[00:00:00] Speaker 01:
Court is Parker Vision versus Qualcomm, Incorporated.

[00:00:04] Speaker 01:
Case number 172012.

[00:00:07] Speaker 01:
It is again an appeal from a decision of the Patent Trial and Appeal Board.

[00:00:56] Speaker 01:
Mr. Menaire, is that how I pronounce your name?

[00:00:59] Speaker 04:
It's Menaire, Your Honor.

[00:01:02] Speaker 01:
OK.

[00:01:03] Speaker 01:
You want four minutes of rebuttal?

[00:01:14] Speaker 03:
That's correct.

[00:01:29] Speaker 04:
So may it please the court, I'd like to start with what we've been calling the NAZAWA IPRs.

[00:01:37] Speaker 04:
There's a controlling set of findings of fact by the board here that compel both the method claims have been found patentable, but also the apparatus claims be found patentable.

[00:01:49] Speaker 04:
Now, the controlling facts are not disputed and not appealed, and that's that the NAZAWA

[00:01:58] Speaker 04:
prior art reference did not teach a switch having an oscillating signal configured to cause that switch to gate a signal and create another signal with a plurality of harmonics.

[00:02:12] Speaker 04:
The board found that, as a matter of fact, that's not appealed right now.

[00:02:17] Speaker 02:
I'm sorry, found exactly what?

[00:02:19] Speaker 04:
It found that Nizawa does not, there's a claim, each of the claims, both apparatus or methods.

[00:02:26] Speaker 04:
Point me to the page.

[00:02:28] Speaker 04:
Sure.

[00:02:28] Speaker 04:
A-15 through 16 in one of the final written decisions.

[00:02:34] Speaker 04:
This is in the 1828.

[00:02:37] Speaker 04:
So regarding this plurality of harmonics in the switch that has to create it in the oscillating signal.

[00:02:42] Speaker 03:
What's the citation again?

[00:02:43] Speaker 04:
Sorry, it's A-15, it's page 15 in the appendix.

[00:02:47] Speaker 04:
Going on to 16, it's part of the final written decision.

[00:02:51] Speaker 04:
It reads, in response, Par provision contends that Nizawa does not disclose expressly

[00:02:56] Speaker 04:
that its periodic signal contains a plurality of harmonics because there is no evidence that the many harmonics of Nizawa are the integer multiple harmonics required by the claims.

[00:03:06] Speaker 04:
On this point, we agree with Park revision.

[00:03:09] Speaker 04:
Nizawa's disclosure that the output in principle contains many harmonics does not convince us that the output actually or necessarily contains

[00:03:17] Speaker 04:
the integer of multiple harmonics.

[00:03:19] Speaker 02:
At least as I remember, and this is the reason I asked you, that the sentence that you uttered that led me to interrupt with the question is the usual thing that we often deal with in statutes of having a verb followed by several clauses with that phrases followed.

[00:03:40] Speaker 02:
The board clearly found that Nozawa taught a structure capable of doing it and clearly found that Nozawa did not teach

[00:03:51] Speaker 02:
doing of it, the doing of it being the production of the plurality of harmonics.

[00:03:58] Speaker 02:
And it was on that distinction that it said apparatus claims unpatentable, method claims not proven unpatentable, because the former doesn't require a teaching of actually producing the relevant harmonics, and the method claims do.

[00:04:16] Speaker 04:
I would agree with that summary, but I would add one more thing, and that's that the board

[00:04:22] Speaker 04:
not only found that Nozawa did not actually disclose configuring the disclosed apparatus, the mixer, so that it would create the plurality of harmonics, but that there was no evidence.

[00:04:35] Speaker 02:
That's where we start to get imprecise about.

[00:04:42] Speaker 02:
The board found that Nozawa did teach configuring a structure.

[00:04:51] Speaker 02:
that, as a matter of fact, though not mentioned in Nozawa, would produce, with certain inputs, the relevant harmonics.

[00:05:00] Speaker 04:
But I think where, hopefully, we are agreeing is with the certain inputs, that it had to be, that the Nozawa mixer, under certain conditions, not mentioned or proposed in the Nozawa.

[00:05:14] Speaker 01:
Right.

[00:05:15] Speaker 01:
I think the board found that Nozawa

[00:05:19] Speaker 01:
didn't provide a reason to do it within its four corners, which is why it found the method claims valid.

[00:05:27] Speaker 04:
That's correct.

[00:05:28] Speaker 01:
But how do you get around our many cases, including Bosch and Loehm, that said the key with apparatus claims is not what an apparatus does, but what it is, what it's capable of doing?

