[00:00:00] Speaker 00:
To begin our proceedings this morning, I just want to extend our gratitude on behalf of the panel to this law school.

[00:00:07] Speaker 00:
And we're thrilled to be here.

[00:00:09] Speaker 00:
And we really appreciate all the courtesy that have been extended to us.

[00:00:13] Speaker 00:
So thank you.

[00:00:15] Speaker 00:
First case this morning is 161208, Affinity Labs versus Samsung Electronics.

[00:00:23] Speaker 00:
Mr. Schulz, whenever you're ready.

[00:00:45] Speaker 00:
We're ready.

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

[00:00:48] Speaker 01:
Good morning, your honors, or afternoons, if you have not adjusted to the California time zone.

[00:00:53] Speaker 01:
This case is a prime example of a results-driven decision by the PTAB, which is demonstrated by the fact that the evidence on two key issues is not sufficient that a reasonable mind would accept the conclusions that the PTAB reached in this case.

[00:01:10] Speaker 01:
The first issue that I would like to discuss relates to the

[00:01:14] Speaker 01:
claim element of a cellular telephone.

[00:01:17] Speaker 01:
Now, the construction that was adopted in this case and agreed upon by the parties is that a cellular telephone was a telephone with access to a cellular radio system so that it could be used over a wide area without a physical connection to the network.

[00:01:31] Speaker 00:
Just to start off, just to be clear, we're not dealing with a de novo review of claim construction here.

[00:01:36] Speaker 00:
We've got a substantial evidence review of what the board did, correct?

[00:01:39] Speaker 01:
That's correct, Your Honor.

[00:01:41] Speaker 01:
So when looking at the evidence related to whether or not the reference, the Trays reference, disclosed this claim element, the board relied on various disparate statements within that reference to arrive at its conclusion that Trays discloses cellular telephone.

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And I believe that this is highlighted by the one statement in the final decision that has been reiterated by the petitioners here to this courtroom or to this court.

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And that statement is.

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Trays has built in telephone functions, permitting the device to place and receive calls using cellular telephone transmissions.

[00:02:30] Speaker 01:
Now, first of all, this is not a direct quote from Trays.

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That disclosure, that conclusion is not in Trays.

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What that is is a Frankenstein hodgepodge collection of citations in trays to arrive at that conclusion.

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And in fact, if we look, the board cites four different sections within trays in support of this conclusion.

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But none of those sections claim or describe a cellular telephone, much less a phone that can make and use calls over cellular transmissions.

[00:03:02] Speaker 01:
There is simply no

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citation or disclosure.

[00:03:05] Speaker 00:
Am I wrong?

[00:03:06] Speaker 00:
I mean just in TRACE, I have notes here from TRACE and it states several times that its device may include telephone capabilities and it says it can send and receive cellular telephone transmissions and can include a telephone headset.

[00:03:23] Speaker 00:
That's a citation, those are citations from TRACE, not from the board's opinion or conclusions with respect to what TRACE said.

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but what Trace actually said.

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Why is that not sufficient under substantial evidence review to affirm on this question?

[00:03:37] Speaker 01:
Because, Your Honor, those separate sections within Trace don't make the link to actual cellular telephone that can make and receive calls over a cellular network.

[00:03:46] Speaker 01:
When it talks about built-in telephone functions, it's talking about using a landline, a normal handset telephone, and all of the references within Trace.

[00:03:55] Speaker 01:
In fact, if you look at figure 10A,

[00:03:58] Speaker 01:
it shows that when it's talking about a phone and having telephone capabilities, it's talking about a telephone, a landline phone that you would have plugged into a phone jack.

[00:04:07] Speaker 01:
And in fact, again, if you look at the devices that Trades himself is describing are included in his disclosure, which is found in column one, lines 29 through 30, he describes the type of audio devices here as alarm clocks, clock radios, radios, and I believe in column

[00:04:29] Speaker 01:
8, there's a further description where additional devices where he talks about stereos are included, personal computers.

[00:04:37] Speaker 01:
Again, nowhere in here does Trey say there is a cellular telephone.

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And when it talks about cellular telephone transmissions, it's clear it's talking about data transmissions.

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The one site I would point you to is in column 2, lines 22 through 35, where Trey's

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that the board relies on where it identifies cellular telephone transmission.

