[00:00:00] Speaker 00:
We begin our regular proceedings.

[00:00:01] Speaker 00:
I'm going to turn the gavel over to Judge Rory.

[00:00:06] Speaker 01:
Thank you, Chief Judge.

[00:00:08] Speaker 01:
I understand you have a motion to make.

[00:00:10] Speaker 00:
Yes, I do.

[00:00:13] Speaker 00:
Bill, would you stand?

[00:00:14] Speaker 00:
I move the admission of Jay William Toth, who is a member of the Bar and is a good standing in the highest court of California.

[00:00:22] Speaker 00:
I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

[00:00:28] Speaker 00:
And I'd just like to say on a personal note, because we've worked together for a year now, what an honor and pleasure it's been to have Bill in our chambers.

[00:00:37] Speaker 00:
And I'm particularly happy because he's staying in DC when he leaves, which makes me very happy that he'll continue to remain an important part of what we do.

[00:00:48] Speaker 00:
So I would move his admission.

[00:00:53] Speaker 01:
Well, that's certainly a well-supported motion.

[00:00:57] Speaker 00:
I don't want to hear a bot, right?

[00:00:59] Speaker 01:
I would ask my fellow panel member for a vote.

[00:01:06] Speaker 03:
I have no reason to object.

[00:01:07] Speaker 03:
I happily join, in fact.

[00:01:11] Speaker 01:
We grant the motion, and we ask you to step up and take the oath.

[00:01:19] Speaker 02:
Please raise your right hand.

[00:01:20] Speaker 02:
Do you solemnly swear or affirm that you will comport yourself as an attorney and counsel of this group, all parties, and according to law,

[00:01:27] Speaker 02:
that you will support the Constitution of the United States of America.

[00:01:32] Speaker 02:
Yes, sir.

[00:01:33] Speaker 02:
Welcome to the bar of the United States of America.

[00:01:37] Speaker 00:
Congratulations.

[00:01:37] Speaker 00:
Congratulations, Phil.

[00:01:39] Speaker 00:
Now, the first case for argument is 171617, Netlist versus Sandisk.

[00:01:45] Speaker 00:
Mr. Lloyd, will that be your right?

[00:01:55] Speaker 04:
Thank you, Chief Judge Cruston.

[00:01:56] Speaker 04:
May it please the court?

[00:01:57] Speaker 04:
The board erred by holding netless claims unpatentable based on the theory of unpatentability that was never disclosed in the petitions or institution decisions.

[00:02:06] Speaker 04:
Yet even without that error, the board's decisions should not stand because on the critical issue here of motivation to combine with a reasonable expectation of success, the board accepted conclusory assertions without adequate explanation or support.

[00:02:19] Speaker 00:
I mean, I know you're asking for a reversal here.

[00:02:21] Speaker 00:
That's fine.

[00:02:22] Speaker 00:
But you're also asking an alternative to vacate and renew.

[00:02:27] Speaker 00:
Doesn't it seem a little odd?

[00:02:29] Speaker 00:
If we vacated in remand because you're saying that you didn't have adequate notice and that they raised new arguments or a new theory, all that happens is it goes back to the board and they affirm it.

[00:02:41] Speaker 00:
I mean, doesn't that kind of prove that there's a question as to why we're even here dealing with this at this juncture?

[00:02:49] Speaker 04:
So two responses on that, Chief Judge Gross.

[00:02:52] Speaker 04:
I think the alternative for vacate and remand would only be to go back under the original theory.

[00:02:56] Speaker 04:
I don't think it would be proper for the court to send it back to address Sandisk's new theory.

[00:03:00] Speaker 00:
Well, why is that?

[00:03:01] Speaker 00:
I mean, isn't this a notice problem?

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And in fact, I mean, one could argue, as your friend does on the other side, that you did have appropriate notice here and an opportunity to respond.

[00:03:13] Speaker 00:
But if that's your gripe,

[00:03:16] Speaker 00:
then why don't we go back and do a do-over and give you an opportunity to respond?

[00:03:20] Speaker 00:
Are they precluded from doing this at this juncture, or is it just that you didn't have an adequate opportunity to respond?

[00:03:28] Speaker 04:
They are precluded.

[00:03:28] Speaker 04:
It is a notice problem, but the AIA sets out a very particular regime and how notice must be given.

