[00:00:01] Speaker 02:
Okay, our next case this morning is number 20-2261, Niccia Corporation versus document security systems.

[00:00:14] Speaker 02:
Okay, Mr. Macon.

[00:00:17] Speaker 02:
May I remove the mask?

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

[00:00:24] Speaker 01:
May it please the court, Thomas Macon of Sherman and Sterling on behalf of Appellant Niccia.

[00:00:30] Speaker 01:
Nichi appeals from an IPR final written decision in which the Patent Trial and Appeal Board found certain claims of the 087 patent not unpatentable over LED related prior art to Takanaka and Okazaki.

[00:00:44] Speaker 01:
With respect to Takanaka, the board found claims one and six to eight unpatentable, but found the remaining claims not unpatentable based on both the claim construction error and a wooden refusal

[00:00:57] Speaker 01:
to follow the internal cross-references within Nichia's petition.

[00:01:01] Speaker 01:
With respect to Okizaki, the board wrongly found that the references figures, which clearly show the required cavities, are trumped by the particular nomenclature and purpose ascribed to them by Okizaki.

[00:01:14] Speaker 01:
Unless the panel has a preference, I'd like to start with Takenaka.

[00:01:21] Speaker 01:
The board found claims one and six to eight

[00:01:24] Speaker 01:
unpatentable over Takanaka and another LED prior art reference, Kyowa, and the remainder of the claims not unpatentable.

[00:01:33] Speaker 01:
But the evidence, including unrebutted expert testimony of Dr. Shealy, shows there to be no credible dispute that Takanaka and Kyowa render obvious the appealed claims.

[00:01:44] Speaker 01:
The board made its determination despite no separate argument from appellee DSS and without raising any issues prior to final written decision.

[00:01:53] Speaker 01:
The decision rests on two legal errors.

[00:01:56] Speaker 01:
First, the board, without argument from patent owner, found claim nine's preamble to be limited.

[00:02:04] Speaker 01:
Second, the board found Nietzsche's internal cross-referencing in his petition to be insufficiently particular.

[00:02:10] Speaker 04:
Counsel, you talked in your brief about how a preamble within a preamble should not be limiting.

[00:02:19] Speaker 04:
It seems to me that whether you've got a preamble or a preamble within a preamble, the same law should apply for determining whether that preamble should have weight or not.

[00:02:30] Speaker 04:
Do you agree with that?

[00:02:31] Speaker 01:
I do agree with that.

[00:02:32] Speaker 01:
I think a preamble's purpose is to give context for what's being described in the body.

[00:02:37] Speaker 01:
As explained in Art of Cat, 919, F3rd, 1320.

[00:02:41] Speaker 01:
Preambles are non-limiting when the body recites a structurally complete invention.

[00:02:47] Speaker 01:
I think DSS has admitted the general rule is that they're non-limiting.

[00:02:51] Speaker 01:
And if you look at the guideposts in Catalina Marketing, you look at where the preamble is essential, where it provides antecedent basis, was used to avoid prior art.

[00:03:00] Speaker 01:
And here the evidence, including unrebutted expert testimony, shows the preamble should not be limited.

[00:03:06] Speaker 01:
Body structural complete.

[00:03:08] Speaker 01:
The preamble provides no antecedent basis.

[00:03:10] Speaker 01:
And the preamble, according to the expert, doesn't breathe life and meaning into the claim.

[00:03:15] Speaker 04:
The board's reasoning seems to be... The preamble, according to the expert, doesn't breathe life and meaning into the claim?

[00:03:23] Speaker 01:
In other words, an expert looked at the claim.

[00:03:26] Speaker 04:
Don't you look at whether it breathes life and body in the claim?

[00:03:28] Speaker 04:
One of the things you could look at is whether it provides antecedent basis.

[00:03:32] Speaker 04:
It's not necessarily required to have an expert opine on that, right?

[00:03:37] Speaker 01:
In other words, you don't need an expert to say that.

[00:03:39] Speaker 01:
I agree with that.

[00:03:40] Speaker 01:
I agree with that.

[00:03:42] Speaker 01:
The board's reasoning seemed to be they looked at only the first three words as being non-limiting.

[00:03:47] Speaker 01:
Part of it was this failure to recognize that you could have the word comprising twice.

