[00:00:00] Speaker 01:
015-2073, same two parties, Arendi versus Apple, but I think we have different counsel.

[00:00:25] Speaker 01:
Mr. Asher, please proceed.

[00:00:27] Speaker 03:
The question for the court today is whether it will open the door for the Patent and Trial and Appeal Board to invalidate patent claims without evidence.

[00:00:36] Speaker 01:
Well, heck no.

[00:00:36] Speaker 01:
That's easy.

[00:00:37] Speaker 03:
Let's all just go home.

[00:00:39] Speaker 03:
Exactly.

[00:00:40] Speaker 03:
I'm happy to do that, Your Honor.

[00:00:42] Speaker 03:
Whether the board and the petitioner will be allowed to rely on hindsight-laden words, common sense to fill in a missing limitation in the prior art.

[00:00:51] Speaker 03:
The board gave no rational explanation for why, when performing an add to address book,

[00:00:57] Speaker 03:
The subroutine impended would search for duplicate telephone numbers.

[00:01:01] Speaker 03:
To the contrary, the board merely states we find it reasonable to presume.

[00:01:07] Speaker 00:
KSR specifically refers to rates to common sense, does it not?

[00:01:11] Speaker 03:
KSR does.

[00:01:12] Speaker 00:
OK, so the Supreme Court's telling us that in the obviousness inquiry, common sense is a factor that we're to consider, correct?

[00:01:21] Speaker 03:
Common sense is a factor with respect to KSR and how it was distinguished

[00:01:26] Speaker 03:
K.S.

[00:01:26] Speaker 03:
Hemp versus here where the common sense is relevant, common sense of one of ordinary skill and the art at the time is relevant to coming up with a combination, how one would combine references.

[00:01:41] Speaker 00:
OK, so is it your position that as a matter of law that the common sense, that use of the common sense inquiry and the obviousness analysis is limited to use

[00:01:53] Speaker 00:
in connection with considering whether there's a motivation to combine, as opposed to determining whether or not a limitation that's absent in the prior art could be found.

[00:02:05] Speaker 03:
I believe that's good law under the Hewer decision.

[00:02:08] Speaker 03:
Yes, your honor.

[00:02:12] Speaker 00:
Well, if that's the case, then that's the end of the inquiry on their use of common sense, because they didn't use it with respect to motivation to combine.

[00:02:18] Speaker 03:
That would be.

[00:02:19] Speaker 03:
If you apply Hewer to this case, I think that's the end of it, yes.

[00:02:22] Speaker 00:
OK, what if we disagree and believe that common sense applies to both aspects of the inquiry?

[00:02:31] Speaker 03:
So if common sense were to apply, you have to have evidence of this common sense.

[00:02:37] Speaker 03:
You need testimony that can be challenged and that can be presented to the court and stand up as evidence.

[00:02:47] Speaker 03:
And in this case, we have a situation where

[00:02:52] Speaker 03:
Rather than common sense, you have the board asserting an irrational suggestion.

[00:03:01] Speaker 03:
So in their first reasoning, they go to the paper address book.

[00:03:06] Speaker 03:
So they look at a paper address book, but that's irrelevant to this claim.

[00:03:14] Speaker 03:
One, using a paper address book would not laboriously flip through it looking for telephone numbers.

[00:03:19] Speaker 03:
The claim search of step I of the claim requires using at least part of the first information as a search term.

[00:03:27] Speaker 03:
And with respect to the embodiment of Pandit being asserted against the 843 patent, the first information is the telephone number.

[00:03:34] Speaker 01:
So Dr. Menace, am I saying his name right?

[00:03:37] Speaker 01:
Menace.

[00:03:37] Speaker 01:
Menace.

[00:03:38] Speaker 01:
Oh, I like Menace better.

[00:03:40] Speaker 01:
Dr. Menace, didn't he testify that it would be common sense to look for people by name?

[00:03:48] Speaker 01:
And that's not even what's claimed, right?

[00:03:51] Speaker 01:
What this claim is going to is looking by telephone number.

[00:03:54] Speaker 01:
But wasn't Dr. Menashe's testimony that it would be common sense maybe to search by name?

[00:04:01] Speaker 03:
Correct.

[00:04:02] Speaker 03:
Dr. Menashe made some general statement.

