[00:00:04] Speaker 05:
We have five cases on the panel this morning, two from the PTAB, a veteran's case, and two claims court cases, one of which is being submitted on the brief, and will not be argued.

[00:00:26] Speaker 05:
Our first case is from the PTAB, LG Electronics versus Advanced Micro Devices.

[00:00:34] Speaker 05:
Mr. Hughes.

[00:00:36] Speaker 05:
Thank you.

[00:00:48] Speaker 01:
May it please the Court, Paul Hughes for Appellant Algae Electronics.

[00:00:53] Speaker 01:
And I'd like to begin with the APA issue.

[00:00:56] Speaker 01:
APA argument has three principle prongs.

[00:01:00] Speaker 01:
First, the court requires the board to state a legally sufficient basis to invalidate any patent claim.

[00:01:06] Speaker 01:
Second, the board gave no reasoning whatsoever to support its decision to invalidate the majority of claims here.

[00:01:12] Speaker 01:
And third, this court has repeatedly reversed the board

[00:01:16] Speaker 01:
in identical circumstances.

[00:01:18] Speaker 05:
But still, I'm puzzled why you start out with a procedural argument instead of getting right to the merits.

[00:01:26] Speaker 05:
You've got two close references here, which one relates to supplying power to one or more circuits, and another relates to power management.

[00:01:38] Speaker 05:
And I read from your brief that you think these are non-analogous.

[00:01:42] Speaker 05:
One is non-analogous to the other, which surprises me.

[00:01:45] Speaker 01:
Well, Your Honor, we think there is a factual question as to whether those two references are analogous that the board did not resolve.

[00:01:51] Speaker 05:
But I think the first place- They're in the same field of handling power.

[00:01:55] Speaker 01:
Well, they're in the same field, but they deal with very different problems and have different solutions to those different problems because one is dealing with the power supply to a core, whereas another is dealing with power supply to a blocks.

[00:02:08] Speaker 01:
But we do think that the place to start with this case

[00:02:11] Speaker 01:
is for the procedural argument precisely because the court has repeated reverse in identical circumstances when the board does not provide the kind of analysis required.

[00:02:20] Speaker 01:
And I think this court's decision in Securis is directly on point and compels reversal here.

[00:02:26] Speaker 01:
And I'd like to walk the court through why I think that is so compelling.

[00:02:30] Speaker 01:
In Securis, the court identified or addressed a basket of claims that had been invalidated by the PTAB, including dependent claims three and eight.

[00:02:37] Speaker 01:
There were several others, but I'll just refer to it as claims three and eight.

[00:02:41] Speaker 01:
And there, the Board did exactly what the Board did here.

[00:02:45] Speaker 01:
And the Board said in its decision, securis, quote, Petitioner contends Brown teaches or suggests limitations of each claim.

[00:02:51] Speaker 01:
It cites the petition pages 1825, 28 to 32.

[00:02:54] Speaker 01:
And then it, it, the Board goes on to say that we have considered all of patent owner's arguments, but for reasons set forth below, we agree with Petitioner's positions.

[00:03:04] Speaker 01:
But it didn't say anything about claims three or eight at all.

[00:03:07] Speaker 01:
All it said was we agree with a petitioner's positions.

[00:03:10] Speaker 01:
That was the exact language the court used.

[00:03:13] Speaker 01:
That's no different than this case where all the board said for everything other than claim one is we find the petitioner's arguments persuasive.

[00:03:19] Speaker 01:
There's no daylight between labeling arguments persuasive and the board saying it agrees with them.

[00:03:24] Speaker 04:
Can I, I want to ask you, because I understand your position.

[00:03:29] Speaker 04:
One thing that could be different,

[00:03:31] Speaker 04:
is that here, the petition, as I read it, argues all the claims separately.

[00:03:37] Speaker 04:
Do you agree with that?

[00:03:39] Speaker 01:
Well, I don't think it is a distinction.

[00:03:43] Speaker 04:
Let me just walk through a little bit more, and then we can talk.

[00:03:46] Speaker 04:
I just want to ask you this question.

[00:03:49] Speaker 04:
I want to make sure you answer the right one.

[00:03:52] Speaker 04:
So as I see it, the petition argues the claims separately.

[00:03:55] Speaker 04:
The preliminary response filed by LG seems to argue the claims separately.

[00:04:01] Speaker 04:
The institution decision then focused on claim one and treated those other claims, nine and the others, in a more cursory manner.