[00:03:52] Speaker 01:
But it was also, I think, relying too heavily on the first instance of the word comprising.

[00:03:57] Speaker 01:
And an emphasis that Appellee sort of seized on in their brief when they inserted a non-existent colon right after the first comprising.

[00:04:06] Speaker 01:
There's only one colon in this preamble if you're just looking at its structure, where it usually is, at the end setting it off from the body of the claim.

[00:04:20] Speaker 01:
The second Takanaka issue relates to the board's treatment of the internal cross-referencing in Nietzsche's petition with respect to claims 9 and 15.

[00:04:28] Speaker 01:
And this is not a dispute about the prior art.

[00:04:31] Speaker 01:
Pat and owner never argued that claims 9's preamble was absent from the art.

[00:04:35] Speaker 04:
Where is it that you say that Takanaka teaches plastic?

[00:04:41] Speaker 01:
So we explain with respect to claim one and the limitation that the table shows you to look at that Takanaka's reflector housing is resin.

[00:04:52] Speaker 04:
Where is it?

[00:05:08] Speaker 01:
160 to 161 of the appendix, Your Honor.

[00:05:21] Speaker 01:
And resin is known to be a plastic.

[00:05:23] Speaker 01:
And in fact, resin and plastic are equated earlier in the Okazaki grounds, Your Honor.

[00:05:34] Speaker 01:
The petition basically set forth specific analysis and the evidence early in the document, and then referred back to it thereafter.

[00:05:41] Speaker 01:
And the overly rigid view the board took seems contrary to this court's prior decisions.

[00:05:47] Speaker 03:
For example... This argument applies to the electrical connection limitation?

[00:05:52] Speaker 01:
This applies to both the electrical connection limitation of Claim 15 and to the extent plastic is found to be limiting in the preamble of Claim 9.

[00:06:02] Speaker 03:
uh... for example in sierra he's to me that you are going to question court make arguments for you just by referring back it relies on us to to connect the dots for you and you're the one that should be connecting the dots to begin with so i agree that i should be connecting the dots i think it couldn't be more clear at appendix one seventy seven in the petition it states this is discussing claim fifteen attack an act exemplary

[00:06:29] Speaker 01:
The differences between claim 15 and claim 1 are discussed in section 6B9.

[00:06:34] Speaker 01:
6B9 is not some giant section.

[00:06:37] Speaker 01:
It's a specific reference to the petition's discussion of Okazaki and claim 15.

[00:06:42] Speaker 01:
And in this reference discussion is a table, an extremely clear table, at appendix 151 to 152.

[00:06:48] Speaker 04:
But this is one thing I want to point out.

[00:06:51] Speaker ?:
Yes.

[00:06:53] Speaker 04:
The discussion on page 177 is for Takanaka.

[00:06:57] Speaker 04:
And you're referring back to a discussion that involves completely different priorities, right?

[00:07:02] Speaker 01:
So with respect to the table showing how you line up which portion of claim one with which portion of claim 15, that's correct.

[00:07:09] Speaker 01:
With respect to teaching the disclosure, absolutely not.

[00:07:12] Speaker 01:
That's taught in the section regarding Takanaka and claim one.

[00:07:16] Speaker 04:
So your view is that claim one also requires plastic.

[00:07:20] Speaker 04:
It's just in a different element of the claim.

[00:07:22] Speaker 04:
Was that true of you?

[00:07:24] Speaker 01:
With respect to claim 9 and the plastic limitation, it is correct that in claim 1, it discusses that the reflector housing is resin.

[00:07:34] Speaker 01:
And then claim 9, when discussing limitation 9B, which lines up in the table to 1B, you just look back at the discussion of 1B.

[00:07:44] Speaker 01:
It says the reflector housing is plastic.

[00:07:47] Speaker 01:
With respect to claim 15, where you're talking about the electrical connection,

[00:07:51] Speaker 01:
Limitation 15C is shown on the table to line up to 1D.

[00:07:55] Speaker 01:
1D is the LED mounted, and 15C is the LED mounted and electrically connected.

[00:08:01] Speaker 01:
And the proof in Takenaka Claim 1 of the petition for the electrically connected, for example, is that the way it's mounted is by being mechanically and electrically connected.