[00:04:05] Speaker 01:
Because that's what the board relied on.

[00:04:06] Speaker 01:
To the extent that the board thought there was evidence to support what they did isn't one of your arguments that that evidence actually cannot be found to be the substantial evidence.

[00:04:16] Speaker 03:
Correct, that cannot be the substantial evidence.

[00:04:18] Speaker 01:
These are helpful questions.

[00:04:20] Speaker 01:
I appreciate it.

[00:04:20] Speaker 03:
And to help further, this is very similar to what happened in the case of active video networks versus Verizon at 694 F3rd, 1312, where the court said, this testimony is generic and bears no relation to any specific combination of prior art elements.

[00:04:39] Speaker 03:
And that's all you have here.

[00:04:40] Speaker 03:
He made some general statement.

[00:04:43] Speaker 03:
He concluded it.

[00:04:44] Speaker 03:
having to do with avoiding the same address.

[00:04:48] Speaker 03:
And so you don't have any evidence that is particular to the issues here.

[00:04:53] Speaker 01:
But even more than it just being different, because somebody might say, well, Dr. Menashe said it would be common sense before you create a new phone number for someone in your contact to look to see if you already have an existing phone number for that person by looking for it by name.

[00:05:11] Speaker 01:
I'm testifying more than he did, but that's

[00:05:14] Speaker 01:
the most that can be said about what he said, right?

[00:05:17] Speaker 01:
And isn't it true that since the claim focuses on searching by the first information, which is actually the phone number and not the name, that that would be the common sense idea breaks down because you could have lots of repetition of phone numbers.

[00:05:36] Speaker 01:
My husband works at a big law firm.

[00:05:38] Speaker 01:
I actually happen to have three former clerks who work there now.

[00:05:41] Speaker 01:
They all have the same phone number.

[00:05:43] Speaker 01:
So, right?

[00:05:44] Speaker 01:
I mean, that would be weird.

[00:05:45] Speaker 01:
And that's one logical reason not to search by phone number.

[00:05:48] Speaker 01:
I'd actually pull up four entries in my contact book.

[00:05:51] Speaker 03:
Yeah, there are a number of reasons why it's irrational to support the notion of a search, which is not found in Pandit at all, by having a telephone number.

[00:06:02] Speaker 03:
Another reason is, in Pandit, you're adding to an address book.

[00:06:07] Speaker 03:
You have a telephone number.

[00:06:09] Speaker 00:
Yeah, but Apple would argue, or does argue,

[00:06:12] Speaker 00:
What Dr. Minacci was really emphasizing is that when you do the search, your point is to determine if there are duplicate entries.

[00:06:21] Speaker 03:
All right.

[00:06:21] Speaker 03:
So you have a telephone number, and you want to enter it in your address book.

[00:06:26] Speaker 03:
One of your entries needs this phone number.

[00:06:28] Speaker 03:
So you do the add to address book.

[00:06:31] Speaker 03:
The computer does the search.

[00:06:33] Speaker 03:
It doesn't find your entry because it needs the telephone number.

[00:06:37] Speaker 03:
So you give it the name, and the name

[00:06:41] Speaker 03:
goes with the telephone number, and it gets entered into your address book.

[00:06:45] Speaker 03:
Well, what if that entry had a different telephone number?

[00:06:48] Speaker 03:
Now you've got a duplicate entry for this person.

[00:06:52] Speaker 00:
But does the claim say anything other than add to address book?

[00:06:55] Speaker 00:
It doesn't say, and make sure you don't have any duplicate entries?

[00:07:01] Speaker 03:
I mean, you could add.

[00:07:02] Speaker 03:
Add to address book has nothing to do with our claim.

[00:07:04] Speaker 03:
Add to address book is pandit.

[00:07:08] Speaker 03:
And our claim has to do with,

[00:07:11] Speaker 03:
being able to search in an external source from the first program.

[00:07:17] Speaker 03:
And so they're just trying to shoehorn-pan it into our claim by imagining a search when you're doing an add-to-address book with a telephone number.

[00:07:28] Speaker 03:
And they're saying you would avoid a duplicate entry when in fact you would not avoid duplicate entries in many situations.

[00:07:38] Speaker 03:
The search just makes no sense.

