[00:00:00] Speaker 03:
Mr. Pollack, please proceed.

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

[00:00:26] Speaker 00:
Good morning.

[00:00:27] Speaker 00:
May it please the Court

[00:00:29] Speaker 00:
This court gave the board two directives on remand in this case.

[00:00:34] Speaker 00:
The board failed to follow both of those directives, and its decision must be set aside.

[00:00:41] Speaker 00:
This court first instructed the board to fully consider the district court's construction, which was Power Integration's proposed construction in the re-exam.

[00:00:50] Speaker 00:
The board did not do so.

[00:00:52] Speaker 00:
This court said in the Power Integrations v. Leakey's case 797, Fed 3rd.

[00:00:59] Speaker 03:
There were two issues on the last remand order, which were intertwined.

[00:01:07] Speaker 03:
The first issue is that the board failed to appreciate what the patentees' actual arguments were.

[00:01:17] Speaker 03:
including that it doesn't have to be directly connected in order to be coupled.

[00:01:21] Speaker 03:
And the patentee had made that argument repeatedly, but the board failed to appreciate that argument and instead rejected, purported to address the patentee's arguments but hadn't and rejected them.

[00:01:31] Speaker 03:
Intertwined with that was the patentee had received two favorable district court claim constructions along the lines of what he was arguing, right?

[00:01:42] Speaker 00:
That's correct.

[00:01:44] Speaker 03:
Is it fair to say the board has now clearly addressed what the patentee's precise arguments were in, namely, doesn't have to be directly connected to each other in order to be coupled?

[00:01:59] Speaker 03:
I mean, does it have to recognize that a direct connection is not required by the patentee to be coupled?

[00:02:06] Speaker 00:
I don't think so, actually.

[00:02:07] Speaker 00:
That issue was the question that this court said

[00:02:13] Speaker 00:
One of the key issues was whether or not the counter could control the DAC through some other component.

[00:02:28] Speaker 00:
And this was the issue that this court called the critical issue, whether in light of the specification and the surrounding claim language requires the counter itself and not the counter and a memory functioning together to drive

[00:02:43] Speaker 00:
the digital analog converter.

[00:02:45] Speaker 00:
And this court concluded, because the board's opinion provides us with an inadequate predicate upon which to evaluate its decision to reject claim one, the court vacated and remanded it.

[00:02:56] Speaker 00:
On that exact issue, the board actually quoted that portion of the court's remand instruction and said, quote, this issue was addressed in detail in the decision, meaning their prior decision.

[00:03:09] Speaker 00:
And then it just simply repeated verbatim

[00:03:12] Speaker 00:
quoted, block quoted what had already said on that question and didn't add anything new at all to the analysis.

[00:03:20] Speaker 00:
Did not address this court's questions during the oral argument.

[00:03:27] Speaker 00:
Didn't address the issue of whether or not some intervening components would be within the proposed construction and some would not.

[00:03:36] Speaker 04:
What age of the board's

[00:03:38] Speaker 04:
New decision, most recent decision, are you referring to?

[00:03:41] Speaker 00:
So this is in the appendix at page 10, where the board has a heading, does claim one preclude the counter and memory function together?

[00:03:52] Speaker 00:
And they quote from the Federal Circuit prior opinion right below that heading.

[00:03:59] Speaker 00:
And the very first sentence after the quote reads, this issue was addressed in detail in the decision.

[00:04:06] Speaker 00:
And then it just block quotes.

[00:04:07] Speaker 00:
from the prior decisions thereafter.

[00:04:10] Speaker 00:
The only thing additional that the board raised was they tried to point to this court's decision in the litigation, the Power Integrations Fairchild I litigation, and suggest that this court agreed with the board's interpretation.

[00:04:24] Speaker 00:
Well, we know, of course, that that's not correct.

[00:04:26] Speaker 00:
You just read that decision.

[00:04:27] Speaker 00:
It makes no finding that supports the board's decision.

[00:04:31] Speaker 00:
And in fact, in the second decision, at 843 Fed 3rd

[00:04:35] Speaker 00:
1329, this court finds exactly the opposite, that the construction and, in fact, that as a matter of fact, that the prior art having a ROM in between decouples the counter from the DAC.

[00:04:55] Speaker 00:
And to your question, Judge Moore, the issue of whether the courts

[00:05:02] Speaker 00:
whether the patent office grappled with this question of intervening components, which was one of the issues that you addressed that was sort of intertwined here, that was a specific ruling of the district court and addressed in the district court's analysis, which was, I believe, in part what the court was getting at, trying to get the patent office to fully consider what the district court had done in the parallel litigation.

[00:05:28] Speaker 03:
the standards applicable, and I mean preponderance versus BRI or whatever, you would think that if two other adjudicators have reached the opposite conclusion of you, that any good judge would want to consider those regardless of what the standard is.

[00:05:46] Speaker 03:
Now, the answer might be, my standard is not the same as your standard.

[00:05:50] Speaker 03:
And as a result, while I see you reached this conclusion, my conclusion is different because

[00:05:56] Speaker 03:
And they didn't do that.

[00:05:58] Speaker 03:
But certainly, I did not interpret our original remand order, and I'm curious if you did, to require the board to apply the standard that the district court adopted, because they seemed to suggest that we somehow were ordering them to apply the district court standard, which they say would be, I don't know if it's... Unwarranted, I believe, was the... Yeah, I think that sounds right.

