[00:00:30] Speaker 00:
Okay, the next argued case is number 16, 2012, Toshiba Corporation against Optical Devices, LLC.

[00:00:38] Speaker 00:
Mr. Kemp Panikowski.

[00:00:41] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:00:43] Speaker 02:
Stan Panikowski for Appellant Toshiba Corporation.

[00:00:46] Speaker 02:
I would like to reserve five minutes for my rebuttal, please.

[00:00:49] Speaker 02:
Okay.

[00:00:50] Speaker 02:
Your Honors, the Board's final written decision should be reversed and remanded for one or both of two independent reasons.

[00:00:58] Speaker 02:
First,

[00:00:59] Speaker 02:
Inherent anticipation by the Baird reference is the only conclusion that the record supports.

[00:01:06] Speaker 02:
Second, it was unreasonable for the board to reject the ST data sheet status as a printed publication.

[00:01:14] Speaker 02:
On inherent anticipation.

[00:01:16] Speaker 04:
Your arguments for inherency are supported by Dr. Zick, who says Baird probably, quoting, determines TES and FES.

[00:01:29] Speaker 04:
that it's, quote, not much of a leap, close quote, to make that determination.

[00:01:35] Speaker 04:
The standard for inherency explicitly states that we cannot find inherency on the basis of probabilities or possibilities.

[00:01:45] Speaker 04:
That's MEH biofile.

[00:01:47] Speaker 04:
How is that evidence sufficient?

[00:01:50] Speaker 02:
Your Honor, Toshiba does not contain the Doctors' Act's deposition testimony that you just quoted is sufficient.

[00:01:57] Speaker 02:
to establish inherent anticipation.

[00:01:59] Speaker 02:
If that were all that was in the record, we would agree that under the substantial evidence standard of review, that is not enough.

[00:02:06] Speaker 02:
However, Dr. Zek's depot testimony has to be understood in light of two things.

[00:02:12] Speaker 02:
One, it needs to be understood in light of his other testimony in his declaration and deposition where Dr. Zek said, for example, in paragraph 82 of his declaration at page 1723 of the appendix, it is inherent

[00:02:27] Speaker 02:
that the servo control processor determines a focus error signal and a tracking error signal.

[00:02:32] Speaker 02:
And as part of that explanation, Dr. Zach explained, because Barrett states that the servo control processor performs focus and tracking control loops, it is necessarily the case that a focus error and tracking error signal are generated.

[00:02:47] Speaker 02:
The statements in his deposition were in response to a particular question that was part of a discussion about the use of continuous composite servoing

[00:02:56] Speaker 02:
in the prior part.

[00:02:58] Speaker 02:
And the second important part of that backdrop is that in his testimony, Dr. Zeck never said that there was another way in which you could implement servo control in Baird without determining a focus error signal and a tracking error signal.

[00:03:15] Speaker 02:
He did say 99% plus in this portion of his deposition, but he never attributed any type of remainder to a different type of system.

[00:03:25] Speaker 02:
In fact, when specifically questioned about whether OD's experts' proposals could be implemented in Baird, Dr. Zeck explained why it was that an open-loop system could not be used in Baird.

[00:03:42] Speaker 02:
For example, at page 1934 of Dr. Zeck's deposition, he explained that in order for a servo to work properly, you have to close the loop.

[00:03:52] Speaker 02:
You have to introduce the error signals you have, and this applies to servos in general.

[00:03:57] Speaker 02:
It has for 50 years or 80 years.

[00:03:59] Speaker 02:
If you don't close the loop, then you are running what's called an open loop system, and Dr. Zeck explains that you can't do an open loop system with optical disk drives, and that's because, as Dr. Zeck explained in his declaration,

[00:04:11] Speaker 02:
Because an optical disk substrate is neither perfectly round nor perfectly flat, you cannot use the type of predictive or feed-forward control that OD's expert pointed to from very, very precise systems like robots in the environment of an optical disk drive.

[00:04:30] Speaker 01:
I guess you do have the testimony on the other side.

[00:04:32] Speaker 01:
Is it Dr. Califond?

[00:04:33] Speaker 01:
Dr. DeCalifond.

[00:04:34] Speaker 01:
Dr. DeCalifond.

[00:04:36] Speaker 01:
And while, in your view, maybe

[00:04:40] Speaker 01:
I mean, the board was free to accept his testimony, which said that the Baird system does not necessarily come back with the difference signal that we have in terms of an FES and a TES.

[00:04:57] Speaker 01:
So there was testimony on the other side.

[00:05:00] Speaker 02:
Yes, Your Honor, there was testimony on the other side, and the board was free to accept that testimony if it was a reasonable explanation.

[00:05:08] Speaker 02:
for why it is that Bayer does not inherently disclose determining an FES and a TES.

