[00:00:08] Speaker 05:
We have four cases to hear argument in this morning, beginning with Colabo Innovations against Sony 18-1311.

[00:00:29] Speaker 01:
Good morning.

[00:00:29] Speaker 01:
May it please the court?

[00:00:31] Speaker 01:
My name is Dan Oleko.

[00:00:32] Speaker 01:
I represent Colabo Innovations in this appeal.

[00:00:35] Speaker 01:
We seek reversal of the board's decision

[00:00:38] Speaker 01:
on three different grounds or alternatively vacator.

[00:00:42] Speaker 01:
The three grounds for reversal are the board's construction of adhesive, conflicting with the intrinsic evidence and placing undue weight on the extrinsic evidence, the board's construction of wider area, which is nonsensical and also inconsistent with the intrinsic evidence.

[00:00:58] Speaker 05:
How many of the claims are affected by the wider area issue?

[00:01:03] Speaker 01:
I believe all of them, Your Honor.

[00:01:05] Speaker 05:
even though that term doesn't appear in very many of them.

[00:01:10] Speaker 01:
I believe that the alternative is larger area, at least with respect to claim seven.

[00:01:17] Speaker 01:
It wouldn't affect terms that didn't use either larger area or claims that didn't use larger area or wider area.

[00:01:26] Speaker 01:
The board's findings that Yoshino discloses the wider area limitation in that

[00:01:32] Speaker 01:
Takashi renders that limitation obvious or also not supported by substantial evidence and would request reversal on that basis as well.

[00:01:41] Speaker 01:
And finally we think the board decision should be vacated because the board failed to provide an adequate explanation of its obviousness basis and also the retroactive application of IPR to the 714 patent is unconstitutional because the 714 patent issued

[00:02:02] Speaker 01:
before the AI.

[00:02:03] Speaker 05:
Good thing you have 10 minutes to cover all that stuff.

[00:02:06] Speaker 01:
Well, I'm going to just highlight the more important issues, most important issues.

[00:02:11] Speaker 01:
With respect to the construction of adhesive, we believe the board erred by placing undue weight on the extrinsic evidence.

[00:02:20] Speaker 01:
The board based its construction on the dictionary.

[00:02:22] Speaker 02:
What about the fact that admittedly your specification does talk about gluing, you've got your preferred embodiment, maybe even every embodiment,

[00:02:31] Speaker 02:
refers to gluing, but the plain claim language is broader than that and talks about adhesive.

[00:02:36] Speaker 02:
Why should we construe the claim term by reading in an embodiment from the specification?

[00:02:42] Speaker 01:
Well, it's not reading in an embodiment.

[00:02:44] Speaker 01:
In fact, all the embodiments of the claims use glue.

[00:02:48] Speaker 02:
But if you wanted to use the word glue in the claim, you would have used the word glue.

[00:02:56] Speaker 01:
But the claim should be interpreted in light of the disclosures in the specification.

[00:03:01] Speaker 01:
not just based on the claim language itself.

[00:03:04] Speaker 02:
So I agree with you.

[00:03:05] Speaker 02:
There's that line.

[00:03:06] Speaker 02:
When are you reading something in from the specification, into the claims?

[00:03:09] Speaker 02:
And when are you reading the claims in light of the specification?

[00:03:12] Speaker 02:
There's a distinction there.

[00:03:14] Speaker 02:
So why, particularly in this case, do you think it's relevant that because every embodiment talks about glue, we're supposed to say adhesive should be limited to glue?

[00:03:22] Speaker 01:
Well, we're proposing construction of gluing with an adhesive.

[00:03:30] Speaker 01:
To clarify, we're not saying the only adhesive that could be used is glued generically.

[00:03:35] Speaker 01:
We're saying that you need to be gluing the chip to the package, which would exclude an injection molding process.

[00:03:44] Speaker 01:
The patentee focused on two different aspects of the invention to distinguish it over the prior art.

[00:03:53] Speaker 01:
First, the lack of the use of a bonding technique to attach the chip to the package.

[00:03:59] Speaker 01:
And second, the use of the glue on the sides of the chip using a press bit jig to hold the chip in place while it could be positioned at the same time.

[00:04:12] Speaker 01:
If you weren't using a glue in that manner on the sides of the chip, the invention wouldn't be accomplishing its intended purpose.

[00:04:23] Speaker 04:
So we think... It does sound like you're saying gluing with a glue as opposed to any adhesive.