[00:06:24] Speaker 00:
And Your Honor,

[00:06:26] Speaker 00:
I don't know exactly how the board was interpreting this remand order.

[00:06:31] Speaker 00:
I thought it was pretty clear.

[00:06:32] Speaker 03:
Angrily, I think is fair to say.

[00:06:35] Speaker 00:
I thought it was relatively clear that what this court was suggesting was, please go back and look at what the district court actually did.

[00:06:43] Speaker 00:
Look at its analysis.

[00:06:45] Speaker 00:
Look at what evidence it considered.

[00:06:48] Speaker 00:
In this case, it considered solely the intrinsic evidence.

[00:06:52] Speaker 00:
And determine whether, based on the court's analysis,

[00:06:56] Speaker 00:
Its result was consistent with the broadest reasonable interpretation standard.

[00:07:02] Speaker 00:
The office did not do that.

[00:07:04] Speaker 00:
In fact, in the remand decision, they don't cite to or quote at all the district court's claim construction.

[00:07:12] Speaker 00:
Based on what we see, we don't know whether or not the board actually even read the district court's analysis.

[00:07:17] Speaker 00:
Now, the director quotes it in the red brief, but the board did not.

[00:07:22] Speaker 00:
The board basically said, one,

[00:07:24] Speaker 00:
We think such an analysis is unwarranted.

[00:07:27] Speaker 00:
Two, they said, we don't know how we would do such an analysis.

[00:07:31] Speaker 00:
And then third, they said, well, putting all that aside, the district court's construction is narrower.

[00:07:36] Speaker 00:
So fait accompli, it must not be the broadest reasonable interpretation, which we think begs the question.

[00:07:46] Speaker 00:
Of course, the district court's construction was narrower.

[00:07:49] Speaker 00:
The question was whether the board's construction was unreasonably broad.

[00:07:54] Speaker 03:
Yeah, I don't know if we have cases that say this, but it seems to me, to be honest with you, that the space between the construction and the broadest reasonable construction is probably a pretty narrow little window or band.

[00:08:07] Speaker 03:
And so certainly, it can't possibly be the case that every appropriate construction found as a matter of law, that there exists broader constructions which are reasonable, right?

[00:08:18] Speaker 03:
Sometimes there may, and sometimes there may not.

[00:08:22] Speaker 03:
Why is this construction unreasonable?

[00:08:25] Speaker 03:
Tell me what's unreasonable about it.

[00:08:27] Speaker 03:
Step aside now from the failure to entertain our vacate and remand order as though it was optional and instead go to, why is this an unreasonable construction?

[00:08:37] Speaker 03:
Because we do have a much more detailed opinion on this now than we did before.

[00:08:41] Speaker 00:
Well, I actually think that the opinion repeats a lot of what it said previously.

[00:08:46] Speaker 03:
But the reason that it's- Clearly, they make that clear to us.

[00:08:50] Speaker 03:
We have always said and will always say.

[00:08:51] Speaker 03:
It's at a minimum bizarrely written opinion.

[00:08:56] Speaker 00:
The reason it's unduly broad is the board's construction is simply joined together in the same circuit.

[00:09:05] Speaker 00:
And they reach that construction by grabbing a Webster's dictionary and finding the definition of couple.

[00:09:13] Speaker 03:
Is there any reason to think the memory in the prior art substantially changes

[00:09:18] Speaker 03:
voltage or current, whatever it is that's passing between the converter and what are we sending it to?

[00:09:24] Speaker 03:
What are the two elements?

[00:09:26] Speaker 00:
The counter and the digital to analog converter.

[00:09:28] Speaker 03:
Yeah, the D-Day converter.

[00:09:29] Speaker 00:
Yes.

[00:09:29] Speaker 03:
So is there a reason to think that the memory in the reference, the prior art reference, is impacting in a significant manner the signal that transfer goes from one to the other?

[00:09:42] Speaker 00:
Yes, in fact there is.

[00:09:44] Speaker 00:
And it's because the

[00:09:47] Speaker 00:
The whole purpose of having a memory is to be able to generate control signals that don't look anything like the address that you go to the memory to get that data from.

[00:10:01] Speaker 00:
Otherwise, you wouldn't need a memory in the circuit.

[00:10:05] Speaker 00:
The point of the prior art memory was to provide randomized variation.

[00:10:09] Speaker 00:
And so the output signal actually bears no resemblance in a control way

[00:10:15] Speaker 00:
And in fact, it's not the same voltage or the same current.

[00:10:19] Speaker 00:
I mean, the memory generates at its output a completely new set of digital signals that are different from the signals that come into its input.

[00:10:28] Speaker 00:
And in fact, it was described by one of the experts as- Can I turn you just for a minute?

[00:10:33] Speaker 04:
I think this is along the lines of what you're saying right now, which to give a little bit more pointedness to it.

[00:10:41] Speaker 04:
Claim one.

[00:10:42] Speaker 04:
says that the counter causes the digital analog converter to adjust the control input and to vary the switching frequency.

[00:10:50] Speaker 04:
So I think what I'm hearing you say, if I understand it in the context of claim one, is that if you have the memory between the counter and the ADD converter or the D to A converter, then it's

[00:11:06] Speaker 04:
then that claim limitation is not met.

[00:11:08] Speaker 04:
Is that what I hear you saying?

[00:11:10] Speaker 00:
Yes, that's correct.

[00:11:11] Speaker 00:
Because in that circumstance, the data coming from the counter, the control coming from the counter, does not cause the frequency to change.