[00:07:40] Speaker 02:
You're arguing basically that Pandit just simply teaches adding a telephone number to an address book.

[00:07:49] Speaker 02:
It doesn't teach the extra step of doing a search.

[00:07:53] Speaker 02:
That's correct.

[00:07:55] Speaker 02:
Now the argument on the other side is that, well, it was well known at that time that in some databases, if you wanted, you could automatically do a search before you added a

[00:08:09] Speaker 02:
a name, that some databases by default would automatically search to avoid duplicate entries while you're adding, correct?

[00:08:20] Speaker 03:
So that sort of search deals with the entry identifier.

[00:08:24] Speaker 03:
You say the name.

[00:08:29] Speaker 03:
We're talking about data contents, right?

[00:08:31] Speaker 02:
Your argument is that it was common that in certain databases, and I think even your own experts,

[00:08:38] Speaker 02:
stated that some databases by default would automatically check for duplicate entries, some didn't.

[00:08:46] Speaker 03:
So to the extent that they would, it would probably be when there is an entry identifier and you might look for the entry identifier.

[00:08:53] Speaker 03:
Like with the paper address book, you're entering a name, maybe you would check that section of your address book.

[00:09:00] Speaker 03:
When you did that telephone number search, which is of no value because it didn't find the entry and you entered a duplicate

[00:09:07] Speaker 03:
One could have also done a search for the name and found the entry and avoided the issue.

[00:09:15] Speaker 03:
But here, the information that's being asserted against our claim is this telephone number.

[00:09:24] Speaker 03:
And in that instance, it's just data content.

[00:09:26] Speaker 03:
And it's not rational to conduct or imagine this search in Pandit.

[00:09:34] Speaker 02:
Well, the board said there would be a

[00:09:37] Speaker 02:
It would be a benefit whenever you add something to an address book to avoid duplicate entries.

[00:09:44] Speaker 02:
And that in and of itself is the motivation to combine what is arguably common and old elements, namely searching for duplicates.

[00:09:55] Speaker 03:
That might be true for an entry identifier, but here it's not true for the telephone number.

[00:10:00] Speaker 03:
They say it could be a benefit.

[00:10:02] Speaker 03:
They say it would be common sense.

[00:10:03] Speaker 03:
And they say it's reasonable to presume, but they don't have an underlying rationale that I understand for there to be a benefit.

[00:10:12] Speaker 02:
So you're arguing they don't have a teaching for the extra step of searching for duplicates whenever you add a telephone?

[00:10:23] Speaker 03:
No, Your Honor, there's not.

[00:10:26] Speaker 03:
And we didn't have an opportunity to depose the board or anything on this presumption that it came up with in its decision.

[00:10:34] Speaker 03:
All we have was the general statement from the Apple's expert.

[00:10:44] Speaker 01:
Do you want to save your remaining time for rebuttal, or do you have anything further?

[00:10:48] Speaker 03:
I can save.

[00:10:49] Speaker 01:
Thank you.

[00:10:49] Speaker 01:
OK.

[00:10:49] Speaker 01:
Thank you, Mr. Asher.

[00:10:51] Speaker 01:
Mr. Matsui?

[00:11:00] Speaker 04:
Thank you, Your Honor.

[00:11:03] Speaker 04:
May it please the Court?

[00:11:04] Speaker 04:
The Board's decision to cancel a claim so the 843 patent should be affirmed.

[00:11:09] Speaker 04:
Substantial evidence supports the Board's decision.

[00:11:12] Speaker 04:
The issue on appeal is whether a person of ordinary skill of the art would have seen a benefit to including the known methods of database searching to Pandit's Add to Address book example.

[00:11:24] Speaker 04:
Now, I think it's important to go back and look at what Pandit actually is disclosing here.

[00:11:30] Speaker 00:
But let's back up, because I want to get to the legal principle here.

[00:11:35] Speaker 00:
With respect to the use of common sense, it's one thing to say that, well, common sense would say that those of skill in the art would be motivated to combine two pieces of prior art.

[00:11:46] Speaker 00:
What you're asking us to do is to use common sense to basically substitute for something that's absent in the prior art.

[00:11:54] Speaker 04:
Isn't that right?