[00:05:44] Speaker 04:
Because I think in finding that

[00:05:48] Speaker 04:
the mere capability of this Nasawa system of being configured to operate as the claim system.

[00:05:56] Speaker 02:
No, that's not quite right.

[00:05:58] Speaker 04:
OK.

[00:05:59] Speaker 02:
It is capable as configuring of doing this.

[00:06:04] Speaker 04:
See, I think that's where we're disagreeing, because part of the system is, for example.

[00:06:09] Speaker 02:
Putting an input into a fully configured system is not reconfiguring it.

[00:06:16] Speaker 04:
Maybe it's easier if we focus on the claims.

[00:06:18] Speaker 01:
But is your argument then that the board clearly erred in concluding that it was capable of doing it, or is your argument that the board erred as a matter of law in saying that was enough?

[00:06:33] Speaker 04:
The latter, Your Honor.

[00:06:35] Speaker 04:
It erred as a matter of law by deciding that that was enough.

[00:06:39] Speaker 04:
And one of the reasons of that was if we look at claim 22, which is one of the apparatus claims,

[00:06:44] Speaker 04:
and compare that to the method claim that we're talking about, where the method claim 25 includes getting a reference signal at a rate that is a function of said string of pulses to create a periodic signal having a plurality of harmonics.

[00:07:01] Speaker 04:
If we compare that to the system claim, it's not claiming just a, if you look at claim 22, for example, it doesn't claim just a switch capable of receiving a certain kind of signal.

[00:07:12] Speaker 04:
It's a switch module having a first input connected to a bias signal and a control input connected to a control signal.

[00:07:21] Speaker 04:
The control signal is being claimed here.

[00:07:23] Speaker 04:
And it goes on further and says wherein said control signal is an oscillating signal.

[00:07:29] Speaker 04:
Again, it's not a switch module that can just is capable of receiving such a switch.

[00:07:34] Speaker 04:
It's connected.

[00:07:35] Speaker 04:
I'm sorry, capable of receiving such a signal.

[00:07:39] Speaker 04:
It's claimed as is connected to that control signal.

[00:07:41] Speaker 04:
And that control signal is claimed as is an oscillating signal.

[00:07:45] Speaker 04:
And said control signal causing said switch module to gate said bias signal.

[00:07:50] Speaker 04:
And then it goes on and says wherein it results in the harmonically rich signal comprised of a plurality of harmonics.

[00:07:57] Speaker 04:
So it's not that what was claimed here is just a switch.

[00:08:03] Speaker 04:
What was claimed here is a switch with a particular type of oscillating signal.

[00:08:08] Speaker 04:
a particular type of oscillating signal that's going to push that gate, I'm sorry, push that switch in a certain way so that gates a signal and creates another with a plurality of harmonics.

[00:08:21] Speaker 04:
And it's that type of oscillating signal that is neither, and a switch that is operating under that type of oscillating signal, that system is what's not disclosed in the NAZAWA.

[00:08:32] Speaker 04:
NAZAWA does disclose a switch that if somebody were properly motivated

[00:08:37] Speaker 04:
could use an oscillating signal with it to achieve the invention here.

[00:08:42] Speaker 04:
We're not disputing that.

[00:08:43] Speaker 01:
But that's not a modification of Nazawa.

[00:08:45] Speaker 01:
That's really the question here.

[00:08:47] Speaker 01:
Is using an oscillating signal with it a modification of Nazawa, or is it simply using Nazawa under certain conditions?

[00:08:57] Speaker 04:
Because Nazawa does not expressly teach an oscillating signal that is configured to cause, that is connected to the switch,

[00:09:06] Speaker 04:
and causes this switch to gate in a way that creates a plurality of harmonics, that oscillating signal, that control signal that I just read that's part of this claim is not disclosed or suggested in the Zawa.

[00:09:18] Speaker 04:
And the board found that that was true.

[00:09:19] Speaker 04:
The board found that.

[00:09:21] Speaker 04:
So I would say that it is a modification in the Zawa because there's nothing in the Zawa about using that type of oscillating signal.

[00:09:28] Speaker 04:
To come up with that type of oscillating signal, you need to do something that's not described in the Zawa.

[00:09:37] Speaker 04:
And that was the board's error.

[00:09:39] Speaker 04:
The board found that Nizawa didn't teach that type of oscillating signal when Qualcomm attempted in its reply brief to argue, well, it would have been, the question isn't whether Nizawa actually taught that.

[00:09:55] Speaker 04:
The question is whether it would have been obvious to use that sort of signal in the Nizawa system.

[00:10:01] Speaker 04:
That came up for the first time in Qualcomm's reply brief.

[00:10:05] Speaker 04:
And the board correctly found, one, we're not going to consider that because it wasn't in the petition.