[00:04:10] Speaker 04:
Perhaps putting the patent owner on notice that that's the approach that the PTO was going to take.

[00:04:15] Speaker 04:
Then the patent owner responses filed, and it similarly focuses on claim one and treats the other claims in a more cursory manner.

[00:04:24] Speaker 04:
And then there's no hearing request.

[00:04:26] Speaker 04:
So my question is, given that background,

[00:04:30] Speaker 04:
Is it kind of difficult, more difficult in this circumstance, to assign error to the board when the patent owner itself was treating the claims following the board's lead in the institution decision, focusing on claim one, and then giving a more cursory treatment to the other claims, suggesting then

[00:04:50] Speaker 04:
that the reason why those other claims are likewise invalid is because they're so similar to claim one.

[00:04:55] Speaker 04:
You know, there are times when the board has an analysis like that where they might have one claim that they treat and then the other claims kind of rise and fall with those claims.

[00:05:04] Speaker 01:
I'd like to answer that question, Your Honor, in two principal ways and then a third way if I could get around to it.

[00:05:09] Speaker 01:
The first way is to look back to Securis because I think Securis does address that, but then I'd like to also address that question from theoretically why we think that is not a distinction.

[00:05:17] Speaker 01:
I think Securis addresses that question directly

[00:05:20] Speaker 01:
because looking at the board's opinion, Securis, when it deals with dependent claims three and eight, for example, it says very specifically that after institution, the patent owner specifically can test petitioners' positions regarding claims, and it says 10, 15 to 19, 32 and 36.

[00:05:35] Speaker 01:
But it says nothing at all about dependent claims three and eight and a bunch of others.

[00:05:39] Speaker 04:
So are you looking at the board's decision, Securis, or are you looking at this Court's decision, Securis, and this Court's decision for why it was so holding?

[00:05:47] Speaker 01:
I'm starting with the board's decision, Your Honor, and then I'll turn to this Court's decision.

[00:05:50] Speaker 01:
So in the board's decision, it specifically identified that the patent owner made no independent arguments after institution as to dependent claims 3 and 8.

[00:06:00] Speaker 01:
It made, so that's just the same situation as here.

[00:06:03] Speaker 01:
What I'm saying is it was an identical circumstance in Securis as to here that there were, that the parties had.

[00:06:09] Speaker 04:
Sotomayor.

[00:06:09] Speaker 04:
Do you know whether the petition addressed the claims individually and the parties addressed the claims individually in Securis?

[00:06:17] Speaker 01:
Well, I know that the patent owner did not make any individual separate arguments representing it.

[00:06:23] Speaker 01:
So what happened at the board was identical, and I think that's the starting place, is what is the board's decision?

[00:06:28] Speaker 01:
And the board's decision did not address claims three or claims eight in any way uniquely.

[00:06:34] Speaker 01:
And this Court said it was not relevant that the patent owner had not addressed unique arguments as to claims three and eight, that the board still had an obligation.

[00:06:45] Speaker 01:
Well, Your Honor, this is at the Court's decision in Securis.

[00:06:49] Speaker 01:
This starts at page 987.

[00:06:51] Speaker 01:
And the Court said, Here the board failed to articulate any reasoning for reaching its decision as to these claims.

[00:06:59] Speaker 01:
While the board need not expound upon its reasoning in great detail in all cases, and we make no comment on the specific level of detail required to sufficiently address the merits of these claims in particular, it must provide some reason basis for finding the claims obvious in order to permit meaningful review by this Court.

[00:07:14] Speaker 03:
This is a non-presidential opinion, right?

[00:07:16] Speaker 01:
It is, Your Honor.

[00:07:17] Speaker 01:
And I think it's non-presidential precisely because the Court found itself bound by ICON Health and UVasive, which required the exact same circumstance.

[00:07:26] Speaker 01:
So I think it was non-presidential precisely because by the time the Court decided this in securis, it was a non-controversial proposition well established that the PTAB must make an affirmative case.

[00:07:38] Speaker 01:
And I think this goes to the fundamental principle that when the PTAB goes to invalidate a claim,

[00:07:42] Speaker 01:
There are two separate things that the Board must do.

[00:07:45] Speaker 01:
The first is it must state a sufficient affirmative case to invalidate each claim that's before it.

[00:07:51] Speaker 01:
And the Court has said that repeatedly, as I said, in ICON Health and New Vesa.