[00:08:12] Speaker 01:
In fact, when the board describes an appendix 14 and 15, Takenaka, it quotes the salient portion

[00:08:20] Speaker 01:
saying that the LED is electrically connected to the lead ring.

[00:08:25] Speaker 01:
There's simply no dispute with respect to claim 15.

[00:08:28] Speaker 01:
It's almost ridiculous.

[00:08:30] Speaker 01:
Of course the LED is electrically connected to the leads.

[00:08:33] Speaker 01:
DSF never disputes it.

[00:08:34] Speaker 01:
And as I say, the board at 14 and 15 literally quotes Takanak as saying it.

[00:08:39] Speaker 01:
Figure 1 shows.

[00:08:40] Speaker 04:
I have a question for you.

[00:08:41] Speaker 04:
I don't see where, and I could be missing it, but where does claim 1 compare to claim 9 and say that claim 1 has plastic or resin?

[00:08:50] Speaker 01:
So with respect to Okazaki and claim 9.

[00:08:54] Speaker 04:
I'm looking at pages A143 to 144, which includes your comparison of claim 1 and claim 9, which is what you're relying on.

[00:09:03] Speaker 04:
You're saying that on page A177 that it talks about the differences between claim 15 and claim 1.

[00:09:11] Speaker 04:
I just want to know where it is.

[00:09:12] Speaker 04:
I didn't think claim 1 actually recited either resin or plastic.

[00:09:17] Speaker 04:
And I want you to tell me why I'm wrong.

[00:09:20] Speaker 01:
So with respect to claim nine, and you pointed me to appendix 143 and 144, the table shows which limitations of claim nine match up to limitations of claim one.

[00:09:30] Speaker 01:
There's a similar one for claim 15 in the Sokosaki section.

[00:09:33] Speaker 02:
Yeah, but I think that's still a question, is where does claim one talk about resin?

[00:09:37] Speaker 02:
Oh, I'm sorry.

[00:09:38] Speaker 02:
It doesn't mention plastic, but where does it say resin?

[00:09:46] Speaker 01:
That's right.

[00:09:46] Speaker 01:
So in the Takenaka section,

[00:09:50] Speaker 02:
Just the language of Claim 1.

[00:09:57] Speaker 01:
One second, Your Honor.

[00:10:12] Speaker 01:
So in the Claim 9 section regarding Okazaki, it lines up the two reflector housing limitations, 9B and 1B.

[00:10:18] Speaker 01:
and in the Okazaki discussion of 1B.

[00:10:22] Speaker 02:
Where is it in claim 1 that it talks about resin?

[00:10:28] Speaker 02:
I don't see that there's any resin language in claim 1.

[00:10:37] Speaker 01:
It's appendix 160 to 161, Your Honor, in the Okazaki section.

[00:10:43] Speaker 02:
I'm looking at the claim language on 106.

[00:10:46] Speaker 02:
Here's claim 1.

[00:10:47] Speaker 02:
Where does it talk about resin?

[00:10:50] Speaker 01:
So resin does not show up in claim nine, if that's the question.

[00:10:53] Speaker 02:
No, the question is whether it shows up in claim one.

[00:10:56] Speaker 01:
It does not.

[00:10:59] Speaker 01:
The problem.

[00:11:01] Speaker 01:
So I don't think it's a problem, with all due respect, in the Okazaki section at the beginning of the brief to say, this is how I'm going to compare claim nine to claim one and claim 15 to claim one, and then use that as the guidepost for the rest of the brief.

[00:11:15] Speaker 04:
The problem is that claim, even if you do that comparison,

[00:11:19] Speaker 04:
you're still missing a claim element, which is plastic.

[00:11:23] Speaker 04:
It might be an obvious claim element, but it's still a claim element that's in claim nine and not claim one.

[00:11:28] Speaker 04:
So comparing claim one to claim nine and saying, well, that's enough, is a little bit difficult when claim nine has a limitation that claim one lacks.

[00:11:39] Speaker 04:
And that's the very limitation the board found that you didn't identify anything specifically in Takanaka for teaching that limit.

[00:11:49] Speaker 01:
It's my view that saying that 9B lines up with 1B, and you look at the 1B discussion of Takanaka, and it calls the reflector housing plastic, that should be enough.

