[00:00:00] Speaker 00:
Before we begin our proceedings this morning, I'm going to turn it over to Judge Toronto for a motion.

[00:00:07] Speaker 05:
I have the honor of moving the admission to the bar of this court, my three law clerks, Seth Lloyd, Robbie Manasse, and Catherine Schlexer.

[00:00:19] Speaker 05:
Before I formally do so, just a few words.

[00:00:25] Speaker 05:
It has been my privilege and my pleasure to work with them this past year.

[00:00:33] Speaker 05:
Each one has been a superb colleague, including in roles as advisor, scholar, critic, writer, and warm and light daily presence in a sometimes intense environment.

[00:00:49] Speaker 05:
For a year I have benefited greatly from their commitment, their excellent work, and their good humor.

[00:00:57] Speaker 05:
I will miss them and I envy all those who will be lucky enough to work with them as they move into promising careers.

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And I know that our court's bar will be brighter for their presence.

[00:01:10] Speaker 05:
With that, and on that basis,

[00:01:14] Speaker 05:
I move the admission of Katherine Schlexer, who is a member of the Bar and in good standing with the highest court of Massachusetts.

[00:01:23] Speaker 05:
Robert Manasse, who is a member of the Bar and is in good standing with the highest court of the state of Washington.

[00:01:31] Speaker 05:
And Seth Lloyd, who is a member of the Bar and is in good standing with the highest court of California.

[00:01:38] Speaker 05:
I have knowledge of their credentials,

[00:01:41] Speaker 05:
And I'm satisfied that each of them possesses the necessary qualifications.

[00:01:48] Speaker 00:
Let me just say that one of the best things about our jobs is that we not only get the delight of our own clerks in our chambers, but because we're all located in the same place, we get to know some of the clerks in other chambers as well.

[00:02:02] Speaker 00:
And so it's been my pleasure as well to get to know Judge Taranto's clerks.

[00:02:07] Speaker 00:
And on behalf of Judge Wallach, I enthusiastically grant the motion.

[00:02:13] Speaker 04:
We're ready right now.

[00:02:15] Speaker 04:
So please be solemn and swear and affirm that you will comport yourselves as attorneys and counsels in this court, but right within the court of law and in the support of the Constitution of the United States of America.

[00:02:25] Speaker 04:
I'm just going to congratulate you as well.

[00:02:29] Speaker ?:
Congratulations.

[00:02:32] Speaker 00:
Now turning to our cases for today, I'd like to thank all the parties for their cooperation in trying to get these sorted out.

[00:02:39] Speaker 00:
It remains to be seen whether we've done an effective job on that, but we've given it our best shot and I appreciate the cooperation.

[00:02:46] Speaker 00:
So the first cases for argument are 14-13-36 and 14-16-39, progressive casualty versus liberty mutual.

[00:02:59] Speaker 00:
Now Mr. Robeski, I understand you've reserved, you've got 20 minutes, 10 and 10, and then we'll hear from the government and the other side.

[00:03:08] Speaker 03:
Thank you.

[00:03:09] Speaker 03:
Good morning, Your Honor.

[00:03:10] Speaker 03:
We would like to, Your Honor, we would like to proceed first in case number 1639, which is the case involving Kosaka and RDSS.

[00:03:20] Speaker 03:
In that case, there was no substantial evidence, but rather hindsight reconstruction of a prior art mosaic to fill in the several gaps of Kosaka and RDSS combined.

[00:03:31] Speaker 02:
At page 34 of the Blue Break in 1639, you state that

[00:03:38] Speaker 02:
The aspirational generalizations of Geostar in K-10 suggest certain things, but its bankruptcy showed FUZITA at the relevant time would recognize those aspirations were not well-grounded.

[00:03:58] Speaker 02:
You don't have any authority for the proposition that a company's bankruptcy undermines

[00:04:04] Speaker 02:
for patentability purposes, the teachings of a corporate document.

[00:04:09] Speaker 02:
There's no authority to answer that.

[00:04:10] Speaker 03:
We don't have any authority for it except for common sense and logic.

[00:04:14] Speaker 03:
If there were an aspiration that was not fulfilled, then it was the market suggesting the aspiration was not well grounded.

[00:04:21] Speaker 03:
And remember, Your Honor, this was an aspiration that was rejected by the PTAB, by the board, in their opinion, saying that the lease were insufficient to find some type of motivation to comply.

[00:04:35] Speaker 03:
So if I can also direct the court's attention to our chart that we have in the blue brief at page 39, that's the chart that lays out the mosaics of the various prior art references and the inferences that were drawn with hindsight with respect to Cossack and RDSS and claim one.

[00:04:54] Speaker 05:
Can I just ask, I guess, sort of a follow-up question on this, the aspiration.