[00:04:29] Speaker 04:
Because you could have an adhesive, I guess you agree, that isn't a glue.

[00:04:33] Speaker 04:
Absolutely.

[00:04:34] Speaker 04:
A tape, double-sided tape, for example.

[00:04:36] Speaker 04:
You wouldn't regard that as a form of glue, right?

[00:04:39] Speaker 01:
No.

[00:04:39] Speaker 04:
But it would be an adhesive?

[00:04:42] Speaker 01:
I believe tape would be potentially an adhesive in the broadest sense of the term.

[00:04:47] Speaker 04:
Right.

[00:04:47] Speaker 04:
And therefore, you would say that that would fit within the scope of the claims?

[00:04:53] Speaker 01:
I don't believe using tape would fit within the scope of the claims.

[00:04:55] Speaker 04:
But you said it was an adhesive, and you said gluing with an adhesive

[00:04:59] Speaker 04:
isn't using glue, and that's within the scope of the claim.

[00:05:03] Speaker 04:
So why isn't my example within the scope of the claims as you've defined it?

[00:05:11] Speaker 01:
The specification doesn't talk about using anything else except for a type of glue.

[00:05:17] Speaker 01:
Right.

[00:05:17] Speaker 01:
So you're really saying it is gluing with glue.

[00:05:21] Speaker 01:
Something analogous to glue, I think, would also work.

[00:05:24] Speaker 02:
I think the problem is- Is an example of what would be analogous to glue, and that would be gluing?

[00:05:29] Speaker 01:
In this context, the specification doesn't disclose any other alternatives to glue.

[00:05:39] Speaker 01:
It talks about using resin, but only as a mold for the package itself.

[00:05:46] Speaker 01:
And in this case, resin could be potentially used as a glue in some context, but not to glue this component to the package in an injection molding technique.

[00:06:01] Speaker 01:
But I guess the real problem with the board's construction is that it allows any material to be used as an adhesive, whereas we believe it should be only those materials that would be normally used that could be capable of gluing the package or the sides of the chip to the package.

[00:06:21] Speaker 01:
And it shouldn't be a material that interferes with the purpose of the patent, which is to provide a precise way of attaching the chip.

[00:06:31] Speaker 01:
So here the board started with a general dictionary definition of adhesive and then looked to the claims only to see if the claims conflicted with that general purpose definition.

[00:06:46] Speaker 01:
And that's exactly the type of analysis that was rejected by Phillips.

[00:06:51] Speaker 01:
It's the Texas digital methodology.

[00:06:55] Speaker 01:
But here the specification, as I noted, distinguishes

[00:07:00] Speaker 01:
the invention from different types of mounting techniques, such as dye bonding, which would attach the chip to the package without glue, but does so in a way that doesn't allow the invention to accomplish its intended purpose.

[00:07:19] Speaker 01:
It also distinguished the use of adhesive on the sides of the chip from the molded resin that's used to create the package itself.

[00:07:26] Speaker 01:
And importantly, the patentee distinguished

[00:07:30] Speaker 01:
the very prior art that the board found and validated the claims during prosecution.

[00:07:36] Speaker 01:
The patentee distinguished Takashi on the basis that he used this bonding technique.

[00:07:42] Speaker 02:
Can I go back for a minute?

[00:07:43] Speaker 02:
You made the point you said that the board had looked at the dictionary first and then looked at other evidence.

[00:07:48] Speaker 02:
But when I look at the board's opinion, for example, at JA 17, the last thing they refer to in their analysis is the dictionary.

[00:07:56] Speaker 02:
It says, you know, this construction is also supported by the dictionary reference.

[00:08:00] Speaker 02:
So how is it, what am I missing so that I can understand your point?

[00:08:04] Speaker 01:
At the beginning of the analysis, the board says the plain and ordinary meaning of adhesive is to adhere.

[00:08:10] Speaker 01:
And the only way, the only support for that definition or that construction is the dictionary definition itself, which says adhesive means tending to adhere.

[00:08:23] Speaker 02:
Well, isn't there also like some expert testimony

[00:08:27] Speaker 02:
And additionally?

[00:08:29] Speaker 01:
Actually, there's not with respect to Sony's expert.

[00:08:33] Speaker 01:
Sony's expert didn't opine at all on this construction.

[00:08:37] Speaker 01:
And Colabo's expert said an adhesive doesn't include injection molding.

[00:08:42] Speaker 01:
So there's no expert testimony based on the dictionary definitions.