[00:12:00] Speaker 04:
But I look at element 9, and where the plastic is recited is in the preamble.

[00:12:08] Speaker 01:
I agree.

[00:12:08] Speaker 01:
I agree with that.

[00:12:14] Speaker 01:
I'd like briefly to turn to Okazaki, if I may.

[00:12:17] Speaker 01:
The board found Okazaki allegedly doesn't disclose two pockets or cavities.

[00:12:22] Speaker 01:
But this conclusion is not supported by substantial evidence, given that the board relies only on legally irrelevant expert testimony and ignores overwhelming contrary evidence.

[00:12:34] Speaker 04:
Didn't the board look at the two experts' testimony, one saying this is just a funnel and therefore it's not two cavities, and said that that testimony seemed more plausible and more credible to them?

[00:12:47] Speaker 01:
So with all due respect, I think that's not what they said.

[00:12:50] Speaker 01:
In fact, their expert, Mr. Crudel, admitted that Okazaki teaches an hourglass, that's Appendix 1047, with one portion above and one portion below the lead frame.

[00:13:01] Speaker 01:
And that's at Appendix 839.

[00:13:03] Speaker 01:
So not a funnel at all.

[00:13:05] Speaker 01:
What the board pointed to, whether you think it's

[00:13:08] Speaker 01:
they pointed to it substantively, or to find one expert more believable than the other, was just improper.

[00:13:15] Speaker 01:
They pointed to the fact that Okazaki referred to its two cavities as a single structure, that it called the structure as a tubular vessel instead of a cavity, and that its purpose was allegedly different.

[00:13:26] Speaker 01:
But a single structure can meet two limitations.

[00:13:30] Speaker 03:
Didn't the board resolve this issue based on credibility determination of the experts?

[00:13:36] Speaker 01:
So to the extent they did that, they only did it.

[00:13:38] Speaker 03:
They did do that, right?

[00:13:40] Speaker 01:
It was a little hard for me to tell, but to the extent they did it, they did it based on the fact that their expert quite rightly said what the purpose was of the prior art, what it called the prior art, and the fact that it called it a single structure, none of which should matter.

[00:13:53] Speaker 01:
The particular nomenclature shouldn't matter.

[00:13:54] Speaker 01:
We don't apply an ipsis and misverbis test.

[00:13:57] Speaker 01:
The purpose, you can't read a purpose into the structural plan of imitation.

[00:14:01] Speaker 01:
That seems improper and effective.

[00:14:03] Speaker 01:
The only way the board really could have found Okazaki not to disclose two cavities is to have been influenced by DSS's proposed and rejected claim construction, that a cavity has to be enclosed on all sides but one.

[00:14:15] Speaker 01:
That would explain the focus on the hole between the two cavities and why they would even cite to an expert deck, given the expert and DSS both said you can't find a cavity without having their claim construction in mind.

[00:14:27] Speaker 01:
In actual fact, the patent spec

[00:14:29] Speaker 01:
says that a cavity can be open on three sides, for example, compartments 52, figure 2.

[00:14:35] Speaker 01:
And the SS expert admitted that the tubular vessel in Okazaki was a single cavity.

[00:14:41] Speaker 01:
But that's open on both ends.

[00:14:43] Speaker 01:
The board's announced claim construction requires no property of a cavity other than it be of such a shape.

[00:14:49] Speaker 01:
Okazaki's figures plainly show two cavities.

[00:14:52] Speaker 01:
And whether and how Okazaki labels those two cavities doesn't change what the figures show.

[00:14:57] Speaker 01:
And I think I'm well into my

[00:15:00] Speaker 02:
I will give you two minutes.

[00:15:05] Speaker 02:
Okay, Mr. Kroger.

[00:15:20] Speaker 00:
May it please the Court, Paul Kroger for Respondent Below and Appellee Cross-Supponent Document Security Systems.

[00:15:28] Speaker 02:
Let me ask you about this electrically connected thing.

[00:15:31] Speaker 02:
I'm having a very hard time understanding this.

[00:15:35] Speaker 02:
I mean, lights don't work unless they're electrically connected.

[00:15:38] Speaker 02:
They seem necessarily to be inherent in a light pattern that they're electrically connected.