[00:05:15] Speaker 02:
And Dr. de Calafon never explained how it was that you could implement these two alternatives in the real world environment of an optical disc.

[00:05:27] Speaker 02:
He was essentially taking environments like robots and radars, transposing those to create a fictional environment.

[00:05:34] Speaker 02:
of a perfectly flat and perfectly round optical disc substrate.

[00:05:38] Speaker 02:
And Dr. Zeck explained why that couldn't work.

[00:05:42] Speaker 02:
So it wasn't reasonable for the board to rely on those two alternative explanations.

[00:05:47] Speaker 01:
And that is why the board's- But aren't you basically asking us to second guess the board's assessment of the state of the record or the evidence?

[00:05:56] Speaker 02:
No, Your Honor, we're not asking you to second guess the board's assessment.

[00:05:58] Speaker 02:
We're asking you to apply the substantial evidence standard, which, of course, is deferential.

[00:06:04] Speaker 02:
And as the Supreme Court said in consolidated Edison, it asked, was there sufficient evidence that would be adequate for a reasonable mind to draw a particular conclusion?

[00:06:15] Speaker 04:
One of the things upon which you rely at 36 of your blue brief is you quote Baird from column 6, line 16 to 20, that quote, DVD servo systems use

[00:06:35] Speaker 04:
Unlike CD systems, DVD servo systems use differential phase detection DPD between photodiode signals and you have a list for track following and track counting to show a teaching of TES.

[00:06:52] Speaker 04:
How should we understand that sentence that you quote, we have no briefing on the meaning of DPD.

[00:06:58] Speaker 04:
Nobody's equated differential phase detection with determining TES or FES as far as I can see in the record.

[00:07:05] Speaker 04:
Why is it there?

[00:07:07] Speaker 04:
And when you talk about relying on things, how can we rely on that?

[00:07:12] Speaker 02:
Your Honor, this sentence is simply gravy.

[00:07:15] Speaker 02:
The court can find that the board's conclusion was unreasonable based solely on

[00:07:21] Speaker 02:
the other disclosures at column 557 to 625 of Baird along with its figures.

[00:07:27] Speaker 02:
But addressing this particular sentence, your honor, what Baird is explaining here is that we know from Baird that the digitized photo detector signals are inputs into the server control processor block 304.

[00:07:42] Speaker 02:
And it explains here that as a DVD service system, it's detecting differences.

[00:07:47] Speaker 02:
between measurements you're getting from the photo detector signals.

[00:07:52] Speaker 02:
And in their patent owner's response below, optical devices argue that this is a different method than calculating a track error signal.

[00:08:04] Speaker 02:
And Your Honor, in our brief, we pointed out that if anything, this sentence is actually supportive of the notion that Baird is disclosing, not in so many words, but disclosing calculation of a tracking error signal.

[00:08:16] Speaker 02:
And then the question becomes, Your Honors, and I think that this is the fulcrum on which the board's decision turns and fails, is what is it that we know about what is happening inside block 304 of Baird, page 1597 of the appendix, based on Baird's express disclosures?

[00:08:38] Speaker 02:
This court in Shearing at page 1379 said,

[00:08:42] Speaker 02:
An element or even an entire invention is inherent if it is the natural result flowing from the explicit disclosure of the prior art.

[00:08:50] Speaker 02:
So what does Baird expressly disclose?

[00:08:53] Speaker 02:
On appendix page.

[00:08:54] Speaker 02:
Is Baird a closed loop system?

[00:08:56] Speaker 02:
Yes, Your Honor, Baird is a closed loop system.

[00:08:58] Speaker 02:
Where does it say that?

[00:09:00] Speaker 02:
So Baird does not use the word closed.

[00:09:04] Speaker 02:
It talks about operating for control loops, which include focus and tracking.

[00:09:10] Speaker 02:
And then it explains how it receives

[00:09:12] Speaker 02:
digitized photo detector signals, and outputs digitized control signals.

[00:09:17] Speaker 02:
And the only role of the external microcontroller is to provide program inputs.

[00:09:22] Speaker 02:
So all of that is happening inside the SCP Block 304.

[00:09:27] Speaker 02:
And Dr. Zek explains that that is necessarily a closed loop system, because the only way that servo systems can work in an optical disk drive is by obtaining feedback and calculating an error signal.

[00:09:42] Speaker 02:
And Your Honor, it's not just Dr. Zach who has confirmed this understanding of the prior art.

[00:09:47] Speaker 02:
It is also the applicants in the prosecution history of several of these patents who made clear that when you have... Let me ask you though.

[00:09:56] Speaker 01:
Does a closed-loop system assume for the moment that you're correct, that Baird is a closed-loop system, does that get you home, so to speak?

[00:10:06] Speaker 01:
I mean, doesn't it still have to be demonstrated that

[00:10:11] Speaker 01:
that closed loop system in Baird inherently or necessarily operates the same way as what's claimed?