[00:07:54] Speaker 01:
So, for example, ICON Health quoting New Vesa said, the Board, quote, cannot satisfactorily make a factual finding and explain itself by merely summarizing and rejecting arguments without explaining why it accepts the prevailing argument.

[00:08:07] Speaker 01:
That's the first thing it must do, is it must state an affirmative case that's sufficient for each individual claim.

[00:08:12] Speaker 01:
The second thing, once it's done that, is it has to also respond to the patent owner's arguments.

[00:08:17] Speaker 01:
But that first obligation, as this court relied on in Securis, as well as in ICON Health.

[00:08:22] Speaker 03:
Following up on Judge Stoll's question, your patent owner response did not make any kind of comment or defense of all of those claims other than claim one.

[00:08:34] Speaker 03:
Is that right?

[00:08:35] Speaker 01:
Yes, Your Honor, but that's the identical position as Securis.

[00:08:38] Speaker 03:
I think that was the problem in Securis.

[00:08:40] Speaker 03:
In Securis, we had

[00:08:42] Speaker 03:
arguments from the petitioner.

[00:08:44] Speaker 03:
Then we had arguments from the patent owner.

[00:08:47] Speaker 03:
And then the board said, we picked the petitioner's arguments, period.

[00:08:53] Speaker 03:
And they didn't explain away the patent owner's counter arguments.

[00:08:57] Speaker 03:
And that was the problem there.

[00:08:59] Speaker 03:
And compared to claim one here, that's, in fact, what the board did with claim one.

[00:09:04] Speaker 03:
It identified the arguments made by the petitioner and agreed with those.

[00:09:08] Speaker 03:
But then when it came to the patent owner's counter arguments,

[00:09:12] Speaker 03:
the board actually engaged and explained why it didn't find the patent owner's counterarguments persuasive.

[00:09:19] Speaker 03:
So that's a distinction on both for claim one and for the non-claim one claims in this particular instance compared to Securis.

[00:09:30] Speaker 01:
Your Honor, respectfully, that's inaccurate as to what Securis did.

[00:09:34] Speaker 01:
In Securis, the board was quite clear in saying the patent owner specifically made arguments as to

[00:09:39] Speaker 01:
a handful of claims, but did not include claims 308.

[00:09:42] Speaker 01:
The patent owner in its patent owner response did not make any unique claims as to 308.

[00:09:48] Speaker 01:
That's in the Board's decision at the start of page 9.

[00:09:51] Speaker 01:
And then before this Court, Global Tell Link, who is the appellee in that case, this was their principal argument as to that bucket of claims beginning at page 34 of their brief, where the section heading of Securus' brief, of Global Tell Link's brief, is Securus did not independently argue the patentability of 16 of the list of dependent claims.

[00:10:09] Speaker 01:
Securus has waived any ability to separately argue those claims here.

[00:10:13] Speaker 01:
So that was the premise of the board's decision, and that was the basis on which the appellee asked for affirmance in this court was the exact same basis as that there was no independent argument made by the patent owner as to a whole series of claims, including claims three and eight.

[00:10:28] Speaker 04:
Setting Securus aside for a minute.

[00:10:30] Speaker 01:
Yes, Your Honor.

[00:10:31] Speaker 04:
What about exhaustion of remedies?

[00:10:33] Speaker 04:
And under the APA, of course, you're right that the agency has to provide notice for its decision

[00:10:39] Speaker 04:
But also under the APA, there's an exhaustion of remedies if a party doesn't seek specific relief before the agency.

[00:10:48] Speaker 04:
And so one could potentially argue that there was an exhaustion of remedies by LG here because particular claims other than claim one weren't argued with any kind of specificity.

[00:11:01] Speaker 01:
Your Honor, the court's been quite clear that the board's obligation to find an affirmative case to invalidate a patent is independent of what the patent owner does.

[00:11:10] Speaker 01:
As the court said in aqua products, filing a patent owner is optional whether a patent owner even files a response or shows up into the IPR.

[00:11:17] Speaker 01:
If a patent owner chooses not to even respond to an IPR, the board still must state a sufficient legal basis to invalidate each claim.

[00:11:24] Speaker 01:
That's within the regulations and that's stated by aqua products.

[00:11:27] Speaker 01:
That is essential for the agency to do its job

[00:11:30] Speaker 01:
As the court said in personal web technologies like on health and invasive, the board doesn't do its job unless it states a sufficient affirmative basis.