[00:15:45] Speaker 02:
And the expert testimony at 397 says that they're electrically connected.

[00:15:53] Speaker 02:
That's the way things work.

[00:15:55] Speaker 02:
And the board itself cites the trial practice guide, which cites KS HMP, that you can have a

[00:16:10] Speaker 02:
Common sense supplies something that's evidently and indisputably within the common knowledge of that is skilled in the art.

[00:16:16] Speaker 02:
I don't know how something's not within the common knowledge when you have a light and the common knowledge is that lights work because they're electrically connected.

[00:16:28] Speaker 02:
I mean, this seems to be bizarre.

[00:16:34] Speaker 00:
I would just point the court back to its own decision in Magnum Oil.

[00:16:37] Speaker 00:
We're here to review

[00:16:38] Speaker 00:
The arguments raised in the petition, not the arguments.

[00:16:41] Speaker 02:
Well, they raised that in the petition.

[00:16:43] Speaker 02:
They cited, they quoted their expert who said that people would know that this is electrically connected.

[00:16:49] Speaker 02:
Do you dispute that the light can't work if it's not electrically connected?

[00:16:54] Speaker 02:
Do you argue that?

[00:16:55] Speaker 00:
I dispute, the only thing I dispute, your honor, is whether or not it was raised with respect to claim 15.

[00:17:00] Speaker 00:
And that's sort of the issue here.

[00:17:03] Speaker 02:
the borderline something they decided their expert testimony in the petition with respect to clinton the expert did not say this was inherent or what he said is he said everybody knows the lights are what we can actually said it was insubstantial that was the actual work he was in his declaration that was insubstantial nobody has he uses those words but he says if you look at three ninety seven he says uh... uh...

[00:17:28] Speaker 02:
Oppose the reading claim 15 would have known that LED dies should be electrically connected to the leads.

[00:17:34] Speaker 02:
This would have been the conventional means for powering LED dies.

[00:17:38] Speaker 02:
I mean, you know.

[00:17:42] Speaker 02:
What's inadequate about that?

[00:17:44] Speaker 02:
It's not as though they ignored the issue.

[00:17:46] Speaker 02:
You were saying that was an appendix 397, Your Honor?

[00:17:49] Speaker 02:
Yeah.

[00:17:51] Speaker 02:
And that's cited in the petition, quoted in the petition.

[00:17:57] Speaker 00:
In paragraph 233, he says, it is my opinion that the fourth difference is insubstantial because a posita would have known the LED dies should be electrically connected to the leads, as this would have been the conventional means for powering the LED dies.

[00:18:11] Speaker 00:
He does not cite any factual support for that.

[00:18:16] Speaker 02:
He says that that's the way lights work.

[00:18:19] Speaker 02:
Is there any question about that?

[00:18:21] Speaker 02:
To the extent there was support in

[00:18:25] Speaker 02:
Is there any question about that?

[00:18:27] Speaker 02:
Lights have to be electrically connected to work, right?

[00:18:31] Speaker 02:
The Code of Federal Regulations says that... No, no, you're not answering my question.

[00:18:36] Speaker 02:
Lights have to be electrically connected to work, right?

[00:18:44] Speaker 00:
I do not believe the petitioner made the submission in the record... Please answer my question.

[00:18:52] Speaker 02:
Is it not the case that lights don't work if they're not electrically connected?

[00:19:06] Speaker 00:
So again, the issue here is no, no, answer the question.

[00:19:12] Speaker 00:
I think the problem here is, Your Honor, that the answer to that question is not in the record, respectfully.

[00:19:17] Speaker 02:
But everybody knows that lights don't work if they're not electrically connected.

[00:19:23] Speaker 02:
Is there any doubt about that?

[00:19:26] Speaker 00:
And if it were so cut and dry, I believe that the board would have recognized this and would have been able to credit the experts.

[00:19:34] Speaker 02:
Maybe if it were so cut and dry, the board should have recognized that instead of being so mechanical about it.

[00:19:40] Speaker 00:
Unfortunately, your IPRs are a mechanical process.

[00:19:43] Speaker 00:
We're here to analyze the arguments raised in the petition and nothing else.

[00:19:47] Speaker 04:
If they cite... Why isn't the language in the petition at JA 179 sufficient to give the board, particularly point out what the petitioner's view was on this claim limitation?