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But if you continue through the list that is provided in TRACE, it says any other suitable type of data transmission.

[00:05:07] Speaker 01:
It's not talking about making phone calls.

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It's talking about using cellular telephone transmissions to transmit data or audio signals to these device.

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Not the conclusion that the board reached of make and receive phone calls.

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And there's nowhere in TRACE within even that list of permutations.

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In column two here, there are six different ways of data transmission.

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Nothing in TRACE says, well, in particular, cellular telephone transmissions is the more preferred way or is the way to do this.

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So now you have to take various disparate statements within TRACE and then combine them together.

[00:05:43] Speaker 01:
But TRACE has no disclosure within itself to say, combine these into a cellular telephone.

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So that was the first error that the board made.

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The second error then.

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relates to the other evidence submitted by petitioners on this issue, which is simply Dr. Quackenbush's declaration.

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And if you look at A-328, which is the paragraph related to this issue in Dr. Quackenbush's declaration, he merely recites these same passages and then concludes, one of skill would understand this to disclose the cell phone.

[00:06:20] Speaker 01:
There is simply no analysis there

[00:06:22] Speaker 01:
by Dr. Quackenbush of taking these statements and then why they would arrive at the conclusion that this discloses the cellular telephone.

[00:06:31] Speaker 04:
May I ask, did the board say anything about figure 4 in Trays?

[00:06:39] Speaker 04:
Let me just... I'm looking at page A407, which I think is Trays.

[00:06:44] Speaker 01:
Figure 4 shows... I don't believe so, Your Honor.

[00:06:49] Speaker 01:
I mean, it may have been in passing... it may have been incorporated into some

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reference to what petitioner site?

[00:06:55] Speaker 04:
Tell me what to make of the, if you have figure four in front of you, the box that shows user input interface, e.g.

[00:07:03] Speaker 04:
buttons, telephone, handset, and it goes through control circuitry and then there are a variety of communication circuitry which includes various wireless communication circuitry.

[00:07:18] Speaker 04:
Why does that not show a cell phone?

[00:07:22] Speaker 01:
Because I think it's ambiguous as to what it disclosed, whether it's a cell phone or a landline.

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And I think if you look at the reference of the whole.

[00:07:30] Speaker 04:
Right, but that's why I mentioned the wireless communication circuitry, long range, short range.

[00:07:35] Speaker 01:
Right.

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And that communication circuitry, again, is all related to data transmission.

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There's nothing in there about making and receiving telephone calls.

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Because again, the device in Trays is really trying to, and you can see it in column one where it says the purpose

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or the goal of its invention is to provide audio devices that handle audio signals other than traditional radio broadcasts.

[00:07:57] Speaker 01:
So again, what Traze is trying to describe is this type of device that would sit on your nightstand that other than just your typical alarm clock receiving FM signals or AM radio signals, it could receive audio signals through other transmissions such as internet connections and whatnot.

[00:08:14] Speaker 01:
And I think the figure four merely illustrates, again, that the only

[00:08:18] Speaker 01:
use of any short, what they describe as short-range wireless communication was for data and not make or receive phone calls, which is fundamental and critical for the analysis because it's got to be a telephone.

[00:08:31] Speaker 01:
The other issue I would like to just briefly- Can I just double-check again?

[00:08:34] Speaker 04:
I'm sorry if I don't remember something I should remember.

[00:08:38] Speaker 04:
The claim construction of cellular phone is or is not a telephone with access to a cellular radio system so it can be

[00:08:47] Speaker 04:
used over a wide area without a physical connection to a network, and is telephone further defined?

[00:08:56] Speaker 04:
No, Your Honor.

[00:08:58] Speaker 04:
So where is the requirement that I think you keep pressing that data transmission is not sufficient?

[00:09:10] Speaker 01:
Well, for it to be a telephone, it has to make and receive calls.

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So the issue of whether or not it can receive data is not

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critical to the determination of whether there is a telephone that can connect to a cellular radio system to be used over a wide area without a physical connection to a network.

[00:09:31] Speaker 01:
So that would include satellite.

[00:09:32] Speaker 02:
Do you think the fundamental definition of telephone is that it makes and receives calls?

[00:09:38] Speaker 02:
I'm unaware of any other definition that would... So if TRACE uses telephone, doesn't that mean it also makes and receives calls?