[00:05:00] Speaker 05:
If somebody states

[00:05:05] Speaker 05:
a plan for doing something, then subject only to uncertainty about how to do it, essentially an enablement question, why is that not enough to convey to a relevant skilled artist and the idea of doing it?

[00:05:27] Speaker 05:
And I don't think I see an enablement problem here.

[00:05:31] Speaker 05:
So why isn't

[00:05:33] Speaker 05:
as I say, an aspiration where there's no enablement issue about how to do what the aspirational document describes as something to be done enough.

[00:05:45] Speaker 03:
May I suggest, Your Honor, that on A7418, if we look at the GeoStar document itself, we see that if we take Your Honor's proposition that it is aspirational, I do think, and it's sufficient, I do think it's not enabling.

[00:05:58] Speaker 05:
Because what's stated here... Any less enabling than your own patent?

[00:06:03] Speaker 03:
Oh, much more so, Your Honor.

[00:06:04] Speaker 03:
How so?

[00:06:05] Speaker 03:
Because here there are two citations.

[00:06:08] Speaker 03:
One where the company believes the market exists in the insurance industry and it says for the mobile processing of insurance claims, it doesn't suggest that this is going to be used for the type of wireless transmission and processing of data that's set forth in the patent.

[00:06:24] Speaker 03:
The same is true with some vague statement at 7418 that it would be used to lower insurance premiums.

[00:06:30] Speaker 03:
Remember, this is not even prior art.

[00:06:33] Speaker 03:
It was rejected by the board as not being prior art.

[00:06:37] Speaker 03:
It was this aspiration, if you will, that led the board at the outset.

[00:06:41] Speaker 05:
We don't get to care about what led the board at the outset, do we?

[00:06:45] Speaker 03:
Well, I think it lays out the lack of a motivation to combine, because the care is this.

[00:06:53] Speaker 03:
The board originally said that there was a motivation to combine based on Geostar.

[00:06:58] Speaker 03:
Then later, without Geostar, and after reflecting on that and using the hindsight that it already had based on its viewpoint of Geostar 10K, it went back to fill in the gaps, which is what

[00:07:12] Speaker 03:
I directed the court to at page 39 of our study, which is the substantial gaps that are missing from GeoStar and RDSS.

[00:07:23] Speaker 03:
The blue portion is what is in RDSS.

[00:07:28] Speaker 03:
the Kosaka reference, the green portion is what's in Geostar and RDSS, and the rest were gap filling that was used by the board looking at, in some cases, nothing more than a conclusory opinion of one of ordinary skills that didn't say would, but only said could.

[00:07:49] Speaker 03:
And that kind of conclusory opinion is insufficient to support this piecing together of a mosaic without a reason to combine.

[00:07:59] Speaker 03:
So as we say on page 39, references such as a memory, that was brought in by a person of skill in the art.

[00:08:07] Speaker 03:
References or elements such as a wireless transmitter, only person of skill in the art.

[00:08:13] Speaker 03:
Database.

[00:08:14] Speaker 03:
It was suggested there's a database in RDSS plus a person of skill in the art.

[00:08:20] Speaker 03:
If you look at these various pieces that were put together, this is not a simple combination of an aspiration from a 10-K statement and RDSS and COSACA.

[00:08:31] Speaker 03:
This is a lot of gap filling, which is clear hindsight gap filling, we think.

[00:08:38] Speaker 03:
And all of these statements, as I mentioned, a gap filling by Mr. Andrews, which was at the appendix at 78-45-46.

[00:08:46] Speaker 03:
His gap filling simply says, would have recognized something, but would have recognized that something could be in the location.

[00:08:58] Speaker 03:
Something could be this and that.

[00:09:00] Speaker 03:
Saying that one of ordinary skill would have recognized that something could be done,

[00:09:04] Speaker 03:
It's not a statement that one of ordinary skill would have recognized that that thing would have been done and that's the test for obviousness Not that you could do it, but that you would do it upon looking at these references And so we believe that this is total hindsight piecemeal reconstruction of claim one using it as the frame of some of the cases that said the frame for

[00:09:30] Speaker 03:
constructing this mosaic of not only prior art, but prior art conclusory opinions of experts.

[00:09:37] Speaker 05:
Well, can you give me, what was the page citation again for the declaration with all the could-be's that you were regarding?

[00:09:43] Speaker 03:
That's 3845 to 46.

[00:09:45] Speaker 03:
It's paragraphs 37 and 38 of Ms.

[00:09:50] Speaker 03:
Randi's opinion, uh, the declaration.

[00:09:54] Speaker 03:
Paragraphs?

[00:09:55] Speaker 03:
Uh, 37 and 38.

[00:10:01] Speaker 03:
If the court turns to 37, you see it's about four lines down.

[00:10:07] Speaker 00:
I'm sorry, can you give me the number again?