[00:03:34] Speaker 04:
It requires a petition that identifies with particularity the claims challenged, the grounds for each challenge, and then the evidence supporting that challenge.

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The board institutes review pursuant to the petition,

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Patent owner has to file a response to the petition.

[00:03:49] Speaker 00:
It includes evidence.

[00:03:50] Speaker 00:
You're not allowed to put on any evidence as the petition proceeds through the process?

[00:03:56] Speaker 04:
Yes, you are allowed, of course, to develop evidence.

[00:03:58] Speaker 04:
And the AIA makes that clear.

[00:04:00] Speaker 04:
But what you can't do is you can't change the ground of unpatentability.

[00:04:03] Speaker 04:
And that's what cases like Newvasive and AmeriCAM have held, is that when a party changes the thrust of its theory such that it's no longer standing behind the petition,

[00:04:14] Speaker 04:
That's an improper new theory.

[00:04:15] Speaker 04:
That's a question of law for this court.

[00:04:17] Speaker 04:
It's not a question of fact that the board gets to decide as the board seem to think.

[00:04:21] Speaker 00:
Well, I don't know how to define theory.

[00:04:22] Speaker 00:
There are no cases, are there, that are on point to this?

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I mean, grounds can include whether it's obviousness or anticipation.

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It can include combining these three references versus these three other references.

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So there are lots of different things that could get mixed up in terms of what's been

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And I think the cases that you cite and the cases where this court has had a problem with changes through the proceeding really deal with the board reliance on a different piece of prior art or a different aspect of that prior art in reaching its decision, right?

[00:04:56] Speaker 04:
So yes, and that is some of what happens in those cases.

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But that's also what happened here.

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And there are cases on point, Chief Judge Prost.

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Both the in rain evasive case that we cite and the AmeriCAM case that we cite, both

[00:05:09] Speaker 04:
held that the board had adopted a new theory, and Nubase likens it to what this court has seen for decades in the law of reexaminations, that the board can't adopt a new ground of unpatentability.

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And the new ground of unpatentability in the reexam context isn't just switching from obviousness to anticipation.

[00:05:26] Speaker 04:
It can be a new ground of unpatentability even when it's relying on the same references and the same statutory basis.

[00:05:32] Speaker 03:
I thought in the reexamination context, the board is allowed to do a new ground of unpatentability.

[00:05:37] Speaker 03:
That would just mean the fatten owner has a right to reopen prosecution if he wants to.

[00:05:43] Speaker 04:
That's right.

[00:05:44] Speaker 04:
So there are two parts to that, Judge Jenwright.

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The first question is whether there was a new ground, which I think was what Chief Judge Cross was asking about.

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And then the second is, what are the proper procedures?

[00:05:57] Speaker 04:
So in the re-exam context, the statute does allow the board to adopt new grounds, unlike the AIA.

[00:06:03] Speaker 04:
The IPR context is different.

[00:06:05] Speaker 03:
That's what- Well, just so I understand,

[00:06:07] Speaker 03:
I understand how re-exam works.

[00:06:09] Speaker 03:
Let's just go to how the AIA works.

[00:06:12] Speaker 03:
Is it your view that the petitioner and the board are confined completely to just whatever is in the petition and the institution?

[00:06:24] Speaker 04:
They're confined in terms of the claims that can be challenged and the grounds of that challenge.

[00:06:30] Speaker 04:
That's what SAS held, Judge Jen.

[00:06:32] Speaker 03:
Right.

[00:06:32] Speaker 03:
But I guess we also have

[00:06:35] Speaker 03:
a handful of cases, including Genzyme, for example, that articulates an understanding and recognition that there is going to be some give and take throughout one of these so-called trials.

[00:06:47] Speaker 03:
And so therefore, there's going to be more evidence that gets developed and introduced, and possibly even some supplementation, I'll call it, to what the original grounds of unpatentability were.

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And so therefore, the board does have some discretion

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in permitting petitioners to say things in replies that are different from what was said in the petition.

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And as long as the patent owner has notice and opportunity to respond.

[00:07:17] Speaker 03:
So what is wrong with that?

[00:07:20] Speaker 03:
I mean, right now we're outside of this case a little bit, but I'm just trying to understand why doesn't the board have the flexibility, if it chooses to, to accept

[00:07:32] Speaker 03:
a reply that says something different from an institution decision and petition, so long as the patent owner does have that opportunity to file a surreply or something else.