[00:10:18] Speaker 02:
Your Honor, yes, we do need to demonstrate that additional piece for inherency, and we have demonstrated that in three ways.

[00:10:26] Speaker 02:
First, through the declaration and deposition testimony of Dr. Zach analyzing Baird in light of his nearly half century experience in the optical disk drive industry.

[00:10:36] Speaker 02:
Second, we know that from the applicants who

[00:10:40] Speaker 02:
In several places in the prosecution history, and I would like to turn the court's attention to appendix page 1178, where I think the applicant said it most clearly in their pre-appeal brief request for review for the 979 patent.

[00:10:53] Speaker 02:
What page is that again?

[00:10:55] Speaker 02:
That is page 1178 of the appendix, Your Honors, where the applicants said, talking about their invention and trying to distinguish it from the prior art, because the claimed

[00:11:07] Speaker 02:
Digital signal processor, this is the fourth line down on that page.

[00:11:12] Speaker 02:
Because the claim digital signal processor receives the digitized optical sensor signals necessary to calculate TES and FES, it is inherent that it may calculate the error signal of its choice at any given moment, either TES or FES.

[00:11:30] Speaker 02:
So here you have the applicants themselves saying that simply the knowledge that

[00:11:36] Speaker 02:
the digital signal processor is receiving digitized photo detector signals, which we know from the express disclosure in Baird is going on there.

[00:11:46] Speaker 02:
In the applicant's words, it is inherent that it may calculate the test and the fest.

[00:11:51] Speaker 02:
And throughout their discussion of the prior art contrasted with their alleged invention in the prosecution history, they continually emphasize the difference in what is received.

[00:12:01] Speaker 02:
Where was that argued below?

[00:12:04] Speaker 02:
Your Honor, I don't believe that

[00:12:06] Speaker 02:
This argument was spelled out in those terms below.

[00:12:09] Speaker 02:
This portion of the prosecution history was in the record.

[00:12:14] Speaker 02:
And Dr. Zach and the petitioner did point to this portion in, quote, other statements from the prosecution history to show that the applicants were distinguishing their invention from the prior art solely based on where the calculation of TESS and FESS occurred.

[00:12:35] Speaker 02:
What they repeatedly emphasize is that conventional servo processors receive error signals.

[00:12:41] Speaker 02:
And what gets sent to the servo processor is something different, that another piece of circuitry has already processed the error signals.

[00:12:50] Speaker 02:
Here they're saying that their alleged invention is different because the claimed DSP receives the photodetector signals, and it is therefore inherent that it may calculate the test and fest.

[00:13:03] Speaker 00:
You haven't gotten to the data sheet.

[00:13:06] Speaker 00:
Is it generally accepted that if that data sheet is deemed prior art, that that fills any of the gaps that may have been raised?

[00:13:17] Speaker 02:
Your Honor, Toshiba's position is that accepting the ST data sheet as a printed publication would create an obviousness combination if the court were to affirm the PTEM's ruling on inherent anticipation

[00:13:31] Speaker 02:
My understanding is that Optical Devices has not agreed to that result.

[00:13:36] Speaker 02:
Therefore, if the court were to affirm on inherent anticipation but reverse on the ST data sheet, then the matter would need to be remanded to the PTAB to conduct an obviousness analysis.

[00:13:48] Speaker 02:
Your Honor, if I may, I'd like to reserve the balance of my time.

[00:13:51] Speaker 00:
OK.

[00:13:51] Speaker 00:
Thank you, Mr. Panekowski.

[00:13:59] Speaker 00:
Mr. Teitren?

[00:14:01] Speaker 03:
Thank you, Your Honor.

[00:14:02] Speaker 03:
May it please the Court, Steven Titren, Counsel for Appellee and Pat Miller, Optical Devices.

[00:14:09] Speaker 03:
I'd like to talk about three issues today, first of which you talked about, inherency.

[00:14:15] Speaker 03:
Toshiba does ask this Court to essentially reweigh the evidence that the Board considered in determining that Bayer does not inherently disclose determining a tracking error signal and a focus error signal.

[00:14:27] Speaker 03:
The Board properly determined the standard for inherency

[00:14:30] Speaker 03:
which, as you pointed out, Judge Schall, is that the item missing item must be necessarily present and may not be established by probabilities and possibilities.

[00:14:41] Speaker 03:
To reach this conclusion, the board considered six expert declarations, numerous pieces of extrinsic evidence associated with those declarations.

[00:14:53] Speaker 01:
Mr. Tytron, let me ask you, what is your client's position

[00:15:00] Speaker 01:
on whether or not Baird is an open or a closed loop system.

[00:15:05] Speaker 03:
It's not clear whether it is an open or a closed loop system.

[00:15:08] Speaker 03:
As you pointed out in your questioning of opposing counsel, it simply talks about focus and tracking loops.