[00:10:09] Speaker 00:
I'm sorry, could you give us the number again?

[00:10:10] Speaker 03:
Yes, I would.

[00:10:11] Speaker 03:
7845 and 46.

[00:10:13] Speaker 03:
So 7845 is where

[00:10:23] Speaker 03:
thirty seven starts and over seventy four the first location of could is on the top of seventy eight forty six could be in the components could be a location remote from the centers and then further down uh... about two four five six lines of premiums could be advantageously implemented this is not a statement that

[00:10:54] Speaker 03:
it would have been that one of ordinary skill would have done certain things.

[00:10:59] Speaker 03:
These are statements of could.

[00:11:01] Speaker 05:
Here's what I guess I want to try to break apart a little bit.

[00:11:07] Speaker 05:
One question is whether a person of skill in the art would have recognized a possibility and the other is whether a person of skill in the art would have had a motivation to pursue the possibility.

[00:11:20] Speaker 05:
it seems to me that your argument is really about the motivation to pursue and the first point about recognizing a possibility could be in a location isn't just isn't about that but other things are about motivation to pursue the possibility including the phrase could be advantageously.

[00:11:39] Speaker 05:
So those are two different things so that the fact that the first one doesn't address motivation doesn't seem to me

[00:11:47] Speaker 05:
to be certainly decisive in saying that there's nothing else that supplies the motivation and the second one actually does quite you know quietly address motivation by saying would have recognized an advantage in pursuing this possibility could be advantageous what's wrong with that well i think your analysis is correct your honor that our primary argument is the motivation combined

[00:12:11] Speaker 03:
The board had found that the belief, the aspiration was insufficient, so we support that, but it's not necessary that the court support that in order to find in our favor that there wasn't a motivation combined.

[00:12:26] Speaker 03:
I see I have about 46 seconds left.

[00:12:30] Speaker 00:
I know the arguments with regard to new grounds for rejection surfaced in another group, but I don't know if you want to touch upon that here.

[00:12:39] Speaker 03:
I think I'll touch base on those in another appeal.

[00:12:43] Speaker 03:
The one thing I really want to mention, and this is in connection with the

[00:12:47] Speaker 03:
1636 appeal is that with respect to Nakagawa, this is claimed 2 to 18, that we believe substantial evidence does not support the board's decision that the Nakagawa point system is selected vehicle data because those

[00:13:04] Speaker 03:
points that are calculated are the result of vehicle data processed in the vehicle and not in the server as required by the claims in element 1e.

[00:13:14] Speaker 03:
And there was no obviousness determination from the board.

[00:13:18] Speaker 03:
There was simply an anticipation determination.

[00:13:21] Speaker 03:
Those points simply are not the type of selected vehicle data that's called for.

[00:13:27] Speaker 03:
I'm into my rebuttal time and unless the court... Can I ask you just one question?

[00:13:32] Speaker 05:
I think I know the answer, but sometimes one thinks things that are not right.

[00:13:36] Speaker 05:
If, unhappily for you, we disagree with you about 1639, we don't need to decide 1636 and 17, is that right?

[00:13:46] Speaker 03:
Let me take a look.

[00:13:47] Speaker 03:
We hope you don't do that, Your Honor, but 1639 covers all claims 1 through 20.

[00:13:54] Speaker 03:
Right.

[00:13:55] Speaker 05:
36 and 37 are more limited.

[00:13:57] Speaker 03:
36 and 37 are between 2 to 18, 119, 20.

[00:14:02] Speaker 03:
Yes, you're correct.

[00:14:03] Speaker 00:
Okay.

[00:14:06] Speaker 00:
Okay.

[00:14:06] Speaker 00:
I'm going to hear from the other side.

[00:14:16] Speaker 01:
may appease the court, Doug Hall or Dreemurr on behalf of Liberty Mutual.

[00:14:21] Speaker 01:
And starting, Judge Ferano, with your question, although there are three appeals, including the cross-appeal, there is one issue in the 1639 appeal that disposes of all three.

[00:14:35] Speaker 01:
And that issue is the motivation to combine.

[00:14:39] Speaker 01:
Of course, that is a factual determination, one of pure facts, and reviewed very deferentially under the substantial evidence standard by this court.

[00:14:51] Speaker 01:
The board's determination that there was a motivation to combine is well explained and well supported in the record.

[00:14:58] Speaker 05:
The board did not... Can you sort of rehearse that motivation to combine based only on pre-priority date?

[00:15:09] Speaker 01:
knowledge or sources.

[00:15:11] Speaker 01:
We'd be happy to.

[00:15:12] Speaker 01:
The board started, as KSR suggests, with the nature of the interrelated teachings of RDSS and PASACA and explains both of those pieces of prior art.