[00:09:48] Speaker 01:
It can make and receive calls in telephone.

[00:09:50] Speaker 01:
But again, telephone has been modified here in this construction to have additional limitations of how that telephone is to be used, where it has to be able to be used in a wide area without a physical network connection.

[00:10:01] Speaker 01:
So your landline phone.

[00:10:02] Speaker 02:
Right, but we're not talking about that now.

[00:10:04] Speaker 02:
We're talking about whether Trace discloses a telephone.

[00:10:06] Speaker 02:
And Figure 4 seems to explicitly disclose a telephone handset.

[00:10:12] Speaker 02:
And if you agree that telephone, by definition, includes

[00:10:16] Speaker 02:
the ability to make and receive calls, I don't understand how this figure four doesn't, by your definition, include a telephone.

[00:10:23] Speaker 01:
Well, because, again, the term that we are working here is cellular telephone.

[00:10:28] Speaker 01:
That's the claim term that's been defined to have a telephone with these additional limitations.

[00:10:32] Speaker 01:
OK.

[00:10:32] Speaker 02:
So if we assume, then, that this discloses a telephone and then move on to the question of whether this discloses cellular, why wouldn't we read long range

[00:10:44] Speaker 02:
wireless communication circuitry as a cell, cell communication.

[00:10:48] Speaker 01:
Because there's not making a telephone call over that long-range network.

[00:10:52] Speaker 02:
You're kind of running in circles here, though.

[00:10:53] Speaker 02:
You suggested that the definition of telephone itself means you can make and receive calls.

[00:11:00] Speaker 02:
There's a telephone here.

[00:11:02] Speaker 02:
And then we need to decide if there's a cellular component, which seems to be supplied by long-range wireless communications.

[00:11:09] Speaker 01:
Well, and I think the problem, Your Honor, is that they're not too

[00:11:13] Speaker 01:
two different components.

[00:11:15] Speaker 01:
It is all one.

[00:11:17] Speaker 01:
And so this device has to, the cellular phone as defined, has to be a telephone that can access and be used over wide air without a physical network connection.

[00:11:28] Speaker 01:
And the disclosure in figure four of trays, again, is not talking about utilizing those components in box 68.

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for the normal functionality of telephones.

[00:11:39] Speaker 02:
How do we know that?

[00:11:40] Speaker 02:
I mean, it's connected by lines to the long-range wireless communications, and then it's connected by another line to audio output.

[00:11:51] Speaker 02:
Why isn't that read as cell phone system connecting through a telephone to an audio output?

[00:11:56] Speaker 01:
Because when you read the full disclosure of trades, when it talks about telephone functionality, it's talking about through a landline connection.

[00:12:03] Speaker 01:
And when it's talking about cellular telephone transmissions,

[00:12:05] Speaker 01:
is only talking about data transmissions.

[00:12:07] Speaker 01:
There's no disclosure in trades that says this is related to making and be able to make phone calls over cellular network.

[00:12:15] Speaker 01:
So in the little time remaining, I would like to just shift to two or another issue is related to the element of the data switching of the data communication rate.

[00:12:29] Speaker 01:
And there, the board makes two fundamental errors.

[00:12:31] Speaker 01:
First, it says,

[00:12:33] Speaker 01:
Fuller simply discloses the general idea of doing data transmission rate, and that's sufficient.

[00:12:40] Speaker 01:
That turns KSR on its head.

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KSR says it has to be a known method used in a known way to achieve predictable results.

[00:12:48] Speaker 01:
It is not just simply the general idea of data switching is therefore the known method.

[00:12:54] Speaker 01:
KSR, again, establishes that it has to be well-known routine functions or methods that are used and implemented in the combination, not just general ideas.

[00:13:03] Speaker 01:
Taking that logic to its end, you would say that the script for Star Wars discloses the general idea of light speed travel.

[00:13:10] Speaker 01:
And thus, in the future, when somebody actually comes up with the method of it, it would be rendered obvious because there was a disclosure in the 70s of the general idea of light speed travel.

[00:13:18] Speaker 01:
That is just by matter of law an error and is reversible.

[00:13:22] Speaker 01:
Second issue related to that is then the idea of if Fuller is limited to the Java applet mechanism for doing the data transmission,

[00:13:32] Speaker 01:
there's not sufficient evidence that a reasonable mind would accept the board's conclusion.