[00:11:38] Speaker 01:
Now, they don't have to go down every rabbit hole and respond to every hypothetical counter argument, but they have to go claim by claim and show where, how they've identified.

[00:11:46] Speaker 04:
Isn't it that the PTO's explanation has to be reasonably discerned, right?

[00:11:50] Speaker 04:
That's the standard, right?

[00:11:51] Speaker 01:
Yes, it has to be reasonably discerned.

[00:11:53] Speaker 01:
And I think this case is a good example of why citing

[00:11:56] Speaker 01:
13 pages or so of a block quote, you can't reasonably discern.

[00:11:59] Speaker 01:
Because for many of the limitations of these dependent claims, the petitioner made multiple arguments in the alternative.

[00:12:06] Speaker 01:
They said the voltage identification might be found in Zhang.

[00:12:10] Speaker 01:
If it's not found in Zhang, it might be found in Altmet.

[00:12:12] Speaker 01:
If it's not found in Altmet, it might be found in some combination of the two.

[00:12:15] Speaker 01:
The board, by just saying we find this persuasive, doesn't tell this court and doesn't tell the public which of these arguments it agrees with.

[00:12:22] Speaker 03:
What if we were to look at petition pages 29 through 40

[00:12:25] Speaker 03:
and see that the explanation for where all the limitations are in those other claims as described in the petition is pretty basic.

[00:12:35] Speaker 03:
It's pretty straightforward.

[00:12:36] Speaker 03:
It's pretty close to being a follow-on to all of their arguments about claim one.

[00:12:41] Speaker 03:
And so, therefore, it is plainly reasonably discernible.

[00:12:46] Speaker 03:
Then would you agree that it'd be fine for the board in a situation like that to say,

[00:12:52] Speaker 03:
We've read petitions pages 29 through 40.

[00:12:55] Speaker 03:
We think this is pretty basic technology.

[00:12:57] Speaker 03:
We think the petition pretty clearly describes why the references meet all the limitations.

[00:13:03] Speaker 03:
And so therefore, everything's OK here.

[00:13:05] Speaker 01:
No, Your Honor, because I think that would not be in any way different than- What more do you want?

[00:13:09] Speaker 03:
What more do you need in a situation like that?

[00:13:11] Speaker 01:
I think outdry, what the board did in outdry where this court affirmed is precisely right.

[00:13:15] Speaker 01:
Where the board still goes through a claim by claim, it's brief, but it says claim 19.

[00:13:21] Speaker 01:
Here's the limitation, and here's the piece of prior art.

[00:13:24] Speaker 01:
It's simple, but it shows that the board is actually doing its work.

[00:13:27] Speaker 01:
It shows its work.

[00:13:28] Speaker 01:
And that is what is critical to allowing judicial review and showing that the board has a legally sufficient basis to reach this decision.

[00:13:36] Speaker 01:
If I may reserve my time.

[00:13:37] Speaker 05:
Go well into your rebuttal time if you want to save it.

[00:13:40] Speaker 01:
Yes, Your Honor.

[00:13:40] Speaker 05:
Thank you very much.

[00:13:42] Speaker 05:
Mr. McManus.

[00:13:49] Speaker 00:
May it please the court.

[00:13:52] Speaker 00:
These claims directed to power management in microcircuitry are obvious.

[00:13:58] Speaker 00:
Zong and Altman were obvious.

[00:14:00] Speaker 05:
Would have been.

[00:14:01] Speaker 03:
Would have been obvious at the time of the invention to one of ordinary skill in the art.

[00:14:05] Speaker 00:
Thank you.

[00:14:07] Speaker 00:
Zong and Altman tell us that.

[00:14:08] Speaker 00:
The only challenge we have here was the same, the only challenge we had below.

[00:14:12] Speaker 00:
Why would one of ordinary skill in the art have taken the limited teachings from Altman and combined it with Zong's disclosure of a way in which to control power

[00:14:22] Speaker 00:
in a core.

[00:14:23] Speaker 00:
We know why.

[00:14:24] Speaker 00:
The Board told us at Appendix Pages 10 and Appendix Pages 13 and 14.

[00:14:29] Speaker 00:
The Petition told us why.

[00:14:30] Speaker 00:
The Gaffer Declaration, in support of the Petition, told us why.

[00:14:33] Speaker 00:
And the references tell us why.