[00:15:15] Speaker 03:
And as optical devices expert pointed out, you can have open loop systems as well as closed loop systems.

[00:15:27] Speaker 03:
Neither of those systems necessarily requires the calculation of a tracking error signal and a focus error signal.

[00:15:35] Speaker 01:
I was looking at, I'm trying to think what, I guess at Appendix 1596, you have this, I think I'm talking about Figure 1.

[00:15:48] Speaker 01:
That seems to suggest, and I emphasize seem because

[00:15:54] Speaker 01:
You probably know more about seams because you probably know more about than I do.

[00:15:58] Speaker 01:
But that seems to look like what's going on there is some kind of a, what I'll call for one of a better word, closed loop operation.

[00:16:08] Speaker 01:
Is that wrong?

[00:16:11] Speaker 01:
You have the photo detectors and then going through the servo channel, then over to the actuators.

[00:16:16] Speaker 01:
And I guess 105 is the disk being acted on given the feedback.

[00:16:25] Speaker 03:
It's still not clear.

[00:16:26] Speaker 03:
I think opposing counsel said it best when he described the servo control processor as a black box.

[00:16:32] Speaker 03:
It's not clear exactly what is going on in there.

[00:16:34] Speaker 03:
It's not clear exactly how the photo detector signals are being utilized in that box.

[00:16:41] Speaker 03:
As Dr. DeCalifon explained, you can use the photo detector signals, for example, in an open loop system.

[00:16:49] Speaker 03:
using the photo detector signals merely as a reference signal or a signal to predict where the optical disc will be going to, but not necessarily an error signal, which indicates an off-track position, a position where you currently are versus where you should be.

[00:17:09] Speaker 03:
And so, as you correctly pointed out earlier,

[00:17:16] Speaker 03:
Dr. Zeck did respond in his deposition testimony using language such as it relied on a probability, probably was using this not much of a leap.

[00:17:27] Speaker 03:
Because of that, the board found that his testimony was not sufficient as compared to Dr. DeCalifan's testimony.

[00:17:39] Speaker 03:
The board also found that OD did provide a credible challenge

[00:17:44] Speaker 03:
to persuasively rebut the assumption that determining TES and FES are necessarily present.

[00:17:54] Speaker 03:
The board relied on substantial evidence to find this.

[00:17:57] Speaker 03:
That did include the fact that our expert testified that open loop systems can be designed, as I just explained, that don't require TES and FES.

[00:18:12] Speaker 03:
You alluded before that, or opposing counsel alluded before that, our expert never equated open loop systems such as repetitive systems, the robot systems he refers to, to optical disk drives.

[00:18:25] Speaker 03:
That's not true.

[00:18:26] Speaker 03:
Dr. DeCalifon did testify that optical disk drives do rotate repeatedly and that you could actually design a system that would open loop track those systems without determining an error signal.

[00:18:41] Speaker 03:
for opposing counsel to through attorney arguments alone.

[00:18:46] Speaker 01:
I understood, Dr. DeCalifon, to argue, among other things, and correct me if I'm wrong, that you could have, assuming there was a closed loop system here, you don't necessarily know if the error correction process that's claimed in the patent was taking place.

[00:19:04] Speaker 03:
Is that correct?

[00:19:05] Speaker 03:
That's correct.

[00:19:06] Speaker 03:
Even with a closed loop system, you could just use the photodetector inputs

[00:19:10] Speaker 03:
as a predictive signal.

[00:19:15] Speaker 03:
We make an analogy in our briefs to riding a bicycle, for example.

[00:19:21] Speaker 03:
That's a closed-loop system.

[00:19:22] Speaker 03:
You, with your eyes, you're looking ahead at the road as to where you want to go.

[00:19:26] Speaker 03:
You're not necessarily looking down to see how far you are off from your path.

[00:19:30] Speaker 03:
You use that predictive signal to essentially guide where you're trying to go.

[00:19:39] Speaker 01:
State of the record is such, you're saying that there's no agreement as to whether there was an open or closed loop system in Baird?

[00:19:46] Speaker 03:
Not in Baird, no.

[00:19:47] Speaker 01:
In fact, the board... Did one of the experts say that Baird was an open or closed loop system?

[00:19:55] Speaker 03:
Perhaps, their expert perhaps said it, but our expert said it is not clear.

[00:19:59] Speaker 03:
And the board actually, the board reached the conclusion, said that Baird is silent with respect to health focus and tracking error control are accomplished by the SCP.

[00:20:09] Speaker 03:
in particular whether such control relies on determining any error signals and even if the servo operates in an open or closed loop fashion.

[00:20:18] Speaker 03:
So there was testimony again on both sides and this is what the board concluded.