[00:07:41] Speaker 04:
So I agree we are outside of this case a little bit, because I don't think that is exactly what happened here.

[00:07:46] Speaker 04:
The Genzyme case wasn't a case about the petitioner trying to raise a new theory.

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It was about new evidence.

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And it's expected that evidence can be developed

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during an AIA.

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But what you can't do is you can't shift to a new theory or a new ground of unpatentability.

[00:08:02] Speaker 04:
That is, I think, clear from the Supreme Court's holding in SAS, that following that the AIA puts a limit not just on the petitioners, but on the board itself.

[00:08:14] Speaker 04:
What the Supreme Court said was that the AIA makes the petition the centerpiece of the proceeding before and after institution.

[00:08:20] Speaker 04:
Now, the issue in SAS was whether the board can decide less than what was in the petition.

[00:08:25] Speaker 04:
But I think it's equally clear that the board can't decide more than what's in the petition.

[00:08:29] Speaker 04:
The entire proceeding is based on what the petitioner has put in his petition.

[00:08:33] Speaker 04:
And this court has said that in cases like Illumina.

[00:08:35] Speaker 00:
So why does the petitioner get to say anything more during the proceeding?

[00:08:40] Speaker 00:
If it can't diverge at all from anything that's already in the petition, then

[00:08:48] Speaker 00:
They just go to sleep.

[00:08:49] Speaker 00:
Why do they have a right to put in any more paper or declarations or argument with respect to their case?

[00:08:55] Speaker 04:
So our position isn't as narrow as that they can't do anything.

[00:08:58] Speaker 04:
They can continue to develop evidence that supports their original theory of unpatentability.

[00:09:02] Speaker 04:
So in this case, if Sandisk and its petitions had identified that its theory involved modifying the prior art in ways that the art doesn't expressly disclose, if its theory had identified that it was relying on the JEDEC specifications to support that modification,

[00:09:18] Speaker 04:
then it could have continued to develop evidence during the trial and present that to the board in support of its ground.

[00:09:24] Speaker 04:
But what it can't do is what it did here and what was rejected in both AmeriCAM and in Raynovasiv as an improper new theory.

[00:09:32] Speaker 04:
Not just new evidence, but an improper new theory.

[00:09:35] Speaker 04:
And that improper new theory involved where the petition said, we're just relying on the express disclosures of Takeda and Connolly.

[00:09:43] Speaker 04:
Now the petitioner's reply said, no, we're not relying on the express disclosures.

[00:09:47] Speaker 04:
A person of skill in the art would know they have to modify the circuit.

[00:09:51] Speaker 04:
They have to introduce additional logic to introduce a new signal and use that new signal.

[00:09:56] Speaker 04:
That's an improper new theory.

[00:09:58] Speaker 04:
That was the holding in America.

[00:09:59] Speaker 03:
You also can't rely on... Is there a case from this court that says when an IPR reply does something different from the petition?

[00:10:11] Speaker 03:
Say the petition said, obvious in view of references A and B.

[00:10:17] Speaker 03:
And then the reply says, oh, well, in view of what I just saw in the patent owner response, it's really A in view of B and reference C. And then the board says, that's OK.

[00:10:29] Speaker 03:
I'm going to allow that because the patent owner has an opportunity to file a cert reply or something like that.

[00:10:35] Speaker 03:
And then affirms or issues an unpatentability decision in view of references A, B, and C. Is there a Federal Circuit decision that said that is improper to do?

[00:10:46] Speaker 04:
I think the in-ray nuvasive decision comes to close to those facts.

[00:10:49] Speaker 04:
And in fact, the change there was even more subtle than what you suggested.

[00:10:54] Speaker 04:
In nuvasive, what happened is the petitioner in its petition identified the grounds of unpatentability and the specific art.

[00:11:03] Speaker 04:
But it never identified figure 18.

[00:11:05] Speaker 04:
It identified other figures within the patent, but never identified figure 18 as a basis for the particular disputed element.

[00:11:11] Speaker 04:
Then in its reply, for the first time, it said,

[00:11:15] Speaker 04:
Figure 18 is relevant, and the board relied on that in its final decision.

