[00:00:26] Speaker 02:
Next case is in-ray man-machine interface technologies, 2015-1562.

[00:00:32] Speaker 02:
Mr. Cunningham?

[00:00:36] Speaker 01:
Yes, Your Honor.

[00:00:40] Speaker 01:
Thank you, Your Honor.

[00:00:42] Speaker 01:
And may it please the court, on behalf of the appellant man-machine international array interface technologies, I would like to address three points at a time and make one correction for the record, reserving five minutes for rebuttal.

[00:00:56] Speaker 01:
The three independent claims of the patent that's at issue here today is shown on the visual aid that we've provided.

[00:01:06] Speaker 01:
And these claims have been examined and twice examined already.

[00:01:10] Speaker 01:
In addition, Mr. Singhal, the inventor, has licensed this patent.

[00:01:16] Speaker 02:
They've been twice examined, as you said.

[00:01:20] Speaker 02:
But this Japanese reference wasn't

[00:01:24] Speaker 02:
in the examination file, was it?

[00:01:27] Speaker 02:
That's correct, Your Honor.

[00:01:27] Speaker 02:
That's new.

[00:01:29] Speaker 02:
And that seems to have filled a hole that the Florin reference left with respect to the claims.

[00:01:39] Speaker 01:
Well, it's our position, of course, that it hasn't filled a hole.

[00:01:42] Speaker 01:
It's a Japanese patent.

[00:01:46] Speaker 02:
Well, what was added in the reexamination cover?

[00:01:55] Speaker 01:
The first re-examination?

[00:01:57] Speaker 02:
Cover plate?

[00:01:58] Speaker 02:
No, the final one.

[00:01:59] Speaker 02:
A cover plate and an annular switch with four switches.

[00:02:04] Speaker 02:
Wasn't that what the Japanese reference added that wasn't in the Florin reference?

[00:02:11] Speaker 01:
Yes, certainly, Your Honor.

[00:02:12] Speaker 01:
Our position is that the Japanese reference is not a handheld device.

[00:02:18] Speaker 01:
It doesn't provide that.

[00:02:20] Speaker 01:
It doesn't provide that it is a thumb switch.

[00:02:25] Speaker 02:
But those aspects of the claim are provided by Florida.

[00:02:32] Speaker 02:
And I'm thinking about the 103 projection.

[00:02:36] Speaker 01:
Sure, Your Honor.

[00:02:38] Speaker 01:
Our position would be that if not being a handheld device, it being a stationary device, much like a number keypad that you put on a desktop, it wouldn't be held, it wouldn't be

[00:02:53] Speaker 01:
It's not a remote control.

[00:02:54] Speaker 01:
It's tethered to the computer itself.

[00:02:57] Speaker 01:
It's 1982.

[00:02:58] Speaker 01:
It's before the mouse.

[00:03:00] Speaker 04:
But your discussion here is really focusing on the Japanese reference itself as opposed to Florin in view of the Japanese reference, right?

[00:03:10] Speaker 04:
Because the things that you're pointing out that are lacking in Japanese 634 are the very things that Florin would provide, right?

[00:03:19] Speaker 04:
The handheld, the thumb switch.

[00:03:23] Speaker 01:
Your Honor, the Florin reference is limited itself, but it is true that we are focusing on the fact that this particular mouse device, or actually not mouse, keypad device in JP 634.

[00:03:44] Speaker 01:
There's no reason to combine that with the Florin reference.

[00:03:49] Speaker 01:
in order to render our clients obvious.

[00:03:52] Speaker 03:
That's the heart of it, I think, right?

[00:03:54] Speaker 03:
So you're not asking us to look at any objective condition on obviousness.

[00:04:01] Speaker 03:
You haven't raised that in your briefs.

[00:04:03] Speaker 03:
You're focusing just on the question of the motivation to comply, correct?

[00:04:08] Speaker 01:
Yes, Your Honor.