[00:08:46] Speaker 01:
The dictionary was introduced by the court, I believe, in the initial decision instituted in the IPR.

[00:08:55] Speaker 05:
Can I ask you a question on a different

[00:08:57] Speaker 05:
topic and this would I guess be the wider area topic and not acclaimed construction.

[00:09:04] Speaker 05:
But very specifically about Yoshino.

[00:09:07] Speaker 01:
Yes.

[00:09:08] Speaker 05:
So I'm looking at the Yoshino picture that everybody uses.

[00:09:12] Speaker 05:
It's I guess in fairly large format on page 26 of your brief.

[00:09:17] Speaker 05:
And the green shape, except for the little bit at the bottom, is I think of it as an anvil shape.

[00:09:26] Speaker 05:
Can you tell me anything about whether the functioning of the CCD is affected in some positive or negative way when above the CCD the opening goes straight up as in Takashi or whether it takes this anvil shape of going straight up a little bit and then widens?

[00:09:50] Speaker 05:
Do we know anything about whether that

[00:09:52] Speaker 05:
complicates the working of the CCD, improves it, because presumably maybe some light is coming in at a greater angle or something.

[00:10:01] Speaker 01:
I believe that was the intended purpose.

[00:10:05] Speaker 01:
The openings in Yoshino, the improvement sought by Yoshino was based upon that upper opening of the anvil shape.

[00:10:13] Speaker 01:
Yoshino said, we're having this open tapered

[00:10:18] Speaker 01:
an anvil shape to improve the functioning of the chip, but it did not talk about the opening below the chip as being needing to be wider than that upper opening.

[00:10:29] Speaker 05:
Did you make an argument to the board, so one of the things I guess I'm focused on a little bit, and maybe you can help me out, I think I understand why the opening at the bottom where the chip is being inserted needs to be wider than

[00:10:48] Speaker 05:
the rim that it sits against.

[00:10:50] Speaker 05:
I'm not sure I understand and therefore wider than the piece of the green here that's immediately adjacent to the rim.

[00:11:00] Speaker 05:
I'm not sure why it needs to be wider than the top of the anvil.

[00:11:07] Speaker 05:
Did you make arguments to the board about how it's important to focus on the top of the anvil and not just the part of the anvil that's immediately north of the sensor?

[00:11:19] Speaker 01:
I don't believe so.

[00:11:20] Speaker 01:
I think we focused on the area that's immediately north of the sensor because the reason for the wider bottom area so that the chip locks into the package tightly without any airspace around it.

[00:11:35] Speaker 01:
So it doesn't, it's not a

[00:11:39] Speaker 01:
We're talking about just the area of the opening so if you're looking at We're looking at that narrowest part of the opening for the top part for the top of the chip the top of the package and the There's no taper on the bottom, but just the area of the opening on the bottom So we think those are the most important pieces not the area on the top of the chip

[00:12:05] Speaker 02:
Where does your specification talk about the importance of the bottom opening being wider than the top opening?

[00:12:15] Speaker 01:
It doesn't talk specifically about it being important but it says that the bottom opening should be wider so that it can tightly fit into the package and that is... Is there any reason though why the top opening has to be smaller than the

[00:12:32] Speaker 02:
Bottom opening?

[00:12:32] Speaker 02:
I mean, I understand the bottom opening has to be sufficiently large to allow the chip to be inserted, but why does the top have to be smaller?

[00:12:41] Speaker 01:
Well, if they were the same size, the chip would just slide through the opening, right?

[00:12:47] Speaker 01:
And if the top was larger than the bottom, I guess I can't really understand how necessarily that would work.

[00:12:59] Speaker 01:
if there were this it needs to be wider at the bottom so the chip fits into this little concave or you know this little hole or area.

[00:13:09] Speaker 04:
Correct me if this is wrong but my understanding was that as you say the chip comes in from the bottom and it needs so that the area needs to be larger or wider or whatever but at the top it needs to have some place that you can attach the chip and so the opening is smaller so that you attach around the periphery of the chip isn't that right?

[00:13:29] Speaker 04:
That's right.

[00:13:29] Speaker 01:
Yeah, that's where the leads are connected to the pads, right at the edge of the hole.

[00:13:35] Speaker 04:
So the hole at the top has to be smaller than the hole at the bottom.

[00:13:39] Speaker 05:
Yes, yes, yeah.

[00:13:40] Speaker 05:
You are well into your rebuttal time.