[00:10:10] Speaker 04:
But two, Qualcomm, you didn't support that anyways.

[00:10:13] Speaker 04:
There's no evidence here of a person of ordinary scale would have been motivated.

[00:10:18] Speaker 04:
If I can read a quote so I'm not paraphrasing inaccurately, as discussed, this is, I'm sorry, at page 18 of the appendix, the board found, as discussed above, these arguments, the obviousness arguments, merely show that, I'm sorry,

[00:10:34] Speaker 04:
the arguments from the petition merely show that Nizawa could, if given the proper inputs, produce the required harmonics.

[00:10:42] Speaker 04:
The petition does not speak to whether a person of ordinary skill in the art would have any reason to do so.

[00:10:48] Speaker 04:
That's at A18 of the 1828 final written decision.

[00:10:54] Speaker 04:
So again, the board found as fact there was no evidence of any motivation to use this different kind of oscillating signal.

[00:11:04] Speaker 04:
this oscillating signal that, in connection with the switch, would cause the plurality of harmonics that's being claimed here.

[00:11:11] Speaker 04:
And that oscillating signal is claimed here.

[00:11:13] Speaker 01:
What's the benefit of having a plurality of integer multiple harmonics in the signal?

[00:11:20] Speaker 04:
So one of the benefits is, and

[00:11:24] Speaker 04:
I don't think this was discussed much on the record, so I don't think there's anything I can specifically point to.

[00:11:29] Speaker 01:
I'm just really trying to understand this technology a little better.

[00:11:31] Speaker 04:
Well, good luck to you, Judge.

[00:11:36] Speaker 04:
Basically, it's a way of... I think we described a little bit in our briefs that my voice, my voice signal, it's hard to transmit that because it's a low frequency.

[00:11:46] Speaker 04:
So what happens is a low frequency signal gets imparted on a high frequency signal

[00:11:52] Speaker 04:
and the resulting signal is what gets transmitted wireless.

[00:11:54] Speaker 04:
And that's the information signal or the base signal.

[00:11:57] Speaker 04:
That's correct.

[00:11:58] Speaker 04:
My voice would be the base band signal, the information signal.

[00:12:02] Speaker 04:
The use of the pluralities, excuse me, the harmonics is one way of getting a higher frequency signal in a more efficient manner.

[00:12:11] Speaker 04:
So instead of using the frequency that would be, you can use a harmonic that would have a higher frequency as the transmission signal.

[00:12:21] Speaker 03:
rather than a different so it's a it's a fish away getting a higher signal or even here's a production of this reality that's correct okay so you you're trying or your argument is based on the oscillating signal all the oscillating signal is is the basic information that goes through the oscillator and the oscillator is simply uh... opening and closing the gate well i i

[00:12:49] Speaker 04:
I just want to make sure on the same page, when you were asking me about what the baseband signal is, is not necessarily the oscillating signal.

[00:12:57] Speaker 04:
Correct.

[00:12:57] Speaker 04:
Okay, so the oscillating signal is chosen, and I think this, it's, you know, undisputed that from Qualcomm's own reply brief, a mixer may or may not result in the mixer, I'm sorry, this is an A5350.

[00:13:14] Speaker 04:
that depending on the design of the mixer and the frequency selected for the bias signal, that would be the baseband signal, and the oscillating control signal.

[00:13:23] Speaker 04:
That is what's going to factor into, you have to configure and choose that oscillating signal specially to create the plurality of harmonics.

[00:13:34] Speaker 04:
Does that answer your question?

[00:13:35] Speaker 03:
The Nozawa structure is capable of doing that.

[00:13:38] Speaker 04:
It was capable of doing it, but it didn't describe doing it, it didn't describe

[00:13:43] Speaker 04:
using and configuring such an oscillating signal to create those plurality harmonics.

[00:13:47] Speaker 04:
The board found that, and the board found additionally there was no evidence that was obvious to do so.

[00:13:52] Speaker 01:
But wait, all the experts agree that mass, that using the mass equation, that the harmonics, the many harmonics, would be produced under all conditions, right?

[00:14:02] Speaker 04:
No, that's not correct.

[00:14:04] Speaker 01:
But I thought it was just the integer harmonics that would not necessarily be produced.

[00:14:09] Speaker 04:
Then I misunderstood your question.

[00:14:11] Speaker 04:
Yes.

[00:14:12] Speaker 04:
If I can frame it this way, if you were disposed to, wanting to know what oscillating signal you could use for a switch to create a plurality of harmonics, then you could use the Moss equation to figure out, all right, here's what my oscillating signal should be x, right?