[00:11:55] Speaker 04:
No.

[00:11:55] Speaker 04:
No, Your Honor, we're not doing that.

[00:11:57] Speaker 04:
I think it's important to distinguish between two distinct concepts

[00:12:00] Speaker 04:
One is common sense, which is the motivation to modify or to combine.

[00:12:05] Speaker 04:
And the other is common knowledge, the common knowledge of a person of ordinary skill in the art.

[00:12:10] Speaker 04:
And that's what the board was relying upon here when it was looking to modify Pandit.

[00:12:16] Speaker 04:
It was relying on the common knowledge of database searching.

[00:12:19] Speaker 00:
But it didn't really say that, did it?

[00:12:21] Speaker 00:
It said it would be it's common sense to do this search.

[00:12:25] Speaker 04:
No, Your Honor.

[00:12:26] Speaker 04:
I think if we start at A12 of the board's opinion,

[00:12:29] Speaker 04:
And this is going to continue on to A13.

[00:12:32] Speaker 04:
But it says, the obviousness inquiry not only permits but requires consideration of common knowledge and common sense.

[00:12:40] Speaker 04:
And then if we skip down to the next paragraph or next paragraph on page A13, it says, in this case, a claimed structural feature is not missing from the applied prior art.

[00:12:51] Speaker 04:
The conclusion of obviousness follows from a benefit that readily would have been apparent to one of skill in the art at the time of the invention.

[00:12:59] Speaker 04:
That benefit is provided by the mere retrieval and display of useful pre-existing information to a user, information in a database, using known methods.

[00:13:09] Speaker 04:
And then if we look at the next paragraph, the board specifically cites and relies upon patent owner's expert admits that some database programs conduct a search for duplicates by default.

[00:13:22] Speaker 04:
So the board right here is relying upon what's the general knowledge of the art, that people of ordinary skill in the art

[00:13:29] Speaker 04:
understood databases and databases searching.

[00:13:33] Speaker 04:
Dr. Meniche, our expert, explained that A168 and A170... But this patent claim is not about searching for duplicates.

[00:13:47] Speaker 01:
Your Honor... The fact that their expert said that searching for duplicates is known isn't the same as what this claim directed to.

[00:13:57] Speaker 01:
This claim is directed to

[00:13:59] Speaker 01:
searching for a particular kind of information, which is the first information, which in this case is a phone number.

[00:14:08] Speaker 01:
And it doesn't care if there are duplicates.

[00:14:13] Speaker 04:
No, Your Honor.

[00:14:13] Speaker 04:
I think if we actually look at the claims and the specification of the 843 patent.

[00:14:17] Speaker 01:
I'm looking at the claims.

[00:14:18] Speaker 04:
It's very clear that it's searching for duplicates.

[00:14:22] Speaker 04:
Now, let's go to A74 and claim one at column

[00:14:29] Speaker 04:
63.

[00:14:30] Speaker 04:
I just have to claim.

[00:14:31] Speaker 04:
So just tell me what... At line 63, causing a search for a search term in the information source using a second computer program in order to find second information related to the search term.

[00:14:45] Speaker 04:
So what it's doing is it's taking the first information... That's talking about duplicates.

[00:14:48] Speaker 04:
It is a duplicate, Your Honor, because what it's doing is it's taking the first information, which might be a name, and it's taking that name as a search term.

[00:14:56] Speaker 01:
Well, the first information in this is the phone number.

[00:14:59] Speaker 01:
And then what's disclosed is the first information here?

[00:15:02] Speaker 04:
The first information I think would be in the 843 patent would be a name, such as you would find someone's name and then you would, it could be multiple things, but a name is the example they mainly use in the 843 patent.

[00:15:16] Speaker 04:
And so what that does is it identifies a name, it searches for that name in an external database, and then it retrieves information.

[00:15:27] Speaker 04:
If it finds the duplicate of the name,

[00:15:29] Speaker 04:
that's related to the name.

[00:15:30] Speaker 04:
In other words, if you think about an address book, it basically takes my name, Brian Matsui, it searches for Brian Matsui in the address book, and then it pulls up my address, my telephone number, my email.

[00:15:41] Speaker 04:
That's what the claim is doing.

[00:15:42] Speaker 02:
But it searches your name, and then it pulls up your address.

