the patent and trademark office gave the claim its broadest reasonable interpretation.

[00:00:52] Speaker 03:
In the PTO, the patent owner argued that this claim limitation meant AC to DC converting.

[00:01:00] Speaker 03:
The patent examiner didn't agree and agreed with the requester that, look, there are other claims that claim AC to DC converting.

[00:01:08] Speaker 03:
So it's unreasonable to limit this claim to AC DC converting, because when the patent owner intended to limit the claim, he said so.

[00:01:21] Speaker 03:
There were other claims, such as claim 56, that claimed converter circuitry for converting the input voltage into DC output voltage.

[00:01:31] Speaker 01:
So where do you address in your brief the PTAB's statement that it, quote, did not conclude that converting is limited to AC-DC conversions?

[00:01:46] Speaker 03:
Your Honor, I'm not sure I understand the question.

[00:01:48] Speaker 03:
Oh, OK.

[00:01:49] Speaker 03:
I'm not sure that we said the PTAB concluded that it was limited to AC-DC converting.

[00:01:59] Speaker 03:
came up with their own definition.

[00:02:01] Speaker 01:
PTAB said it.

[00:02:04] Speaker 03:
Where did you address its statement?

[00:02:11] Speaker 03:
Where did I address the PTAB's claim construction?

[00:02:14] Speaker 03:
Or where did I address the PTAB's?

[00:02:18] Speaker 03:
I'm not sure which statement you're referring to, Your Honor.

[00:02:21] Speaker 03:
The PTAB came up with its own claim construction.

[00:02:24] Speaker 03:
I'm quoting.

[00:02:26] Speaker 03:
From my brief or from the PTAB?

[00:02:28] Speaker 01:
No, from the PTAB.

[00:02:29] Speaker 03:
And what did they say, Your Honor?

[00:02:31] Speaker 01:
They, quote, did not conclude that, quote, converting, close quote, is limited to AC slash DC conversions, close quote.

[00:02:42] Speaker 03:
Well, I don't disagree with that.

[00:02:45] Speaker 03:
I think that they did not say it was limited to AC DC converting.

[00:02:51] Speaker 03:
They came up with something in between, Your Honor.

[00:02:53] Speaker 03:
I don't think I addressed it in my brief because I don't think it's an issue here.

[00:02:57] Speaker 03:
I think everybody agrees that the

[00:02:59] Speaker 03:
PTAB came up with a claim construction that includes something more than ACDC converting, and that was the problem in this case.

[00:03:07] Speaker 03:
Because the patent owner argued one construction, the patent examiner and the requester followed a broader construction, and the PTAB in their decision came up with a construction that no one had argued, that no one had advanced.

[00:03:22] Speaker 00:
They are allowed to do that, right?

[00:03:23] Speaker 00:
If they're allowed to look at the claims and the specification and determine what a claim term means, they don't have to always adopt one of the two parties' positions.

[00:03:32] Speaker 03:
I agree with that.

[00:03:33] Speaker 03:
But I also respectfully submit that they did not adopt the broadest reasonable construction.

[00:03:41] Speaker 03:
So in this case, the broadest reasonable interpretation is an important rule.

[00:03:50] Speaker 03:
Because as the Supreme Court reminded us recently, it does increase the possibility that the examiner will find a claim too broad and deny it.

[00:04:01] Speaker 03:
And as the Supreme Court said, the use of that standard encourages the applicant to draft narrowly.

[00:04:07] Speaker 03:
The Supreme Court said this helps ensure precision while avoiding overly broad claims.

[00:04:14] Speaker 00:
And the Supreme... Can you respond to the board's reliance on the specification, which seemed to distinguish between the use of the word altering and the use of the word converting?

[00:04:27] Speaker 03:
Yes, Your Honor.

[00:04:30] Speaker 03:
I don't think that the specification provides support for that definition.

[00:04:35] Speaker 03:
And one of the problems I have with what the board did is that they relied on the specification of the 648 patent

[00:04:44] Speaker 03:
That's a later-followed continuation and part application.

[00:04:48] Speaker 03:
And they took new matter from that specification and relied on it in reaching an interpretation of this patent, including information that was not in there.

[00:04:59] Speaker 03:
And even the board acknowledged that the specifications

[00:05:05] Speaker 03:
still resulted in ambiguity about the meets and bounds of the claim.

[00:05:10] Speaker 00:
The part that I was referring to was in the 833 specification at column 7, lines 3 through 12.

[00:05:21] Speaker 03:
Yes, Your Honor.

[00:05:21] Speaker 03:
I don't believe that the board's attempt to distinguish between altering and converting was a valid distinction.