[00:13:42] Speaker 05:
Do you want to continue or you can?

[00:13:45] Speaker 01:
I will reserve the rest of my time for rebuttal.

[00:13:47] Speaker 01:
Thank you.

[00:13:48] Speaker 01:
Thank you.

[00:13:55] Speaker 03:
Thank you, Your Honor.

[00:13:56] Speaker 03:
It's Matthew Smith.

[00:13:58] Speaker 05:
Would you mind starting with the anvil?

[00:14:01] Speaker 03:
Yes, and what specifically about the anvil would you like me to address?

[00:14:04] Speaker 05:
So if you're looking at the anvil, and maybe Mr. Oleschko answered this question already, as I read your expert in particular, he was sort of focused on the top of the anvil and not, let's call it, the bottom of the

[00:14:28] Speaker 05:
the green piece that sits on top of the yellow.

[00:14:30] Speaker 05:
Are we looking at the same thing?

[00:14:32] Speaker 03:
I'm not looking at the colored version, unfortunately.

[00:14:34] Speaker 05:
Oh, yeah.

[00:14:35] Speaker 05:
That was actually a little bit of a problem in one of the briefs.

[00:14:38] Speaker 05:
I see.

[00:14:38] Speaker 05:
Thank you.

[00:14:39] Speaker 05:
Above the CCD, right?

[00:14:40] Speaker 05:
The image sensor, I guess, is the yellow and then the green opening, which is anvil-shaped.

[00:14:49] Speaker 05:
And for reasons I think we just discussed, the bottom portion of that anvil sitting on top of the

[00:14:58] Speaker 05:
the image sensor almost certainly needs to be smaller than the space below it where you're inserting.

[00:15:06] Speaker 05:
I don't understand why the top of this anvil needs to be smaller than the space into which you're inserting the image sensor from the bottom.

[00:15:22] Speaker 03:
The very top of the anvil, I'm not sure I have an answer to that question either, Your Honor.

[00:15:28] Speaker 05:
But the glass sits right on the top of the anvil, and I think that the language that your expert used and I think your petition as well describes that being the top of the package.

[00:15:46] Speaker 03:
The top of the glass, certainly.

[00:15:48] Speaker 05:
Well, the blue part of the package.

[00:15:56] Speaker 05:
And if one therefore focused on the top of the anvil, it's not apparent to me that you can infer anything except from the happenstance of this particular drawing that that top is smaller across than the red arrow at the bottom, which is the opening into which the CCD is inserted from below.

[00:16:23] Speaker 05:
And if your argument therefore depended on that,

[00:16:26] Speaker 05:
Wouldn't we be making more of a drawing than in the patent world we're allowed to make?

[00:16:35] Speaker 03:
I'm not sure the argument does depend on that, Your Honor.

[00:16:38] Speaker 03:
And it's because the relevant opening is at the bottom, I believe, at the bottom of the anvil.

[00:16:46] Speaker 05:
What tells us that that's the relevant opening?

[00:16:50] Speaker 03:
Well, the claim language, just going back to

[00:16:54] Speaker 03:
claim language of the 714.

[00:16:55] Speaker 03:
The 714, that's right, Your Honor.

[00:16:59] Speaker 03:
There is a package having a through-hole therein, openings on both end faces thereof, and different opening areas of said openings, and it's just a question of what the opening is at that point in time.

[00:17:15] Speaker 05:
Right, but if the

[00:17:17] Speaker 05:
blue part of that picture goes all the way up to the top of the anvil, and that's part of the package, which I think the labeling is, then that suggests that we need to look at the horizontal measurement at the top of the anvil.

[00:17:35] Speaker 03:
I see the difference in the way we're thinking about this.

[00:17:38] Speaker 03:
I think the opening can have a third dimension to it.

[00:17:41] Speaker 03:
In other words, it's a volume or a space.

[00:17:44] Speaker 03:
And the relevant part, and I think certainly from the specification of the 714 patent and what it's trying to do as the colloquy in my counterpart's presentation, I thought drew out the opening of the package body above the CCD needs to be a little bit smaller because the leads have to be underneath the package body, right?

[00:18:09] Speaker 03:
And as long as you can have some depth to that opening,

[00:18:13] Speaker 03:
then the narrowest part of the opening fulfills that function.

[00:18:17] Speaker 03:
And I think that's the relevant part of it with the 714 patent.