[00:13:37] Speaker 01:
In particular, if you look at paragraph 43 of Dr. Quackenbush's declaration in the petition, which is A673, he merely concludes that there would have been an expectation of success.

[00:13:50] Speaker 01:
If you look at the evidence that was submitted to the petition, he has several paragraphs preceding it that illustrate the motivation to combine, but don't get to the reasonable expectation of success.

[00:14:00] Speaker 01:
That is simply a conclusion.

[00:14:01] Speaker 01:
And this court has found that that does not meet the substantial evidence standard.

[00:14:05] Speaker 01:
But even if we look at the evidence that then petitioners set forth in their new reply brief, which is new evidence, they rely on this idea of using personal Java to execute the Java applet in Fuller.

[00:14:19] Speaker 01:
And then board relied on A17, this reference that identified four types of devices that could use personal Java.

[00:14:28] Speaker 01:
handheld PCs, set-top internet boxes, web phones, and game controllers.

[00:14:34] Speaker 01:
Now, I don't believe Petitioner's Council is going to get up here and say game controllers or set-top internet boxes are the cellular phones that they're proposing in this combination.

[00:14:42] Speaker 01:
So then the question is, is handheld PCs or web phones fall within that?

[00:14:47] Speaker 01:
Well, a handheld PC, by its very nature, is not a telephone.

[00:14:49] Speaker 01:
It's a handheld PC.

[00:14:52] Speaker 01:
It's a PDA.

[00:14:53] Speaker 01:
So that one doesn't work.

[00:14:54] Speaker 01:
So then you're left with web phones.

[00:14:55] Speaker 01:
And there's no evidence in the record that then analyzes and determines that the board could have relied on to say the web phones disclosed in that article are the cellular phones disclosed in Trace.

[00:15:07] Speaker 01:
There's a fundamental gap there.

[00:15:09] Speaker 01:
And because there is a gap in there, there's not sufficient evidence for the board's conclusion that there was a disclosure or an expectation of success to combine the method in Fuller with the device in Trace.

[00:15:24] Speaker 00:
Okay, you've exceeded your rebuttal, so we'll restore two minutes while I'm here from the other side.

[00:15:28] Speaker 00:
Thank you.

[00:15:37] Speaker 03:
Thank you, Your Honor.

[00:15:38] Speaker 03:
May it please the Court.

[00:15:39] Speaker 03:
I'd like to start with the cellular telephone issue, and just to note that the Board does rely on page A10

[00:15:49] Speaker 03:
on three different occasions on figure four.

[00:15:52] Speaker 00:
Yes.

[00:15:53] Speaker 00:
But Trace is about an alarm clock, right?

[00:15:56] Speaker 03:
I don't think that's true, Your Honor.

[00:15:58] Speaker 03:
It is a device.

[00:15:59] Speaker 00:
Calls its device an alarm clock, right?

[00:16:02] Speaker 03:
It does call it an alarm clock, but it says that it has multiple functions.

[00:16:04] Speaker 00:
And it never says that it's a cell phone, right?

[00:16:07] Speaker 03:
It says that it has cellular telephone.

[00:16:09] Speaker 00:
Why don't you answer my question yes or no, and then you can explain it.

[00:16:12] Speaker 00:
It never says it's a cell phone.

[00:16:14] Speaker 00:
It never states that it is a cell phone.

[00:16:16] Speaker 03:
It does not use those terms correctly.

[00:16:18] Speaker 03:
OK.

[00:16:18] Speaker 03:
but what it does disclose.

[00:16:20] Speaker 03:
And this court's cases are very clear that prior references are not limited to the exact words that they use, but what they disclose and what a person of ordinary skill would understand them to disclose.

[00:16:34] Speaker 03:
And what figure four discloses is, as I think the patent owner has conceded, a telephone.

[00:16:42] Speaker 03:
It has a telephone handset.

[00:16:44] Speaker 03:
And the patent owner claims that the telephone that's disclosed is limited to a landline.

[00:16:51] Speaker 03:
But that's not consistent with Figure 4 or the description of Figure 4 in Column 14 of the Trays patent.

[00:17:00] Speaker 03:
Because Figure 4 says that there's a long-range wireless communications capacity.

[00:17:05] Speaker 03:
And then in Column 13, the Trays discloses that that includes

[00:17:14] Speaker 03:
eight communications with a cellular telephone system.