[00:14:34] Speaker 04:
It's a formula.

[00:14:35] Speaker 04:
But the problem is, there's no motivation here to do so.

[00:14:38] Speaker 04:
So there's math available for figuring out what that oscillating signal should be.

[00:14:44] Speaker 04:
If you want to, use the switch to create this plurality of harmonics as claimed here.

[00:14:51] Speaker 04:
But the point is, and the board found, there was no motivation to do so.

[00:14:55] Speaker 01:
Right.

[00:14:55] Speaker 01:
That's why they found that the method claims were packed.

[00:14:58] Speaker 04:
That's right.

[00:14:59] Speaker 04:
But Qualcomm itself admitted in its appeal briefs, the limitations of the apparatus claims are the same as in the method claims.

[00:15:08] Speaker 04:
for this particular issue.

[00:15:09] Speaker 04:
And as I read, the apparatus claims are not just a switch capable of receiving a signal.

[00:15:16] Speaker 04:
The control signal is actively claimed.

[00:15:18] Speaker 04:
It's part of the apparatus.

[00:15:20] Speaker 04:
It's part of the system being claimed here.

[00:15:23] Speaker 01:
OK.

[00:15:24] Speaker 01:
You're way into rebuttal.

[00:15:25] Speaker 01:
I'll give you three minutes for rebuttal.

[00:15:26] Speaker 04:
Thank you, Your Honors.

[00:15:36] Speaker 00:
May it please the court.

[00:15:38] Speaker 00:
So, Council was discussing the Nizawa IPRs, which is what I want to discuss as well.

[00:15:43] Speaker 00:
And in the Nizawa IPRs, the Board's factual finding was a little bit different than what Council presented here.

[00:15:51] Speaker 00:
In particular, in the Board's factual finding at appendix at page 17, the Board found that, and I quote, one point appears beyond dispute.

[00:16:03] Speaker 00:
Under some conditions, but not all conditions, the Moss equation shows that Nizawa's structure will provide a periodic signal that contains integer multiples of the fundamental frequency.

[00:16:13] Speaker 00:
So what the board found is that it was beyond dispute that Nizawa will, in fact, generate integer multiple harmonics.

[00:16:21] Speaker 00:
And the important factual consideration that wasn't mentioned here but is in the record is that Parker Vision itself submitted evidence that

[00:16:32] Speaker 00:
Nizawa will generate these integer multiple harmonics.

[00:16:36] Speaker 01:
You agree though that the board expressly found that Nizawa does not itself use an oscillating signal, right?

[00:16:49] Speaker 00:
Sorry, I agree that what the board found is that Nizawa will not always generate integer multiple harmonics.

[00:16:58] Speaker 00:
And I agree with that point.

[00:16:59] Speaker 02:
So the... Also that Nozawa's words do not say in some way, you can use this to generate these harmonics.

[00:17:11] Speaker 00:
So Nozawa does not actually make an explicit statement that the many harmonics that it teaches are... Right, and the board expressly found that it doesn't say... So your answer to Judge Toronto is yes.

[00:17:22] Speaker 00:
Yes, that's correct.

[00:17:24] Speaker 00:
But I think that from there, the board then said,

[00:17:27] Speaker 00:
but we'll look at the full factual record.

[00:17:29] Speaker 00:
And the full factual record here is that Parker Vision put into evidence and made its own admission.

[00:17:37] Speaker 00:
And I can point to their own brief.

[00:17:42] Speaker 00:
When they discussed the frequency content, and I'm referring to the appendix at page 280, they said, thus, the frequency content of the combined signal of the 4052 chip, the purported periodic signal, will be

[00:17:55] Speaker 00:
And they went on to list a set of calculations.

[00:17:58] Speaker 00:
Now, where Parker Vision aired is they cut those calculations short.

[00:18:02] Speaker 02:
So they acknowledged that the frequency time... Are you just explaining why this point is not in dispute?

[00:18:10] Speaker 02:
Because they still don't dispute this point that's not in dispute.

[00:18:13] Speaker 02:
So why are we spending time on this?

[00:18:15] Speaker 00:
Well, I think the important about this point is that we have one that Nizawa teaches this many harmonics.

[00:18:23] Speaker 00:
And then Parker-Vision raised an argument, and they said, well, wait a second, Bord.

[00:18:27] Speaker 00:
This many-harmonics might not be the integer multiple harmonics.

[00:18:32] Speaker 00:
And on that point, everybody agrees.

[00:18:35] Speaker 00:
It might not be.

[00:18:36] Speaker 00:
But then Parker-Vision went further.

[00:18:38] Speaker 00:
Parker-Vision said, we're going to actually give you, Bord, evidence.