[00:18:21] Speaker 03:
I think if you strictly say that the opening is a flat surface, then we can get into these kinds of arguments about the anvil being wider at the top or wider at the bottom.

[00:18:33] Speaker 03:
Although it does appear to be narrower from picture one.

[00:18:36] Speaker 03:
In the picture.

[00:18:36] Speaker 03:
In the picture it does.

[00:18:37] Speaker 03:
That's a dangerous thing to do in patent four.

[00:18:39] Speaker 03:
But I think, as I said, from the function of the 714 patent,

[00:18:43] Speaker 03:
the opening where it is immediately above the CCD needs to be narrower because otherwise the leads coming into the package are not going to have any space for the pads on the chip to connect to them from underneath.

[00:18:57] Speaker 03:
So there needs to be some overhang there.

[00:19:00] Speaker 03:
This is also, I think, not an argument that was made below, so you're not gonna have more to find.

[00:19:05] Speaker 04:
When you're looking, at least this is an optical device, so in optics, when you're looking at the aperture,

[00:19:12] Speaker 04:
of a lens or any optical device, you would look at typically the narrowest point at which there is clear passage of light, would you not?

[00:19:25] Speaker 03:
That would be the part that would restrict the light, correct?

[00:19:27] Speaker 03:
The package body here is not transparent, as I understand it, and so it is

[00:19:33] Speaker 03:
having the effect of blocking light on the side from hitting circuits you're not supposed to hit.

[00:19:39] Speaker 04:
Circuits aren't photo-dials that might... So if that's the right way to look at this, then actually, if you think of this opening as the aperture of the device, then the aperture, at least in the optical art, would seem to me to be not the width of the green

[00:20:03] Speaker 04:
space below the bottom of the anvil, but right at the point at which the anvil comes to a point just above the lead.

[00:20:15] Speaker 04:
Would that not be the opening that's pertinent here?

[00:20:19] Speaker 04:
You see what I'm talking about?

[00:20:20] Speaker 04:
In other words, you could actually think of this green space as having three different dimensions.

[00:20:27] Speaker 04:
One, the dimension at the very top, underneath the glass.

[00:20:32] Speaker 04:
the dimension at the very bottom just above the chip, and three, the area where the package comes to its smallest dimension.

[00:20:44] Speaker 03:
I think that's correct, Judge Bryson, and if you look at it in plan view and turn it around in the figure, look at the light that would project through what you would see is the smallest opening at the bottom.

[00:20:55] Speaker 04:
Now, it's true that the very bottom is not, I guess, part of the blue package,

[00:21:02] Speaker 04:
still the bottom of the blue package is the place where the aperture is the smallest, right?

[00:21:08] Speaker 03:
Yes, that is correct.

[00:21:11] Speaker 03:
I do just want to mention that of course we'll be splitting time with the government.

[00:21:15] Speaker 03:
The government intervened on constitutional issues.

[00:21:17] Speaker 03:
The government's attorney will address those.

[00:21:20] Speaker 03:
I do want to talk quickly about the secured via an adhesive limitation because it's not particularly clear what the relevant construction is

[00:21:31] Speaker 03:
I don't think it's an issue about adhesive versus glue.

[00:21:35] Speaker 03:
I think the real issue is about secured by an adhesive, which in the device claims I think is a structural limitation versus a process limitation.

[00:21:46] Speaker 03:
In other words, Collabo's intent in construing secured by an adhesive as gluing was to introduce a process limitation into the claims, which makes less sense in the device claims.

[00:22:01] Speaker 03:
change that process limitation into a negative process limitation, which would exclude injection molding.

[00:22:08] Speaker 03:
And I think the board was correct to reject that sort of torturous construction for a number of reasons.

[00:22:16] Speaker 03:
Certainly in the device claims, it's awkward to read in a process limitation, and particularly a negative one.

[00:22:23] Speaker 03:
The board, I think, was correct.

[00:22:25] Speaker 03:
And let me address the question of reading in embodiments and whether this is all

[00:22:31] Speaker 03:
I don't actually think it is all embodiments.

[00:22:35] Speaker 03:
In column two of the 714 patent, in the disclosure of the invention, there are actually a recitation of a number of embodiments that don't even talk about securing via an adhesive, which seems to indicate that the other steps of the processes or the other parts of the package where we're talking about the wider or smaller opening areas

[00:22:56] Speaker 03:
were just the more important ones and the adding secured by an adhesive was maybe an embodiment that was intended to be originally in a dependent claim or something like that.