[00:20:23] Speaker 03:
As you pointed out earlier Judge Wallach, Toshiba in their reply brief

[00:20:29] Speaker 03:
introduce new argument, essentially abandoning their prior inherency argument and introducing a new argument that expressly teaches TES.

[00:20:39] Speaker 03:
I'd like to touch on that briefly.

[00:20:43] Speaker 03:
As you pointed out, the record below is completely absent, not only in the discussion of DPD, but it's also absent of any assertion and testimony in the declarations as to bare expressly teaching

[00:20:58] Speaker 03:
determining a TES and FES.

[00:21:01] Speaker 03:
The record focuses completely on inherency.

[00:21:03] Speaker 03:
So this court should just disregard that.

[00:21:06] Speaker 00:
Well, they were responding.

[00:21:08] Speaker 00:
Those are difficult aspects.

[00:21:10] Speaker 00:
But when there's an argument by the respondent, then in the reply brief, that's the purpose of the reply brief, to respond to those arguments.

[00:21:19] Speaker 03:
That's absolutely correct, Judge Newman.

[00:21:20] Speaker 03:
And even though they did that, it is, as Judge Wallach pointed out, completely unsubstantiated by the record.

[00:21:28] Speaker 03:
was never briefed below, was never discussed below by the experts, and therefore could not have been considered by the board.

[00:21:42] Speaker 04:
Let me ask you this.

[00:21:44] Speaker 04:
On the ST data sheet and press release, which you essentially won on, the last part of the red brief

[00:21:57] Speaker 04:
argues that the board erred because it was hearsay in denying your motion to exclude it.

[00:22:07] Speaker 04:
But you're not appealing that.

[00:22:08] Speaker 04:
Why is the argument even there?

[00:22:11] Speaker 03:
Are you going to tell me it's gravy?

[00:22:15] Speaker 03:
I'm not going to use the word gravy in this court, Judge.

[00:22:18] Speaker 03:
It is there because it is a secondary argument.

[00:22:22] Speaker 03:
We ask for it alternatively if the board does decide to admit based on the other arguments they put forward.

[00:22:30] Speaker 03:
However, the more important thing with the ST data sheet is the fact that the controlling law requires a document like that, a non-self-authenticating, non-patent literature document to be properly corroborated.

[00:22:45] Speaker 00:
But where is that?

[00:22:46] Speaker 00:
It's got a date on it.

[00:22:47] Speaker 00:
and it was referred to or the availability with the press release.

[00:22:53] Speaker 00:
That's a very difficult question to show that there was no prior knowledge.

[00:22:59] Speaker 00:
Publication of itself, the problem is that the America Invents Act says publications, but there is nonetheless a serious question of prior knowledge involved in that data sheet.

[00:23:16] Speaker 03:
That's right, Justice Newman.

[00:23:17] Speaker 03:
And even prior to the American Events Act, the concept of a printed publication, non-patent literature, if you will, did exist.

[00:23:25] Speaker 03:
And if you look at the case law.

[00:23:27] Speaker 00:
Well, it was certainly published.

[00:23:29] Speaker 00:
It was certainly printed.

[00:23:31] Speaker 00:
So the only question is, when could it have been made available beyond the source?

[00:23:39] Speaker 00:
That's right.

[00:23:39] Speaker 00:
The third party source with no relation to this litigation, I gather.

[00:23:44] Speaker 03:
Is that right?

[00:23:44] Speaker 03:
The only competent source that could opine and provide evidence on that would be either the publisher themselves of the document stating what the date means or someone familiar with the routine business practices of the document.

[00:24:00] Speaker 00:
Well, it has a date.

[00:24:01] Speaker 00:
There is something, there is nothing to suggest that that date was placed on it for purposes of this current litigation.

[00:24:10] Speaker 03:
The document itself, Judge Newman, does refer to itself as a preliminary spec.

[00:24:14] Speaker 03:
And if you look at that as compared to the ST data sheet, the ST data sheet.

[00:24:19] Speaker 00:
But the document has a date on it.

[00:24:21] Speaker 00:
That's what concerns me.

[00:24:23] Speaker 03:
It has a date on it, Your Honor.

[00:24:24] Speaker 00:
And it's certainly in print.

[00:24:27] Speaker 03:
Right, Your Honor.

[00:24:29] Speaker 04:
What are the elements of publication, Counsel?

[00:24:32] Speaker 03:
The elements of publication is that it needs to either be

[00:24:38] Speaker 03:
available to the public before the critical date, evidence of availability or evidence of dissemination.

[00:24:45] Speaker 03:
Toshiba has provided evidence of neither of that.

[00:24:48] Speaker 03:
They show a date on the document, but they provide no testimony showing that it was accessible.

[00:24:54] Speaker 03:
They show no testimony showing that it was disseminated.

[00:24:57] Speaker 03:
Even the S key data sheet

[00:24:59] Speaker 03:
refers to a version of the chip.