[00:14:35] Speaker 00:
These pieces of art are in the same field.

[00:14:39] Speaker 00:
They seek to solve the same problem with the same solution.

[00:14:41] Speaker 00:
Frankly, all of these four references are all driving at the same problem.

[00:14:45] Speaker 00:
Everybody?

[00:14:46] Speaker 03:
Could you get to the procedural argument?

[00:14:48] Speaker 03:
I didn't hear the other side really talk about the merits at all.

[00:14:51] Speaker 03:
And there might be very good reasons why they carefully avoided bothering to talk about the merits.

[00:14:56] Speaker 03:
Sure.

[00:14:56] Speaker 03:
So it's really just a procedural APA case here.

[00:14:59] Speaker 03:
So could you speak to that?

[00:15:00] Speaker 00:
Of course.

[00:15:02] Speaker 00:
At the end of the day, cases like Securus, Outdrive, Newvasive, they all stand for a general proposition, that under the APA, the board has to supply sufficient reasoning understandable to this court

[00:15:14] Speaker 00:
to the parties involved and to the public to understand why the claims are unpatentable.

[00:15:18] Speaker 00:
There is no ambiguity in this decision about why claim one, or for that matter claims nine through 20, are unpatentable.

[00:15:27] Speaker 00:
Where there was a dispute about a particular issue, the board articulated both sides, explained why it was accepting one argument and why it was rejecting the other.

[00:15:36] Speaker 00:
That, for example, was limited to the motivation to combine

[00:15:39] Speaker 00:
on claim one.

[00:15:40] Speaker 00:
There was also a secondary argument, which they're not pursuing on appeal, that the board did the same procedure for.

[00:15:46] Speaker 00:
But for the remainder of claim one, there's nothing left to talk about.

[00:15:49] Speaker 03:
Do board judges take some kind of opinion writing class or something like that?

[00:15:55] Speaker 00:
I'm not aware that they take an opinion writing class.

[00:15:57] Speaker 03:
I do know that... I ask because we do see some variety in the way opinions from the board get drafted.

[00:16:05] Speaker 03:
And this one seemed a little more unusual to me.

[00:16:09] Speaker 03:
in the sense that it said, uh, we agree with the petitioner on claim one petitioner argues X, petitioner argues Y, petitioner argues Z. And, and it would be more comforting as a reviewing court.

[00:16:28] Speaker 03:
If we saw an opinion below by the board, if it, if the board wrote its analysis in a way where it felt like it was speaking

[00:16:38] Speaker 03:
through its own words, its own analysis, rather than maybe making findings but using the petitioner's words or speaking through the petition rather than speaking through its own independent analysis.

[00:16:55] Speaker 03:
It's fine if a board decision were to say a petitioner argues this, the patent owner counters with that.

[00:17:03] Speaker 03:
We would agree with the petitioner and then actually

[00:17:07] Speaker 03:
engages in an analysis of what it finds persuasive about the petition and then goes back on rebuttal and explains everything and why it doesn't find the patent owner's counterarguments persuasive.

[00:17:21] Speaker 03:
But that's not the kind of opinion that was written here.

[00:17:24] Speaker 00:
Well, at some level it was and at some level it was not.

[00:17:28] Speaker 00:
Part of the reason the board uses the approach that it used here, where, for example, on the

[00:17:35] Speaker 00:
scope and content of the prior art as it pertains to Claim 1, for example, in Zong and Altmed.

[00:17:39] Speaker 00:
The board recites, essentially regurgitates, the presentation of the petitioner and the evidence that the petitioner has cited in its petition on those elements.

[00:17:49] Speaker 00:
And the reason it does that as opposed to, for example, it could rewrite the sentence in saying, instead of saying petitioner argues that Altmed teaches measuring the individual usage of functional blocks.

[00:18:00] Speaker 00:
It could say, we find

[00:18:02] Speaker 00:
Altmet.

[00:18:02] Speaker 03:
Precisely.

[00:18:03] Speaker 00:
Understood.

[00:18:04] Speaker 03:
So why doesn't the board write the opinions like that?

[00:18:06] Speaker 00:
The reason why I don't want to speak for the board, why this particular APJ wrote it this way, but I think the reason why you see this sort of approach is that at the end of the day, the burden of proof is on the petitioner.

[00:18:19] Speaker 00:
And so the board is going out of its way to point out what arguments the petitioner has given us, what evidence the petitioner has marshaled in support of the unpatentability for example claim one.