[00:05:34] Speaker 03:
In my view, and I believe I can demonstrate it on the record in this case, converting includes filtering.

[00:05:44] Speaker 03:
The board found otherwise, but in my view, converting includes filtering.

[00:05:49] Speaker 03:
And in this case, the prior art reference, which I've shown up here at the top, which is figure five from the prior art reference, it shows this circuit element 100 that is a capacitor

[00:06:02] Speaker 03:
And it was described in the prior art as a noise removing unit.

[00:06:07] Speaker 03:
And the question is, is this converting the voltage from the power input end to the power output end?

[00:06:15] Speaker 03:
Now, Your Honor, if you would look in the record at the Odoharu reference, specifically at 4971,

[00:06:30] Speaker 03:
which is figure two of that reference.

[00:06:33] Speaker 03:
This shows a AC to DC converting circuit.

[00:06:38] Speaker 03:
Everybody would agree that this is circuitry for converting.

[00:06:41] Speaker 03:
So if you look at 4971, which is figure two of the Odehara reference, there is on the left this square drawn which is the rectifying bridge 11.

[00:06:57] Speaker 03:
And then

[00:06:58] Speaker 03:
Connected across it is a capacitor 12.

[00:07:02] Speaker 03:
Odehar describes this AC-DC converting as including the rectification, which is number 11, and the smoothing function provided by the capacitor number 12.

[00:07:14] Speaker 03:
Well, that's filtering.

[00:07:17] Speaker 03:
So I would respectfully submit that converting includes rectification plus filtering, if you're talking about AC-DC converting,

[00:07:28] Speaker 03:
Therefore, converting includes filtering.

[00:07:33] Speaker 04:
And the... Why are you claiming this to a prior art patent to get to the broadest reasonable construction of the patent at issue?

[00:07:41] Speaker 04:
Because I think that... I mean, I thought you used Odahara to show obviousness.

[00:07:46] Speaker 04:
Yes.

[00:07:47] Speaker 04:
Which is a different topic that I assume we're not talking about.

[00:07:50] Speaker 04:
We're talking about the broadest reasonable claim construction of converting

[00:07:55] Speaker 04:
and the board found a narrower one than you want.

[00:07:58] Speaker 03:
That is correct.

[00:08:00] Speaker 03:
It's because this is some evidence to support the notion that the construction is not unreasonable.

[00:08:07] Speaker 04:
Why would we look at extrinsic evidence of other art when we have the patent claims and the specification?

[00:08:13] Speaker 04:
Isn't that what the board did?

[00:08:15] Speaker 04:
They looked at the claims and the specification here, in particular the points referenced by my colleague, and found that altering and converting are different.

[00:08:24] Speaker 03:
Because I don't think that the intrinsic evidence supports that conclusion.

[00:08:27] Speaker 04:
Why are you pointing us to extrinsic evidence to rebut that?

[00:08:31] Speaker 04:
Shouldn't you be pointing us to intrinsic evidence to rebut that?

[00:08:35] Speaker 03:
I can do that too.

[00:08:36] Speaker 03:
If you look at the original prosecution, in the original prosecution, the patent owner effectively defined what converting meant.

[00:08:47] Speaker 03:
In the original prosecution, which is in the record at 5834,

[00:08:54] Speaker 03:
the patent owner distinguished a prior reference to Jinx.

[00:08:59] Speaker 03:
And in doing so, the patent owner emphasized that the Jinx reference failed to teach circuitry for converting and emphasized converting, for converting the input power voltage to the output power voltage because it disclosed a simple switch, quote, which when closed,

[00:09:23] Speaker 03:
simply allows the same input voltage to pass through, i.e., without any conversion, as output voltage.

[00:09:33] Speaker 03:
And that said, 5834 of the record.

[00:09:37] Speaker 03:
So the patent owner indicated, when they were distinguishing the priority, that converting meant that if it's essentially that it changes the voltage, it's converting the voltage.

[00:09:53] Speaker 03:
And this is reinforced by their own brief, where they argued in their brief that when you use the symbol IE, that signals an intent to define the word to which it refers.

[00:10:07] Speaker 03:
And they say that in their principal brief at 22.

[00:10:11] Speaker 03:
So in the prior prosecution of the original patent application, when they made the statement that converting

[00:10:21] Speaker 03:
priority doesn't have converting.

[00:10:22] Speaker 00:
As I understand it, your argument is that because this says that allowing the same voltage to pass through is not conversion, that means conversion includes everything else?

[00:10:34] Speaker 03:
Yes.

[00:10:34] Speaker 03:
That if you change the voltage, you're converting it in the broadest sense.