[00:25:01] Speaker 03:
If you look at the press release, it says a version of the chip will be released.

[00:25:05] Speaker 00:
But are you telling us that any printed document with a date on it, you have to go back to the source, to the printer, to authenticate it?

[00:25:15] Speaker 00:
Isn't it self-proving?

[00:25:17] Speaker 03:
The court enlistor makes clear that there are a plethora of circumstantial evidence that may be used to prove that a printed publication

[00:25:27] Speaker 03:
is available before the critical date.

[00:25:30] Speaker 03:
But the important thing is that the three pieces of evidence that Toshiba provided, an internal data sheet that just has a date on it, a press release.

[00:25:42] Speaker 00:
We don't know if it's internal or not.

[00:25:45] Speaker 00:
Isn't that an issue?

[00:25:46] Speaker 00:
Exactly.

[00:25:47] Speaker 00:
When you get to that point, plus the press release announcing the product.

[00:25:53] Speaker 03:
And contrary to that argument on the other side, Judge,

[00:25:56] Speaker 03:
we don't know that it was released either.

[00:25:58] Speaker 00:
And so the fear here is that... It isn't whether it was released, it was whether it was available.

[00:26:03] Speaker 03:
It's whether it was available or disseminated to the public.

[00:26:06] Speaker 03:
And so if we ask ourselves we don't know whether or not the document wasn't released, then we have to also accept the fact that the document perhaps was not released.

[00:26:20] Speaker 03:
And it would have been a simple task

[00:26:23] Speaker 03:
for Toshiba.

[00:26:24] Speaker 03:
We served our objections timely as the IPR rules require.

[00:26:29] Speaker 03:
It would have been a simple task for Toshiba to go to STMicroelectronics and get a person familiar with whoever prints these data sheets, because they obviously print these data sheets all the time, to explain the process to you.

[00:26:44] Speaker 03:
And they did not do that.

[00:26:46] Speaker 03:
They instead chose to rely on testimony, not competent testimony, of their own expert.

[00:26:51] Speaker 03:
who again used terms such as it stands to reason that a datasheet will be released with a product when he bases that on no internal knowledge of what ST microelectronics processes are and the fact that the datasheet itself does not necessarily refer on its face to the chip that's described in... Well, now we're talking about the content, which we haven't really gotten to,

[00:27:19] Speaker 00:
of whether it would be at least relevant in terms of obviousness.

[00:27:24] Speaker 00:
The question is whether it's available to be considered at all.

[00:27:28] Speaker 01:
That's correct.

[00:27:29] Speaker 01:
So what you're saying is you're agreeing with Judge Newman that there are a number of ways that this can be established, that it was publicly available, but that Toshiba did not come forward and present evidence with respect to any of those ways.

[00:27:45] Speaker 00:
Because it's got a date on it.

[00:27:47] Speaker 00:
I mean, those are difficult

[00:27:49] Speaker 00:
fine lines to draw that a date on a data sheet doesn't mean anything.

[00:27:56] Speaker 00:
You have to go back to the source.

[00:27:57] Speaker 03:
This court struggled with the same issues in Constant versus Advanced Microdotesis as well as Enhanced Security, where both in those cases, and Toshiba improperly relies on them, they did provide corroborating evidence from the creator of the document to explain what that information means.

[00:28:15] Speaker 00:
Well, that's the content.

[00:28:16] Speaker 00:
As I say, that's a different question.

[00:28:19] Speaker 00:
If it's not admissible, it doesn't matter what its content is.

[00:28:23] Speaker 00:
Is that right?

[00:28:24] Speaker 03:
That's correct.

[00:28:25] Speaker 03:
And we believe the board properly ruled it is not admissible.

[00:28:28] Speaker 04:
Can you just draw at least analogies from other laws relating to publication, like defamation, in which there has to be actual positive proof, as opposed to negative inferences, that there's been publication of someone other than

[00:28:46] Speaker 04:
the person who's been defamed, someone saying, yes, I saw it.

[00:28:52] Speaker 03:
In this situation, the possibility that evidence could be tampered with is too great.

[00:29:07] Speaker 03:
You've got patents, patent publications that are available.

[00:29:12] Speaker 03:
You've also got companies that go to great length to establish that their printed publications are not, are published in a certain fashion.

[00:29:20] Speaker 03:
This particular document does not fall in that category.

[00:29:23] Speaker 03:
It is not self-authenticating as to its date.

[00:29:26] Speaker 04:
What I'm saying is there's positive proof and negative proof.

[00:29:31] Speaker 04:
Positive proof is yes, I published this or yes, I received it.

[00:29:37] Speaker 04:
and therefore it was published to me.

[00:29:39] Speaker 04:
Negative proof is the absence of anyone saying that, and you're presenting negative proof.

[00:29:47] Speaker 04:
That's directly analogous to the way any kind of newspaper defamation action would occur.

