may please score the boredom this inner part of reexamination made three errors in the first one i'd like to discuss this morning is it's obvious this ruling that ruling affects all of the claims on appeal this case presents an opportunity for this affect all the claims not peel that was an alternative basis so if we were to uphold anticipation some of the claims go down even if we thought obviousness is all wrong i agree with you right that that's correct so it does affect them all because they were all some of them were double whammy that's correct got a lot to say about obvious but i but i'm on the obviousness issue again assuming that we are looking at the claims that are that were not also rejected on it's of patient grounds i was kind of surprised after the read brief argued that you didn't really point out anything in the way the other claims where there were limitations that you felt were meaningful and non obvious so i've gone through those claims and tried to find what those additional limitations are are those limitations things that that that one of ordinary skill in the art would not have understood assuming that your primary argument as it relates to obviousness or were to fall away because of the anticipation is patient have other limitations that to distinguish it from a got the nobody challenging that however the limitation issue that we believe the court made the error on is also a limitation that existing claim to want which is the double data rate so i believe this case on obviousness presents an opportunity for the court to read to further decline the substantial evidence standard as it applies to findings of fact made by the board in the first instance up on appeal and there are two things that make us fight you really arguing then this is a anything it's not really the heart of what you're arguing these are new grounds of rejection this is not with the examiner based his rejection upon and therefore it's erroneous i think that's the subtext of the argument is really subtext why isn't it actually ever stated anywhere in your great well your honor i mean we chose the the substantial evidence standard to to highlight the fact that because the board went a different direction than the examiner and because there's no evidence in the record to support the direction the board when that and other itself under the substantial evidence standard should be grounds for reversal doesn't that not doesn't necessarily explain overlooking the head on issue of the new ground of rejection argue would have been better if you if you focused on that this is least we would have we would have paid for attention into it instead we have to find that out ourselves to help you the original requester in the case did not put on any expert testimony at all for obviousness or any other reason that one unique factor in the case and the other as your honour's alluded to is the fact that the examiners original rationale for the combination of essentially forced to abandon the original rationale for combining the references and then proceeded to come up with several different hypotheses as to how a person of ordinary skill in the art nine hundred ninety might have hypothetically modified i a yes but the problem as i've mentioned is that there was no expert testimony in the record to support any of those hypotheses i also had some difficulty with the board's discussion of the secondary considerations and in particular   and perhaps perhaps in many cases that the program it's very often seems to be almost a rote response that you haven't shown that since you haven't shown access you haven't shown that this or in this case there was some pretty clear nexus because we had very specific praise in the industry especially particularly from our competitors micron specifically stating that that the combination of synchronous memory device with double data rate was a big deal was a big innovation and i wasn't saying it was  certainly think that the board erred and assuming that there was no nexus one of the things the board did as we explained in the brief was sort of set those aside because we were relying on licenses and we did cite the case law that says of course there are situations where licensing activity can take some hide the ball a little too much because i thought you know right where i was going what i what i was going to say and what caused me some concern with the statement in particular by the board that you don't get commercial success because you haven't shown evidence of success that spans the full range of the claim yes and that to me seems like a straightforward legal right if i if i had a genius p c situation i don't have to in order touting the fact that these devices are faster and better our claims don't have limitations that specifically go to speed and i also think that's a run yes because most planes aren't written that way most planes don't have all of the features of how  erroneous as we pointed out in our brief reply brief i'd like to just go back to the obviousness issue in our reply brief we did provide a chart showing all of the appellate findings of the board and how those findings were not supported by substantial evidence very often the board made a finding on appeal for the in the first instance and cited the either nothing or cited to nvidia's appeal i guess this is this is what i don't know what to do here suppose that i were to agree with your assertion which is one of the first things i asked you which is that this is in fact effectively a new ground for jackson right well when the board issues a new ground rejection which they're allowed to do there is the opportunity for the development of a record which would then be able to support the new when they're part and give you an opportunity to respond why that new ground or junction is not proper and if i were to really see that that is what this is and it didn't occur here not surprising the record might not support it because they jumped ahead and so when the answer be to vacate and remand why since it is a new ground of rejection why do you think even if you're right that there isn't evidence to support the i guess what more are you going to get you think a straight reversal they haven't proven it  first of all i do agree with you on the new ground of rejection analysis that if that is the way that the case is analyzed the proper remedy would be to remand for further for further development the record one point of just just to point evidence to support the findings i also think reversal would be appropriate and we cited this specifically to the brandon miller case which i think is very appropriate here and the brandy miller case specifically looked at this problem of the board rely on its own expertise for findings and when can it not and that what the board's what the court said brandy miller is in a contested case such as where there's two parts to private parties in that case the board is playing a different role  it doesn't ex party proceedings and it can simply manufacture it's own evidence in other words its own opinions don't become self supporting it has to look to what what the parties put on the record and here in video put in no expert testimony not an obvious and not an not obviousness and  t anything else of the really nothing in the record that could support the board's alternative reasoning when there doesn't have that with respect to that point and