[00:17:18] Speaker 03:
Now, the patent owner has said that a telephone communicates bidirectionally.

[00:17:25] Speaker 03:
They claim that it's limited to voice.

[00:17:27] Speaker 03:
I don't think that that's true of telephone.

[00:17:29] Speaker 03:
But whatever telephone means,

[00:17:32] Speaker 04:
I'm not sure they say it's limited to voice, but that it has to include voice.

[00:17:35] Speaker 03:
It has to do voice.

[00:17:36] Speaker 03:
I don't believe that that's true, but whatever telephone means, Trays uses the word telephone to describe the types of cellular communications that are going on in Figure 14, which has the telephone handset.

[00:17:51] Speaker 03:
So the standard here, again, is substantial evidence.

[00:17:55] Speaker 03:
Was there substantial evidence for the board's conclusion that Trays disclosed

[00:18:00] Speaker 03:
a cellular telephone, and there's ample evidence to support that conclusion in figure four alone.

[00:18:08] Speaker 03:
But even beyond figure four, the board also noted that in the same column, I think it's column two, the trays discloses that the device can have an answering machine to answer a call that comes in if it's not answered at that time.

[00:18:29] Speaker 03:
So again, the clear reference to the phone operating as a phone, although it's primarily described as an alarm clock, clearly it has these other capabilities, including that of serving as a telephone.

[00:18:42] Speaker 03:
And when it serves as a telephone, there are multiple disclosures, including a landline, but also a cellular telephone system.

[00:18:51] Speaker 04:
Can I ask you to switch topics for a moment?

[00:18:55] Speaker 04:
What's the best place in the board opinion

[00:18:59] Speaker 04:
that says, here, as of the relevant time, is the reason and the evidence for this reason that a relevant skilled artisan would have been motivated to combine fuller, broadly read, put that, just stipulate to that for now, and trays, again, broadly read.

[00:19:22] Speaker 03:
Well, there are a couple of places I would say on page.

[00:19:25] Speaker 04:
Not just the, you know,

[00:19:27] Speaker 04:
We reject the assertion that it's impossible.

[00:19:30] Speaker 04:
But here's the affirmative reason.

[00:19:31] Speaker 03:
That's right.

[00:19:32] Speaker 03:
I would say on page nine, where they discuss what Quackenbush testified to as the motivation to combine.

[00:19:42] Speaker 03:
And then again, I'm sorry, we're on page nine.

[00:19:44] Speaker 03:
I'm sorry.

[00:19:45] Speaker 03:
On page nine, they say petitioner contends in their citing the Quackenbush declaration here.

[00:19:55] Speaker 03:
that Fuller's method of switching one ordinary skill in the art would have incorporated Fuller's method of switching transmission rates into trays in order to prevent the input buffer from running out of data, which would result in substantial and perceivable degradation of audio quality.

[00:20:11] Speaker 04:
So that's where the board is reciting petition, your argument, I guess.

[00:20:15] Speaker 04:
So that's not an actual adoption by the board of it.

[00:20:19] Speaker 04:
Where does the board say and

[00:20:21] Speaker 04:
Here's what we find on this subject.

[00:20:23] Speaker 03:
Well, they also on page A15 find sufficient Dr. Quackenbush's analysis of the disclosures of trays in Fuller and then specifically talking to the concept of motivation combined, including trays disclosure that a buffer can be used to improve the quality of streaming audio

[00:20:50] Speaker 03:
and that he concluded, Quack and Bush, that the switching of communication rates in adding that to trays would work and provide the expected functionality.

[00:21:02] Speaker 03:
Now, he's citing to, and then in the next paragraph continuing, they credit Dr. Quack and Bush's testimony that one of ordinary skill in the art would have sought to use and would have had reasonable expectation of success in implementing Fuller's idea of switching transmission rates

[00:21:20] Speaker 03:
Now, Dr. Quackenbush put together two different things that are explicit motivations to combine in the two references.

[00:21:29] Speaker 03:
He noted that in trays, there's an express reference to buffering as one approach to solving the problem that you have of continuous transmission of data and wanting to make sure that there's always some data there for the audio.

[00:21:47] Speaker 03:
Buffering was how trays suggested to solve that.