[00:10:38] Speaker 03:
And it's not unreasonable to construe the claim that broad.

[00:10:41] Speaker 00:
I'm not sure if I agree with you that any time if someone says something is not converting, it means everything else is converting.

[00:10:49] Speaker 03:
I agree.

[00:10:50] Speaker 03:
But here, we're looking for the broadest reasonable construction.

[00:10:55] Speaker 03:
Consistent with the specification.

[00:10:57] Speaker 03:
Yes, and the prosecution history.

[00:10:59] Speaker 03:
And construing and converting that broadly is not inconsistent.

[00:11:05] Speaker 03:
In fact, it's consistent with this argument that they made.

[00:11:08] Speaker 03:
And I agree with you.

[00:11:10] Speaker 03:
This argument doesn't go so far as to define it.

[00:11:13] Speaker 03:
But it does provide very strong evidence that the construction of the claim, interpreting the claim to include

[00:11:20] Speaker 03:
Circuitry for converting is any circuitry that makes a change in the voltage.

[00:11:25] Speaker 04:
But that's not what you read us said.

[00:11:26] Speaker 04:
What you read us said is that it disclaims direct pass-through.

[00:11:31] Speaker 04:
It doesn't say anything about what it covers.

[00:11:35] Speaker 03:
Well, it said i.e.

[00:11:36] Speaker 03:
converting, i.e.

[00:11:37] Speaker 03:
it's the same voltage.

[00:11:38] Speaker 04:
Yeah, but that doesn't define converting.

[00:11:40] Speaker 03:
But I think it strongly suggests that that's what they mean when they were using the term converting.

[00:11:45] Speaker 03:
They said this doesn't have converting because it's the same voltage going through.

[00:11:51] Speaker 03:
The language they use suggests that it's not unreasonable to construe converting that broad.

[00:11:57] Speaker 04:
All they're saying is converting doesn't mean the same voltage.

[00:12:00] Speaker 04:
They're not further defining it.

[00:12:02] Speaker 04:
The specification actually distinguishes between converting and the other term they use.

[00:12:10] Speaker 03:
Sure, but the purpose of the broadest reasonable interpretation rule was to force the patent owner to amend the claims to provide certainty.

[00:12:21] Speaker 03:
In this case, if the patent owner wants to take the position that circuitry for converting means something other than making some change to the voltage so that you have a different voltage on the output from the voltage on the input, then the patent owner can amend the claims to make this clear.

[00:12:41] Speaker 00:
And that is what the broadest reasonable interpretation rules intended to... I understand what the board did here was looked at the specification and said the broadest reasonable construction in light of the specification.

[00:12:50] Speaker 00:
limited it to converting from AC to DC or some sort of stepping.

[00:12:55] Speaker 00:
That's what I understood, that they were relying on the specification for that.

[00:12:59] Speaker 00:
Do you want to point us to something in the specification that you think undermines that conclusion?

[00:13:05] Speaker 03:
I can point you to the board's own conclusions that the specification was internally... You're in your rebuttal time.

[00:13:16] Speaker 03:
Thank you, Your Honor.

[00:13:25] Speaker 01:
Mr. Schneider.

[00:13:27] Speaker 02:
Good morning, and may it please the court.

[00:13:30] Speaker 02:
I believe there are three hurdles for superior to overcome.

[00:13:40] Speaker 02:
The first is a fact finding.

[00:13:43] Speaker 02:
The second and third are the legal issues of claim construction.

[00:13:46] Speaker 02:
Let me start with the fact finding.

[00:13:50] Speaker 02:
The three independent claims are shown on pages four and five of our principal brief.

[00:13:55] Speaker 02:
Each one has a portable rechargeable device as a preamble to the claim.

[00:14:03] Speaker 02:
The board found that this means the device must have a DC input.

[00:14:07] Speaker 02:
This is in the record at pages 49, 54, 56, and 62.

[00:14:11] Speaker 02:
And that the Yang reference was to an AC device.

[00:14:16] Speaker 02:
And this is in the record at 23, 49, 62.

[00:14:22] Speaker 02:
Therefore, the board properly concluded and the superior has not rebutted the fact that the Yang document is for a different kind of device entirely and does not meet the language of the claim.

[00:14:36] Speaker 02:
That's a fact finding.

[00:14:39] Speaker 02:
Second, fact finding, a second legal issue is drawing no power in the off state.

[00:14:45] Speaker 04:
Could you maybe address what your colleague argued to us about the broadest reasonable construction?

[00:14:51] Speaker 02:
Yes.

[00:14:52] Speaker 02:
First of all, the Jenks document, which the prosecution history, which was just addressed, was never raised in the briefs or the oral argument below.