[00:04:09] Speaker 01:
It is a motivation to comply because at one point the JP 634 is referenced as a

[00:04:20] Speaker 01:
handheld device by the acting solicitor, but in reality, it is... Well, let's assume we completely agree with you on claim construction.

[00:04:30] Speaker 03:
And I've got some other questions about that later.

[00:04:32] Speaker 03:
But assume we completely agree with you on your claim construction arguments.

[00:04:37] Speaker 03:
You still have these two devices, one of which is admittedly not handheld, the other of which is.

[00:04:44] Speaker 03:
So one contains the electronic setup that

[00:04:50] Speaker 03:
ultimately you put into your hand-held device, the other is a hand-held device with the thumb switch.

[00:04:55] Speaker 03:
Why wouldn't there be a motivation to combine those two by one ordinary skill in the yard?

[00:05:01] Speaker 01:
Well, Your Honor, there is a long gap of many years between the 1982 device and our own client's invention, and our own client is the one that invented it, not anyone prior to that.

[00:05:17] Speaker 01:
I think the years of

[00:05:20] Speaker 01:
on that need would fill that argument.

[00:05:23] Speaker 03:
But you don't argue objective indicit in your appellate brief.

[00:05:27] Speaker 03:
So you're just saying there wouldn't be a motivation to combine because it was old technology?

[00:05:35] Speaker 01:
Certainly it is old technology.

[00:05:37] Speaker 01:
It's a keypad.

[00:05:38] Speaker 01:
It's not something that would be considered by someone of ordinary skill in the art.

[00:05:49] Speaker 01:
that might have fluorine in his hands wouldn't go to something like that.

[00:05:53] Speaker 02:
There really isn't a long time gap.

[00:05:59] Speaker 02:
The Japanese patent was, what, 1982?

[00:06:03] Speaker 02:
And the priority date of your patent was 1995.

[00:06:06] Speaker 02:
It's not like we're talking about really ancient art.

[00:06:11] Speaker 01:
Well, and also there are many examiners here that had not brought up

[00:06:18] Speaker 01:
The JP 634 is reflective on the fact that whether it would be relevant to one person or of ordinary skill in the art.

[00:06:29] Speaker 01:
It proceeds, even the mouse age, it's a keypad.

[00:06:36] Speaker 01:
It's something you would actually touch with your fingers.

[00:06:39] Speaker 01:
It's not in the remote control field, not that we pressed in out.

[00:06:45] Speaker 04:
Both references have.

[00:06:48] Speaker 04:
a center button, if you will, with other buttons surrounding that center button.

[00:06:54] Speaker 04:
I mean, why wouldn't ordinary scale in the yard have been motivated to, you know, starting with fluorine and modify fluorine to provide smoother movement by using referring to the teachings of JP 634?

[00:07:10] Speaker 01:
I just think that's hindsight reasoning.

[00:07:14] Speaker 01:
I mean, you're looking at

[00:07:15] Speaker 01:
our client's specification and claims, and then you're looking back at something that the first examiner never considered.

[00:07:23] Speaker 01:
And several licensees who've done their own due diligence before taking on licenses by our client have all looked at it.

[00:07:33] Speaker 01:
And only recently somebody has come up with something like this.

[00:07:36] Speaker 01:
Although it is an annular button with a central button, it's something that's

[00:07:43] Speaker 01:
applied, touched by the finger, really in some way it's perhaps replaced the number keypad where you might previously touch the two, the four, the six, and the eight to go up, left, right, and down.

[00:07:56] Speaker 01:
Here they've replaced it in the JP634 with the annular ring, but it's not in any way something that the members in a person with ordinary skill in the art in the handheld device field would look to.

[00:08:13] Speaker 01:
It's nothing like a thumb switch.

[00:08:16] Speaker 01:
It's a finger keypad of some sort.

[00:08:19] Speaker 03:
Am I correct that this patent has expired?

[00:08:22] Speaker 01:
Yes, Your Honor.

[00:08:22] Speaker 01:
That's another issue is that I don't want to weigh my client's rights with respect to possibly some sort of term extension based on various delays at the Patent Office and on appeals.