that that is the context with which we are in do you see a difference between the way the board should approach objective  different claim construction methodology we already know that and i think if you ask me personally yes i do think because when the patent has expired you're using the claim construction that would be used in the district court perhaps we should be thinking about whether the ravi of a presumption ability as well at that point because the whole rationale of using the broader construction was that the pads he had an opportunity to invent claims which you don't have and i think that the weighing of the objective factors should be the same as it would be in a district court and as an example we put in our objective factors they were never disputed nobody ever came in and disputed our objective factors and i think that should have been weighed more heavily in favor of you are well i'm sure t brief any argument as to any features that if you're in those planes that don't also appear in claymore and that's the point that you're trying to make is that the flight is about the features in claymore and if the court agrees with us with respect to the the anticipation rejections cover a certain group of claims those claims are overlapped with the absence of projections and there's a few other planes that are in tempest by the anticipation that out there banging the point is those other claims that are out there they haven't argue a specific feature of any of those claims anywhere in their briefs so that is why we raised it in the brief in our brief but i understand your point that the anticipation rejection covers a subset of all the claims obvious covers all of them nevertheless if all we're fighting about is features in claim one he's fighting about features in claim one for the into submission directions he's also fighting about features and claim once for all the obvious rejection either way the rising and falling the claim one should take care of him off because he's so hard to another word so as to simplify this so we can we could ignore the dependent claims for the time being we've got two independent claims claim one and claim twenty six but claim one is considered representative of all o right in the beginning of the blue brief page fifteen point one is representative so you're right in the brief i mean that in my understanding of what that means is it represents all the arguments with respect all the coin that's the way we understand that type of position as the way we view it but we are a quarter of review who are not right we're not in a position to say well that claim one is representative and claim one was rejected on votes one or two and one or three right claim twenty six which was only rejected on one hundred three we can affirm the rejection on one zero two and apply it  i think the main argument that that the ranch mage's that i p s reference which is the basis for the obvious rejection it basically has all the features the only teacher that is missing is using the downside the falling edge arising in the following edge of an external clock and if you use both edges instead of a single edge you will double the data rate or you will speed up the rate of transmitting and writing data to a memory device but do you agree that the examiner erred in some quoting that they were  a factual incorrect statement about whether or not the other edges of the clocks were being used but the board corrected that factual term addressed exactly the problem right so the problem is the xander base his motivation the combine so that goes to the heart of the rejection in my view if you read the board's decision and you read the examiners rationale what you'll find is really there's more to it than that with the examiner on the board both said is that both of these references are in the same field the field of digital writing of memory and data transfer both of these references see to do the same thing they both see the speed things up to get more bandwidth to become more efficient and you're correct there's a factual error and there but nevertheless board was very consistent when it said just like the examiner we agreed both a i p x reference as well as the in a got to reference they're both seeking to do the same thing they're both seeking the same to solve the same problem what is the problem we want to go faster how does solve that problem we use both edges of the clock now want to look at the x i x doesn't have all the clocks with all these other edges boards that we can we can use those other clock edges to help do exactly what  totally different projections it's really not a new thrust of rejection there is a factual error in there whether or not the other clock edges were being used for different purposes that's the point they make but the board said we don't care  even if they are being used for other more sophisticated purposes this claim if you look at the claim is very very broad and this claim only requires a very simplistic rise and fall of the external clock to time or t synchronize the writing of data that's all it requires and when you take the i reference which has to has external clocks it has dual edges we just want to use the edges for a different purpose what's the different purpose for different purposes what in  the basis for the rejection and the reason for the motivation that is to insist that part's the same so in my view it's not on the grounds of rejection and furthermore your honor no where in the review do they ever say new grounds of rejection they do see a different reasoning different position but by the way there was never a request for a rehearing to the board alleging any grounds are going to have to be they have a right of coming directly nevertheless if they really believe that that was a new grounds a rejection of the board wrote that they did have clear in very simple and it's a really good idea let's use both edges of the clock it'll speed things up it'll go twice as fast we we have everything else except for we're using the down side of the clock for a different reason let's just use that to go ahead and sit in the seat to the want to look at the thinking are right well in order for me to put my bottom in that seat i got to move her you know at the person is guilty or to be motivated to make that combination look motivations much more obvious when there's nobody sitting there when the acknowledge that those clocks or the other sides of those clocks are being used for other functions however we don't know in their view an ordinary artisan would have been able to simplify the x of life which means what we're not going to use as other functions we're going to drop some of the bells and whistles it's like i've got a car with air conditioning and now i'm going to take away the air conditioning and use the space in the engine compartment for something else but now i don't have air conditioning anymore ok why was your condition here on out power and how is that consistent with a  w which says quote the board's own conjecture does not supply the requisite substantial evidence to support the rejection i don't consider a conjecture on or i consider that a factual findings based on  the rationale words that come from the desire of the ordinary some to do what increase speed increase bandwidth where does that come from a change in the references that's what the board used as a basis for its reasoning