[00:15:02] Speaker 02:
So that's a new issue on appeal.

[00:15:05] Speaker 02:
Now, the operative word, to my thinking, Your Honor, is reasonable.

[00:15:08] Speaker 02:
Not the broadest possible, but the broadest reasonable.

[00:15:12] Speaker 02:
And in light of the specification, which talks about altering, there is something that is not to be included

[00:15:20] Speaker 02:
In converting, therefore converting does not mean every possible change to a signal.

[00:15:25] Speaker 04:
If we didn't have those discussions of altering in the specification, would converting normally in this field include the noise reduction that your colleague talks about?

[00:15:40] Speaker 02:
I don't believe so.

[00:15:41] Speaker 02:
Let me tell you why.

[00:15:42] Speaker 02:
The board said that in looking at the plain meaning, they would accept

[00:15:51] Speaker 02:
a technical dictionary, for example, over a general dictionary, and that the technical dictionary to Jackson, referred to in the record at page 14, supports the board's conclusion of plain meaning.

[00:16:06] Speaker 02:
The board also said that while Superior's expert tried to say it is broader, he was able to give no examples.

[00:16:16] Speaker 02:
This is in the record at 17.

[00:16:19] Speaker 02:
And the board expressly rejected the attorney argument in the record to page 18 because it was not supported by any citation to the record.

[00:16:28] Speaker 02:
So how broad is converting?

[00:16:31] Speaker 02:
I don't know.

[00:16:31] Speaker 02:
But in the context of this document, it cannot be every possible change to voltage.

[00:16:37] Speaker 02:
Otherwise, as the board said, every circuit would then be a conversion.

[00:16:41] Speaker 02:
And the rest of the clause circuit for converting is superfluous.

[00:16:46] Speaker 02:
So the board addressed that possibility, Your Honor.

[00:16:52] Speaker 02:
Drawing no power, there has been absolutely no response to that issue.

[00:16:58] Speaker 02:
And the third is converting, which we've just addressed.

[00:17:03] Speaker 02:
I do want to mention one thing to the court.

[00:17:09] Speaker 02:
We have dropped, by agreement, our cross appeal.

[00:17:12] Speaker 02:
We're aware of that.

[00:17:13] Speaker 02:
I want to tell you what claims still remain in the case, because some of the claims were

[00:17:21] Speaker 02:
Rejected under a new ground of rejection, and they're no longer in the case, so this is what's still in the case in numerical order 4 and 5 11 to 27 33 to 37 and I will tell you that 4 and 5 do depend from independent claim one Which is why I referenced it in my remarks a few moments ago And that's on page the chart is on pages 4 and 5 of our principal brief

[00:17:49] Speaker 02:
So those are the only remaining claims in the case.

[00:17:53] Speaker 02:
Claims that were successful on one ground of rejection and which were in the cross appeal are now out of the case.

[00:18:00] Speaker 02:
Any further questions, your honor?

[00:18:02] Speaker 01:
No.

[00:18:03] Speaker 02:
Thank you very much.

[00:18:05] Speaker 01:
Thank you, counsel.

[00:18:10] Speaker 01:
You didn't set a new record, but you're close.

[00:18:16] Speaker 03:
Your Honor, this case is not cited in the briefs because it's only decided in December, but in D'Agostino versus MasterCard International at 844 F3rd, 945.

[00:18:26] Speaker 03:
In December of last year, this court held that the prosecution history should factor into the broadest reasonable interpretation analysis.

[00:18:36] Speaker 03:
One thing I want to say in rebuttal.

[00:18:38] Speaker 03:
You just heard counsel get up here and say, how broad is converting?

[00:18:41] Speaker 03:
I don't know.

[00:18:44] Speaker 03:
That's what the broadest reasonable interpretation rule is supposed to eliminate.

[00:18:49] Speaker 03:
It is supposed to force patentees to amend their claims to provide certainty so no one will walk out of here saying, I don't know what this claim means.

[00:19:01] Speaker 01:
How did the case you just cited not arise in your principal argument as opposed to the rebuttal argument?

[00:19:09] Speaker 01:
Were you unaware of it?

[00:19:11] Speaker 03:
No, Your Honor, your counsel said the claim that... Well, prosecution history was discussed in your... Yes, yes, yes.

[00:19:21] Speaker 03:
It was in rebuttal to counsel's statement concerning the original prosecution history.

[00:19:27] Speaker 01:
Anything for that?

[00:19:28] Speaker 01:
No, Your Honor.

[00:19:29] Speaker 01:
Thank you, counsel.

[00:19:31] Speaker 01:
The matter will stand as amended.