[00:08:35] Speaker 01:
But yeah, during the briefing of this appeal, the expiration date has passed.

[00:08:41] Speaker 01:
It's an interesting case.

[00:08:42] Speaker 01:
It's a CIP application based on a prior priority of 1995 prior to the switchover from the 17 year to the 20 year expiration dates.

[00:08:55] Speaker 01:
But so there's no actual term extension calculation on the face of the patent itself, but it's certainly 20 years from the filing date.

[00:09:08] Speaker 01:
It was during the

[00:09:10] Speaker 03:
So does that affect the standard we should employ with respect to claim construction?

[00:09:18] Speaker 01:
Certainly here or upon remand I believe that the court here or the board would be bound to be applying the Phillips standard because if our plans have been expired.

[00:09:33] Speaker 02:
You mean we should decide a case on a different ground than the

[00:09:39] Speaker 02:
PTO, whose decision we're reviewing, did?

[00:09:42] Speaker 01:
Well, the PTO couldn't be blamed during that time.

[00:09:46] Speaker 01:
Perhaps the BRI, which we may agree or disagree on, the BRI was applied because the claims could be amended.

[00:09:56] Speaker 01:
Now we're at a stage where possibly the claims cannot be amended, and now that the patent may have expired during the briefing schedule.

[00:10:04] Speaker 04:
In your brief, you were saying that the standard of review is de novo.

[00:10:09] Speaker 04:
And I think that you mean by that, that the claim construction, the standard of review for the claim construction is de novo.

[00:10:16] Speaker 04:
Not that we would review the board's decision on anticipation and obviousness de novo.

[00:10:22] Speaker 04:
Do I understand that correctly?

[00:10:23] Speaker 01:
Well, certainly there's case law like the in-rate book staff, and I believe Shire v. Watson is the same way, is that if the

[00:10:34] Speaker 01:
anticipation or the obviousness determination is made based on faulty claim construction, then it would be reversed on those grounds.

[00:10:45] Speaker 01:
You can't apply a deferential standard to anticipation or obviousness if the underlying claim construction itself is faulty.

[00:10:56] Speaker 01:
So in other words, if you read some of the bookstaff case, I believe that it's cited in our brief,

[00:11:04] Speaker 01:
the moment it determines that the claim construction is faulty, then the anticipation decision falls away.

[00:11:12] Speaker 01:
Sure.

[00:11:12] Speaker 04:
I mean, if the anticipation is based on an incorrect claim construction, then that might mean the decision is wrong.

[00:11:19] Speaker 04:
But I don't think that it changes the standard of review.

[00:11:23] Speaker 03:
In your obviousness arguments, you seem to only make two arguments here on appeal.

[00:11:30] Speaker 03:
One is that it would be misuse of the

[00:11:34] Speaker 03:
JP 634 to combine it with Florin.

[00:11:41] Speaker 03:
And the other is that somehow it teaches a way.

[00:11:45] Speaker 03:
I don't see any other argument.

[00:11:48] Speaker 03:
You don't define the level of skill in the art.

[00:11:50] Speaker 03:
You don't refer to the level of skill in the art.

[00:11:53] Speaker 03:
You don't talk about why there wouldn't be any motivation to combine.

[00:11:57] Speaker 03:
I just see those two singular arguments.

[00:12:01] Speaker 03:
Is that correct?

[00:12:03] Speaker 01:
That is what we argued on, I guess.

[00:12:06] Speaker 01:
There are, obviously, we could talk about motivation, lack of motivation to combine, which we've done here today.

[00:12:13] Speaker 01:
It is actually threaded throughout our brief that there's no motivation to combine when you have a, when you have this history of prior to the 2012 request for reexamination, no one has brought up something like a

[00:12:32] Speaker 01:
the 1982 JP 634 patent publication as being prior art, then that also suggests that there is no motivation to combine just the sheer numbers of examinations prior to this one.

[00:12:52] Speaker 02:
You're into your rebuttal time, Mr. Cunningham.