[00:15:24] Speaker 01:
Of course, both of them are systems of monitoring vehicle location and operation on the basis of sensors

[00:15:37] Speaker 01:
placed on the vehicle and then each has a component of transmission with the outside from the vehicle to the outside.

[00:15:47] Speaker 01:
So you have at the outset two systems that are very similar in their basic nature being systems of vehicle monitoring for the same type of information.

[00:16:01] Speaker 01:
location, speed, acceleration, and the like.

[00:16:06] Speaker 01:
RDSS would track location through GPS and time.

[00:16:11] Speaker 01:
From that, you could obviously deduct speed.

[00:16:14] Speaker 01:
Speed is one of the things that is mentioned also in CASACA as being measured.

[00:16:20] Speaker 01:
You have two systems that at the very outset have interrelated teachings.

[00:16:24] Speaker 01:
And then the board looked at the next thing that KSR tells us to look at, and that is the background knowledge of a posita.

[00:16:34] Speaker 01:
Now, the board credited the testimony of Mr. Andrews and specifically determined that one of ordinary skill in the art

[00:16:47] Speaker 01:
would have known that, quote, computing facilities located at a central station, that was how RDSS did it, can provide faster computation, bigger storage capacity, can also provide results to the system manager, for example, to ensure more rapidly and efficiently

[00:17:08] Speaker 01:
than computing facilities on the vehicle.

[00:17:11] Speaker 01:
So you had two systems that both had computing facilities to measure all this information about the cars.

[00:17:18] Speaker 01:
One of them had the computer located separately on each vehicle.

[00:17:25] Speaker 01:
Mr. Andrews, the expert testified to, and the board credited, again, his termination of fact, is that a person of ordinary skill in the art would have understood that combining all of that processing in a single supercomputer like RDSS.

[00:17:40] Speaker 01:
RDSS didn't just describe that, it already listed.

[00:17:44] Speaker 01:
was going to be more efficient in many ways.

[00:17:48] Speaker 05:
But not always.

[00:17:49] Speaker 05:
Intuitively, the combined efficiency is the processing plus how much stuff you need to transmit, and it might be that keeping all the processing of a big gob of data on the

[00:18:03] Speaker 05:
vehicle and then submitting a three-bit number uses very much less bandwidth.

[00:18:10] Speaker 05:
So it's not obvious which would... That's true.

[00:18:14] Speaker 05:
It wouldn't always be better.

[00:18:15] Speaker 01:
That's true and those were arguments that Progressive made and the board considered them

[00:18:20] Speaker 01:
And in fact, there's 20 pages.

[00:18:23] Speaker 01:
The expert considered them first, and the board relied on Mr. Andrews' expert testimony, that for example, with respect to the Doppler radar, that the Doppler radar information is already going to be processed.

[00:18:35] Speaker 01:
For purposes of insurance, one doesn't need

[00:18:37] Speaker 01:
all that data.

[00:18:39] Speaker 01:
All you need to know is was there a period in which the car was tailing too close to the car in front of it at a point in time.

[00:18:45] Speaker 01:
And so that would have been processed before sending it on.

[00:18:48] Speaker 01:
So that wasn't a reason.

[00:18:49] Speaker 01:
The board credited Mr. Andrews' testimony about that.

[00:18:54] Speaker 01:
And so the board

[00:18:56] Speaker 01:
And again, the argument that Progressive is making is one of hindsight.

[00:19:01] Speaker 01:
Now, Liberty anticipated that that was going to be Progressive's argument.

[00:19:08] Speaker 01:
And so Liberty pointed to two things.

[00:19:10] Speaker 01:
First, it pointed to the RDSS prior art itself.

[00:19:15] Speaker 01:
That reference itself discloses that and understanding that operations requiring extensive processing are formed at geostars central perens,

[00:19:26] Speaker 01:
rather than onboard each vehicle, reducing the sophistication and cost of the onboard terminal.

[00:19:33] Speaker 01:
So again, this was not something that Mr. Andrews sort of in hindsight invented and said, oh, a Quasito could have understood that.

[00:19:41] Speaker 01:
No, RDSS Geostar understood that at the time that this was an advantage.

[00:19:49] Speaker 01:
We know, and one of the arguments was, well, Kosaka is just a self-contained system.

[00:19:54] Speaker 01:
No one would have thought to communicate with the outside world from Kosaka.

[00:19:59] Speaker 01:
And the board pointed out the fact that, no, actually Kosaka has a couple of different ways in which it communicates wirelessly with the outside world, an alarm system and a premium payment system.

[00:20:10] Speaker 01:
Now, it's true that Kosaka does not communicate all of the data for processing outside, and RDFS

[00:20:19] Speaker 01:
does not suggest in itself taking all of that information and using it to calculate insurance premiums.

[00:20:27] Speaker 01:
That's the part that Casaka provides.