[00:18:33] Speaker 00:
In the instance where, like this, where they present that in a complete recitation of what Petitioner has marshaled in his petition, they then align themselves, particularly on an undisputed issue, by saying, look, that makes sense.

[00:18:48] Speaker 00:
We agree with that.

[00:18:49] Speaker 00:
That is a persuasive presentation on that particular aspect of Claim 1 and the obviousness.

[00:18:55] Speaker 00:
It is supported by credible evidence.

[00:18:57] Speaker 00:
We find it to be persuasive of obviousness.

[00:18:59] Speaker 00:
The board then went on, to the extent that there was a dispute about

[00:19:03] Speaker 00:
part of that obviousness showing, to, again, present the counterarguments, and then make the kinds of findings and conclusions that Your Honor is looking for, particularly on motivation to combine.

[00:19:14] Speaker 00:
I mean, motivation to combine is a particularly important one because to take it back to these notice cases, when we look at cases like Icahn and Newvasive,

[00:19:22] Speaker 00:
Typically the issue about which there's a lack of reasoning from the board is a motivation to combine, which in the obviousness context makes sense because when we think about the particular elements of a 103 showing, that's where the reasoning really comes in.

[00:19:34] Speaker 00:
As your honor pointed out in questioning my friend, whether AltMed teaches a core or a processor, whether he teaches measuring usage is kind of a balls and strikes thing.

[00:19:44] Speaker 00:
You can look at AltMed and say, yeah, I see it.

[00:19:47] Speaker 00:
You point it to AltMed at column seven, it's there.

[00:19:50] Speaker 04:
There's no reasoning left.

[00:19:51] Speaker 04:
The board has to say that it finds, that teaches that limitation.

[00:19:57] Speaker 04:
It has to make that finding.

[00:19:59] Speaker 00:
It has to provide.

[00:20:01] Speaker 00:
It does.

[00:20:01] Speaker 00:
How it does that is really the debate, right?

[00:20:04] Speaker 00:
And here they have.

[00:20:06] Speaker 00:
They could do it the way that Judge Chen is looking for.

[00:20:10] Speaker 00:
They don't have to do it that way.

[00:20:11] Speaker 00:
The way they've done it here is the way that it was done in Outdry, and it was done in Securas.

[00:20:16] Speaker 00:
They recited the unchallenged

[00:20:19] Speaker 00:
portion of the obviousness and said, we agree with that.

[00:20:23] Speaker 00:
It is supported by credible evidence.

[00:20:24] Speaker 00:
It is persuasive.

[00:20:26] Speaker 00:
For the purposes, again, what's driving the notice requirement and the notice cases?

[00:20:30] Speaker 00:
Do we know why this claim is unpatentable?

[00:20:32] Speaker 00:
We know why this claim is unpatentable.

[00:20:34] Speaker 00:
It's the same reason it's been unpatentable since the petition was filed.

[00:20:38] Speaker 00:
Nothing's changed.

[00:20:39] Speaker 00:
The petitioner laid it out for claim one.

[00:20:41] Speaker 00:
It gave you where the various elements were found in the argument.

[00:20:44] Speaker 04:
What about the claims other than claim one?

[00:20:47] Speaker 00:
Sure.

[00:20:47] Speaker 04:
So looking at nine through 20,

[00:20:49] Speaker 04:
That seems to be perhaps the stronger argument being made today.

[00:20:53] Speaker 00:
And to be fair, the board did less for nine than it did for one.

[00:20:57] Speaker 00:
That is in part because the dynamics here have to be accounted for.

[00:21:01] Speaker 00:
We have, as Your Honor pointed out, as this trial proceeds, it's incumbent upon the parties to make sure they're flagging the issues that really need to get the nitty-gritty analysis.

[00:21:10] Speaker 00:
Claim one was really the only one that anyone engaged.

[00:21:13] Speaker 00:
Claim nine.

[00:21:14] Speaker 04:
Point the petition.

[00:21:15] Speaker 04:
In the pre-institution proceedings?

[00:21:18] Speaker 00:
Correct.

[00:21:18] Speaker 00:
Well, and even more so post-institution, Your Honor.

[00:21:21] Speaker 00:
I mean, in terms of what issues the patent owner was flagging as a debate, as a dispute, there was none about claims nine through 13, 15, 19, and 20.