[00:20:05] Speaker 00:
What we have here is, and they say they cross-referenced, and I'm sorry, can you give me the appendix site for that?

[00:20:11] Speaker 04:
You have it?

[00:20:13] Speaker 00:
179.

[00:20:13] Speaker 00:
179, thank you.

[00:20:24] Speaker 00:
And again, the board found that they simply, essentially said this was insubstantial, so they didn't need to show that it was present in the prior art.

[00:20:33] Speaker 04:
But they said more than just, it's insubstantial.

[00:20:36] Speaker 04:
They said more than that.

[00:20:38] Speaker 04:
They said everything that Judge Jeit just read to you.

[00:20:40] Speaker 00:
Yes, and I believe the board was, and they were citing back to the same declaration of Dr. Shealy that we just looked at, where Dr. Shealy said essentially the exact same thing with no factual support.

[00:20:53] Speaker 02:
What do you mean no factual support?

[00:20:55] Speaker 02:
He says everybody knows this.

[00:20:57] Speaker 02:
That's factual support.

[00:20:59] Speaker 02:
I mean, you can't even stand there and say that he's wrong.

[00:21:03] Speaker 02:
Everybody knows that lights are connected to electricity.

[00:21:06] Speaker 04:
Well, he's not a person born in your scale in the earth, but he's an expert in this area.

[00:21:11] Speaker 04:
So why can't he use his own life experiences to understand the basic point that the LEDs have to be electrically connected in order to work?

[00:21:22] Speaker 00:
Because that's what 37 CFR 42.65A, as well as what this court's holding in in rain evasive says, that if you don't have factual support... Why isn't the experts view factual support?

[00:21:40] Speaker 00:
It is entitled to little or no way if you just say it.

[00:21:43] Speaker 00:
There should be some reference to something in the prior art, some reference to something in a treatise.

[00:21:49] Speaker 04:
And if it truly was this whole- It's not enough for him to say it's my opinion, which is what he said here.

[00:21:54] Speaker 00:
I don't believe that is enough, Your Honor, not in the IPR context.

[00:21:58] Speaker 04:
Maybe it depends on the context and how, you know, maybe it depends on the context.

[00:22:04] Speaker 00:
It might depend on the context.

[00:22:05] Speaker 00:
There might be times where it is enough, there might be times where it's not enough.

[00:22:08] Speaker 00:
The board, you know, made a factual finding that it was not enough in this context.

[00:22:12] Speaker 00:
And I remind you that because petitioner... The board said you had to cite prior art.

[00:22:16] Speaker 00:
Correct.

[00:22:16] Speaker 02:
You don't have to cite prior art for something like this.

[00:22:19] Speaker 00:
That's wrong, right?

[00:22:22] Speaker 00:
I don't necessarily know the board necessarily cited the Okazaki reference, but you could have cited a treatise, you could have cited something in the art to provide

[00:22:31] Speaker 00:
the basis for your opinion.

[00:22:32] Speaker 02:
Okay, but the board's own trial practice manual and the KS Hemp case says that the board can consider things which are indisputably the case.

[00:22:44] Speaker 02:
And here, on the face of it, it's indisputable that lights have to be electrically connected to work and you have explicit testimony relied on by the petition saying that that's the case.

[00:23:06] Speaker 00:
I hear what you're saying, Your Honor, but I think the claims are a little bit more complicated than that lights have to be connected to work.

[00:23:16] Speaker 00:
And as you said, the board can consider things that are indisputably the case.

[00:23:19] Speaker 00:
There's no statement that they must consider things that are quote unquote indisputably the case.

[00:23:23] Speaker 00:
And furthermore, there should be some evidence as to whether or not things are indisputably the case.

[00:23:28] Speaker 00:
And I believe the record here is lacking there.

[00:23:31] Speaker 00:
Petitioner probably could have made this argument.

[00:23:33] Speaker 00:
It's just lacking.

[00:23:34] Speaker 00:
They just didn't.

[00:23:35] Speaker 04:
So in your view that it's not enough for an expert to say that the conventional means for powering the LED dies in such a configuration is through electrical connection?

[00:23:44] Speaker 00:
Yes, Your Honor.