[00:11:19] Speaker 04:
And like here, the patent owner asked the board to both strike it, to strike the petition or the reply as improper, and asked in the alternative to submit a surreply.

[00:11:34] Speaker 03:
And then they would deny the opportunity to file a surreply.

[00:11:36] Speaker 03:
And they were denied.

[00:11:37] Speaker 03:
And that was the problem with that outcome in that case, right?

[00:11:41] Speaker 03:
It was the failure to permit the patent owner to file a surreply.

[00:11:44] Speaker 04:
That's not what the decision said, Your Honor.

[00:11:47] Speaker 04:
The decision said that the problem was that the board had adopted a new theory of unpatentability.

[00:11:52] Speaker 03:
Without giving the other side an opportunity to file a sure reply.

[00:11:56] Speaker 04:
Without adequate notice and opportunity to respond.

[00:11:58] Speaker 04:
So the court didn't go into detail about whether the court remanded the issue, but it didn't specify whether on remand the board would be allowed to consider the new theory.

[00:12:07] Speaker 04:
And in other cases, like in the AmeriCAM case, when the court did find a new theory, the court remanded only

[00:12:15] Speaker 04:
under the original theory, just like the relief we're asking here.

[00:12:18] Speaker 04:
But I do want to also fight the premise that if this were to go back under the new theory to give us an opportunity, that the outcome would be the same.

[00:12:27] Speaker 04:
And in fact, it wouldn't be.

[00:12:30] Speaker 04:
It wouldn't be at least because we would have opportunity to present additional argument and evidence.

[00:12:35] Speaker 00:
But also, the board's- Well, at least argument, you did have an opportunity.

[00:12:38] Speaker 00:
Not only did you have an opportunity, but you did.

[00:12:41] Speaker 00:
I mean, in the Patanoma's response, you had time to consider this new, I don't know, which was a declaration or a deposition or whatever.

[00:12:50] Speaker 00:
And you cited that.

[00:12:51] Speaker 00:
You said, this is what we think the theory is.

[00:12:53] Speaker 00:
That's wrong.

[00:12:54] Speaker 00:
But even if, you know, accepting this new information or new evidence we have in cross-examination, and then you responded to that so-called new theory, right?

[00:13:04] Speaker 04:
That was the board's reasoning, Chief Judge Gross, but that's wrong.

[00:13:08] Speaker 04:
When we filed our petitioner response,

[00:13:10] Speaker 04:
The only thing that we knew is that Sandus' expert in his cross-examination had disclaimed his earlier testimony, and so we relied on his change in testimony to discredit him, which is what you do when a witness changes their story.

[00:13:24] Speaker 00:
We didn't know... Well, maybe it's wrong.

[00:13:26] Speaker 00:
Appendix 352.

[00:13:28] Speaker 00:
And even if these, you argue about what he said, and you said even if these modifications were to solve the inoperability, Moore is still required to establish obviousness.

[00:13:38] Speaker 00:
That's pushing back on his so-called revised theory, right?

[00:13:42] Speaker 04:
That's right.

[00:13:42] Speaker 04:
So we had cross-examined him.

[00:13:45] Speaker 04:
We discredited him for changing his story.

[00:13:47] Speaker 04:
And then we also took on the merits.

[00:13:49] Speaker 04:
theory continued to evolve, because in its replies then it continued, it newly relied on arguments about a supposed finite number of predictable solutions, which the board cited in its final decision, which was not something that we had any notice of or opportunity to respond either.

[00:14:05] Speaker 00:
Could I ask you just a slightly different question?

[00:14:08] Speaker 00:
This is back to the SAS kind of question.

[00:14:10] Speaker 00:
In your view, is it OK, therefore, for the patent owner to

[00:14:17] Speaker 00:
offer for the petitioner in its petition to describe alternate theories.

[00:14:23] Speaker 00:
Because there's an estoppel.

[00:14:24] Speaker 00:
In your view, estoppel would still apply to both theories, right?

[00:14:29] Speaker 00:
So estoppel would apply because he could have reasonably raised a different theory.

[00:14:34] Speaker 00:
So what is the petitioner to do?

[00:14:35] Speaker 00:
How do we resolve this problem, if you're right?

[00:14:38] Speaker 00:
Which is, are you allowed?

[00:14:40] Speaker 00:
Is the petitioner allowed to come forward with alternate theories, and the board then has to institute on all of those theories, because that's what SAS told us?