[00:23:08] Speaker 03:
But when you take that a step farther and say what gluing actually means, what's really important in this construction is that gluing excludes the process of applying the adhesive or applying the glue, there's really no support at all for that in the specification.

[00:23:26] Speaker 03:
What Dr. Aframovitz originally said was that because the packaged body, which in Yoshino would be that blue part you were referring to, which is something separate than the back part of the chip where the adhesive would be applied, is made by injection molding.

[00:23:42] Speaker 03:
That means that another part of the chip cannot be made by injection molding, presumably because had the inventors wanted to say that, they would have said that.

[00:23:50] Speaker 03:
But there's just no case law support, I think, for saying that because a technique is mentioned in the specification with respect to one component, it is therefore excluded for all other components that don't mention that technique in the specification.

[00:24:06] Speaker 03:
And you also have, I think, the issue that the 714 patent itself applies the adhesive by injection.

[00:24:15] Speaker 03:
If you read the detailed embodiments that are related to the cross-sectional figures

[00:24:20] Speaker 03:
When it talks about applying the adhesive, it's saying it's injecting the adhesive.

[00:24:25] Speaker 03:
And I think that's important because one of Dr. Aframovic's reasons for saying injection molding would be excluded from the scope of the claims here is that the force of the injection could disturb some of the electrical bonds, particularly if they were wire bonds, and that the force of the glue or the adhesive coming in could move some of those wires in a detrimental way.

[00:24:48] Speaker 03:
But the 714 patent is injecting that adhesive as well.

[00:24:52] Speaker 03:
So now you'd be getting into things like what is the force of the injection.

[00:24:55] Speaker 03:
There's just no record on that anywhere.

[00:24:58] Speaker 05:
The... I think you've gone over your time.

[00:25:03] Speaker 05:
Do you have anything else?

[00:25:04] Speaker 05:
I do have one quick question for you if you happen to know.

[00:25:08] Speaker 05:
Either the Fuji or Onishi references that played bit rolls here.

[00:25:16] Speaker 05:
Or were they like Takashi considered during the original prosecution?

[00:25:22] Speaker 05:
I can see Takashi was, but... I don't know that, Your Honor.

[00:25:25] Speaker 03:
I apologize.

[00:25:26] Speaker 05:
I don't see that the numbers are lining up, but I'm not sure I know how to read the numbers from the Japanese.

[00:25:34] Speaker 03:
I just don't know that fact, Your Honor.

[00:25:36] Speaker 03:
Sorry about that.

[00:25:37] Speaker 03:
Thank you.

[00:25:43] Speaker 00:
Ms.

[00:25:44] Speaker 00:
Allen.

[00:25:46] Speaker 00:
Thank you and may it please the court.

[00:25:47] Speaker 00:
Katherine Allen on behalf of the PTO.

[00:25:49] Speaker 00:
We intervene to address the constitutional issues.

[00:25:52] Speaker 00:
As explained in our briefs, we think the challenges are forfeited and the premise is wrong because this case doesn't involve a retroactive application of the law at all.

[00:26:01] Speaker 05:
Can I ask you about the forfeit question to begin with?

[00:26:05] Speaker 05:
Isn't there a body of law founded in at least one Supreme Court case?

[00:26:10] Speaker 05:
Johnson against Robeson or something that says an agency is not allowed to

[00:26:17] Speaker 05:
declare its statute unconstitutional.

[00:26:20] Speaker 05:
So what exactly is the point in making the argument to the agency?

[00:26:25] Speaker 05:
The agency has to say, sorry, no can do.

[00:26:28] Speaker 00:
Yes, there is a series of cases from the 1970s in which the Supreme Court, in addressing particular statutory schemes, said that a party didn't have to raise a constitutional challenge before the agency in order to properly exhaust its claims.

[00:26:45] Speaker 00:
the court's reasoning was that it would have been futile to do so.

[00:26:49] Speaker 00:
You know, the court has in this case is not that case because here it wouldn't have been futile to raise these arguments before the agency.

[00:26:56] Speaker 00:
And moreover, the Supreme Court has recognized.

[00:26:58] Speaker 05:
So if it wouldn't have been futile, then what would have happened to to benefit the patent owner making the argument?

[00:27:09] Speaker 00:
Sure.

[00:27:09] Speaker 00:
Well, Your Honor, if the if the patent owner had argued non-institution,

[00:27:13] Speaker 00:
Exactly, Your Honor.