[00:23:45] Speaker 00:
I believe there should be a site to something to back up that opinion.

[00:23:56] Speaker 00:
So in terms of

[00:23:57] Speaker 00:
the plastic limitation and whether or not that was limiting.

[00:24:01] Speaker 00:
I would just like to note that preambles within preambles are not inherently limiting or non-limiting.

[00:24:08] Speaker 00:
They're subject to the same standards as normal preambles.

[00:24:11] Speaker 00:
They're sometimes non-limiting, but if they supply structure, they can be limiting.

[00:24:16] Speaker 00:
And here, we submit plastic did supply structure, and the board was correct in finding that portion of the preamble to be limiting.

[00:24:25] Speaker 00:
I note that using a plastic-leaded chip carrier is an embodiment specifically taught by the patent at 161 to 64, two, five to nine, and five.

[00:24:36] Speaker 04:
Do you agree that resin is plastic?

[00:24:40] Speaker 00:
Again, there are arguments the petitioner could have made, but they never made any arguments.

[00:24:45] Speaker 04:
I'm just asking, do you agree that resin is plastic?

[00:24:47] Speaker 00:
We don't.

[00:24:47] Speaker 00:
There's nothing in the record that definitively shows resin is plastic as resin is used in Takanaka.

[00:24:54] Speaker 00:
There may be some discussion from Okazaki that plastic is resin the petitioner is so into, but when it came to petitioner's arguments as to Takenaka, there is nothing in the record saying that the resin in Takenaka is plastic.

[00:25:09] Speaker 00:
It's just not there.

[00:25:12] Speaker 02:
Are there resins which are not plastic?

[00:25:15] Speaker 00:
Because Petitioner did not cite to Takanaka's teaching for resin, we didn't have the opportunity to respond to that argument.

[00:25:24] Speaker 00:
So that's just something that's simply not in the record.

[00:25:26] Speaker 00:
Had Petitioner said, this resin is plastic, we might have been able to respond to it and say, maybe this resin is not plastic, or not as easy to understand as plastic.

[00:25:34] Speaker 02:
The question is whether there's an issue here.

[00:25:39] Speaker 00:
And we didn't know there was an issue to respond to because petitioner did not cite Takanaka's discussion.

[00:25:44] Speaker 02:
But you don't know whether resin is plastic?

[00:25:47] Speaker 00:
We did not take a position on it, and there's nothing in the record as to whether resin in Takanaka is plastic.

[00:25:57] Speaker 00:
Turning to the Okazaki reference, just briefly, I believe this panel's questions sort of went right to the point here.

[00:26:07] Speaker 00:
correctly weighed expert testimony and decided that petitioner's expert testimony was lacking, and for that reason that they had failed to carry their burden to show that Okazaki disclosed the two cavities.

[00:26:20] Speaker 00:
The petitioner characterizes their expert's testimony as overwhelming, but really if you look at his expert's testimony, all he does is cite to figure three and a very small portion of the Okazaki reference that basically discusses what the numbers of the figures refer to, and that's about it.

[00:26:37] Speaker 00:
What our expert, Mr. Crudel, did was actually look at the reference and explain what this figure, what this reference taught with respect to the figure.

[00:26:45] Speaker 00:
And the board said that in light of the teaching, they found our expert's testimony more credible.

[00:26:52] Speaker 00:
This was a factual determination that was within the power of the board to decide, and that should be affirmed.

[00:26:59] Speaker 00:
If I can move, unless your honor has any more questions about their affirmative appeal, if I can move briefly to the cross appeal.

[00:27:05] Speaker 00:
We have cross-appealed the board's findings that claims one and six to eight were unpatentable over Takanaka and Kiwa.

[00:27:14] Speaker 00:
We did it on two grounds.

[00:27:18] Speaker 00:
The first was that there was no evidence that the combined references disclosed limitation 1E, and the second was on a lack of evidence of combinability.

[00:27:30] Speaker 00:
If I can just only speak about the second ground,

[00:27:34] Speaker 00:
What happened in this case, Your Honor, is we believe the board switched the burden to us to disprove combinability as opposed to putting the burden on petitioner to prove combinability.

[00:27:44] Speaker 00:
The most egregious example of this in the record is where their expert said having a lead frame would be great because it would give a place to guide the leads, and again, with no support.