[00:12:54] Speaker 01:
You can use it.

[00:12:55] Speaker 02:
I'll save it.

[00:12:56] Speaker 02:
Thank you.

[00:12:58] Speaker 02:
Mr. Helm.

[00:13:01] Speaker 00:
You may please the court.

[00:13:04] Speaker 00:
I'd like to just make a couple of points.

[00:13:05] Speaker 00:
I'm happy to talk about the claim construction or the anticipation rejections.

[00:13:08] Speaker 00:
But there are six other rejections that are obvious rejections that do not involve the Japanese patent as the primary reference.

[00:13:16] Speaker 00:
So they don't raise the same issues of held by the human hand, which is a claim term in claim one, or adapted to be used by the human thumb.

[00:13:24] Speaker 00:
They just don't raise those same issues because they all cite remote control devices that are very similar to the ones

[00:13:30] Speaker 00:
disclosing the patent at issue.

[00:13:34] Speaker 00:
The other point I'd like to make is... Where are those?

[00:13:37] Speaker 00:
So one is Florin.

[00:13:39] Speaker 00:
And then I can tell you, let me cite you to the board's opinion, which is on A6, which lists all eight of the rejections.

[00:13:46] Speaker 00:
And so Florin is one of the other references.

[00:13:48] Speaker 00:
The other ones we didn't discuss because they weren't discussed in the primary briefing in this case.

[00:13:54] Speaker 03:
So you're saying that you're now pointing to those as alternative grounds to affirm

[00:14:00] Speaker 03:
I didn't really see that in your brief.

[00:14:02] Speaker 00:
Well, I think that we, in our briefing, we believe that the boys' decisions as a whole should be affirmed, but the arguments raised in the briefing were only with respect to the JP 634 reference.

[00:14:16] Speaker 00:
And there's the misuse in teaching away arguments, which we addressed in our briefing.

[00:14:19] Speaker 00:
But we think all of these arguments should be affirmed.

[00:14:22] Speaker 00:
I mean, all of these rejections should be affirmed.

[00:14:24] Speaker 04:
Let's just set aside the JP 634 rejections for a minute.

[00:14:28] Speaker 00:
Absolutely.

[00:14:28] Speaker 04:
What claims are standing in?

[00:14:30] Speaker 00:
Well, the JP 634, they actually only claim one was subject to a rejection based upon that reference alone.

[00:14:38] Speaker 00:
So if you're saying, if you're saying with respect to all of the rejections, you're saying JP 634 is, for example, non-analysis art, and so it just can't be considered, then all of these rejections would fall because it's all part of those rejections.

[00:14:51] Speaker 00:
It is cited in all of those rejections.

[00:14:53] Speaker 00:
And just to be clear, the way that it got there was, I think as Judge Laurie alluded to, in the re-examination, the reason why

[00:15:00] Speaker 00:
I can't speak to why this reference wasn't found earlier or why it wasn't cited earlier, but in the most recent reexamination, their language was added about a cover plate.

[00:15:09] Speaker 00:
And I think if you look at the reexamination request, it's clear that the requester thought Florin, in particular, had all of the other elements that were missing or all of the other elements that were missing from those claims.

[00:15:25] Speaker 00:
And it was just that cover plate that was crucial.

[00:15:28] Speaker 00:
I can cite you to the

[00:15:30] Speaker 00:
the proposed rejections if you need them.

[00:15:32] Speaker 02:
Are all the claims rejected on the combination of the Japanese reference and Florin?

[00:15:40] Speaker 00:
They are not.

[00:15:40] Speaker 00:
The claims 1, 4, 8, and 10 are the Japanese reference of Florin and the remainder are rejected upon other combinations.

[00:15:53] Speaker 04:
But the Japanese references?

[00:15:54] Speaker 00:
The Japanese references is part of all of them.

[00:15:57] Speaker 00:
But it's not used for the purpose of

[00:16:00] Speaker 00:
disclosing remote control and those other rejections.