[00:15:47] Speaker 02:
Yes, Your Honor.

[00:15:47] Speaker 02:
So it doesn't necessarily look for duplicates.

[00:15:51] Speaker 04:
It does, Your Honor, because it says right there in the claim that it's searching for the duplicate.

[00:15:55] Speaker 01:
Where does it say searching for the duplicate?

[00:15:58] Speaker 04:
Your Honor, it says causing a search for the search term in the information source using the second... Yeah, that's your name.

[00:16:07] Speaker 02:
Yes.

[00:16:08] Speaker 02:
In the information source... In order to find second information, that's your address.

[00:16:13] Speaker 04:
Yes, once it finds the duplicate, then it retrieves the second information.

[00:16:17] Speaker 04:
What duplicate?

[00:16:17] Speaker 01:
I'm sorry.

[00:16:18] Speaker 01:
What duplicate?

[00:16:18] Speaker 01:
It looks for your name to get your phone number.

[00:16:21] Speaker 04:
Yes, Your Honor, but the way that it does that is it uses a search term that's the first information.

[00:16:27] Speaker 04:
The first information is my name.

[00:16:29] Speaker 04:
That's in the document.

[00:16:30] Speaker 04:
And it uses my name to search as the search term in the external information source, in the external database.

[00:16:39] Speaker 04:
If it finds my name, which would be a duplicate, it would be my name, Brian Matsui, in the original document, my name, Brian Matsui, in the database.

[00:16:50] Speaker 04:
Then it retrieves second information.

[00:16:52] Speaker 04:
That's just simple database searching.

[00:16:54] Speaker 04:
That's what Dr. Meneshe is explaining

[00:16:56] Speaker 04:
that a database search does.

[00:17:00] Speaker 04:
And so at A170, Dr. Minichet explains that databases are a structured way to store information that can be accessible in a variety of different ways.

[00:17:09] Speaker 02:
Let me direct you to Dr. Minichet's declaration.

[00:17:15] Speaker 02:
This is at A207.

[00:17:17] Speaker 02:
Yes, Your Honor.

[00:17:17] Speaker 02:
Paragraph 99.

[00:17:21] Speaker 02:
Yes.

[00:17:22] Speaker 02:
He says it would also have been obvious to a person of ordinary skill in the art at the relevant time frame that the first step in adding to an address book is searching the address book to determine if an entry already exists.

[00:17:35] Speaker 02:
Where in Pandit does it say that the first step is to search for duplicates?

[00:17:41] Speaker 04:
So Pandit itself does not say that, but this is a situation where there is a motive.

[00:17:47] Speaker 02:
Thank you for giving me at least a direct answer on that.

[00:17:50] Speaker 02:
Go ahead.

[00:17:51] Speaker 04:
Right, so Pandit does not disclose searching in the Add to Address book example.

[00:17:56] Speaker 04:
The board recognized that.

[00:17:58] Speaker 04:
But there was a known method of database searching.

[00:18:01] Speaker 02:
But so what?

[00:18:02] Speaker 02:
I mean, every invention where the invention claimed is a combination of things is a combination of old things that are old and well known.

[00:18:17] Speaker 02:
But in the absence of hindsight,

[00:18:20] Speaker 02:
Nobody knows to combine them except for the inventor.

[00:18:25] Speaker 04:
Yes, Your Honor, but there is a motivation here.

[00:18:27] Speaker 04:
There's a common sense reason that somebody would want to search for a duplicate before adding in a duplicate telephone number into the address book.

[00:18:36] Speaker 04:
Now, I think that one of the things that we've been discussing a lot is Pandit in the context of telephone numbers.

[00:18:42] Speaker 04:
And I think it's important to note that Pandit is not limited to telephone numbers.

[00:18:47] Speaker 04:
To Pandit, the example in 1F, figure 1F in Pandit, which is at A145, where it has this telephone number, this 202 telephone number, Pandit discloses that that's not the only type of text that can be recognized.

[00:19:05] Speaker 04:
What Pandit explains is that entry of, and the board made a finding on this, entry of a telephone number, however, as depicted in figure 1F of Pandit is, however,

[00:19:16] Speaker 04:
but one example of Pandit's teachings with respect to the entry of data.