[00:20:29] Speaker 01:
And likewise, for Casaka, the part that RDSS provides is transfer all the data to the central server before processing because it's more efficient.

[00:20:39] Speaker 01:
So the question is, as Your Honor started, why would one have thought to combine these two things?

[00:20:46] Speaker 01:
And we know, and we rely, Liberty relied on the 10K, not as itself independent prior art, but rather, again, to anticipate and rebut this notion that Mr. Andrews... Remind me, did the board in its final written decision rely on the 10K?

[00:21:05] Speaker 05:
It did not.

[00:21:06] Speaker 05:
So we can't really find that as a basis for the board's fact-finding.

[00:21:11] Speaker 01:
That's right.

[00:21:12] Speaker 01:
But to the extent that progressive is now asserting that the board's determination is all simply hindsight and that Mr. Andrews is all simply hindsight, I think it is fair for the court to understand that the 10K existed at the time.

[00:21:29] Speaker 01:
RDSS said, Geostar said, this would have beneficial uses for insurance, lower insurance rates.

[00:21:36] Speaker 01:
Of course, that's not enabling and we're not saying that it is enabling.

[00:21:40] Speaker 01:
Kosaka tells us how to do that.

[00:21:43] Speaker 01:
The question is would someone have thought to combine these two things?

[00:21:47] Speaker 01:
And again, the board goes through that analysis and it's on A5022 where it again lays and this is after it's already talked about the two pieces of prior art and their common basic features that would have been the interrelated teachings.

[00:22:04] Speaker 01:
And then it says, and, Posito would have understand, that's what Mr. Andrews testifies when we credit that, that it would be advantageous to relocate all that processing from each having a separate computer in each car.

[00:22:18] Speaker 01:
Each one, of course, each computer would have to be uploaded with any new developments in the software, any improvements with that.

[00:22:27] Speaker 01:
Rather than doing all that, and you're basically limited in what kind of computing you can do, if you're going to do new and advanced computing with that, have it all at the central server.

[00:22:38] Speaker 01:
RDSS, and again, they credited Mr. Andrews' testimony about that, about what Poseidon would have understood in terms of the advantage of this.

[00:22:48] Speaker 01:
But they also recognized that RDSS said it at the time.

[00:22:52] Speaker 01:
This wasn't something new.

[00:22:54] Speaker 01:
And that there was nothing that would have discouraged one from doing that.

[00:22:59] Speaker 01:
That was really all of the other arguments that Progressive made.

[00:23:04] Speaker 01:
were all questions of, oh, well, no one wouldn't have done that because of Doppler radar.

[00:23:10] Speaker 01:
The board credited Mr. Andrews' testimony.

[00:23:12] Speaker 01:
No, Doppler radar is actually processed on board before sending the pertinent information.

[00:23:17] Speaker 01:
Anyway, with respect to the gaps that progressive contends existed and identifies on page 39 of the blue brief, I have to say that

[00:23:32] Speaker 01:
These were each addressed by the board and the suggestion, for example, the first block piece, vehicle bus.

[00:23:42] Speaker 01:
The board specifically looked at this and said, you know,

[00:23:46] Speaker 01:
The vehicle bus, Mr. Andrews testified, a vehicle bus was in existence from 1994 and it was required on vehicles by 1996.

[00:23:55] Speaker 01:
So of course that was obvious to a person of ordinary skill in the art.

[00:24:00] Speaker 01:
Neither CASACA nor RDSS needed to provide that.

[00:24:04] Speaker 01:
That would have been obvious.

[00:24:06] Speaker 01:
or a memory.

[00:24:07] Speaker 01:
Now, Mr. Andrews testified that it was inherently disclosed in Casaka to store in memory this information before processing.

[00:24:19] Speaker 01:
The board didn't agree with inherently, but it did recognize that it would have been obvious.

[00:24:24] Speaker 01:
And one reason it would have been obvious is that Casaka recognizes that these computations and the insurance changes can be done subsequently.

[00:24:35] Speaker 01:
It does not have to be done instantaneously as the data is coming in.

[00:24:40] Speaker 01:
It can be processed.

[00:24:41] Speaker 01:
There are a number of instances where they reference hour by hour, daily, subsequently.

[00:24:48] Speaker 01:
All of these suggest that there's going to have to be some kind of storage in memory so that it can be processed later.

[00:24:56] Speaker 01:
The board addressed that.

[00:24:58] Speaker 01:
Its findings are supported by substantial evidence.

[00:25:01] Speaker 01:
The same is true with the others.

[00:25:02] Speaker 01:
Wireless transmitter.

[00:25:04] Speaker 01:
PASACA has a wireless transmitter.

[00:25:07] Speaker 01:
It doesn't use it to translate this kind of data, but that's precisely the kind of data that's transmitted wirelessly by RDSS.

[00:25:14] Speaker 01:
It is disclosed in RDSS.