[00:18:43] Speaker 00:
We're going to give you the frequency content of the- I think I'm not being clear.

[00:18:49] Speaker 02:
I think your friend on the other side acknowledges expressly that Nozawa can, in fact, be used to produce these harmonics.

[00:19:00] Speaker 02:
At that point, why don't we take that as a given and figure out what the consequences of that.

[00:19:05] Speaker 02:
I think what you're saying is, and what's more, they put in evidence to support their own acknowledgment.

[00:19:10] Speaker 02:
I'm happy with the acknowledgment.

[00:19:13] Speaker 01:
Right.

[00:19:13] Speaker 01:
I specifically asked him if he was saying the board clearly erred in making the finding capable of, and he said,

[00:19:19] Speaker 01:
No.

[00:19:20] Speaker 01:
He said it aired as a matter of law with respect to the conclusion that all you have to do is have it be capable of when, A, it's not disclosed.

[00:19:32] Speaker 01:
And this is my next question.

[00:19:34] Speaker 01:
What is your response to his argument that says you have to look at our claims and our claims actually claim as part of the apparatus the conditions that would then have to be imposed on Nizawa for it to actually

[00:19:49] Speaker 01:
produce those integers, those harmonics.

[00:19:52] Speaker 00:
Yeah, so I think that this point, this idea, what I view as their sort of mixed method and system claim concept, that they're saying that there's this method requirement in their system claims.

[00:20:02] Speaker 00:
On this point, if we accept that to be true, then this court's decision in both Unwired Planet and the Hewlett-Packard versus Mustec decision are controlling.

[00:20:14] Speaker 00:
And if we look at the Hewlett-Packard versus Mustec decision, which I think is the closest decision here,

[00:20:19] Speaker 00:
At 1326 of that decision, this court found a prior art product that sometimes, but not always, embodies a claimed method, nonetheless teaches that aspect of the invention.

[00:20:34] Speaker 00:
And here, that's the exact factual finding that the board made.

[00:20:38] Speaker 00:
The board made the parallel between what was decided in Luztec at 1326 and what the board found as a factual matter

[00:20:48] Speaker 00:
at appendix at page 17 are striking.

[00:20:52] Speaker 00:
Again, Mustec says, sometimes, but not always, nonetheless embodies the claimed method.

[00:20:59] Speaker 00:
And then if we look at the factual finding that the board made, the board made a decision that under some conditions, but not all conditions, Nizawa's structure will provide the integer multiple harmonics.

[00:21:10] Speaker 00:
So when we look at the Mustec decision, regardless of whether we view this as a method claim, which is what Qualcomm's appeal is,

[00:21:17] Speaker 00:
Or we view this as a system, sort of mixed system and method claim, which is what Parker Vision's appeal is.

[00:21:25] Speaker 00:
The Mustec decision is controlling here.

[00:21:27] Speaker 00:
Similarly in the Unwired Planet decision, the court came to the same conclusion.

[00:21:32] Speaker 00:
The court came to the conclusion looking at whether a method step was performed, and it said that even if it does not always result,

[00:21:44] Speaker 00:
It's still sufficient that it sometimes results in order to teach a method claim.

[00:21:49] Speaker 01:
Well, what about the fact that you actually have to change the conditions?

[00:21:53] Speaker 01:
I mean, clearly what we've said is that those cases contemplate no modification to the priority.

[00:22:03] Speaker 01:
And why is changing the conditions not a modification to the priority?

[00:22:07] Speaker 00:
So again, there's no modification or to the actual structure of Nizawa in any way, shape or form that the board bases its findings of fact on.

[00:22:20] Speaker 00:
The board didn't require any sort of change in configuration.

[00:22:23] Speaker 00:
It didn't require any modification to what Nizawa teaches.

[00:22:27] Speaker 00:
The board just found based off of the undisputed facts, which Parker again, is that it will generate integer multiple harmonics within its operating range.

[00:22:37] Speaker 00:
And so any mixer or any transmitter has a range of frequencies that can operate under.

[00:22:44] Speaker 00:
And here, Parker Vision gave an example of one of those frequencies.

[00:22:50] Speaker 00:
They selected a frequency within Nizawa's operating range, and that showed that there are integer multiple harmonics.

[00:22:56] Speaker 00:
They didn't need any modification to Nizawa to select those frequencies.

[00:23:00] Speaker 00:
They just selected frequencies within its operating range, and that proved

[00:23:05] Speaker 00:
that there's no change in configuration, it's just how the device is structured to operate.

[00:23:11] Speaker 00:
It's not about whether it's capable of being configured, it is in fact configured in order to generate integer multiple harmonics.