[00:21:30] Speaker 00:
Everything was about claim one or, more generically, the motivation to combine Altman and Zong, which covers all those claims.

[00:21:36] Speaker 00:
So to the extent that there was a dispute raised, the board articulated both sides, gave you an analysis as to why it was accepting the prevailing argument from Petitioner and why it was rejecting the counterargument from the patent owner.

[00:21:46] Speaker 00:
But on Claim 9, there's two things going on.

[00:21:49] Speaker 00:
In an obviousness showing we have the sort of mapping of the claim limitations to the art, and then there's that sort of narrative part of the obviousness case.

[00:21:57] Speaker 00:
Why would one of our narrow skill in the art have combined these things?

[00:22:01] Speaker 00:
Well, that narrative as it pertains to Claim 9 is the same as the narrative as it pertains to Claim 1, and the board has expressly articulated that, frankly, twice in this decision, at pages Appendix 10, and then again at 13 and 14.

[00:22:15] Speaker 00:
So we're not in the dark about why one would have combined Zong and Altmed.

[00:22:19] Speaker 00:
Altmed tells you why you would combine Zong and Altmed.

[00:22:22] Speaker 00:
So it is Mr. Gaffer.

[00:22:25] Speaker 00:
So on the perspective of Claim 9, the other thing that's going on here, too, and Judge Chen hit on this, if you look at the petition for Claim 9, the presentation of the obviousness for Claim 9, starting on Appendix 77, which is Petition

[00:22:43] Speaker 00:
The first thing that Petitioner says is, quote, claim 9 requires many of the same or similar limitations as claim 1.

[00:22:51] Speaker 00:
Thus, the analysis of claim 9 references, when appropriate, the analysis of claim 1 above.

[00:22:56] Speaker 00:
And then as you go through this claim-specific, limitation by limitation, presentation on obviousness, you will continually see a reference to Section 7B4.

[00:23:06] Speaker 00:
That is the claim 1 argument for Zong and Altman.

[00:23:08] Speaker 00:
And if you look at claim 9 and claim 1, they're virtually identical.

[00:23:12] Speaker 00:
There is a very slim, narrow gap between nine and one.

[00:23:17] Speaker 00:
The reasons why claim nine is obvious and unpatentable are essentially the same reasons as claim one.

[00:23:22] Speaker 00:
We are not in the dark here about why claim nine is unpatentable.

[00:23:26] Speaker 00:
It's the same reason that's been since we started.

[00:23:28] Speaker 00:
It's in the Petition.

[00:23:29] Speaker 00:
There's no dispute about it.

[00:23:31] Speaker 00:
And so to take it back to these notice cases, what cases like Securis and Outdry stand for, and at some level cases like ICON and Uvasive, where the board was sent back to the board.

[00:23:41] Speaker 00:
is where there's a dispute, you have to make sure that, as a board, you explain why you're crediting and accepting one argument and rejecting the other.

[00:23:49] Speaker 00:
To the extent we had a dispute here, the board did that.

[00:23:51] Speaker 00:
But for Claim 9, there was no dispute.

[00:23:54] Speaker 00:
The board explained, with a pinpoint accuracy, incorporating by reference the portion of the petition where the explanation and the reasoning for Claim 9 and its obviousness is.

[00:24:04] Speaker 00:
That is consistent with OutDry.

[00:24:05] Speaker 00:
That is consistent with Securus.

[00:24:07] Speaker 00:
And it's consistent with ICON.

[00:24:08] Speaker 00:
at least to the extent that ICON affirmed one of the portions of the board decision there.

[00:24:12] Speaker 04:
Do you agree with the characterization of securis being made by opposing counsel about how in that case the claims, I guess, that were summarily discussed by the board were only summarily discussed in the proceedings by the patent owner?

[00:24:29] Speaker 00:
No, securis supports us.

[00:24:31] Speaker 00:
I mean, in securis you actually sort of have a juxtaposition of what passes notice muster and what does not.

[00:24:38] Speaker 00:
And when we look at Securis, the analysis that was deemed sufficient is similar to the analysis that was deemed sufficient here, and that's in Securis at page 986.

[00:24:49] Speaker 00:
The Court explained, as respected with Claim 6, for example, the Board recounted the parties' arguments, identified the specific portion of the petition informing the Board's decision, and explained why it found Securis' argument unpersuasive.