[00:25:17] Speaker 01:
A database.

[00:25:18] Speaker 01:
RDSS had a database as well.

[00:25:21] Speaker 01:
They talked about one of the advantages being the server and processing all this information.

[00:25:26] Speaker 01:
And moreover, they talked about this is at A5228,

[00:25:32] Speaker 01:
that Geostar Central maintains automated files and storage facilities for user identifications for cross correlation with physical identifications and traffic routing instructions.

[00:25:44] Speaker 01:
They could recall the historical files that depict individual truck routes as at 5230.

[00:25:49] Speaker 01:
So there is a database that's disclosed or at the very least would have been.

[00:25:53] Speaker 01:
Obvious.

[00:25:55] Speaker 01:
So all of these supposed gaps are addressed in detail.

[00:26:00] Speaker 01:
They're supported in the testimony of Liberty's expert as well as in the references themselves.

[00:26:10] Speaker 05:
Can I just double check one thing with you?

[00:26:14] Speaker 05:
Put completely to one side what you've just been talking about, about how you can find all the elements if you look at these two things and you're looking for them.

[00:26:22] Speaker 05:
and focus just on this motivation.

[00:26:26] Speaker 05:
The way that I, just tell me if this is wrong, but the way that I understand the board's opinion, the board has this paragraph on 5022 that says, Liberty argues, notes three things.

[00:26:38] Speaker 05:
And the first two are just about what you can find in the prior art.

[00:26:41] Speaker 05:
And the third one is the only one that says anything about motivation.

[00:26:44] Speaker 05:
And that one, the citation is to Andrews,

[00:26:49] Speaker 05:
several paragraphs that I think don't have anything to do with motivation, and then 37 and 38, paragraphs 37 and 38, which are 78, 46, and 47, each use the word advantageous.

[00:27:01] Speaker 05:
One uses advantageously, one uses advantage.

[00:27:04] Speaker 05:
Is that the sum total of the affirmative basis for motivation?

[00:27:09] Speaker 05:
Because then the board goes on and says, progressive says, here's a bunch of reasons progressive says that's not enough, and it proceeds to respond to each of them.

[00:27:17] Speaker 05:
But the affirmative case is just

[00:27:20] Speaker 05:
Well, I think it is... Which may be enough.

[00:27:23] Speaker 05:
I just want to know if there's more.

[00:27:24] Speaker 01:
I think it is that in terms of Mr. Andrew's testimony, that is where he talks about this precise advantage that a posita would have understood.

[00:27:33] Speaker 01:
But I would go back to the earlier reference in that paragraph to RBSS and what it disclosed about reducing the sophistication and cost.

[00:27:44] Speaker 01:
That is itself a disclosure of an advantage in the reference itself.

[00:27:50] Speaker 01:
So, I think there is more than just Mr. Andrews' testimony.

[00:27:55] Speaker 01:
I do want to very quickly address the cross appeal.

[00:27:59] Speaker 01:
On the cross appeal, the real question is whether there was, whether the 358 application is entitled to the priority date of the 65, the 358 patent is entitled to the priority date of the 650 application.

[00:28:17] Speaker 01:
And we think the board got it right in its initial institution decision.

[00:28:22] Speaker 01:
We think it got it wrong in the final written decision.

[00:28:26] Speaker 01:
And just very quickly, what the 650 application does is it describes

[00:28:34] Speaker 01:
The missing element, what doesn't have a written description, is the wireless communication of selected vehicle data that's been stored in memory and then used for insurance.

[00:28:46] Speaker 01:
And it has to have both of those elements.

[00:28:48] Speaker 01:
It both has to have first been stored in memory before wireless transmission and then the information that was transmitted wirelessly has to be used to compute insurance.

[00:29:01] Speaker 01:
And I refer the court to pages A167 and 168.

[00:29:07] Speaker 01:
That's in the 650 application.

[00:29:09] Speaker 01:
It specifically divides into two groups the types of data.

[00:29:15] Speaker 01:
The first group is those requiring immediate action.

[00:29:18] Speaker 01:
The second group is those not requiring immediate action but necessary for proper billing of insurance.

[00:29:25] Speaker 01:
Only the first is transmitted wirelessly to central control for emergency action.

[00:29:33] Speaker 01:
With respect to the data that is stored for insurance purposes, all that is disclosed, and this is on page 168, is that it would be recorded in the vehicle recording device for future upload.

[00:29:45] Speaker 01:
There is no written description about how that communication happens, and the rest of it acknowledges that one,

[00:29:52] Speaker 01:
inference is that it was going to be stored in the device and then that would be somehow connected to the internet so that if the upload would happen that way, not wirelessly.

[00:30:05] Speaker 01:
If there are no further questions.

[00:30:23] Speaker 06:
May it please the Court, good morning.