[00:23:22] Speaker 00:
I think that Parker Vision also raised this point about waiver.

[00:23:31] Speaker 00:
And I think that that's something that is important to address.

[00:23:34] Speaker 00:
So on this waiver issue, the evidence that Qualcomm relied on and the board considered was evidence that Parker Vision itself put into the record.

[00:23:45] Speaker 00:
So when we reach those factual findings, then the only thing we need to do here is apply the law.

[00:23:51] Speaker 00:
And the controlling law, which I haven't heard any discussion that counters the controlling law in this court's decision in HPE versus

[00:24:04] Speaker 00:
as well as on Wired Planet.

[00:24:08] Speaker 02:
What is your argument on your cross-appeal for the method claims given what we've just been discussing for AFL?

[00:24:16] Speaker 00:
Well, I think that the method claims it's the same issue.

[00:24:20] Speaker 00:
We have the same factual finding.

[00:24:22] Speaker 00:
We have findings that this device will, in fact, generate.

[00:24:26] Speaker 00:
And then, again, if we apply that Mustang decision

[00:24:29] Speaker 02:
If the right inputs are used and the board found, there is no evidence that you've produced that would motivate a relevant skilled artisan to put in those inputs.

[00:24:44] Speaker 00:
So I want to answer that in two parts.

[00:24:48] Speaker 02:
Is that an accurate summary of what the board found?

[00:24:52] Speaker 00:
Yeah, so I do think that's an accurate summary.

[00:24:54] Speaker 00:
But I think that there the board is making a legal error.

[00:24:57] Speaker 00:
So the board is actually requiring for this method claim that we show that somebody would in fact perform the method steps.

[00:25:06] Speaker 00:
And this court has consistently found, including in the Mustang decision, that you don't actually need to provide evidence that somebody would perform the method.

[00:25:16] Speaker 00:
It's enough if we look at Mustang decision, the fact that the Prior Art product would in some cases, even if not always, would in some cases

[00:25:26] Speaker 00:
perform the claim method, that that evidence in and of itself is sufficient.

[00:25:31] Speaker 01:
Well, assuming the prior art either teaches it or provides a motivation to do it.

[00:25:36] Speaker 01:
And in this case, the board specifically found that it did neither.

[00:25:40] Speaker 00:
So the board's finding as to whether or not it would be obvious to select.

[00:25:46] Speaker 00:
I mean, so this goes to the second point that I wanted to respond to Judge Toronto, which is,

[00:25:52] Speaker 00:
the board didn't consider in that analysis, they didn't consider the fact that Parker Vision itself put into the record the frequencies that you would select, right?

[00:26:03] Speaker 00:
So Parker Vision chose frequencies.

[00:26:06] Speaker 00:
And the obviousness analysis, I mean to say that we can't rely on Parker Vision's admission, that

[00:26:12] Speaker 00:
about selecting frequencies that then would generate integer multiple harmonics?

[00:26:16] Speaker 02:
It's an admission that a skilled artisan would select those particular frequencies, or this was simply testimony illustrating the calculation.

[00:26:27] Speaker 02:
Let's suppose you use 0.9 or whatever.

[00:26:30] Speaker 02:
There's a 0.9 somewhere in here, right?

[00:26:33] Speaker 02:
And these are the harmonics you would get at number 35 and number 39.

[00:26:39] Speaker 00:
Yeah.

[00:26:39] Speaker 00:
So I think that you're correct, that the testimony was giving the expert examples with which to work from.

[00:26:48] Speaker 00:
But I think that to say that those frequencies, to suggest that those frequencies are not an obvious set of frequencies to select, when you've already given them to the expert to make the calculation that this is a reasonable thing, that we're going to present these frequencies to the board,

[00:27:10] Speaker 00:
I don't know that Park Revision would stand up and say, we selected frequencies that we think are unreasonable to select, for an expert to select.

[00:27:18] Speaker 00:
If that's true, then I'd be surprised.

[00:27:22] Speaker 00:
But I think that you select frequencies that a person of ordinary skill in the art would reasonably select.

[00:27:27] Speaker 00:
And those frequencies show that there are, in fact, integer multiple harmonics.

[00:27:31] Speaker 03:
Were those frequencies specific to the 4052 chip?

[00:27:37] Speaker 03:
Yeah.

[00:27:38] Speaker 03:
Is that what they were arguing here?

[00:27:40] Speaker 00:
So the 4052 chip is actually within the Nizawa device, the specific structure that actually does the frequency up conversion is the 4052 chip.

[00:27:56] Speaker 00:
So it's identifying the specific component within the overall Nizawa structure that will actually take those two frequencies and then output that higher frequency output signal.