[00:19:20] Speaker 04:
Texts including, for example, email addresses, nouns, verbs, names, and street addresses can be recognized.

[00:19:27] Speaker 04:
In other words, Pandit expressly discloses that you can use a name in the add to address book function.

[00:19:35] Speaker 04:
And so even if this court says, well, it wouldn't be common sense to go search for a telephone number because major law firms, major businesses all have the same

[00:19:45] Speaker 04:
telephone number for multiple different people, there would be a reason to do that with respect to a name.

[00:19:51] Speaker 04:
So you would first search to see if the name already exists in the address book.

[00:19:57] Speaker 04:
And if the name exists in the address book, it would display what information comes up.

[00:20:02] Speaker 00:
But didn't the board find that you'd have to modify Pandit in order to get to the name?

[00:20:08] Speaker 00:
In other words, they were using common sense to modify Pandit.

[00:20:11] Speaker 00:
They didn't find that Pandit actually disclosed this exact search.

[00:20:16] Speaker 04:
Yes, your honor, but this is obviousness.

[00:20:17] Speaker 04:
It's not anticipation.

[00:20:19] Speaker 04:
This is single reference obviousness.

[00:20:21] Speaker 04:
So there is going to be some sort of gap between what's disclosed in the prior art and what the alleged invention claims.

[00:20:28] Speaker 04:
And the issue here is just whether a person of ordinary skill in the art would have seen a reason to modify that.

[00:20:33] Speaker 00:
I mean, the normal obviousness analysis, the bulk of the obviousness analysis that we see are everything's disclosed somewhere in the prior art.

[00:20:41] Speaker 00:
The only question is, would someone put them together, where you have

[00:20:45] Speaker 00:
and there is a limitation that is completely absent, that is a much more difficult analysis.

[00:20:52] Speaker 00:
And just using common sense to find an absent limitation is something that this court has cautioned against.

[00:21:00] Speaker 04:
So I would disagree with that in several respects, Your Honor.

[00:21:02] Speaker 04:
The first is we're not using common sense here to create a limitation.

[00:21:08] Speaker 04:
We're using common knowledge.

[00:21:10] Speaker 04:
We're using information that is in Dr. Levy's

[00:21:13] Speaker 04:
Declaration, which the board found, where he can see that some databases search for duplicates by default.

[00:21:18] Speaker 04:
Dr. Meneshe's declaration, where he explains that searching in databases was well known.

[00:21:23] Speaker 04:
And in fact, Pandit itself discloses searching.

[00:21:27] Speaker 04:
I think that if we look at A149 of Pandit, at column 1, there's a description of the related art.

[00:21:37] Speaker 04:
And at line 10 in column 1, it says, one example of word recognition

[00:21:43] Speaker 04:
is the searching of large volumes of text, such as encyclopedias or legal case books, using keywords or search terms.

[00:21:52] Speaker 04:
So searching itself is disclosed in Pandit.

[00:21:55] Speaker 04:
And so the only issue here is whether or not there would have been a motivation to combine.

[00:22:00] Speaker 04:
And under this court's precedent, you can use common.

[00:22:03] Speaker 01:
No, searching for a particular word is disclosed in Pandit.

[00:22:07] Speaker 01:
The searching that's occurring in the claim is searching

[00:22:11] Speaker 01:
for a word in order to retrieve different information that is attached to that word, right?

[00:22:18] Speaker 01:
So that's not what's disclosed in PANDIT.

[00:22:20] Speaker 01:
And you're not arguing that's what's disclosed in PANDIT, are you?

[00:22:22] Speaker 01:
Because I didn't read your argument.

[00:22:24] Speaker 04:
That is disclosed in PANDIT.

[00:22:26] Speaker 04:
Where?

[00:22:27] Speaker 04:
If we go to A150.

[00:22:29] Speaker 01:
You agree column one line

[00:22:31] Speaker 01:
10 or 11, you just pointed me to, doesn't disclose that.

[00:22:33] Speaker 04:
That discloses that searching of databases was well known.

[00:22:36] Speaker 01:
No, it discloses searching for a word, a particular word, using a keyword as a search term, and searching in a large database for that word, not searching by word for a different piece of information.

[00:22:50] Speaker 04:
So in the next sentence, it says a user... Correct?