[00:14:48] Speaker 04:
What the statute says is the petitioner has to identify with particularity every claim challenged and every ground supporting that claim.

[00:14:56] Speaker 04:
And what this court said in Illumina is that puts an obligation on petitioners to put their affirmative case in the petition.

[00:15:03] Speaker 04:
And what the court said in Ariosa is that the reply has to be limited to a true rebuttal role.

[00:15:09] Speaker 04:
That's not what happened here.

[00:15:10] Speaker 04:
That's a violation of the APA and a violation of the AIA.

[00:15:13] Speaker 04:
I see I'm into my rebuttal time.

[00:15:14] Speaker 04:
Thank you.

[00:15:15] Speaker 04:
We'll stay.

[00:15:33] Speaker 02:
May it please the court.

[00:15:35] Speaker 02:
Netlist's principle argument on appeal rests on a false premise that Sandisk's reply was an attempt to cure some defect in the prima facie case of obviousness set forth in the petition.

[00:15:50] Speaker 02:
There is no defect in Sandisk's prima facie case and at most this is a one-of-the-mill dispute about the factual question of whether a person of ordinary skill in the art

[00:16:03] Speaker 02:
would have had a reasonable expectation of success in combining the references to arrive at the claim dimension.

[00:16:10] Speaker 02:
And the board resolved that factual issue in Sandisk's favor.

[00:16:15] Speaker 03:
How do we pronounce your expert's name?

[00:16:18] Speaker 02:
I've been pronouncing it Jaganathan.

[00:16:20] Speaker 02:
I don't know if it's correct.

[00:16:21] Speaker 03:
Why would Dr. Jay, in his declaration, say that it'd be obvious

[00:16:29] Speaker 03:
to use the chip select signals output from the Takeda bank control unit as the logic signal to enable the bit switches.

[00:16:38] Speaker 03:
Why would he say it like that?

[00:16:41] Speaker 02:
Well, when you put the emphasis on the logic signal to enable the chip select switches, well, I think the board found, as a matter of fact, that that was inartfully drafted.

[00:16:58] Speaker 02:
And in fact, the proposed combination, as set forth in the petition, was that a person of ordinary skill in the art would recognize the utility of the chip select signal.

[00:17:11] Speaker 02:
And in the petition, we said that the enablement of Connelly's FET switch would be based at least on that signal, or would be relative to which of those signals were selected.

[00:17:24] Speaker 02:
The prima facie case of obviousness in the petition never said you take Takeda's chip select signal and apply it directly to Connelly.

[00:17:35] Speaker 03:
No, it says based on at least the chip select signal, but I'm just trying to figure out why your expert, Dr. J, would say it like this.

[00:17:43] Speaker 03:
What am I supposed to make of this?

[00:17:45] Speaker 02:
So what Dr. J was doing was providing the actual implementation

[00:17:50] Speaker 02:
details, and when he was deposed on that, he unambiguously, right off the bat, clarified, I didn't mean that you would take the signal and apply it directly to the FET switch.

[00:18:07] Speaker 02:
I am absolutely saying that you use that signal as the logic signal that's used to enable the FET switch.

[00:18:14] Speaker 02:
You just have to put in an appropriate delay.

[00:18:16] Speaker 00:
But what if he had said, gee, I misspoke?

[00:18:20] Speaker 00:
if he had fessed up that, yes, I said something and I was wrong.

[00:18:24] Speaker 00:
Would that be a problem for you then?

[00:18:27] Speaker 02:
Absolutely not, because then what Netlist would be entitled to do would be to test that proposition through deposition and then use that deposition testimony to argue perhaps that Dr. Jagannathan's declaration testimony is not credible or to use that testimony and say,

[00:18:49] Speaker 02:
Now what he's saying, that would be beyond the capability of a person of ordinary skill in the art.

[00:18:56] Speaker 02:
And in fact, that's precisely what Netlist did.

[00:18:59] Speaker 02:
And then the board has to evaluate that evidence and the board... Can I ask you just... Yes.

[00:19:05] Speaker 00:
We use a lot of words here, so there's grounds and we all thought we knew, we think we know what that means.

[00:19:11] Speaker 00:
What word would you put on this thing that

[00:19:15] Speaker 00:
Dr. Jay was talking about.