[00:11:21] Speaker 00:
What causes the frequency to change is the data stored in the ROM that is then output to the D to A. And that data is randomized.

[00:11:30] Speaker 00:
It causes the frequency to hop around.

[00:11:34] Speaker 00:
in a pseudo-random manner.

[00:11:35] Speaker 00:
And that was important to the prior art.

[00:11:37] Speaker 00:
And so in that instance, it's the data stored in the memory that's causing the frequency to change, not the counter.

[00:11:45] Speaker 04:
Is your argument then that the language coupled to the counter should be interpreted in light of that surrounding language to provide something more consistent with what

[00:11:55] Speaker 04:
the district court said the interpretation was.

[00:11:57] Speaker 00:
Exactly.

[00:11:58] Speaker 00:
And that was the analysis that the district court went through.

[00:12:00] Speaker 00:
The district court said that there's surrounding language in the claim itself that suggests that a coupling, as recited in the claim, requires something more than simply that they're joined together.

[00:12:10] Speaker 00:
It requires coupling for the purposes of control.

[00:12:13] Speaker 00:
And there's also other coupling where the DDA converter is coupled to the control input of the oscillator.

[00:12:20] Speaker 00:
And so the district court found

[00:12:22] Speaker 00:
In the claim language itself, this idea that the coupling in this claim is for the purposes of control.

[00:12:28] Speaker 00:
And then it went to the specification and it found consistently in the specification that it taught that the counter is what was causing the frequency variation.

[00:12:39] Speaker 00:
It said repeatedly that the counter causes the DAC, the counter drives the digital analog converter.

[00:12:44] Speaker 04:
Let me back up for a minute and say, now, why isn't that

[00:12:48] Speaker 04:
taking the coupled language and trying to read specific embodiments and the specification into the coupled language?

[00:12:54] Speaker 00:
It's because it's not a specific embodiment.

[00:12:57] Speaker 00:
The limitation doesn't require any specific form of the signal pass.

[00:13:04] Speaker 00:
And that's why the district court said it's coupled if voltage, current, or control signals pass from one to the other.

[00:13:12] Speaker 00:
And so there's a number of different embodiments.

[00:13:15] Speaker 00:
And that construction actually goes beyond that and will encompass other kinds of connection than is disclosed.

[00:13:24] Speaker 00:
And that's why the district court went on and said, we don't mean to say that this requires a direct connection.

[00:13:30] Speaker 00:
But in fact, intervening components are OK, so long as they don't break the control relationship.

[00:13:37] Speaker 00:
I realize I've gone.

[00:13:39] Speaker 01:
We'll save some rebuttal time for you, Mr. Pollack.

[00:13:42] Speaker 01:
Let's hear from Ms.

[00:13:42] Speaker 01:
Nelson.

[00:13:50] Speaker 05:
May I please the Court?

[00:13:52] Speaker 05:
I know this Court is not too happy with what the Board did here, but if I could, I just want to take one step back and try to explain why we're in this extremely awkward position in this very unusual case.

[00:14:02] Speaker 05:
I think there was a series of five events that sort of led us into this very odd

[00:14:06] Speaker 05:
procedural position.

[00:14:08] Speaker 05:
The first is that the original examiner did not do a very rigorous examination and issued the claims after a single office action.

[00:14:15] Speaker 05:
In fact, never ever rejected claim one.

[00:14:17] Speaker 05:
The second is that Fairchild did not request reexamination until after there had been a jury verdict on infringement.

[00:14:24] Speaker 05:
And therefore, the reexamination has always lagged behind the district court action.

[00:14:31] Speaker 05:
The third is that power integrations then, when there was a board decision,

[00:14:35] Speaker 05:
went on this detour to the district court in a 145 action.

[00:14:38] Speaker 05:
And it wasn't until TELUS that we ended up coming back and being transferred to this court.

[00:14:43] Speaker 05:
And then the fourth is that the district court, when it actually did construe, we find, and we can look to the district court's decision, it has a single sentence and did not at all any kind of thorough construction.

[00:14:55] Speaker 05:
And Fairchild never challenged its construction.

[00:14:59] Speaker 05:
And then as a consequence, this court

[00:15:03] Speaker 05:
in the meantime, actually come to two different issues, two opinions, based on that unchallenged construction.

[00:15:12] Speaker 05:
And finally, when this court sent the board's decision back because it had misapprehended power integration's argument, COSA was pending at the Supreme Court.

[00:15:21] Speaker 05:
And at that point, we didn't be our eye was up in the air.

[00:15:25] Speaker 05:
And so now here we are.

[00:15:26] Speaker 05:
And we have these Twitter decisions.

[00:15:27] Speaker 03:
But nothing about our vacating and remand order was somehow contingent on BRI.

[00:15:32] Speaker 03:
We didn't say, well, BRI might not be the standard.

[00:15:35] Speaker 03:
And that's why we're vacating and remanding.

[00:15:37] Speaker 03:
No, that's true.

[00:15:37] Speaker 03:
Something like that happened.

[00:15:38] Speaker 03:
I mean, I don't think that we're questioning BRI at all.

[00:15:44] Speaker 05:
No, I think that's true.

[00:15:45] Speaker 05:
But that did affect how quickly the board acted on it, because it was waiting to find out whether BRI was even still in play.