[00:27:15] Speaker 00:
Nothing in the statute requires the Board to institute inter-parties review proceedings.

[00:27:19] Speaker 00:
If the Board agreed with the argument that applying inter-parties review to a patent that issued prior to the AAA was unconstitutional, then the Board could have declined to institute.

[00:27:28] Speaker 00:
And also, I would just point out that the Supreme Court in Thunder Basin and in Elgin versus Department of Treasury has recognized that the general rule you are referring to is not mandatory and

[00:27:41] Speaker 00:
In Elgin, the court also recognized that there are important systemic reasons to require litigants to raise issues before the agency because an agency, even if it would be futile, the agency could still apply its expertise to the statute that's at issue and to threshold questions that could aid a court in addressing the constitutional issue later.

[00:28:03] Speaker 00:
In addition to our forfeiture arguments, just to turn to the merits, we think that application of inter-parties review to a patent that issued before the AA was passed

[00:28:11] Speaker 00:
is plainly constitutional under this court's decision in Patlex.

[00:28:15] Speaker 00:
Congress had a rational basis for applying Interpartet's review to all patents in existence when the AAA was passed to correct agency mistakes and to protect the public interest in keeping patents within their legitimate scope.

[00:28:26] Speaker 00:
And moreover, I think the really key point here is that when this patent was issued, it was subject to agency reconsideration in the form of ex parte re-examination, and Interpartet's review is simply

[00:28:37] Speaker 00:
a different procedure for agency reconsideration.

[00:28:40] Speaker 05:
That's true for IPRs for patents issued at least after 2002, but maybe for almost all patents back to 1981, which I think was the effective date of the ex parte re-exam.

[00:28:57] Speaker 05:
That's correct, Turner.

[00:28:58] Speaker 05:
One of the reasons I asked the question about Fuji is that I think it doesn't change with respect to this 1999 patent because the

[00:29:06] Speaker 05:
X-party re-exam was broadened in 2002.

[00:29:09] Speaker 05:
That would not be true in a different case that is a non-IPR case, a CBM case.

[00:29:19] Speaker 05:
Sorry, could you rephrase the question?

[00:29:21] Speaker 05:
A CBM case, which we don't have here, allows reconsideration on grounds that until 2011 were never allowed to be the subject of reconsideration.

[00:29:32] Speaker 05:
That's correct, Your Honor.

[00:29:33] Speaker 05:
But IPRs, same grounds, same burden of proof.

[00:29:36] Speaker 00:
Yes, Your Honor.

[00:29:38] Speaker 00:
if there are no further questions.

[00:29:54] Speaker 01:
Thank you.

[00:29:59] Speaker 01:
Thank you.

[00:30:00] Speaker 01:
I just have a few points to make.

[00:30:02] Speaker 01:
First, with respect to the openings on the chip and the wider area limitation,

[00:30:07] Speaker 01:
The reason the patent says for the openings being wider at the bottom or larger, it says in column two, lines 31 through 33, the CCD chip can be mounted from the opening having the wider opening area and thereby shutting the through hole tightly.

[00:30:25] Speaker 01:
So we're talking about light here getting only on the photosensitive elements of the chip and not others, directing light to that area.

[00:30:34] Speaker 01:
And as counsel noted,

[00:30:36] Speaker 01:
The light will only shine at that narrowest portion of the top hole.

[00:30:40] Speaker 01:
So that's what I think we're really talking about here.

[00:30:53] Speaker 01:
With respect to the adhesive limitation, we're not trying to impose a negative process limitation on the claims with respect to the adhesive limitation.

[00:31:06] Speaker 01:
We're just trying to say that the adhesive itself needs to be an adhesive that's applied on the sides of the chip.

[00:31:11] Speaker 01:
That's where the adhesive needs to be located on these claims.

[00:31:15] Speaker 01:
So the securing adhesive needs to happen at that location.

[00:31:19] Speaker 01:
The board actually never addressed what the securing part of the limitation meant.

[00:31:24] Speaker 01:
It only addressed its thoughts about what an adhesive is.

[00:31:29] Speaker 01:
And that's really the key here.

[00:31:30] Speaker 01:
How are you securing

[00:31:32] Speaker 02:
for a construction of that full limitation focusing on securing?

[00:31:36] Speaker 01:
Yes, we asked for the construction of the full limitation securing the adhesive.

[00:31:41] Speaker 01:
The board only addressed the plain and ordinary meaning of adhesive.