[00:21:50] Speaker 03:
Now, Quack and Bush points to the fact that in Fuller, Fuller explicitly describes the benefit of switching rates to make sure to enhance the quality of that by making sure that you're matching the bandwidth of the client with the rate of audio coming in.

[00:22:11] Speaker 03:
So it's an enhancement of Trey's solution to this problem.

[00:22:16] Speaker 03:
that a person of ordinary skill in the art would have been motivated to apply Fuller to trades in exactly the way Fuller describes.

[00:22:26] Speaker 00:
Can I shift gears again to yet another issue?

[00:22:29] Speaker 00:
And I understand that you're not here to necessarily defend all of the board's rules and procedures, but there's a motion to exclude here.

[00:22:38] Speaker 00:
Yes.

[00:22:38] Speaker 00:
And I guess I have a question about how the board chose to handle it.

[00:22:44] Speaker 00:
And my question

[00:22:45] Speaker 00:
is when they say at the end, they kind of treat it on its merits.

[00:22:52] Speaker 00:
But their final conclusion is to the extent that the petitioner's reply evidence does not respond to specific arguments, in other words, should be excluded, or seeks to establish an element necessary to make out a case in chief, it has not been considered.

[00:23:07] Speaker 00:
So at the end of the day, we don't know what the board decided it should consider and what it decided it couldn't decide.

[00:23:16] Speaker 03:
Well, I think we do know, because the board does cite only a very small subset of the evidence that was submitted in connection with the report.

[00:23:27] Speaker 00:
But we have lots of cases that say, when people complain to us, well, the Court of Veterans Claims didn't analyze this argument.

[00:23:35] Speaker 00:
And we assume there's an assumption that a tribunal considers something, even if they don't deal with it or talk about it.

[00:23:44] Speaker 00:
So my question goes to how we are supposed to review, and we get to review, the PTAB's consideration of motions to exclude, and how we are supposed to be able to review the PTAB's decision when the PTAB doesn't tell us what it's excluding and what it isn't.

[00:24:01] Speaker 00:
It's like, just trust us.

[00:24:02] Speaker 00:
We've done the right thing here.

[00:24:03] Speaker 00:
Let's move on.

[00:24:05] Speaker 03:
I think in this particular case, and as Your Honor says,

[00:24:09] Speaker 03:
I'm most concerned with defending what the board has done in this case.

[00:24:13] Speaker 03:
And here, I think that it's sufficient if the court only looks at the evidence in the reply that was specifically recited by the board.

[00:24:24] Speaker 02:
So you would just have us assume that the board didn't consider that what the board specifically talked about was proper consideration.

[00:24:36] Speaker 02:
And anything they didn't specifically talk about

[00:24:39] Speaker 02:
They either didn't consider it all because it wasn't proper rebuttal, or it just doesn't matter.

[00:24:44] Speaker 02:
I don't really know how we can do that in this case.

[00:24:48] Speaker 02:
I mean, to the extent we agree with you that we can just ignore all that, because what they did consider sufficient, maybe that's your argument.

[00:24:55] Speaker 02:
But that seems a problem going forward for the board if they want to rely on evidence that wasn't specifically discussed.

[00:25:03] Speaker 02:
but still as part of the substantial evidence.

[00:25:06] Speaker 03:
I think that's right, Your Honor, that if the board is not explicitly referencing the evidence that was submitted in rebuttal, and it has just a general statement like this, that if it deemed it improper, it hasn't relied on it, I think you pretty much have to assume that they didn't rely on anything other than what they cited.

[00:25:28] Speaker 03:
But here, we're only relying on as substantial evidence to support the board's finding.

[00:25:33] Speaker 03:
the evidence and rebuttal.

[00:25:35] Speaker 03:
In fact, I think you can sustain the board's decision without looking at the rebuttal evidence at all.

[00:25:43] Speaker 03:
Because really, Quack and Bush said that you can incorporate Fuller in two different ways.

[00:25:51] Speaker 03:
First is the general teaching of Fuller that of the idea of switching transmission rates.

[00:25:59] Speaker 03:
And as the board noted, there's no more detail than that in the 007 patent, just switching transmission rates.

[00:26:07] Speaker 03:
And that idea is disclosed by Fuller.

[00:26:11] Speaker 03:
And Quackenbush cites it for that idea.

[00:26:14] Speaker 03:
Quackenbush also references the specific application of that idea in Fuller, which is through the Java applets.