[00:15:52] Speaker 04:
But now, with respect to the question that was asked was whether the interpretation

[00:15:56] Speaker 04:
that the board reached was consistent with the broadest reasonable construction of the term.

[00:16:04] Speaker 04:
How in any way does that suggest that the broadest reasonable construction was not going to be the standard that was applied on remand?

[00:16:13] Speaker 04:
Instead it's saying, is the construction consistent with BRI, suggesting that is the very standard that should be applied?

[00:16:22] Speaker 05:
That is true.

[00:16:22] Speaker 05:
It's just, however, if closer had come out in a different way, it could have affected what the board did, independent of what this court ordered.

[00:16:29] Speaker 05:
But let me just get to what I think the board was struggling with and why it responded the way it did.

[00:16:35] Speaker 05:
I think that it felt that it was in a very awkward position here, because as I said, if you look to the district court's decision, there is a single sentence where it basically says that we find, based on the specification, that this is the correct construction.

[00:16:47] Speaker 05:
And it cites only to the claim, the two instances where the term appears in the claim.

[00:16:52] Speaker 05:
And I think reasonably the board felt very in an awkward position to try to second guess what the district court, why it had gotten to that construction without somehow casting a dispersion on the construction or suggesting that it was trying to critique.

[00:17:08] Speaker 03:
I feel like you are really projecting a lot of analysis into what possibly motivated the district court to tell us that our remand order was unwarranted and they weren't going to comply with it.

[00:17:22] Speaker 03:
But I don't see any of what you're saying in the board opinion.

[00:17:26] Speaker 03:
If they had just said that, if they had said the district court's opinion was based on a single sentence of analysis, and we disagree with it at least under the BRI standard, I don't understand why they couldn't have just done that.

[00:17:41] Speaker 03:
If what you're saying is true, it would have been a much friendlier little opinion than the one we got.

[00:17:46] Speaker 05:
I think that's true.

[00:17:48] Speaker 05:
And admittedly, the board used some language,

[00:17:51] Speaker 05:
words that were regrettable, but I think that effectively it felt that if it said anything at all.

[00:17:56] Speaker 03:
Is there like somebody that reads these things before they let them go out the door written like this?

[00:18:02] Speaker 03:
Like, you know, somebody catches when you've got some crazy language that basically goes like this to the appellate court, we're not going to let that one issue.

[00:18:11] Speaker 05:
I just think the board felt that no matter what it said about the district court, that it didn't want to be in a position where it was trying to evaluate another tribunal's findings.

[00:18:19] Speaker 05:
But now, if I could turn to the merits, because I think what the board did here was completely appropriate and consistent with what a PTU does every day.

[00:18:27] Speaker 05:
It's been charged with trying to assess whether or not the original

[00:18:31] Speaker 05:
the original prosecution arrived or patentability determination was correct.

[00:18:36] Speaker 05:
And it's supposed to correct its mistakes.

[00:18:37] Speaker 05:
And it did that by applying the broadest reasonable construction.

[00:18:41] Speaker 04:
And here, what we have is a very... One of the problems I'm having with what you're saying right now, and just for the record, one of the problems I'm having is that it's not like every other case.

[00:18:50] Speaker 04:
It's a case where this court struggled with understanding the board's decision and so then remanded it to ask for the board to consider something very specific.

[00:19:01] Speaker 04:
So I don't think it's quite like every other case.

[00:19:06] Speaker 04:
But please continue with what you're going to say.

[00:19:08] Speaker 04:
And I think you're going to try and explain why it is that the board's construction was the correct one.

[00:19:12] Speaker 05:
Well, I was going to explain that.

[00:19:13] Speaker 05:
And I think that it did ultimately determine that it was the reasonable construction.

[00:19:17] Speaker 05:
And therefore, because the district court's construction was narrower, it was not the broadest reasonable.

[00:19:22] Speaker 05:
But the reason it got to where it was, and this is unusual in the sense that we have a term that is not in the claim, that is not

[00:19:31] Speaker 05:
Defined in the specification, it does not ever even appear anywhere in the specification.

[00:19:35] Speaker 04:
What about the specific argument that the surrounding claim language that talks about the relationship between the DDA converter and the counter, that that makes it so the interpretation, the board's broad interpretation was unreasonable?

[00:19:54] Speaker 05:
There is additional claim language.

[00:19:56] Speaker 05:
The board gave way to that language, but that doesn't... What's your answer to the question?

[00:20:02] Speaker 04:
Why doesn't that additional claim language make it so the board's construction is incorrect?

[00:20:08] Speaker 05:
It doesn't make it incorrect because just because there's this other limitation in the claim doesn't in any way limit how the term coupled is interpreted.

[00:20:21] Speaker 05:
In other words, coupled could have a variety of meanings even

[00:20:24] Speaker 05:
if that functional terminology is met.

[00:20:29] Speaker 05:
And in fact, in the specification, yes, we have example one, where there is actually a direct connection between the counter and the DDA converter.

[00:20:37] Speaker 05:
But they're looking for something more than that, but not too much more than that.

[00:20:41] Speaker 05:
I mean, that's just the whole problem here.

[00:20:43] Speaker 05:
It's like we're pulling this definition out of thin air.

[00:20:47] Speaker 05:
It's not required or mandated by the specification.

[00:20:51] Speaker 05:
And then they're trying to use it as the subsequent panel of the board recognized to distinguish between certain intervening components, but not others.

[00:21:02] Speaker 05:
So I think they've said like inverters or scaling circuits would be okay, but memory is not.