[00:31:47] Speaker 01:
So it's not about the process.

[00:31:49] Speaker 01:
The process is informative, but with the respect to the apparatus claims, we're really looking at where is the glue on the chip or where is the adhesive placed on the chip.

[00:32:01] Speaker 01:
And if it's an injection mold, you can't have the precise positioning of the chip and use the press fit jig to keep the chip in place while you're positioning it from the front.

[00:32:18] Speaker 01:
Council noted that the patent applies adhesive using injection.

[00:32:25] Speaker 01:
Well, that's true, but the 714 patent

[00:32:30] Speaker 01:
injects the adhesive while it's being held in place with a press fit jig.

[00:32:35] Speaker 01:
So you're not going to have any movement of the chip caused by the injection of the glue on the sides of the chip.

[00:32:42] Speaker 01:
Whereas with a molded injection mold, you will have movement of the chip caused by the mold, because the mold is fixed, and you're going to inject the adhesive in there, and it's going to put pressure on the chip and move things around, as our expert explained.

[00:32:57] Speaker 01:
And I don't think it's disputed.

[00:33:00] Speaker 01:
Jumping to the government's arguments, with respect to forfeiture, she referred to some 1970s cases saying that the board doesn't have authority to address the constitutionality of statutes.

[00:33:18] Speaker 01:
But it's actually, there's a 2003 case saying that agencies do not ordinarily have jurisdiction to pass on the constitutionality of federal statutes.

[00:33:27] Speaker 01:
That's from the D.C.

[00:33:28] Speaker 01:
Circuit, not from

[00:33:29] Speaker 01:
the United States Supreme Court, but it's a well-established rule and it would have been futile to raise it below because the board doesn't have discretion to deny an IPR on the basis of a constitutionality issue.

[00:33:42] Speaker 01:
The Congress said to the board that it had to apply the IPR statute to all patents and to operate under that statutory mandate, it had to institute the IPR on a basis under 102 or 103.

[00:33:57] Speaker 05:
On the merits of the point, how is it that there is either retroactivity or unconstitutional retroactivity for the internal procedures for reconsideration on the same grounds with the same burden of proof to have been introduced as existed for this patent at the very time it was issued?

[00:34:28] Speaker 01:
Well, Congress made it clear that the IPR statute was going to apply retroactively to all patents, no matter when they were issued.

[00:34:36] Speaker 05:
So whether or not... Right, but I'm talking about the land graph line about procedure, and I understand that that might in fact not apply if the burden of proof changes, because typically burdens of proof are viewed as substantive and not procedural.

[00:34:49] Speaker 05:
But no change in the burden of proof for this, and no change in the 102, 103 grounds that were available under 301.

[00:34:58] Speaker 01:
That's right.

[00:34:59] Speaker 01:
There's no change in the burden of proof.

[00:35:01] Speaker 01:
The grounds are the same, but Landgraf did not suggest that concerns about retroactivity have no application to procedural rules.

[00:35:09] Speaker 01:
And here, while the, you know, the grounds may be similar and the burden of proof may be similar, it's not like the Congress just tweaked the procedures for prosecution, which is really what happened when they created inter partes re-examination.

[00:35:27] Speaker 01:
They're just tweaking the process of reexamination, ex parte reexamination.

[00:35:33] Speaker 01:
They're just tweaking the procedures for examination to allow them to apply to patents after they were issued.

[00:35:39] Speaker 01:
Here, we're not in a prosecution stance, where we're dealing with an examiner.

[00:35:44] Speaker 01:
We don't have opportunities to appeal the board's decision internally.

[00:35:50] Speaker 01:
There's no non-final written decision.

[00:35:53] Speaker 01:
There's no interviews.

[00:35:55] Speaker 01:
There's only a single opportunity to defend your patent.

[00:36:00] Speaker 01:
There's only a single opportunity to amend.

[00:36:03] Speaker 01:
There's no amendments after final.

[00:36:04] Speaker 01:
There's importantly no de novo review of the decision by district court like there was with inter-party re-examination.

[00:36:12] Speaker 01:
So those are substantive.

[00:36:16] Speaker 01:
Those are procedures, but they were procedures that Colavo and the patentee expected to be in place when the patent issue

[00:36:26] Speaker 01:
I believe I might be done with my time.

[00:36:28] Speaker 05:
And then some.

[00:36:30] Speaker 05:
Thank you very much.

[00:36:32] Speaker 05:
I expect to see you shortly.