[00:26:21] Speaker 04:
Now... And is it right that all of the contested evidence on reply

[00:26:27] Speaker 04:
It has to do with the Java application implementation of the transmission range.

[00:26:34] Speaker 03:
That's right.

[00:26:34] Speaker 03:
That's right, your honor.

[00:26:36] Speaker 03:
So there was the one assertion was that one of ordinary school in the art would not have understood Fuller to have any application beyond Java.

[00:26:53] Speaker 03:
That is contrary to Dr. Quackenbush's testimony in his opening affidavit, which is that one would have understood.

[00:27:01] Speaker 03:
He starts with the general proposition and then talks about, as an example, the Java application.

[00:27:06] Speaker 03:
But he also says in his rebuttal a declaration, but this is not any evidence, any further exhibits or anything.

[00:27:16] Speaker 03:
He simply says Java is

[00:27:18] Speaker 03:
a general programming language.

[00:27:20] Speaker 03:
And if you can implement it with the Java general programming language, you can implement it with any other general programming language.

[00:27:28] Speaker 04:
I realize that you've just made an argument that this motion to exclude ruling is really immaterial to the outcome here.

[00:27:38] Speaker 04:
But I guess I want to ask you about what's at least a troubling procedural

[00:27:48] Speaker 04:
determination of two parts.

[00:27:50] Speaker 04:
One is, I think, what was already raised, namely where the board says, well, to the extent that we shouldn't have, we didn't.

[00:27:56] Speaker 04:
But we don't know what it is that that covers.

[00:27:59] Speaker 04:
And that leaves us in a quandary to know what they considered and what they didn't.

[00:28:04] Speaker 04:
But the other is this, I think, that relies maybe on something a board panel said in Liberty Against Progressive, which I think was the last time we saw you.

[00:28:18] Speaker 04:
where it says we will exclude evidence if it's inadmissible for hearsay or irrelevance, but we won't actually exclude it if it's improper because it's not rebuttal evidence.

[00:28:34] Speaker 04:
I don't really understand that.

[00:28:36] Speaker 04:
Can you enlighten me?

[00:28:37] Speaker 03:
I read this opinion here as noting really that there are two different remedies.

[00:28:45] Speaker 03:
One is

[00:28:45] Speaker 03:
A very technical reading of a motion to exclude.

[00:28:48] Speaker 03:
A motion to exclude is you exclude evidence that is not proper evidence.

[00:28:54] Speaker 03:
It's not reliable.

[00:28:55] Speaker 03:
There are reasons that it's not admissible, right?

[00:28:59] Speaker 03:
And then there's a second question about whether the evidence should be struck in a sense.

[00:29:06] Speaker 03:
And they don't call it that, although this court in other cases, including Genzyme, has talked about a motion to strike.

[00:29:13] Speaker 03:
improper reply evidence that goes beyond the scope of the opposition.

[00:29:19] Speaker 03:
And what I take the second sentence, the last sentence of that analysis to be, is to recognize that in an appropriate case, improper rebuttal evidence should be struck.

[00:29:32] Speaker 03:
And what the board is saying here is I don't think they're determining that necessarily anything was improper, but what they have relied on

[00:29:43] Speaker 03:
in this final written decision is all proper rebuttal evidence.

[00:29:49] Speaker 03:
Because again, the preliminary petition with Dr. Quackenbush's declaration made out the prima facie case, both at the level of Fuller's general teaching, but also at the level of the Java applet.

[00:30:03] Speaker 03:
And the patent owner came back, as they can be expected to, to try to undermine Quackenbush's

[00:30:11] Speaker 03:
testimony and have the board not credit it on the theory that Java wouldn't work on a handheld device.

[00:30:20] Speaker 03:
Well, they said that, but Dr. Quackenbush came back and said, well, no, here's a 1999 book about Java, which makes clear that there's not just general Java, but there's personal Java.

[00:30:33] Speaker 03:
And personal Java is designed to run applets and it runs on

[00:30:37] Speaker 03:
devices that are more memory constrained, including a web phone or a handheld PC.

[00:30:45] Speaker 03:
These are the kinds of small personal devices that would do the kind of things that the O7 patent is claiming with respect to the streaming of the data.

[00:30:55] Speaker 03:
And so that's proper rebuttal evidence to say that Dr. Zhang, when he says these smaller devices can't run Java, that's wrong.