[00:25:00] Speaker 00:
Here, we don't even have the need to do

[00:25:04] Speaker 00:
The second part, which is to explain why Securitas' arguments aren't persuasive for Claim 9, because we don't have any arguments from LGE on Claim 9.

[00:25:14] Speaker 00:
They didn't make any claim-specific arguments.

[00:25:16] Speaker 00:
So the board, and the corollary to this is we know that it's permissible for the board to incorporate arguments and evidence by reference.

[00:25:23] Speaker 00:
So instead of regurgitating the uncontested argument here, for example, on Claim 9 in this petition, it has simply given you a pinpoint citation to where that argument is.

[00:25:33] Speaker 00:
And this idea that

[00:25:34] Speaker 00:
Claim 9 is replete with alternatives.

[00:25:36] Speaker 00:
Whether that's true or not, that is not unto itself error.

[00:25:39] Speaker 00:
Zong and Altmed can both teach a claim limitation.

[00:25:43] Speaker 00:
When you read the presentation for Claim 9, it's readily understandable.

[00:25:47] Speaker 00:
You can go and look at the citations to Zong and to Altmed.

[00:25:51] Speaker 00:
You can go and look at the citations to the Gaffer Declaration where he gives you the person of ordinary skill perspective on that disclosure and readily understand why Claim 9 is determined to be obvious.

[00:26:03] Speaker 00:
fully comports with the APA in this court's notice case law.

[00:26:08] Speaker 00:
If there are no further questions, I'll yield my time.

[00:26:10] Speaker 05:
Thank you, Mr. McManus.

[00:26:13] Speaker 05:
No one ever loses points by not using up all this time.

[00:26:18] Speaker 05:
Mr. Hughes, there's a couple of minutes left.

[00:26:22] Speaker 01:
Thank you, Your Honor.

[00:26:26] Speaker 01:
This case addresses whether or not the board can use simple boilerplate language in every case.

[00:26:32] Speaker 01:
Here we know they use boilerplate because for ground two, the board cited the wrong page range.

[00:26:37] Speaker 01:
And the Patent Office's view is even though they cited the wrong page range, we can assume that all they meant to do was incorporate the petition wholesale by reference.

[00:26:45] Speaker 01:
But cases like Outdry and Securus and all the other cases say it's not enough simply to point to the petition in bulk.

[00:26:52] Speaker 01:
The Patent Office has to give specific reasons why it incorporates it, why it finds it persuasive.

[00:26:58] Speaker 01:
So again, it's not enough for the

[00:27:01] Speaker 01:
for the board to respond to the arguments that the patent owner makes, the arguments that, as my opponent said, that the patent owner flags.

[00:27:09] Speaker 01:
Rather, every case this Court has decided says the board first, regardless of what the patent owner does, must state an affirmative case.

[00:27:17] Speaker 01:
It can be short, but it needs to state an affirmative basis on which it has found a case to invalidate.

[00:27:21] Speaker 02:
When the affirmative basis can't be, we adopt the petition pages 10 through 15?

[00:27:28] Speaker 01:
I think in cases like Outdry and others, the Court has said,

[00:27:31] Speaker 01:
No, it's not enough simply to incorporate by reference without saying what it is that the court's incorporating.

[00:27:36] Speaker 01:
Certainly can incorporate, but you have to say, we agree that it's this reference and we find that persuasive for this reason.

[00:27:42] Speaker 01:
That's what's required.

[00:27:43] Speaker 01:
Certainly you can use incorporation if it has those specifics.

[00:27:46] Speaker 01:
But what one cannot do is cite the entirety of a petition or the entire page, the whole block range of the petition, especially when there are multiple arguments in the alternative, as there are here, where it's impossible to tell.

[00:27:59] Speaker 01:
what it is that the board actually found persuasive, as opposed to what they're not.

[00:28:03] Speaker 01:
That's essential, as this court has repeatedly said, for the board to actually do its job, to enable appellate review and to show the public that before it invalidates patent claims, it is in fact doing its work and going through on a claim-by-claim basis.

[00:28:16] Speaker 01:
And just to conclude, I think the court's historical cases strongly support us on this point.

[00:28:21] Speaker 01:
I think Securis is, as we've said, I'd urge the court to look at claims three and eight of Securis.

[00:28:25] Speaker 01:
I think there's absolutely no daylight between what happened in Claims 3 of 8 of Securis and the claims at issue here.

[00:28:32] Speaker 05:
Thank you.