[00:21:06] Speaker 05:
And when you look to the specification, a fair reading of the specification, there's simply nothing there that draws a line between certain intervening components and not others.

[00:21:14] Speaker 05:
What we have is a single example where they have a direct connection between the counter and the DDA converter,

[00:21:21] Speaker 05:
And then we have some broad language which talks about we can vary the connection to the devices or circuit elements in any way we choose and still be within the invention.

[00:21:31] Speaker 05:
They're trying to put another backstop in there which is simply not present in the specification and that's the problem we have.

[00:21:37] Speaker 04:
What about the argument, what's your response to the argument about how the claim says it's a circuit comprising

[00:21:44] Speaker 04:
And so the coupling language or the coupling interpretation that the board arrived at, which was that all of these components must be in the same circuit, it renders the language superfluous.

[00:21:56] Speaker 05:
Well, the reason the board got to the extrinsic evidence is, of course, because there was nothing in the intrinsic evidence whatsoever that led it to that conclusion.

[00:22:02] Speaker 05:
That's in the claim language.

[00:22:03] Speaker 05:
I'm talking about the claim language.

[00:22:04] Speaker 05:
Right.

[00:22:04] Speaker 05:
The comprising is in there, but comprising doesn't mandate that it arrived at the construction that power integration is suggested.

[00:22:11] Speaker 05:
It got to the extrinsic, it got to the extrinsic evidence and it found this definition.

[00:22:15] Speaker 05:
And I don't think that there is anything inconsistent with the definition it has and the use of comprising.

[00:22:19] Speaker 05:
This is basic claim drafting, like in any kind of, whether it be an apparatus or a, um, or a composition or electronic devices we have here.

[00:22:32] Speaker 05:
You set out the claim.

[00:22:33] Speaker 04:
Can I ask my question again?

[00:22:36] Speaker 04:
Cause I'm not sure you answered it.

[00:22:37] Speaker 04:
Maybe you did, but I want to make sure you understand my question.

[00:22:40] Speaker 04:
The claim language that's being interpreted is coupling, right?

[00:22:45] Speaker 04:
One of the arguments that I understand that's being made is that you can't interpret coupling to just be that all of these different elements in the claim are in the same circuit because that would be superfluous to other language that's already in the claim that says a circuit comprising elements A, B, and C. In other words, it's all those things in a circuit.

[00:23:10] Speaker 05:
Right, and I was getting to that, and the point is that the board's definition is joining.

[00:23:16] Speaker 05:
They're joined together, which means these two things have to be joined together, the counter and the DDA converter.

[00:23:21] Speaker 05:
And what I was trying to say is this is standard claim construction, claim drafting, where you have whatever it is comprising in a series of things, one, two, three, four, and five, and then you set out how they're arranged or organized.

[00:23:35] Speaker 05:
If it's a mechanical device, it could be one is connected to two.

[00:23:38] Speaker 05:
And that means that three, four, and five are not between one and two.

[00:23:42] Speaker 05:
Similarly here, where we're saying that they're joined together, the counter is connected and joined in this case to the DDA converter.

[00:23:49] Speaker 05:
It means other things are not claimed elements are not between them.

[00:23:53] Speaker 05:
And that's just standard claim drafting.

[00:23:56] Speaker 05:
I think there's nothing wrong with that construction.

[00:23:57] Speaker 05:
And it fits completely with the sort of typical claim drafting that occurs in claims.

[00:24:04] Speaker 03:
Confused.

[00:24:05] Speaker 03:
What exactly is the board's construction?

[00:24:07] Speaker 03:
So I know what it is.

[00:24:09] Speaker 03:
Is it joined into a single electrical circuit?

[00:24:12] Speaker 03:
What is it?

[00:24:13] Speaker 05:
Yeah, joined together in a single.

[00:24:15] Speaker 05:
So they're within a single electric circuit, and they're joined together.

[00:24:18] Speaker 05:
It means the two elements are joined together.

[00:24:20] Speaker 03:
Super question.

[00:24:21] Speaker 03:
Where precisely do they articulate their construction in the decision, just so I know the exact words?

[00:24:29] Speaker 05:
It's appendix.

[00:24:32] Speaker 05:
OK.

[00:24:35] Speaker 05:
Appendix 7, the term couple.

[00:24:39] Speaker 05:
And this is, again, this is a dictionary definition, but it's the electronic definition in an unabridged dictionary.

[00:24:45] Speaker 05:
And it says it means to join, parametrically, electric circuits or devices into a single electric circuit.

[00:24:52] Speaker 05:
So it's to join the circuits or devices.

[00:24:55] Speaker 02:
In this case.

[00:24:56] Speaker 02:
Is that their definition, or is that Webster's?

[00:24:59] Speaker 05:
That's Webster's.

[00:25:00] Speaker 02:
OK.

[00:25:01] Speaker 02:
They quote from it.

[00:25:02] Speaker 02:
All right.

[00:25:02] Speaker 02:
Did they say they adopt this?

[00:25:04] Speaker 05:
Yes.

[00:25:04] Speaker 02:
Where?

[00:25:07] Speaker 05:
They say, having gleaned no substantial guidance just above there from either the context of the claim itself or the specification, we then turn to the extrinsic evidence.

[00:25:16] Speaker 05:
And then they recite this definition, which they say is consistent with what's in the specification.

[00:25:27] Speaker 05:
And we think that it means nothing more than that.