[00:28:10] Speaker 00:
So the 4052 chip, when it refers to the 4052 chip, it's referring to the exact component that performs the conversion.

[00:28:18] Speaker 03:
So if the CETA would look at the 4052 chip and say, these are the frequency contents that I needed in order to create a periodic signal.

[00:28:27] Speaker 00:
So it would be, these are, yes, these are frequencies that could be used in order to create an output signal, correct?

[00:28:39] Speaker 01:
So what's your response on waiver?

[00:28:41] Speaker 01:
I know you started down that road, and we got you off of it.

[00:28:44] Speaker 00:
Yeah, so on the waiver issue, the evidence that Qualcomm is relying on is, again, it's evidence that Parker Vision itself put into the record to make its argument.

[00:28:53] Speaker 00:
And we're entitled to do that.

[00:28:54] Speaker 00:
In this court's decision in Idemetsu, as well as Genzyme, the court found that

[00:29:02] Speaker 00:
a petitioner is entitled to rely on evidence that the patent owner puts into the record.

[00:29:07] Speaker 00:
And I don't think that that issue is even at dispute.

[00:29:11] Speaker 00:
So the waiver argument, given that we are clearly relying on the admissions that they put into the record.

[00:29:17] Speaker 01:
But you didn't make that argument until your reply.

[00:29:23] Speaker 00:
We did not.

[00:29:24] Speaker 00:
Isn't that what the board said?

[00:29:27] Speaker 00:
The board didn't consider their admissions for the point of what frequencies a person would select.

[00:29:33] Speaker 00:
They didn't do anything else.

[00:29:34] Speaker 01:
And you didn't ask them to do that until your reply.

[00:29:37] Speaker 00:
Well, we wouldn't have had that evidence.

[00:29:38] Speaker 00:
That's correct.

[00:29:39] Speaker 00:
But we wouldn't have had that evidence until our reply.

[00:29:43] Speaker 00:
That would have been our first opportunity to address it because it's the evidence that patent owner put in.

[00:29:48] Speaker 02:
But it wouldn't have been your first opportunity to make the assertion that a skilled artisan would select these things.

[00:29:54] Speaker 02:
It certainly would be your first opportunity to address their evidence.

[00:30:00] Speaker 01:
But you could have presented your own evidence.

[00:30:03] Speaker 00:
Well, that is correct.

[00:30:05] Speaker 00:
I mean, I think that in our original petition, we did actually make the argument that a person would consider it obvious.

[00:30:13] Speaker 00:
So if I refer to you to page 132,

[00:30:17] Speaker 00:
which is the original petition, appendix page 132, it says, a person of ordinary skill and art would consider it obvious to operate Nizawa's mixer at frequencies that would generate harmonics of the fundamental frequency of the periodic signal.

[00:30:31] Speaker 01:
Right, but you've got an obviousness case.

[00:30:32] Speaker 01:
You put in no evidence of a motivation to combine.

[00:30:35] Speaker 01:
And now what you're saying, well, it's not really a motivation to combine.

[00:30:38] Speaker 01:
What we're saying is that the formulas would naturally take one of skill and the art there.

[00:30:44] Speaker 01:
And that's a totally different argument than

[00:30:46] Speaker 01:
been an obvious case that needs a motivation to provide an analysis.

[00:30:53] Speaker 00:
I don't want to go over my time.

[00:30:54] Speaker 00:
Can I respond to the question?

[00:30:55] Speaker 01:
You can respond to that.

[00:30:56] Speaker 00:
Yeah.

[00:30:56] Speaker 00:
So I think that it's the same argument that was originally presented.

[00:31:02] Speaker 00:
It's just relying on the additional evidence that her provision put into the record.

[00:31:06] Speaker 01:
OK.

[00:31:06] Speaker 01:
Thank you.

[00:31:16] Speaker 01:
Can you start with that point on the cross appeal?

[00:31:20] Speaker 04:
The waiver issue, Your Honor?

[00:31:21] Speaker 04:
Pardon?

[00:31:21] Speaker 04:
The waiver issue?

[00:31:23] Speaker 01:
No, on the issue of whether or not the very evidence that you put in would show that one of skill and the art, just by using simple equations and formulas, would be able to use Nizawa in that way.

[00:31:41] Speaker 04:
I'll say that the argument that that somehow supported their obviousness conclusion is an invention of the appeal.

[00:31:47] Speaker 04:
It's not in the reply brief.

[00:31:49] Speaker 04:
It's not in the board's decision.

[00:31:50] Speaker 04:
And it's certainly nothing that we ever represented or said, despite their representations that we did, said that these are obvious inputs to use.