[00:29:55] Speaker 03:
With all due respect, this is not a defamation action.

[00:29:57] Speaker 04:
Of course it's not, but publication is an element in both.

[00:30:01] Speaker 03:
And this court has made clear that, and Toshiba knew this law before they filed their RPRs and chose to use MPL in their petition, that to be able to get this evidence admitted, they needed to corroborate what the information on the data sheet meant.

[00:30:20] Speaker 03:
Expressly the date, Judge.

[00:30:22] Speaker 00:
Well, that's essentially, we're still worried about the date.

[00:30:27] Speaker 00:
It certainly shows prior knowledge, which

[00:30:31] Speaker 00:
according to the American Vents Act is not included.

[00:30:35] Speaker 00:
So you have to squeeze it into the narrow aspect of the American Vents Act, which says publication.

[00:30:43] Speaker 00:
So that's our dilemma.

[00:30:45] Speaker 00:
OK, thank you.

[00:30:51] Speaker 00:
Thank you.

[00:30:51] Speaker 00:
Mr. Pankowski, let's enlarge his time as well.

[00:30:54] Speaker 00:
Let's make it four minutes.

[00:30:56] Speaker 02:
Thank you, Your Honors.

[00:30:58] Speaker 02:
This court's precedent requires reversal.

[00:31:00] Speaker 02:
of the board's conclusion that the ST data sheet was not a printed publication.

[00:31:06] Speaker 02:
And there are three cases that are especially informative here.

[00:31:09] Speaker 02:
First, in Lister, at page 1317, this court said that if the challenger of the patent makes the prima facie case of dissemination and public accessibility, the burden that- What was your evidence of publication?

[00:31:23] Speaker 02:
Publication.

[00:31:24] Speaker 02:
Yes.

[00:31:25] Speaker 02:
Your Honor, our evidence of publication

[00:31:27] Speaker 02:
is circumstantial evidence, as is often the case.

[00:31:30] Speaker 02:
And it's not necessarily inferior to direct evidence.

[00:31:34] Speaker 02:
And it comes from the totality of three pieces of evidence.

[00:31:37] Speaker 02:
First, the ST data sheet itself, which bore a May 1998 date and had all of the in... That's right.

[00:31:46] Speaker 04:
That's evidence that somebody sat down, typed something, and put a date on it.

[00:31:51] Speaker 02:
Correct?

[00:31:52] Speaker 02:
Yes, Your Honor.

[00:31:53] Speaker 04:
And there are... How is that evidence of publication?

[00:31:55] Speaker 02:
Your Honor, it is not by itself sufficient for publication, but it is one of the three building blocks we have here.

[00:32:02] Speaker 02:
That we have the ST data sheet with the date and with all these other indicia that it was not a draft, that it was intended for public dissemination.

[00:32:12] Speaker 02:
Then we have on May 18, 1998, the press release announcing the release of the specific product referenced in the ST data sheet.

[00:32:22] Speaker 02:
And then we have Dr. Zach's testimony based on his nearly half century of optical disk industry experience saying that he didn't just say it stands to reason that the ST data sheet was also available in May 1998.

[00:32:36] Speaker 02:
The reason that he gave for that is that chip companies typically disseminate a data sheet when they introduce a new chip.

[00:32:44] Speaker 02:
And you can infer from that testimony of industry practice the same thing that in these other cases,

[00:32:50] Speaker 02:
the court said you could infer from a declaration from the publisher, but contrary to counsel's statement, this court has never held that a declaration from the publisher is required.

[00:33:02] Speaker 04:
So given all that... You don't infer it from a declaration from the publisher.

[00:33:07] Speaker 04:
That's direct evidence.

[00:33:09] Speaker 02:
Your Honor, the type of declaration that would give rise to an inference would be a declaration where the publisher says, it was our general practice to release this type of information.

[00:33:19] Speaker 02:
And that is what you often have in these cases.

[00:33:23] Speaker 04:
Sure, that's a business practice exception.

[00:33:25] Speaker 02:
Exactly.

[00:33:26] Speaker 02:
And so Dr. Zeck's declaration is an industry practice declaration.

[00:33:31] Speaker 02:
And when you take those three pieces of evidence together, and here is the key point in the legal framework under Lister,

[00:33:38] Speaker 02:
What you have is a prima facie case of publication.

[00:33:41] Speaker 02:
It was unreasonable for the board to conclude that that was not a prima facie case.

[00:33:46] Speaker 02:
So what happened?

[00:33:48] Speaker 02:
Under Lister, what happened is that the burden shifted to OD.

[00:33:51] Speaker 02:
And what did OD do?

[00:33:53] Speaker 02:
All they did was include a statement at page 3338 of the appendix in Dr. de Califon's declaration, where he said, I personally did not see the ST data sheet in 1998.