[00:16:03] Speaker 02:
Is it your argument that if we affirm the board on 103, the 102 rejections are moot?

[00:16:12] Speaker 00:
That's right.

[00:16:14] Speaker 03:
Let me ask you.

[00:16:16] Speaker 00:
Absolutely.

[00:16:16] Speaker 03:
This is a not so hypothetical hypothetical.

[00:16:20] Speaker 03:
Yes.

[00:16:20] Speaker 03:
What if I think that the claim constructions that the board employed were ridiculous and that there was nothing reasonable about

[00:16:28] Speaker 03:
those BRI constructions.

[00:16:32] Speaker 03:
Where does that leave you on the 103?

[00:16:35] Speaker 00:
Well, it's, we're still, my view is, I'm happy to engage upon whether or not they're reasonable or not.

[00:16:42] Speaker 00:
But my view is, just to sidestep the whole situation, is that if that's what you conclude, and they should be a narrower, it should be a narrower construction, for example, something that looks like remote control,

[00:16:57] Speaker 00:
That is all supplied by the other references that are cited, not by JP 634.

[00:17:02] Speaker 03:
So is it your view that we could just accept the appellant's proposed construction but still conclude that the 103 rejection could be affirmed?

[00:17:11] Speaker 00:
Yes, absolutely.

[00:17:12] Speaker 00:
And the reason for that is because if you look at the rejections that were adopted by the examiner, the JP 634 is not cited for the handheld body or the

[00:17:26] Speaker 00:
I think the language in Claim 1 is held by the human hand.

[00:17:29] Speaker 00:
And I think that there's a difference.

[00:17:31] Speaker 00:
Claim 17 is the only one that has the handheld language.

[00:17:35] Speaker 00:
All the other claims are, Claim 1 is held by a human hand.

[00:17:40] Speaker 04:
Is it your position that it's because it's Florin is the primary reference, for example, in view of JP 634?

[00:17:47] Speaker 04:
So Florin is the reference that provides the handheld?

[00:17:52] Speaker 04:
Absolutely.

[00:17:53] Speaker 04:
Adapted to be held.

[00:17:54] Speaker 00:
Exactly.

[00:17:55] Speaker 04:
And also the thumb switch adapted to be manipulated by the thumb.

[00:17:58] Speaker 00:
Exactly.

[00:17:59] Speaker 00:
And again, I'm happy to discuss why I think that the JP634 might also disclose a thumb switch.

[00:18:05] Speaker 00:
But at the end of the day, we don't need that because with the obviousness rejections, the obviousness rejections that are not over the JP634 alone, because those rejections all have remote control devices that have what

[00:18:20] Speaker 00:
according to what is disclosed in patent specification, look like a hand-held body and a thumb switch.

[00:18:26] Speaker 03:
Well, what is the motivation to combine a tethered mouse-like unit into fluorine?

[00:18:36] Speaker 00:
Absolutely.

[00:18:38] Speaker 00:
So what the findings of the board were that the... Let me just... What the board found was that

[00:18:49] Speaker 00:
JP64 discloses that its particular design, the particular design of the plate with the annular switch underneath, had advantages.

[00:19:00] Speaker 00:
And that was what it based the motivation to combine upon.

[00:19:05] Speaker 00:
And I can cite you further to the record.

[00:19:19] Speaker 00:
One second.

[00:19:20] Speaker 00:
Excuse me, excuse my tardiness here.

[00:19:26] Speaker 02:
Up to a point.

[00:19:27] Speaker 04:
Is it A1726?

[00:19:28] Speaker 00:
Yes, yes.

[00:19:31] Speaker 00:
The examiner adopted 1719 to 1726.

[00:19:40] Speaker 00:
Yes, this is the claim process.

[00:19:42] Speaker 00:
And thank you very much, Your Honor.

[00:19:43] Speaker 00:
And so what the JP64 says its movement is

[00:19:49] Speaker 00:
carried out easily and quickly with a single key, and the operability is enhanced by providing a crystal-acry key.