[00:25:29] Speaker 03:
And joined into a single electric circuit is their view.

[00:25:33] Speaker 03:
Joined into a single electric circuit.

[00:25:35] Speaker 03:
Right.

[00:25:35] Speaker 03:
Okay, so does that mean that according to their view, electric circuits can be quite large?

[00:25:41] Speaker 03:
There can be parallel lines and series lines.

[00:25:45] Speaker 03:
I understand, right?

[00:25:46] Speaker 03:
Just also what I'm talking about.

[00:25:47] Speaker 03:
If there just happened to be a digital to analog converter and a control input or a digital analog converter and a counter in

[00:26:01] Speaker 03:
a giant electrical circuit with parallel lines.

[00:26:04] Speaker 03:
One was on one parallel, one was on the other.

[00:26:06] Speaker 03:
No feedback.

[00:26:07] Speaker 03:
So no signal from one is passing to the other.

[00:26:13] Speaker 03:
In fact, the signal comes in parallel, comes out, is joined together, and goes on.

[00:26:17] Speaker 03:
That would meet the board's definition, wouldn't it?

[00:26:19] Speaker 03:
Would it not?

[00:26:21] Speaker 03:
I don't think it would.

[00:26:22] Speaker 03:
I think what they say in series, a single electrical circuit can have parallel lines in it.

[00:26:27] Speaker 03:
Parallel lines, for sure, there are lots of parallel lines within electrical circuits.

[00:26:32] Speaker 03:
They don't say it has to be connected in series.

[00:26:35] Speaker 03:
Do you read that in there?

[00:26:36] Speaker 03:
No, I don't read that in there.

[00:26:38] Speaker 05:
But I do think that it's suggesting that they are joined, that they're somehow joined, just like a mechanical device.

[00:26:43] Speaker 03:
No, it says joined into a single electrical circuit.

[00:26:46] Speaker 03:
So do you think the word joined, so ah, so now are you saying the word joined actually implies a control relationship?

[00:26:55] Speaker 05:
I think that it means that no, I think it means that they are joined, whether directly or indirectly.

[00:27:01] Speaker 03:
Circuits can be really big and have lots of components.

[00:27:04] Speaker 03:
Is every component within the circuit joined together?

[00:27:07] Speaker 03:
I can't say that.

[00:27:10] Speaker 03:
A single circuit, lots of components.

[00:27:14] Speaker 03:
Do you see my problem with whether or not the construction is reasonable?

[00:27:17] Speaker 03:
Because they didn't choose in series, in parallel.

[00:27:20] Speaker 03:
They suggested, and it's absolutely possible an electrical circuit to have no feedback

[00:27:25] Speaker 03:
from one voltage or current to another, two things can be present in the same electrical circuit and thereby joined into a single circuit but have no control relationship.

[00:27:35] Speaker 03:
And if the board meant there was a control relationship by joined, well, now I'm really confused because that seems to be what they're running away from and what the district court held and what they sort of refuse to think about.

[00:27:47] Speaker 03:
So my point of struggle with the reasonable

[00:27:51] Speaker 03:
of this interpretation is, I'm not positive exactly what the board is intending to cover, but it seems like the breadth of their construction would absolutely cover a circuit which has two components that have absolutely no impact on each other within the voltage or current transmission process.

[00:28:10] Speaker 05:
The problem is what we have here is a very broad claim, and this is evidence, this is a dictionary definition, and this is what they had to go to because they could find nothing in the intrinsic evidence that

[00:28:21] Speaker 05:
at least gave them the construction that Power Integrations has asserted.

[00:28:26] Speaker 04:
Do you think this is the only definition of coupled that exists in the extrinsic evidence?

[00:28:34] Speaker 05:
Well, and that was going to be my next point, is that Power Integrations has not brought forth another dictionary definition or a dictionary definition that suggests that the definition or that the construction that they're advocating for is the

[00:28:48] Speaker 03:
I'm not sure if this is where Judge Stoll is going, but you didn't give us the Webster's Dictionary that they relied on, so I had to order it from the library, because we actually don't apparently keep a handy 1993 Webster's Dictionary around.

[00:29:00] Speaker 03:
Do you know that the definition in the sentence directly above the joint electrical circuit sentence says, to bring systems into such relation that performance of one influences the performance of the other?

[00:29:16] Speaker 03:
Then it says, to bring

[00:29:18] Speaker 03:
two electrical circuits into such close proximity as to present mutual influence.

[00:29:24] Speaker 03:
Then it says, and by the way, the definition the board relied on was a definition three in the list of the three.

[00:29:31] Speaker 03:
Two and one both include, in the same piece of extrinsic evidence, both include influence.

[00:29:38] Speaker 03:
It has to be a control relationship between the components for them to be coupled.

[00:29:41] Speaker 03:
Even in the electrical one, the very electrical one the board relied on, they left out the mutual influence portion of the definition.

[00:29:48] Speaker 03:
I don't know.

[00:29:49] Speaker 03:
Maybe that's outside the record.

[00:29:50] Speaker 03:
You cited the dictionary and told me where to look at it.

[00:29:53] Speaker 03:
So I'm not sure if, even though it's within the same number definition, tell me if you think that's technically outside of the record, such that as an appellate court, I shouldn't be looking at that piece of extrinsic evidence.

[00:30:05] Speaker 05:
Well, I think the other definitions are probably outside the record, but I think those were not directed to the electronics art and this one was, and that's why it shows it.