[00:22:52] Speaker 01:
Am I right or wrong about what that discloses?

[00:22:54] Speaker 04:
It does say it's searching for a term, which is the same thing that the invention does, because it searches... No, the invention searches for

[00:23:01] Speaker 01:
a term in order to extract information that is associated with that term.

[00:23:08] Speaker 04:
Yes.

[00:23:08] Speaker 04:
Once it finds the term that it's searching for, then it extracts the associated information.

[00:23:14] Speaker 01:
Oh, OK.

[00:23:15] Speaker 01:
So maybe I should phrase my question differently.

[00:23:17] Speaker 01:
Does Panduit describe somewhere in it extracting information associated with a search term?

[00:23:25] Speaker 04:
So yes, Your Honor.

[00:23:26] Speaker 04:
At A150, at column 3, line 11,

[00:23:32] Speaker 04:
Where the invention is capable of recognizing nouns or verbs, pull down, sorry, A150, column three, line 10.

[00:23:41] Speaker 04:
Where the invention is capable of recognizing nouns or verbs, pull down menus can, for example, identify executable programs which provide the meaning of the highlighted word.

[00:23:53] Speaker 04:
So that is taking the word, it's searching for it in an external information source.

[00:23:59] Speaker 04:
Once it finds it, it brings up

[00:24:02] Speaker 04:
the meaning of the highlighted word, such as the definition in the dictionary.

[00:24:07] Speaker 04:
So again, I'd say that's just simple database searching.

[00:24:09] Speaker 04:
But that right there is Pandit explaining how it works.

[00:24:13] Speaker 04:
And that's substantial evidence that support the board's decision with respect to what was known to a person of ordinary skill at the art at the time of the invention.

[00:24:28] Speaker 04:
Now, I just would like to just make an additional point on the

[00:24:32] Speaker 04:
the Hereware case and some of the law that was discussed here with respect to common sense and common knowledge, it's very clear under this court's precedent that common knowledge is distinguishable from common sense, that you just need some sort of record support for it.

[00:24:49] Speaker 04:
And in the Hereware case, the support held that there was absolutely no record support for the background knowledge in the art.

[00:24:56] Speaker 04:
But in fact, in Hereware, this court said that,

[00:25:01] Speaker 04:
an affidavit or a declaration by the examiner could have provided what was known to a person of already skill in the art.

[00:25:09] Speaker 04:
And that's what we have here.

[00:25:11] Speaker 04:
We have declarations from Dr. Levy and Dr. Meniche, which provide evidence that there was this common knowledge of database searching.

[00:25:21] Speaker 04:
This is just simple database searching, where you take information, you search and see if it's in the database, and then you pull back associated information.

[00:25:31] Speaker 01:
Now, in the board's decision to institute at A489, didn't they expressly reject the site you just gave me that you just said is substantial evidence for the board's decision?

[00:25:43] Speaker 01:
Didn't they expressly reject it and actually say Apple did not rely on Panduit 3, 11 to 15 in its petition to institute and therefore it would not rely upon it or consider it?

[00:25:56] Speaker 01:
So are you now telling me to use as substantial evidence for the decision

[00:26:00] Speaker 01:
a passage in the reference that the board expressly refused to consider because they said you waived it?

[00:26:07] Speaker 04:
Your Honor, I don't think that that's actually what the board said in its institution decision.

[00:26:12] Speaker 04:
The board instituted on obviousness, overpanned it.

[00:26:16] Speaker 04:
And so it didn't actually say it was an obviousness challenge based upon just one example.

[00:26:23] Speaker 04:
And what the board said in its institution decision was that

[00:26:33] Speaker 04:
What the board said in its institution decision was that it didn't find at that time enough argument or evidence to look at the noun and verb, but it didn't reject it.

[00:26:44] Speaker 04:
And it simply said it found enough in Pandit's disclosure of the Add to Address book example.

[00:26:51] Speaker 04:
And as this court has held in the Genzyme decision from a few weeks ago in Arioso, that any evidence in the record here is substantial evidence.

[00:26:58] Speaker 04:
There's nothing in the institution decision which says we could not rely upon

[00:27:03] Speaker 04:
that evidence in this prior art reference in this case.