[00:19:54] Speaker 00:
So it says that there are advantages to this particular layout, which is a motivation to comply.

[00:19:58] Speaker 02:
Mr. Helen, is it the view of the Patent Office that when you have a limited number of means to perform a certain function, to communicate at a distance, at a remote distance with a computer, that there is inherently a motivation to experiment and combine them?

[00:20:19] Speaker 00:
Well, I think that I don't know if there's inherently a motivation combined, but it certainly does fall within the framework of KSR, where it says if there's a limited number of solutions to a problem, that certainly suggests that it might be obvious.

[00:20:34] Speaker 03:
What's the level of skill in the art?

[00:20:36] Speaker 00:
I don't know if there's any express finding of level of skill in the art.

[00:20:39] Speaker 00:
I don't know if it was disputed.

[00:20:40] Speaker 03:
It always drives me crazy.

[00:20:41] Speaker 00:
Yeah, it's one of those things that certainly in a district court, you might expect somebody to have given testimony upon that.

[00:20:48] Speaker 00:
I don't think, as far as I know, that there's no express finding about the levels.

[00:20:51] Speaker 00:
I think it's disputed.

[00:20:53] Speaker 04:
Even assuming your claim construction is correct, the board's claim construction was correct about the capable of, as opposed to adapted to.

[00:21:02] Speaker 04:
How can it be that that JP 634 reference provides both handheld and thumb actuated at the same time?

[00:21:09] Speaker 04:
I'm not sure I see how that's physically possible.

[00:21:12] Speaker 04:
It says that it has to be, let's assume the claim construction is correct again, it says capable of

[00:21:18] Speaker 04:
being held by the hand, capable of being actuated by the thumb.

[00:21:22] Speaker 04:
I don't think my hand could both hold it and actuate by the thumb.

[00:21:26] Speaker 00:
So let me make two points.

[00:21:29] Speaker 00:
The first is that, with respect to JP 634, it's only claim one, and that claim is held by the human hand.

[00:21:35] Speaker 00:
So that's not handheld.

[00:21:37] Speaker 00:
That's in Claim 17.

[00:21:38] Speaker 04:
Sure, so even if you laid your hand on top, how is your thumb going to get on that switch?

[00:21:42] Speaker 00:
Well, so I think there are a number of devices that kind of have a similar type of configuration, maybe more modern devices than 1995.

[00:21:49] Speaker 00:
An iPod might come to mind where you use your thumb to move the iPod.

[00:21:54] Speaker 00:
It's on a desk, even if it were on a desk, as opposed to being held in your hand.

[00:21:58] Speaker 00:
But that's the type of switch I think is disclosed.

[00:22:00] Speaker 04:
How is your hand holding it then?

[00:22:01] Speaker 04:
Your hand isn't laying on top of it.

[00:22:03] Speaker 04:
You've got your thumb.

[00:22:04] Speaker 04:
manipulating it?

[00:22:05] Speaker 00:
Yes, yes.

[00:22:06] Speaker 00:
And so I think what the board said was that held by the human hand included devices that were grasped by the human hand.

[00:22:12] Speaker 04:
So for example... But you're not grasping it when you're using the thumb to manipulate the switch.

[00:22:17] Speaker 00:
I think what they were saying is that you would put your hand upon it, and I think this is what the JP-634 discloses, is that you place your hand upon the top of the device.

[00:22:26] Speaker 00:
And I think the board said that this falls within the scope of the term held by the human hand.

[00:22:31] Speaker 00:
And so, again,

[00:22:33] Speaker 00:
not to sound like a broken record, but there are these other references that disclose what by any construction is a handheld device or a device that's held by the human hand.

[00:22:42] Speaker 00:
So we don't actually need this.

[00:22:43] Speaker 03:
But with respect to the JP-634... Well, we can't look at another reference that the board didn't rely upon for this particular claim, can we?

[00:22:52] Speaker 00:
No, but certainly the board relied upon the Florin reference and the other references that were cited in its opinion.

[00:23:00] Speaker 00:
But not for this claim.