[00:19:17] Speaker 00:
Would you call that a theory, his theory of the case?

[00:19:21] Speaker 00:
How would you characterize what we're talking about here in terms of the chip signal and what he said?

[00:19:28] Speaker 02:
I would characterize it as an implementation detail that supports the... So is it a theory?

[00:19:36] Speaker 00:
Is it an underlying aspect of a theory?

[00:19:40] Speaker 02:
It is evidentiary support for the prima facie case that's set forth in the petition that says that a person of ordinary skill in the art would have recognized the utility of Decata's chip select signal in enabling Connolly's bit switches.

[00:19:58] Speaker 02:
So that is evidence supporting the theory of unpatentability that is sitting in the prima facie case of unpatentability that's sitting in the petition.

[00:20:08] Speaker 02:
It's the petition that governs here, both in the statute and in this court's cases, not the evidence supporting the petition.

[00:20:18] Speaker 00:
Yeah, but you're still bound by it.

[00:20:20] Speaker 00:
I mean, that still has to carry some weight.

[00:20:22] Speaker 00:
That's what the patent owner is, in theory, relying on part and parcel.

[00:20:27] Speaker 00:
He's not just responding to the petition.

[00:20:29] Speaker 00:
He's responding to the evidence supporting the petition, as he should be.

[00:20:34] Speaker 02:
And as Netlist, in fact, did in this case.

[00:20:37] Speaker 02:
They drilled right down to that statement in Dr. J's declaration.

[00:20:43] Speaker 02:
They probed him on that.

[00:20:46] Speaker 02:
At best, that statement was inartfully drafted, but they probed him on that.

[00:20:52] Speaker 02:
They tested it.

[00:20:53] Speaker 02:
They responded in their patented response and said all of those things.

[00:20:58] Speaker 02:
They say, well, under his original implementation details, it would have been inoperable.

[00:21:05] Speaker 02:
But, you know, under what he's saying now in the declaration, that would have been beyond the capability of the skilled artisan.

[00:21:13] Speaker 02:
And, in fact, because he's all over the place, you should discredit his testimony.

[00:21:19] Speaker 02:
Netlist did precisely what it was supposed to do, but it can't claim that it did not have notice of his implementation details.

[00:21:27] Speaker 00:
And the board found... Do you agree, right, that did you get... Does the petitioner then get a response

[00:21:33] Speaker 00:
a reply to the patent owner's response?

[00:21:36] Speaker 00:
Yes.

[00:21:37] Speaker 00:
And so if this had come in later in the process, and in fact they had not had an opportunity in the absence of getting another cert reply or something to respond, would you agree under those circumstances if the board had relied on it, there would be a problem here?

[00:21:58] Speaker 02:
I don't think so, because this entire, you know,

[00:22:03] Speaker 02:
new theory ground, which is in fact not a new theory.

[00:22:08] Speaker 02:
It's a response to their patent owner response.

[00:22:15] Speaker 02:
The contention of the parties is set forth in the petition.

[00:22:21] Speaker 02:
And the petition did not say, take the chip's blood signal, plug it directly into the

[00:22:29] Speaker 02:
into Connolly's FET.

[00:22:31] Speaker 02:
It just said, and all it had to do, in the prima facie case, you're obligated to say that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention.

[00:22:46] Speaker 02:
And the petition did that and it said, it went beyond that or explained that and said, this is how a person of ordinary skill in the art would do it.

[00:22:55] Speaker 02:
They would recognize the

[00:22:58] Speaker 02:
the utility of the chip select switch here, and based on that, enable Connelly's FET switches.

[00:23:08] Speaker 02:
Now, the evidence supporting that netlist was entitled to test.

[00:23:14] Speaker 02:
I think what may also be dispositive here is the fact that there is no daylight between the board's articulation of its

[00:23:28] Speaker 02:
unpatentability ground in the final written decision and SanDisk's articulation of its prima facie case in the petition.

[00:23:37] Speaker 02:
There's no daylight between those two.

[00:23:40] Speaker 03:
And again, this is a- Connelly teaches not only the use of bit switches to enable different memory devices, but it also teaches the idea of that ASIC logic element for enabling the bit switches themselves, right?

[00:23:57] Speaker 02:
That's right.

[00:23:58] Speaker 02:
And Connolly also deals with the timing.