[00:31:04] Speaker 03:
He's ignoring personal Java.

[00:31:07] Speaker 03:
which was already out in 1999.

[00:31:10] Speaker 03:
And so that's proper rebuttal evidence, as is, and it wasn't evidence at all, I mean, in the form of like an exhibit, but his own statement in his declaration at paragraph 15, which the board does cite several times, that Java is simply a general purpose programming language.

[00:31:30] Speaker 03:
And so you can transfer that teaching to other languages.

[00:31:36] Speaker 03:
If the court has no further questions.

[00:31:37] Speaker 03:
Thank you very much.

[00:31:43] Speaker 00:
OK, Mr. Schultz, you've got two minutes.

[00:31:45] Speaker 00:
Thank you, Your Honor.

[00:31:46] Speaker 01:
I'll attempt to be quick.

[00:31:47] Speaker 01:
Just to address this last issue, the board made an arbitrary decision when it ignored the very regulations to allow new evidence in.

[00:31:58] Speaker 01:
The point that the court has raised and the question is,

[00:32:03] Speaker 01:
The PTAB regulations require that if there is any new evidence in the reply brief, the entire reply brief is gone.

[00:32:15] Speaker 01:
The regulations do not allow the board to do what they did here, which was to say, well, if there is new evidence, we won't consider that.

[00:32:23] Speaker 01:
Really?

[00:32:23] Speaker 01:
Wait a minute.

[00:32:24] Speaker 00:
The rule is that if there's one sentence that relies on new evidence that's

[00:32:31] Speaker 00:
not rebuttal evidence, then we strike the entire reply?

[00:32:35] Speaker 01:
That's correct, Your Honor.

[00:32:36] Speaker 01:
If you look at the patent office, patent trial guide at federal regulation page 48767.

[00:32:43] Speaker 01:
Is that something that we have available in the material sitting on our desk right now?

[00:32:49] Speaker 01:
I don't believe it is in there.

[00:32:50] Speaker 01:
I apologize for that.

[00:32:51] Speaker 01:
But it is obviously readily available on the internet.

[00:32:55] Speaker 01:
But that defines the practice guide.

[00:32:58] Speaker 01:
And it says in there, if there's new evidence,

[00:33:00] Speaker 01:
In the reply, it first defines what new evidence is, which is if you need it for your prima facie case, that's new evidence.

[00:33:06] Speaker 01:
And if there's any new evidence in the reply brief, the whole brief is out.

[00:33:09] Speaker 01:
The board is not to sit there and parse what is new and what is not new.

[00:33:13] Speaker 01:
And it makes sense.

[00:33:14] Speaker 00:
I don't understand.

[00:33:15] Speaker 00:
Isn't the definition of new based on if they get to respond to the patentee submission, right?

[00:33:22] Speaker 00:
That's the whole point of a reply.

[00:33:24] Speaker 00:
So obviously, they're not going to say exactly only the same thing they said originally, right?

[00:33:29] Speaker 00:
This is a reply brief.

[00:33:31] Speaker 01:
Correct, Your Honor.

[00:33:31] Speaker 01:
And they fully get to do it.

[00:33:33] Speaker 01:
But if they need that evidence for their prima facie case, then that evidence should have been in the petition, such that the Patent Order would have the opportunity to respond to it.

[00:33:41] Speaker 01:
Because if it's brought in the reply brief, it's sandbagging, because the Patent Order doesn't have any substantive response to it.

[00:33:47] Speaker 01:
So there's a public policy reason for it.

[00:33:49] Speaker 01:
And so just to briefly, quickly summarize here, all the evidence related to personal Java or the use of general programming language like Java, all that evidence that they need to show that the combination of Fuller would work

[00:34:01] Speaker 01:
was in the reply brief.

[00:34:03] Speaker 01:
If you look at the petition and the declaration of Dr. Quackenbush related to this element on using the Fuller Java applet in the petition, there is nothing there.

[00:34:14] Speaker 01:
Nothing.

[00:34:15] Speaker 01:
And so they need this evidence to establish not only the premium fraud case, but their ultimate case should be stricken, should have been out, the board erred, and we'd expect reversal.

[00:34:23] Speaker 01:
Thank you.

[00:34:24] Speaker 00:
Thank you.