[00:30:12] Speaker 05:
But I've also looked at other dictionaries.

[00:30:15] Speaker 03:
No, no, it says to bring.

[00:30:17] Speaker 03:
Two electrical circuits into such close proximity as to promote mutual influence.

[00:30:21] Speaker 03:
To join electrical circuits or devices into a single circuit.

[00:30:27] Speaker 03:
That's the same definition.

[00:30:28] Speaker 03:
Those aren't two different ones.

[00:30:29] Speaker 03:
They're numbered the same in the Webster's Dictionary.

[00:30:32] Speaker 03:
That's all I'm saying.

[00:30:32] Speaker 03:
It's the same definition.

[00:30:34] Speaker 03:
It's not two different ones, I don't think, anyway.

[00:30:40] Speaker 03:
Well, actually, it's number two and three under the electrical part.

[00:30:44] Speaker 03:
So maybe they are different.

[00:30:45] Speaker 03:
I don't know.

[00:30:46] Speaker 03:
I don't want to go outside my roles in appellate court and say, I'm bringing in new extrinsic evidence.

[00:30:50] Speaker 03:
But you didn't give me the definition.

[00:30:52] Speaker 03:
You have Webster's.

[00:30:54] Speaker 03:
There's some dot, dot, dots in the portion you quoted, the board quoted.

[00:30:58] Speaker 03:
So I went to look at what's in between the dot, dot, dots.

[00:31:01] Speaker 03:
And that's what I found is this mutual influence stuff.

[00:31:03] Speaker 03:
So I mean, I don't know.

[00:31:05] Speaker 03:
That's why I'm printing it.

[00:31:06] Speaker 03:
What does a board mean by joined?

[00:31:07] Speaker 05:
Does it mean there must be mutual influence?

[00:31:08] Speaker 05:
But even the mutual influence, I mean, if we go further in the claim, I think we actually have something about it, having to have a control relationship, and the board

[00:31:15] Speaker 05:
found that that was met in Martin.

[00:31:17] Speaker 05:
And we can look to Martin, but Martin has some pretty strong language that indicates that it's actually the counter that is making the calls.

[00:31:27] Speaker 05:
It's the one that's sending the address.

[00:31:28] Speaker 03:
You can have mutual influence even if the signal is affected.

[00:31:32] Speaker 03:
You don't have to have the same voltage, current, or signal passing from one to the other.

[00:31:37] Speaker 03:
You can have stuff in between, and there still can be a mutual influence on the ultimate signal

[00:31:44] Speaker 03:
despite the presence of memory in between.

[00:31:47] Speaker 03:
I'm not discounting that as a possibility.

[00:31:49] Speaker 03:
I think that's what you're saying, right?

[00:31:50] Speaker 05:
That's exactly what I'm saying, and that's what I think the prior art does.

[00:31:55] Speaker 05:
The prior art, effectively, what the memory does, the memory stores random numbers.

[00:31:58] Speaker 05:
That's all it does.

[00:31:59] Speaker 05:
It has a lookup table, and it's the address from the counter that goes to the memory and tells it which number to spit out.

[00:32:05] Speaker 03:
You've read this whole record.

[00:32:07] Speaker 03:
Do you think this is a case where the district court got the construction wrong, or this is one of the narrow

[00:32:14] Speaker 03:
small number of cases where there just might be some room between what the actual construction is and what the broadest reasonable construction is?

[00:32:25] Speaker 05:
Well, I do think that the district court didn't really grapple with it, because I don't see the district court.

[00:32:30] Speaker 05:
I mean, the district court, understandably, had a lot of claim limitations it was construing.

[00:32:35] Speaker 05:
This was one of them.

[00:32:36] Speaker 05:
It didn't spend a lot of time on it.

[00:32:38] Speaker 05:
And I don't see it really digging in and going to the specification and trying to figure out what that

[00:32:43] Speaker 05:
term means.

[00:32:43] Speaker 05:
I think if it had, he would recognize at least that that term doesn't even appear in the specification and much less defined in the specification.

[00:32:51] Speaker 05:
But if it is a reasonable construction, which I'm not sure it is, then this I think for sure is a case where there is some air between the two.

[00:33:03] Speaker 04:
Did you look at the arguments that were being made before the district court?

[00:33:07] Speaker 04:
I mean, a lot of times these cases, you have to understand the underlying arguments being made.

[00:33:13] Speaker 04:
by the differing parties with different proposed constructions, and then look at the district court's construction and help you to understand it.

[00:33:22] Speaker 04:
I'm trying to understand how informed your answer was.

[00:33:27] Speaker 05:
Well, I did look at it.

[00:33:28] Speaker 05:
And again, those were, I think, a single page on either side in terms of the arguments made by both sides.

[00:33:34] Speaker 05:
And the arguments were similar to what's been made before this court.

[00:33:42] Speaker 05:
much abbreviated.

[00:33:44] Speaker 05:
And the court simply didn't really, I don't think the court really grappled with it.

[00:33:51] Speaker 03:
Thank you so much, Ms.

[00:33:52] Speaker 03:
Nelson.

[00:33:52] Speaker 03:
Mr. Pollack, you have a little bit of rebuttal time.

[00:34:02] Speaker 00:
Just a couple of comments.

[00:34:04] Speaker 00:
And I think pragmatically, the criticisms of the district court, one,

[00:34:10] Speaker 00:
We don't know whether or not the board had those same criticisms or felt at all what counsel just described, because the board didn't say anything.