[00:30:25] Speaker 06:
Robert McManus for the Director.

[00:30:27] Speaker 06:
The Director's brief focus on procedural issues, most of which have not come up this morning.

[00:30:33] Speaker 06:
And to the extent they have, the party will adequately discuss them.

[00:30:37] Speaker 06:
So unless the Court has any questions about the issues about which the Director has weighed in, I know Chief Judge Proost, you mentioned the new grounds issue.

[00:30:44] Speaker 06:
My friend indicated he was going to raise that in a different appeal.

[00:30:47] Speaker 06:
I'm happy to address them now or wait.

[00:30:50] Speaker 00:
I don't see why we wouldn't wait.

[00:30:52] Speaker 06:
then if there are no questions from the court about the director's position, then I'll yield my time.

[00:31:17] Speaker 03:
Your Honours, what we're left with is a statement from the athlete that these references are interrelated, but they aren't interrelated in the sense that RDSS says nothing about insurance.

[00:31:31] Speaker 03:
The only link to insurance was the Geostar 10K.

[00:31:35] Speaker 03:
Liberty has admitted the Geostar 10K is not enabling, in an effort, I think, to address Judge Chirano's question.

[00:31:42] Speaker 03:
And so what we're left with is that there is no reason, not only to motivation to combine the references, but also to modify COSACA to make it look something like RBSS, which has nothing to do with insurance.

[00:32:00] Speaker 03:
I think Judge Shirano, when you referred to a 5022, the board's decision, the answer you received from Liberty was that basically it's paragraphs 37 and 38, and that's where we think there is a problem.

[00:32:14] Speaker 05:
Well, plus that one sentence that's in RDSS, page 46 of the RDSS document one, column one, line six through nine.

[00:32:23] Speaker 05:
Let me find that one with you, Your Honor.

[00:32:25] Speaker 05:
That's RDSS.

[00:32:26] Speaker 05:
5234 in the appendix.

[00:32:29] Speaker 03:
I'm in RDS.

[00:32:31] Speaker 05:
That's what's quoted in, what, point number one of the 5022 board opinion?

[00:32:36] Speaker 03:
Oh, OK.

[00:32:40] Speaker 05:
It's that.

[00:32:42] Speaker 05:
Because I think my question has suggested that of the items one, two, three, one and two were just within the prior art and only three, four on motivation.

[00:32:51] Speaker 05:
And I think the answer came back.

[00:32:53] Speaker 05:
No, one actually.

[00:32:54] Speaker 05:
Is it one?

[00:32:54] Speaker 05:
Anyway, the RDS has one.

[00:32:56] Speaker 05:
It actually does bear on motivation to combine, not just

[00:33:00] Speaker 05:
what's found if you're looking for it.

[00:33:02] Speaker 03:
Yeah, it's at 5234 and it just basically says operations requiring extensive processing are performed at GeoStar Central and that was the predicate statement.

[00:33:12] Speaker 03:
But it says nothing about the relevance of that to insurance or why anyone would look at COSACA and say here is a perfectly satisfactory on-vehicle insurance premium determination

[00:33:27] Speaker 03:
Why?

[00:33:30] Speaker 03:
Kosaka doesn't say it's inadequate.

[00:33:32] Speaker 03:
Kosaka doesn't say you need more processing.

[00:33:34] Speaker 03:
Kosaka doesn't say we have to somehow build a bigger process or we don't have enough for it.

[00:33:41] Speaker 03:
Okay, RDFS processes some information, does so at a remote server location.

[00:33:49] Speaker 03:
but nothing to do with insurance.

[00:33:51] Speaker 03:
So there's nothing that says COSACA is inadequate.

[00:33:54] Speaker 03:
In fact, there are reasons why there would be problems with COSACA if it were modified, because we're not just talking about a motivation to combine.

[00:34:04] Speaker 03:
We're talking about a motivation to combine and modify COSACA so that these elements would be taken from COSACA's vehicle and placed somewhere else.

[00:34:15] Speaker 03:
And one of the problems, two of the problems, I guess, that we mentioned

[00:34:19] Speaker 03:
We spell out in the briefing, one is the fact that COSACA wants a continuous insurance processing.

[00:34:28] Speaker 03:
And the type of transmission times that are suggested in RDSS are not continuous.

[00:34:32] Speaker 03:
They're not the instantaneous flow of information.

[00:34:36] Speaker 03:
And second, COSACA wants to have some warning functionality if speed goes over a certain level.

[00:34:43] Speaker 03:
That can't be achieved in the RDSS system that talks about when it references automobiles, transmissions in terms of powers.

[00:34:52] Speaker 03:
Now there may be some type of identification signal that's transmitted regularly, but not in terms of information being sent.

[00:35:01] Speaker 03:
on a regular basis.

[00:35:03] Speaker 03:
These are problems with the modification.