[00:27:58] Speaker 00:
The board actually sort of conceded that there was no support, but decided to credit it anyways and give it great weight, directly contrary to in re-invasive and 37 CFR.

[00:28:07] Speaker 00:
We also raised other questions about Dr. Shealy's testimony, considering whether or not they should be combined, because the Takenaka reference already taught protection, and he said KIOA provided protection, and we pointed out that Takenaka, with his

[00:28:23] Speaker 00:
metal body eight provided the same kind of protection.

[00:28:26] Speaker 00:
And the board turned the burden back on us to substantiate that as opposed to putting the burden on petitioner and Dr. Shealy to show why Takanaka's eight metal body eight provided a better level of protection.

[00:28:40] Speaker 00:
And we think that if the board had correctly held petitioner to their burden, that there should have been no finding of combinability in the board's decision in that regard to be reversed.

[00:28:50] Speaker 00:
Unless if the panel has any more questions, I'll reserve the rest of my time.

[00:29:11] Speaker 01:
I recognize that precious little time.

[00:29:13] Speaker 01:
So there are just a few things I wanted to quickly mention.

[00:29:16] Speaker 01:
With respect to the preamble, I think it's important that this was the broadest reasonable interpretation standard.

[00:29:22] Speaker 01:
No one argued that the preamble was limiting.

[00:29:25] Speaker 01:
There was no discussion of it by the board prior to the final written decision.

[00:29:28] Speaker 01:
And this court, of course, has to know the review.

[00:29:31] Speaker 01:
The key question is whether or not anything in the preamble supplies necessary structure to the body.

[00:29:37] Speaker 01:
Not that it is structured.

[00:29:38] Speaker 01:
The display was clearly structured.

[00:29:40] Speaker 01:
They found it not limiting.

[00:29:41] Speaker 01:
And I'll note for the record that the argument that plastic is structured, I couldn't actually find in their briefs.

[00:29:47] Speaker 01:
Last, with respect to their cross-appeal, the obvious argument would have passed muster under TSM.

[00:29:55] Speaker 01:
The motivation to combine was right in Keoa about the internal support for the lease.

[00:30:01] Speaker 02:
I'm definitely out of time.

[00:30:06] Speaker 02:
If we were to agree with you about electrically connected in claim 15, that's the only issue with respect to claim 15?

[00:30:15] Speaker 01:
That's correct.

[00:30:17] Speaker 01:
And with respect to the preamble in claim 9 and 10, that's the only issue with respect to those.

[00:30:21] Speaker 01:
So the only thing to be sent back down would be the dependent claims, if you were to agree with me.

[00:30:28] Speaker 02:
Thank you, Your Honor.

[00:30:29] Speaker 02:
I didn't hear anything about it.

[00:30:31] Speaker 02:
Go ahead.

[00:30:32] Speaker 02:
I didn't hear anything about the cross appeal.

[00:30:35] Speaker 02:
Oh, I'm not saying that you should.

[00:30:39] Speaker 02:
I'm just saying if you didn't say anything about it, then there's no opportunity for revolt.

[00:30:44] Speaker 01:
I think I said one thing about it, just that Keoa actually provided the motivation directly in it.

[00:30:48] Speaker 01:
It would have passed the TSM test years ago.

[00:30:51] Speaker 01:
OK.

[00:30:51] Speaker 01:
And I apologize for leaving my water here.

[00:30:55] Speaker 01:
No more questions?

[00:30:56] Speaker 01:
No.

[00:30:56] Speaker 01:
Thank you.

[00:30:57] Speaker 01:
Mr. Kroger?

[00:31:00] Speaker 00:
I believe I addressed the obviousness in my opening argument, so unless the panel has any further questions about the cross-appeal, I will reserve the rest of my time.

[00:31:09] Speaker 00:
Okay.

[00:31:10] Speaker 02:
Thank you.

[00:31:11] Speaker 00:
Or I will sit down.

[00:31:13] Speaker 02:
You can save it for the next case you argue.

[00:31:16] Speaker 00:
I'll remember that, Your Honor.

[00:31:19] Speaker 02:
Okay.

[00:31:20] Speaker 02:
Thank all counsel.

[00:31:21] Speaker 02:
The case is submitted.