[00:34:06] Speaker 02:
There was nothing in there.

[00:34:08] Speaker 02:
that rebutted anything in Dr. Zek's declaration or any other inference that flowed from this prima facie case.

[00:34:15] Speaker 02:
So instead, you have a case like Hall at pages 899 to 900, where the court said, look, the prima facie burden has been satisfied, and that prima facie case was unrebutted.

[00:34:27] Speaker 02:
That is what we have here.

[00:34:28] Speaker 02:
And therefore, no substantial evidence supports the board's conclusion.

[00:34:33] Speaker 02:
And as this court said in constant, if accessibility is proved,

[00:34:37] Speaker 02:
there is no requirement to show that particular members of the public actually receive the information.

[00:34:42] Speaker 02:
And that is why Dr. DeCalifon's statement that you never saw it is not competent.

[00:34:46] Speaker 04:
Did your expert, with nearly 50 years of experience, conduct a search to determine if there had been publication?

[00:34:54] Speaker 02:
Your Honor, I'm not aware if the expert did that or not.

[00:34:56] Speaker 02:
There is no evidence in the record that the expert did that.

[00:34:59] Speaker 02:
So that's your answer.

[00:35:01] Speaker 02:
There is no evidence that

[00:35:03] Speaker 04:
the expert did that.

[00:35:04] Speaker 02:
Your Honor, there's no evidence that the expert did it.

[00:35:06] Speaker 02:
This court's precedent does not require such a search.

[00:35:09] Speaker 02:
And whether the burden is met is not measured by what type of evidence conceivably may have been adduced, and looking at whether that type of evidence... No, it's measured by what evidence must be adduced.

[00:35:23] Speaker 02:
Yes, your honor.

[00:35:24] Speaker 02:
And for a printed publication, this court has never set forth the type of requirement that the board has effectively set forth and that counsel for OD has expressly set forth.

[00:35:35] Speaker 02:
The board and OD are advocating a standard under which you cannot accept that something is a printed publication unless you have a declaration from the publisher.

[00:35:45] Speaker 02:
And that is not the law.

[00:35:47] Speaker 02:
This court has never said it.

[00:35:49] Speaker 02:
And to affirm would be to essentially endorse that view of the law that the board and OD have adopted.

[00:35:56] Speaker 02:
And therefore, Your Honor, this court should rule.

[00:35:58] Speaker 01:
Just one thing.

[00:35:58] Speaker 01:
Yes, Your Honor.

[00:35:59] Speaker 01:
You rely on the Dr. Zek testimony, but the board specifically found that we do not afford persuasive weight to Dr. Zek's statement regarding the asserted availability of the ST data sheet.

[00:36:13] Speaker 01:
And it reached that conclusion.

[00:36:15] Speaker 01:
according to the board, because he didn't provide any supporting evidence, kind of along the lines of what maybe Judge Wallach was asking you about.

[00:36:24] Speaker 01:
So the board discounted the Zek testimony.

[00:36:28] Speaker 01:
So what are you left with then?

[00:36:30] Speaker 02:
Your Honor, what we're left with is the fact that the board improperly and unreasonably discounted Dr. Zek's testimony.

[00:36:37] Speaker 02:
Their conclusory finding on that is not entitled to deference because the board misread Dr. Zek's declaration.

[00:36:45] Speaker 02:
At page 1730 of the appendix, paragraph 90, Dr. Zeck said, because the chip was available in May 1998, it stands to reason that the ST data sheet also was available in May 1998.

[00:36:57] Speaker 02:
The board treated that sentence as if there were a period at that point and not a comma.

[00:37:03] Speaker 02:
It ignored the reason that Dr. Zeck gave, which is, as chip companies typically disseminate a data sheet when they introduce a new chip,

[00:37:13] Speaker 02:
He gave that testimony in light of his nearly half a century of industry experience, which is outlined at pages 1684 to 1686 of the appendix.

[00:37:24] Speaker 02:
That was enough to establish a prima facie case.

[00:37:27] Speaker 02:
It was unreasonable to conclude otherwise.

[00:37:30] Speaker 02:
The burning shifted to OD.

[00:37:32] Speaker 02:
And as OD effectively admits at page 36 of their red brief, this is a case that rises or falls.

[00:37:41] Speaker 02:
on whether or not Toshiba established a prima facie case.

[00:37:45] Speaker 02:
They don't even contend that they supplied any type of rebuttal evidence.

[00:37:50] Speaker 02:
And that is the reason why no substantial evidence supports the board's ruling on printed publication and therefore that ruling should be reversed.

[00:37:58] Speaker 00:
Okay.

[00:37:59] Speaker 00:
Thank you.

[00:37:59] Speaker 00:
Thank you, counsel.

[00:38:00] Speaker 00:
Thank you both.

[00:38:02] Speaker 00:
The case is taken under submission.