[00:24:00] Speaker 03:
So through the logic element, it's not just a command signal that's directly enabling a switch.

[00:24:09] Speaker 03:
It's through the ASIC logic element that's doing it.

[00:24:11] Speaker 03:
Is that right?

[00:24:13] Speaker 02:
Yes, that's right.

[00:24:14] Speaker 02:
So Connolly basically uses the row two of those logic signals that are called out in the claim.

[00:24:21] Speaker 02:
The claim calls out a number of logic signals.

[00:24:22] Speaker 02:
It calls out

[00:24:23] Speaker 03:
A chip select signal, a bank address signal, a... I guess the point I'm trying to make is if you're going to use the teachings of Connelly and Takeda, you wouldn't necessarily just be using the bit switch by itself, because Connelly teaches the ASIC logic element that provides logic for enabling Connelly's bit switches.

[00:24:42] Speaker 03:
So you would use both of those things together in modifying Takeda's memory module.

[00:24:49] Speaker 02:
Yes.

[00:24:49] Speaker 02:
Connelly relies on two logic signals, RAS and CAS.

[00:24:54] Speaker 02:
strobe, calm access strobe.

[00:24:55] Speaker 02:
Dr. J said, well, you could also use the chip select signal.

[00:25:00] Speaker 02:
And all three of those signals are called out in the claim.

[00:25:03] Speaker 02:
And the claim does not require the use of any one of them.

[00:25:07] Speaker 02:
It leaves that to a person of ordinary skill in the art.

[00:25:11] Speaker 02:
I want to address this notion that Sandisk was not put on notice of the use of

[00:25:20] Speaker 02:
of the JEDEC specification in Sandisk's petition, and in fact, even in the institution decision.

[00:25:27] Speaker 02:
And if you go to Sandisk's petition, you cannot separate ground two from ground one.

[00:25:36] Speaker 02:
Ground two relies on ground one to teach most of the elements of the claim.

[00:25:42] Speaker 02:
And when you look at appendix 202, for example, in Sandisk's petition,

[00:25:49] Speaker 02:
At the middle of the page, it says, because JEDEC provides the standards for implementing an overall DDR SDRAM architecture, a person of ordinary skill in the art would have consulted JEDEC when designing and implementing the concepts taught in DECADA.

[00:26:04] Speaker 02:
And then below that, it says, JEDEC is a product data sheet designed to inform a user about the electrical requirements for DDR SDRAM dual inline memory modules, including the various signals, input signals, output signals, operating conditions, et cetera.

[00:26:18] Speaker 02:
And then for ground one, again, the petition explains, and this is at appendix 205, exactly how you would use JEDEC chip select signal to achieve the selective electrically coupling limitation in claim one.

[00:26:32] Speaker 02:
It says how you would do that.

[00:26:34] Speaker 02:
And it says how you would do it with Takeda as well.

[00:26:39] Speaker 02:
And then in the institution decision, the board also, this is at appendix 270, when it gave its short overview of JEDEC,

[00:26:48] Speaker 02:
It said in the institution decision, JEDEC is a product data sheet describing electrical requirements for DDR, SDRAM, dual inline memory modules as existed in 2002.

[00:26:57] Speaker 02:
And it illustrates the configuration of these models, the data signal lines, data strobe lines, row and column access signals, bank access.

[00:27:06] Speaker 02:
The board unambiguously recognized the applicability of the JEDEC standard and put

[00:27:14] Speaker 02:
that list on notice that that standard was relevant at a minimum as background art, but also as part of the prima facie case.

[00:27:24] Speaker 02:
So there's no notice issue here with respect to how Dr. Jagannathan used the JEDEC specification and how the board used the JEDEC specification.

[00:27:40] Speaker 01:
At the bottom here, you're dealing with a limited group of references.

[00:27:43] Speaker 01:
There's not a new reference.

[00:27:46] Speaker 01:
And you're dealing with one ground, which is obviousness.

[00:27:50] Speaker 01:
It's not a new ground, such as anticipation, written description.

[00:27:56] Speaker 02:
No, not at all.

[00:27:57] Speaker 02:
I mean, I think the ground of obviousness is Takeda and Jeddak and Connolly, at least for ground two.