[00:23:02] Speaker 00:
For claim one they did, yes.

[00:23:03] Speaker 00:
Yes, they did.

[00:23:05] Speaker 00:
Absolutely.

[00:23:06] Speaker 00:
The only, there are a number of rejections made over claim one.

[00:23:10] Speaker 00:
I say that with certainty, but I'm going to just double check because, yes, yes.

[00:23:16] Speaker 00:
On page A6, the board, with the third rejection, this is the rejection over Florin, is for claims one, four, eight, and 10.

[00:23:22] Speaker 03:
So why isn't, I don't understand why there's nothing in your brief that points to this fact and says, alternatively,

[00:23:31] Speaker 03:
we would ask the court to affirm on these alternative grounds.

[00:23:34] Speaker 00:
I'm sorry, Your Honor.

[00:23:35] Speaker 00:
I thought we had put something, I thought we had put that it was under any particular, so it's on page 20 in our brief.

[00:23:45] Speaker 00:
The board correctly concluded that claims 1, 4, 7, 10, and 17 are obvious.

[00:23:51] Speaker 00:
And then

[00:23:52] Speaker 00:
So then we cite Florin on page 21.

[00:23:54] Speaker 00:
We have a picture of the Florin remote control on page 21.

[00:23:57] Speaker 03:
Right, but you don't cite anything, Florin in combination with anything other than JP 634.

[00:24:02] Speaker 03:
So I guess I'm not sure how I rely on that now.

[00:24:07] Speaker 00:
I thought, well, honestly, Your Honor, when we were briefing this, the only issues that were raised in the appellant's brief had to do with whether or not this

[00:24:20] Speaker 00:
JP64 was a handheld device or had a thumb switch.

[00:24:25] Speaker 00:
And we were just trying, we did not address the remainder of the rejection.

[00:24:34] Speaker 00:
So they're not addressed in the opening brief.

[00:24:38] Speaker 00:
They're waived.

[00:24:39] Speaker 04:
I guess the point is that it would have been helpful had you done so.

[00:24:43] Speaker 00:
Yeah, well, I'm sorry, Your Honor.

[00:24:46] Speaker 00:
I'm sorry, Your Honor.

[00:24:46] Speaker 00:
Certainly, next time we will, we're happy to include more

[00:24:50] Speaker 00:
more information on everything.

[00:24:54] Speaker 02:
You also weren't dealing with a very clear board opinion.

[00:25:00] Speaker 00:
That's true, Your Honor.

[00:25:02] Speaker 00:
The board opinion has its strengths and its weaknesses.

[00:25:09] Speaker 02:
To be sure.

[00:25:10] Speaker 00:
Any other questions?

[00:25:13] Speaker 00:
Again, I do just want to point out that claim one, it does have different language held by the human hand, which is distinct from claim 17, which is handheld.

[00:25:20] Speaker 00:
And frankly, even in 1995 or 96, depending on which date you give to these claims, that actually may have a substantially different meaning than what we think of today.

[00:25:31] Speaker 04:
But if we think that adapted to be held by the hand is not as broad as capable, merely being capable of being held, then don't they have pretty much the same meaning?

[00:25:41] Speaker 00:
Well, I actually don't think that's what the board said.

[00:25:43] Speaker 00:
The board did say capable, but what more specifically they said was that

[00:25:50] Speaker 00:
was that this specific structure disclosed falls within the scope of it.

[00:25:54] Speaker 00:
Not just that, I don't, I'm not even sure they gave a specific construction, but they more construed the claim and said, we think that this falls within the scope of the claim.

[00:26:09] Speaker 00:
And that's A10.

[00:26:16] Speaker 00:
So it's,

[00:26:19] Speaker 03:
Yeah, that part's heavy lifting for you to try to support that, I think.

[00:26:24] Speaker 00:
We defend the board's decisions.

[00:26:27] Speaker 02:
Thank you, Mr. Helm.

[00:26:29] Speaker 02:
Thank you very much, Your Honor.