furthermore the board itself i think in rebirth says it it can use its knowledge to make factual findings not only with common sense with the way the references teach the technology that they're in and everybody knew at the time in this technology just like these references speak to that increased and with increased speed and improving those things were critical and important so there was a great desire by the ordinary digital chip designer to do this and i think in a vacuum solved in a bucket came out nine hundred eighty one in told the world if you use both edges of a clock you will speed up your system and you'll do it without increasing the chip size the chip small you'll keep a compact and you make it go faster and here's a way to do it meanwhile we've got this more sophisticated device over here called i the x which has multiple external clocks and multiple chipset here and they've been using for that purpose here for a problem you want to say oh well the board has concluded then that you would just abandon whatever functionality is currently occupying the falling edge of the clock and be honest that yes i did read it at one point in preparation for this i knew what it was i don't remember anymore but i have t and you're going to pluck it away and get rid of it and i'm just supposed to assume that your car still going to work well guess what in the port of course it's the connected in series to a bunch of other stuff that actually matters and make sure car operates so you can pluck it out but the functionality isn't you is yes what the board said is dropping some of these extra elaborate functions wouldn't destroy the reference in fact the whole hearing was all about that if you read the oral hearing before the board the board asked ramp up the art of the epic it multiple times they said are you telling us that if we take away that if we use the other edge of the plot that i p x that it's going to destroy and he said yes it's going to destroy and he goes no or is it going to become less effective and ultimately did that it would be less effective which means it wouldn't i don't know if there was an expert that there was no expert testimony that i know of that that set it in contrast to that i don't know but you know your honor i don't know where it but i don't know if expert testimony is required we have fact findings made by the agency we have a hearing that occurred before the board we have questions from the board and answers by the rambus we have references that teach the desires of the ordinary person to why they would want to make such a modification that was the basis for their obvious of fact doesn't make it up necessarily supported by substantial evidence and the fact findings that they made your honor was it's clear from the references of both the examiner as well as the board said that the references teach an ordinary person has a strong desire to increase the speed and exactly specifically says one way to do that a good way to do that is to use both edges of the clock that's basically the facts on your own and from there they then took those facts so there's no immersion about what ultimately if you read the hearing transcript what you see is it didn't it the board didn't view it as an opera they do they do that's just left in the potentially less effective in other words we're giving up some functionality but it still works that was the big dispute in the board down ok i'm not really going to look like a switch over that that's what you're trying to help but if you don't mind i would like to give you a few minutes or at least a minute or two to address the secondary consideration and i think the point that you are making is we understand the glass rule all around the same date right around march sixteenth one thousand nine hundred press releases came out all of the same time and they all sort of said the same thing we've got this new technology and this new technology is going to increase speed by five degree of the speed increase like a five to ten fold increase our point is when you look at the plane the claim doesn't mention a five to ten fold increase furthermore the microns one thousand and eleven is vastly revolutionary  pioneering technology enabling applications to transfer data on both the rising and falling edge of the clock signal and vastly improving performance and if you read all the other press releases in conjunction with that when they say vastly improved in all these other instances they say five to ten fold increase a ten fold increase ten times faster a five times faster tenfold increase our point is if you really wanted to get the benefit of this type of industry prays about a five times or a ten times increase this claim should have said that it doesn't say that the claim doesn't require a ten fold increase in fact the prior art which we put out hope you can understand your argument that that's our point our point here is that you need to link the link to the industry praise that they're talking about we're going recent almost every single one of those in conjunction with that one say that the vast improvement is a five to ten fold increase our point is in for their own expert mr murphy said he speaks of other peters like the  all these other features that are not part of this point now it could be there's other claims in the other mix family of patents and it could be there's other claims in those other patents that have those features that indeed these advertisements would be germane to and indeed they would be pro non obviousness in those other planes but not this plane this plane is super broad it doesn't say anything about how fast how much it's going to increase the speed it doesn't say anything about delay lock or phase lock loops or any of these other features that are experts speaks about my point is when someone goes out and licenses something or buys something and it has all these other features that are the reason that's fine with those teachers are in this claim then that's not enough that's our point that other features for driving the industry praise other features were driving for you have five minutes on the clock went longer so i'll be gracious but if you need it when you figure out what you need i don't think i do your are talking i just wanted at one point because i hope i did make a mess of the the claim rejections and what's at issue here i tried to clear that up in the foot no we put at the end of our great grief but let me just try again just to make sure there's no confusion there were a total of fifteen claims at issue here three of them were rejected for anticipation and all which nobody has ever disputed are missing from i mean that they are missing from in a copy and nobody's ever said otherwise so those claims if you if you reverse the obviousness rejection  there's nothing left i mean they can't be rejected simply because we use claim one as as a representative claim there never was an anticipation rejection on those claims and so if you were a person obviousness those claims stand the reason when you claim one is a representative claim is because the only limitation that we are arguing to distinguish the obviousness rejection is the double data rate limitation which happens to also be included in claim one so to simplify things we use claim one is a representative claim to but to be very  you think first counsel for their argument the case is taken under submission