[00:28:06] Speaker 02:
And ground two cured

[00:28:08] Speaker 02:
The use of Connelly here cured the defect that the board found with Ground 1 and the switch not being actually on the memory device.

[00:28:27] Speaker 02:
I'm happy to address any additional questions that the panel has, if not, Dalla.

[00:28:50] Speaker 04:
Just a couple short points, Your Honor.

[00:28:52] Speaker 04:
First, there's no basis here for holding that.

[00:28:55] Speaker 04:
An expert's testimony on cross-examination that contradicts his earlier testimony is somehow noticed.

[00:29:00] Speaker 04:
The AIA requires that the agency give adequate notice.

[00:29:03] Speaker 04:
And the APA requires the agency.

[00:29:06] Speaker 04:
And the AIA says how that adequate notice must be given.

[00:29:08] Speaker 04:
It's in the petition.

[00:29:09] Speaker 04:
So whatever the expert said on its cross-examination, that can't be noticed if the court agrees that there was a new theory.

[00:29:14] Speaker 00:
The board twice asked for briefing on this question during the proceeding.

[00:29:18] Speaker 04:
Just once, Your Honor.

[00:29:19] Speaker 00:
OK.

[00:29:20] Speaker 04:
Well, they obviously, on the one hand... There were observations submitted, and then later the party submitted legal briefings.

[00:29:26] Speaker 00:
OK.

[00:29:26] Speaker 00:
On the one hand, that endures to your benefit, because it looks like the board took this issue seriously.

[00:29:32] Speaker 00:
On the other hand, they went against you.

[00:29:35] Speaker 04:
Yes, but Your Honor, it's a legal question.

[00:29:37] Speaker 04:
And NUVASA makes that clear.

[00:29:39] Speaker 04:
Whether it was a new ground or new theory is a legal question.

[00:29:41] Speaker 04:
Whether the board complies with APA requirements is a new question.

[00:29:44] Speaker 04:
This is a legal question.

[00:29:45] Speaker 04:
Judge Laurie, to your point about new grounds, the change here is indistinguishable from the change in Illumina.

[00:29:51] Speaker 04:
In Illumina, the party argued there was a motivation to combine in the petitions based on specific references, particularly based on the express disclosures that the conditions in one of the references a person of skill in the art would have expected to succeed.

[00:30:04] Speaker 04:
On reply, they then argued, no, in fact, once the patent owners explained why those conditions wouldn't work, they said, well, a person of skill in the art would have known how to modify the conditions to make it work.

[00:30:13] Speaker 04:
This court called that a new ground.

[00:30:15] Speaker 04:
And it affirmed the board in refusing to consider that.

[00:30:18] Speaker 04:
And that's consistent with the way the court treats the same issue in the re-exam context when it determines whether there's a new ground.

[00:30:23] Speaker 03:
The question is really whether there was, in fact, a new theory here, or whether it was in the petition all along, given that the petitioner and Dr. J called out Connolly and not only Connolly's bit switches, but Connolly's logic element for enabling the bit switches.

[00:30:40] Speaker 03:
And so why wouldn't it be?

[00:30:42] Speaker 03:
the most logical reading of all of that, that you're also using some kind of logic to enable the bit switches in the combination with Takeda.

[00:30:49] Speaker 04:
Because that's not, in fact, what the petitions and institutions decision said, and that's certainly not what the experts said in his report.

[00:30:55] Speaker 04:
Here are some of the quotes.

[00:30:56] Speaker 04:
He said, quote, the chip selects output from the decode circuitry referring to Takeda are the enable signal for the FET switches.

[00:31:03] Speaker 04:
That's 4330.

[00:31:04] Speaker 04:
He said,

[00:31:06] Speaker 04:
that a person of scale would have included Connolly's bit switches so that, quote, they would be enabled or disabled by the chip flex output by the Takeda logic.

[00:31:14] Speaker 04:
That was repeated over and over in his claim charts, in his declaration.

[00:31:17] Speaker 04:
Those were cited affirmatively by Sandisk, in his petitions, and by the board.

[00:31:21] Speaker 04:
That was the theory that we had to respond to.

[00:31:23] Speaker 04:
That theory changed.

[00:31:24] Speaker 04:
That's an error under the APA and the AIA, and the court should reverse.

[00:31:29] Speaker 00:
Thank you.

[00:31:29] Speaker 00:
We thank both sides.