[00:26:29] Speaker 02:
Mr. Cunningham has two and a half minutes left.

[00:26:36] Speaker 01:
Thank you, Your Honor.

[00:26:37] Speaker 01:
I'd like to just clarify a few points.

[00:26:39] Speaker 01:
The first point is, certainly the

[00:26:44] Speaker 01:
Adjective forms of the thumb switch and the handheld device are more concrete, not less concrete, in my opinion, than the adapted to version of this claim limitation.

[00:26:54] Speaker 01:
That 17 has handheld wouldn't mean for it to be any broader than claim one that has the adapted to be held by the human hand.

[00:27:05] Speaker 01:
They both make concrete as does the specification that is a handheld device, not something that's merely capable of being held

[00:27:13] Speaker 01:
by the hand.

[00:27:15] Speaker 01:
The thumb switch also, in combination with the handheld device, doesn't describe this holding it in your hand and thumb.

[00:27:23] Speaker 01:
That's the whole point of this.

[00:27:26] Speaker 01:
The correction I wanted to make, now that I went back to the desk, is that I cited the Typhoon Touch case several times.

[00:27:35] Speaker 01:
Upon reading that case in preparation for today,

[00:27:39] Speaker 01:
I think that the, I'd rather cite the aspects eyewear case that talks equally about or better actually about an actual claim construction of adaptive two.

[00:27:50] Speaker 01:
And in that case says you look to the specification to determine the breadth of adaptive two, whether it is a configured to connotate or interpretation or whether it should be the capable of connotation.

[00:28:06] Speaker 01:
And here the specification is just

[00:28:09] Speaker 01:
is very clear this is to be held by the hand.

[00:28:13] Speaker 03:
If we agree with your claim constructions and say we will just do would we have to remand for the board to reconsider its obviousness determination in light of your claim constructions or could we simply adopt your claim constructions and conclude and look at whether or not the obviousness rejection is supportable under that standard.

[00:28:35] Speaker 01:
We should you could

[00:28:37] Speaker 01:
I would say that you should adopt our claim construction and apply that in the obviousness issue.

[00:28:44] Speaker 01:
I think still, when you look at these two prior references, the Florin and the JP 634, I don't think that you get an obviousness of our, rendered our own client's claims obvious.

[00:29:02] Speaker 02:
You're saying we needn't remand

[00:29:06] Speaker 02:
if we adopt your claim construction.

[00:29:10] Speaker 02:
We can evaluate the rejection.

[00:29:13] Speaker 01:
I agree, Your Honor, yes.

[00:29:16] Speaker 01:
And you should probably consider whether on remand it would end up being under the Phillips regime instead of the BRI regime.

[00:29:28] Speaker 03:
Just let me ask you, why is it that you don't even cite Florin or refer to Florin in your reply?

[00:29:33] Speaker 01:
Your Honor,

[00:29:36] Speaker 01:
One of the things I wanted to mention here is the hardship that the BRI standard puts on patent owners.

[00:29:44] Speaker 01:
And one of this is that their entire, first off, I guess, the board's decision isn't all that clear.

[00:29:53] Speaker 01:
It throws JP 634 into everything.

[00:29:57] Speaker 01:
It talks about it being the principal patent from which other things are added to it, rather than to say Florin is the principal to which

[00:30:06] Speaker 01:
6-3, JC with 6-3-4 fills in the gaps.

[00:30:09] Speaker 01:
So, and this simply, we spent so much time trying to explain why the claim interpretation is not even reasonable, even under BRI.

[00:30:19] Speaker 01:
We have so much little, so little time to be talking about the obviousness side of the rejection.

[00:30:28] Speaker 01:
And for the most part, that's what's happening is the

[00:30:34] Speaker 01:
We were mostly trying to say, look, there's a wrong claim construction.

[00:30:37] Speaker 01:
We spent so much time talking about that.

[00:30:40] Speaker 02:
Thank you, Mr. Cunningham.

[00:30:41] Speaker 02:
We'll take the case under advisement.