[00:34:18] Speaker 00:
But if the district court's activity in doing the claim construction was unreasonable, wouldn't one have expected Fairchild to have appealed that construction when it would have a de novo review before this court?

[00:34:33] Speaker 00:
It chose not to.

[00:34:34] Speaker 03:
Yeah, but that just means that construction was reasonable, but maybe this one is too.

[00:34:38] Speaker 03:
The two reasonable constructions.

[00:34:39] Speaker 03:
Now pick the broadest one.

[00:34:41] Speaker 00:
OK.

[00:34:42] Speaker 00:
I just wanted to address this issue that the district court's construction was unreasonable because it had been applied by this court, and it's been applied twice by this court, which I think is something that the- I did not understand Ms.

[00:34:55] Speaker 03:
Nelson to say the district court's construction was unreasonable.

[00:34:58] Speaker 03:
I noticed her dancing cleverly and carefully around such a statement, but I definitely did not find- I didn't interpret her to say it was unreasonable.

[00:35:08] Speaker 00:
Why the board's construction is unreasonable is same source material here.

[00:35:16] Speaker 00:
The district court, in fact, reviewed the intrinsic evidence.

[00:35:19] Speaker 03:
It's not the point.

[00:35:20] Speaker 03:
Mr. Pollack, you're missing it.

[00:35:21] Speaker 03:
You've got to convince us this construction's unreasonable.

[00:35:23] Speaker 00:
It's unreasonable because it ignores the intrinsic evidence.

[00:35:26] Speaker 00:
It says that there's no definition in the spec, and so we can just go and get a dictionary definition.

[00:35:32] Speaker 03:
Because the word couple doesn't exist in the spec.

[00:35:35] Speaker 00:
It is in the claim, those claims were the original claims.

[00:35:40] Speaker 00:
It's part of the original specification.

[00:35:42] Speaker 00:
The specification discloses the relationship between the components, which is recited as coupled to in the claim.

[00:35:52] Speaker 00:
The specification and the claim language emphasizes repeatedly the control relationship.

[00:35:58] Speaker 00:
The board's construction is so broad as to eliminate any

[00:36:03] Speaker 00:
relationship between the two components, other than that they are located in the same circuit?

[00:36:09] Speaker 03:
Well, that is the point that I was struggling with in my conversation with Ms.

[00:36:15] Speaker 03:
Nelson, is what do they mean by joining into a single electrical circuit?

[00:36:18] Speaker 03:
And do you agree it's possible to have a single electrical circuit that's very large, where two things would have absolutely no sort of control relationship whatsoever?

[00:36:26] Speaker 03:
That's a different question from whether or not sticking a memory in between two things obstructs the control relationship.

[00:36:33] Speaker 03:
It may not be that everything that passes from one has to pass identically into number two.

[00:36:40] Speaker 00:
No.

[00:36:40] Speaker 03:
You can still have a control relationship.

[00:36:42] Speaker 03:
You can still exert influence over a signal, even if it is altered along the route.

[00:36:48] Speaker 00:
But in the prior art, and I really don't think there's disagreement, that if it is required that there be control signals passed from the counter to the DAC, that the ROM prevents that from happening, that the counter

[00:37:04] Speaker 00:
does not control in that situation the change in frequency.

[00:37:10] Speaker 03:
But we wouldn't be able to decide that, right?

[00:37:12] Speaker 03:
If we agree with you on the construction, would we have to send that part back to the board?

[00:37:17] Speaker 00:
No.

[00:37:17] Speaker 00:
I don't believe that the office disagrees that under the construction that we advocated, that the prior art does not disclose.

[00:37:25] Speaker 03:
I understand you say that, but is there something I could rely on, for example, in a board decision, either the first one or the second one,

[00:37:33] Speaker 03:
to say if their construction is the correct one, then this piece of prior art doesn't do that.

[00:37:38] Speaker 03:
Because it's a fact finding, and I can't sort of infer it or surmise it.

[00:37:45] Speaker 00:
The examiner's findings, which we cite in our papers, explicitly said that the ROM decouples the counter from the deck.

[00:37:56] Speaker 00:
And then went on and said, they're only coupled through the memory.

[00:38:03] Speaker 00:
And it was never challenged by anyone.

[00:38:06] Speaker 04:
But that's using the claim language itself.

[00:38:11] Speaker 04:
And so we don't know exactly how the examiner was interpreting coupled when he or she made that statement, right?

[00:38:19] Speaker 00:
Well, the examiner, we can infer because the examiner used coupled and then he said that it would only be connected if it was coupled, if you consider it coupled through the memory.

[00:38:30] Speaker 00:
So he modified coupled.

[00:38:32] Speaker 00:
when he talked about what the prior art showed.

[00:38:36] Speaker 00:
I don't believe there's any dispute of fact on what the prior art shows that would require remand.

[00:38:41] Speaker 00:
But at the very least, this court can rule on what the proper claim construction is and vacate.

[00:38:49] Speaker 03:
What you really mean is we can rule on what the broadest reasonable claim construction is?

[00:38:54] Speaker 00:
Under the broadest reasonable construction standard.

[00:38:56] Speaker 03:
OK.

[00:38:56] Speaker 03:
Thank you, Mr. Pollack.

[00:38:57] Speaker 03:
I thank both counsel.

[00:38:58] Speaker 03:
Another excellent argument by both of you, and it was being held by the court.