[00:32:01] Speaker 04:
Our point was only in their petition, they had said, these are harmonics, and had gone on to say, if you use the Nizawa system,

[00:32:11] Speaker 04:
Every calculation from the MOS signal will show that it's a harmonic.

[00:32:15] Speaker 04:
Our point was, no, what you picked, you, Qualcomm, picked certain inputs that those first three calculations were n equals 1.

[00:32:25] Speaker 02:
Just to be clear, if you look at page A132, which is what Mr. Gardner cited, that does seem to have a sentence at the bottom of the page.

[00:32:37] Speaker 02:
Accordingly, Oposo would consider it obvious to operate Nozawa's mixer at frequencies that would generate harmonics of the fundamental frequency of the periodic signal, but that's only as to what

[00:32:52] Speaker 02:
claims 289 and 369?

[00:32:53] Speaker 02:
What's your response to that?

[00:32:55] Speaker 04:
Not only that, Your Honor.

[00:32:57] Speaker 04:
I think there's two waiver issues that I don't want to get mixed up.

[00:33:00] Speaker 04:
But on this issue, which the board already found they had waived this issue, this is a ground that relies on the Zawa, Phillips, and Maas.

[00:33:09] Speaker 04:
This was a ground that was not instituted, that was rejected because it was meant to consider a claim construction of harmonics that the board did not adopt.

[00:33:20] Speaker 04:
So this ground wasn't part, my understanding is it wasn't instituted anyways.

[00:33:26] Speaker 04:
But there's two waiver issues here.

[00:33:29] Speaker 04:
There's their waiver of the obviousness argument, which the board agreed with already and found that not only did they not raise it in the petition, but as we've discussed, they didn't support it.

[00:33:39] Speaker 04:
But there's also not a waiver issue, but it's too late issue, this capable argument, the argument that

[00:33:47] Speaker 04:
As long as Nizawa is capable of doing it, we're going to construe these claims so that the oscillating signal is not part of it, so that the wear-in is part of it.

[00:33:57] Speaker 04:
We, the board, are going to construe that.

[00:34:00] Speaker 04:
That came up in the final written decision.

[00:34:02] Speaker 04:
That claim construction was never argued in the petition.

[00:34:05] Speaker 04:
That claim construction was never put into the institution decision so that we could respond to it.

[00:34:09] Speaker 04:
That came up after all of the briefing and after all of the arguments.

[00:34:14] Speaker 01:
Let me ask you, how do you distinguish Mustang?

[00:34:18] Speaker 04:
I think pretty easy, because in that particular case, it wasn't just, well, maybe accidentally something will happen.

[00:34:29] Speaker 04:
Think of it this way.

[00:34:30] Speaker 04:
It was a machine with two settings.

[00:34:32] Speaker 04:
You could set it this way, and it was expressly disclosed to set it that way, or you could set it a different way.

[00:34:37] Speaker 04:
The point that I think the pad owner tried to make.

[00:34:41] Speaker 02:
Also expressly disclosed.

[00:34:42] Speaker 04:
Yeah.

[00:34:44] Speaker 04:
I mentioned there's two settings.

[00:34:45] Speaker 04:
And if you change the setting,

[00:34:47] Speaker 04:
then it's not going to do what's being claimed.

[00:34:50] Speaker 04:
So it's a completely different situation.

[00:34:52] Speaker 04:
It's the normal, I've claimed a magnifying glass.

[00:34:55] Speaker 04:
Well, my jackknife has a magnifying glass and a blade.

[00:34:58] Speaker 04:
The blade doesn't infringe, so it's not there.

[00:35:01] Speaker 04:
It's a different situation.

[00:35:03] Speaker 04:
Excuse me?

[00:35:03] Speaker 02:
But both were taught.

[00:35:05] Speaker 04:
Both were taught.

[00:35:06] Speaker 04:
And it was a method claim, to be honest with you, as well.

[00:35:08] Speaker 04:
So I don't know why it's relevant to reading out so-called functional language from an apparatus claim in the first place.

[00:35:16] Speaker 01:
OK.

[00:35:16] Speaker 01:
Thank you.

[00:35:17] Speaker 04:
Thank you.

[00:35:18] Speaker 04:
Am I done?

[00:35:20] Speaker 01:
Yes, you're done.

[00:35:20] Speaker 04:
All right.

[00:35:21] Speaker 04:
I'm sorry.

[00:35:22] Speaker 04:
I was having fun.

[00:35:22] Speaker 01:
Thank you.

[00:35:23] Speaker 01:
That's OK.

[00:35:27] Speaker 01:
All right.

[00:35:28] Speaker 01:
Thank you, counsel.