[00:35:06] Speaker 03:
And let's remember also, Your Honor, is that it's not just Kosaka and RDSS.

[00:35:11] Speaker 03:
Again, if you go to the chart, there's more than the blue and the green.

[00:35:15] Speaker 03:
It's the red boxes that need to be filled in, these gaps.

[00:35:19] Speaker 03:
How else would anybody get to the point of the claimed invention

[00:35:24] Speaker 03:
even with Kosaka and RDSS, then to look at the claim and say, well, I think I can find this somewhere else.

[00:35:32] Speaker 03:
Here's a person of ordinary skill saying it could be done.

[00:35:36] Speaker 02:
Here's another... You made these arguments below.

[00:35:39] Speaker 03:
We did make arguments below about the lack of these elements, but we think that simply the fact that... The board chose

[00:35:51] Speaker 02:
to believe the expert testimony in contravention.

[00:35:56] Speaker 03:
I think the problem is the board chose to take a piecemeal approach.

[00:36:01] Speaker 03:
You can credit expert testimony, but the determination of obviousness is not can an expert say something about five elements

[00:36:09] Speaker 03:
Can I combine those with two elements that really aren't related?

[00:36:13] Speaker 03:
And based on that frame and that mosaic, can I put together what the claim elements are?

[00:36:19] Speaker 03:
That's not a proper legal approach to obviousness.

[00:36:23] Speaker 03:
And that's the issue we have.

[00:36:24] Speaker 03:
It's the legal error of the board in the way in which it's reviewed the evidence.

[00:36:31] Speaker 03:
Now, if I can say something about the priority case.

[00:36:37] Speaker 03:
which is one where we are at the lead.

[00:36:40] Speaker 03:
That's case 1637.

[00:36:42] Speaker 05:
Can I ask you one question before you get to that?

[00:36:50] Speaker 05:
One of the procedural issues about new ground of

[00:36:52] Speaker 05:
I know we've kind of agreed to postpone discussion on that for a little while.

[00:36:57] Speaker 03:
I'm happy to do it now.

[00:36:58] Speaker 05:
Well, no, no, I just want to ask you this question.

[00:37:01] Speaker 05:
Suppose I thought that there was something to that, but we're worried about the question of ultimate materiality on Closaka and fuzzy logic.

[00:37:12] Speaker 05:
Does that come up in the other case?

[00:37:14] Speaker 05:
I'm happy to talk about it in the other case.

[00:37:15] Speaker 03:
It comes up in the other case as well.

[00:37:17] Speaker 03:
I'm happy to talk about it then.

[00:37:19] Speaker 03:
And we will talk about it there.

[00:37:21] Speaker 03:
Okay, from the standpoint of priority, and I see I have about three minutes left, here the board got it right and we are suggesting that the priority issue is one that was determined by substantial evidence as it's required to be.

[00:37:38] Speaker 03:
and the evidence that was used was various elements from the 650 application, figure 4, the text at 161, lines 9 to 11, and the expert testimony which was credited, Zatovich's testimony credited over Andrews.

[00:37:56] Speaker 03:
Now, if you go to the figure

[00:38:00] Speaker 03:
in our yellow group at page eight, you can see basically what Progressive is trying to construct.

[00:38:11] Speaker 03:
I'm sorry, Liberty is trying to construct.

[00:38:15] Speaker 03:
On this chart at page eight, we show figure four, which gives the flow of communication.

[00:38:24] Speaker 03:
And remember, the only issue here is really whether there's a wireless communication of data.

[00:38:29] Speaker 03:
It is the type of data that is required by the claims.

[00:38:34] Speaker 03:
All of the data that's collected by the sensors is shown to go up through the blue line into the box where there is cellular satellite transmission or radio frequency transmission of data.

[00:38:48] Speaker 03:
What Liberty suggests is that there's a second route for some other kind of data.

[00:38:54] Speaker 03:
Hard as they try, and as much as they spend time in their gray breeze to lay out a distinction,

[00:38:59] Speaker 03:
While there may be a distinction of type of data, and while there is a distinction about the timing of the upload of the data, there is no distinction about the method.

[00:39:13] Speaker 03:
of transmittal of that data.

[00:39:14] Speaker 03:
That data is transmitted wirelessly.

[00:39:17] Speaker 03:
And try as they might, they can't point to a specific portion of the 650 application that says, no, future upload doesn't mean future upload wirelessly, which is how the data is channeled, but it means in some other fashion.

[00:39:35] Speaker 03:
So the board got it right based on substantial evidence.

[00:39:39] Speaker 03:
There is no reason to overturn the board's finding in that regard.

[00:39:45] Speaker 03:
Your honor, with that, I will yield my time unless there are additional questions.

[00:39:55] Speaker 00:
Okay, we'll now move on.