[00:27:06] Speaker 04:
Did the board rely on it?

[00:27:09] Speaker 04:
Well, the board did not specifically cite this part, but it did in the passages I previously read at A11.

[00:27:21] Speaker 04:
It did refer to the fact that Pandit could identify text which included nouns, verbs, names, street addresses.

[00:27:31] Speaker 04:
So the board recognized

[00:27:32] Speaker 04:
that Pandit's disclosure went to things like nouns and verbs, where the noun and verb recognition would be things like taking the noun and finding the definition of the noun.

[00:27:43] Speaker 04:
And again, that's all substantial.

[00:27:44] Speaker 00:
The board didn't make that second step, did it?

[00:27:47] Speaker 04:
Well, Your Honor, it didn't need to because it relied upon the common knowledge of database searching.

[00:27:52] Speaker 04:
And under the substantial evidence standard, any evidence that supports that finding is enough.

[00:27:59] Speaker 04:
If there are no further questions, we would ask that the board's decision be affirmed.

[00:28:06] Speaker 01:
Mr. Asher, you have rebuttal time left.

[00:28:12] Speaker 00:
Why don't you start with that last point?

[00:28:23] Speaker 00:
the last point that says that the Pandit allows an analysis of a second set of information or retrieval of a second set of information to help define the first set of information.

[00:28:35] Speaker 03:
The Pandit has a second set of information?

[00:28:37] Speaker 02:
I'm sorry, the... Yeah, the text at column three, lines 11 to 15.

[00:28:41] Speaker 03:
The invention is capable of recognizing... Oh, nouns and verbs, yes, absolutely.

[00:28:49] Speaker 03:
As

[00:28:50] Speaker 03:
Judge Moore recognized the board excluded the noun verb proposal in Pandit as part of the IPR trial.

[00:28:59] Speaker 03:
So it was not one of the grounds that we dealt with.

[00:29:03] Speaker 03:
The claim is much more than searching.

[00:29:10] Speaker 03:
It requires recognizing first information and using that first information

[00:29:17] Speaker 03:
in a specific way.

[00:29:21] Speaker 03:
There's a search that is performed using the first information to obtain second information of a specific type.

[00:29:30] Speaker 03:
The type of the second information is dependent on the type of the first information.

[00:29:35] Speaker 03:
And there's performing an action in which the action that's performed is of a type that is dependent on the type of the first information.

[00:29:42] Speaker 03:
So the whole claim has to be satisfied

[00:29:45] Speaker 03:
And they've only tried to do that with respect to the telephone number embodiment.

[00:29:49] Speaker 03:
And so that was the only thing that was at play in the case.

[00:29:53] Speaker 00:
But what's your response to the argument that if we're doing a substantial evidence review, as long as the evidence was in the record, we should refer to it?

[00:30:04] Speaker 03:
Well, in order to find evidence of the complete claim, you need to find an incentive

[00:30:13] Speaker 03:
to make the combination of Pandit and other common knowledge that's not disclosed in Pandit.

[00:30:22] Speaker 03:
The step, step I in the claim requires at least three recited features.

[00:30:27] Speaker 03:
It requires a search using the first information.

[00:30:30] Speaker 03:
It requires a search of an external information source.

[00:30:34] Speaker 03:
It requires finding second information, having a type that's dependent on the type of the first information.

[00:30:41] Speaker 03:
So to just pull one sentence out saying that names can be recognized or nouns, verbs can be recognized is not sufficient.

[00:30:49] Speaker 03:
And if that were part of the trial, we could have had a deposition.

[00:30:53] Speaker 03:
We could have gone through whether Pandid is even enabling by means of that first sentence when it mentions names or it mentions nouns, verbs.

[00:31:01] Speaker 03:
Does it enable one to recognize names?

[00:31:07] Speaker 03:
4-3 patent has a whole paragraph explaining how one recognizes the different types of information.

[00:31:14] Speaker 03:
So there were a lot of things that could have gone on had they been in the trial, but this trial and the decision were all directed to the telephone number embodiment in Panda.

[00:31:30] Speaker 01:
Anything further?

[00:31:31] Speaker 03:
Nothing further.

[00:31:32] Speaker 01:
Okay, I thank both counsel for their argument and very helpful.