[00:00:29] Speaker 00:
The next argued case is number 15, 1975 in Rivanos, Mr. Rosencrantz.

[00:00:46] Speaker 04:
And I'll make the same challenge.

[00:00:48] Speaker 04:
Can you do this orally without waving your hands?

[00:00:51] Speaker 03:
It is literally impossible.

[00:00:53] Speaker 03:
I've got this exhibit right behind me.

[00:00:56] Speaker 03:
So may it please the court, Josh Rosencrantz representing Apple.

[00:01:01] Speaker 03:
Your Honor, this case presents procedurally a variation on the companion case, which is to say that in this case, one of the fundamental battlegrounds is the reason to combine.

[00:01:15] Speaker 03:
And both the PTAB and the examiner gave us one word on motivation to combine, intuitive.

[00:01:23] Speaker 03:
That is, procedurally wrong.

[00:01:26] Speaker 03:
Even now, the PTO gives no reason to combine these elements.

[00:01:31] Speaker 03:
And it is also flatly wrong.

[00:01:34] Speaker 03:
So remember that this was 10 years ago.

[00:01:37] Speaker 03:
Apple did two things that the prior art had never done.

[00:01:41] Speaker 03:
The first is with regard to interface reconfiguration.

[00:01:46] Speaker 03:
It was interface reconfiguration.

[00:01:49] Speaker 01:
Can I ask a question real quick before you get into it?

[00:01:52] Speaker 01:
So your argument is that the word intuitive doesn't give us enough information.

[00:01:56] Speaker 01:
There's no because.

[00:01:58] Speaker 01:
And I think you're on good ground.

[00:01:59] Speaker 01:
Like even in KSR when the Supreme Court said common sense, it was common sense because it would be more efficient to do this.

[00:02:04] Speaker 01:
Common sense because people in the art were trying to reduce the time it took to do this.

[00:02:08] Speaker 01:
Common sense because.

[00:02:10] Speaker 01:
And here we have no because.

[00:02:11] Speaker 01:
We just have it's intuitive, which means instinctive.

[00:02:14] Speaker 01:
I don't know.

[00:02:14] Speaker 01:
That doesn't differ in my mind from it would be obvious.

[00:02:17] Speaker 01:
which clearly would not be enough.

[00:02:19] Speaker 01:
This is me being helpful.

[00:02:20] Speaker 01:
So anyway, this is the part where I'm not going to be helpful.

[00:02:26] Speaker 01:
So I'll just telegraph the whole thing for you.

[00:02:27] Speaker 01:
So my question is, if the PTO didn't do enough, and you're about to tell me why it wouldn't be intuitive, that seems like a fact finding that I don't really feel comfortable making.

[00:02:39] Speaker 01:
The PTO gave us no reason why it would be intuitive.

[00:02:42] Speaker 01:
And if you're going to give me all the reasons it wouldn't be intuitive, are you really suggesting that I can make that decision in the first instance?

[00:02:48] Speaker 03:
So Your Honor, I actually treat that as a helpful question.

[00:02:52] Speaker 03:
So the fact-finding in this case was intuitive.

[00:02:56] Speaker 03:
The PTO didn't offer any facts.

[00:02:59] Speaker 03:
And there are no facts on this record beyond the... Well, thus I can say that fact-finding has not been supported by substantial evidence.

[00:03:08] Speaker 03:
Exactly.

[00:03:09] Speaker 01:
But I can't go necessarily the other way.

[00:03:11] Speaker 01:
and say one couldn't conclude that it was intuitive, for example.

[00:03:17] Speaker 01:
You want to take me back 10 years and have me start assessing whether I think it would be intuitive or not.

[00:03:23] Speaker 01:
That doesn't feel like something I can do.

[00:03:24] Speaker 03:
Your Honor, I'm happy to go back 10 years.

[00:03:27] Speaker 03:
But let's just talk about the burdens and the record in this case.

[00:03:31] Speaker 03:
The examiner had the burden.

[00:03:33] Speaker 03:
The examiner is supposed to produce the evidence of obviousness of the reason to combine.

[00:03:39] Speaker 03:
The examiner did not produce that evidence.

[00:03:42] Speaker 03:
All we have are the two prior art references mixing together two embodiments in one patent and then another patent.

[00:03:52] Speaker 03:
So this court reviews records.

[00:03:55] Speaker 03:
There is no substantial evidence.

[00:03:57] Speaker 03:
This court can look at the prior art references and see that they contain no teaching.

[00:04:02] Speaker 03:
There's no reason one would have taken

[00:04:05] Speaker 03:
those prior art references.

[00:04:06] Speaker 01:
I can't look at the prior art references and decide whether they contain a teaching on motivation to combine.

[00:04:11] Speaker 01:
That's a fact question, Mr. Rosencrantz.

[00:04:13] Speaker 01:
I can't do that on appeal.

[00:04:15] Speaker 01:
I understood your honor.

[00:04:17] Speaker 01:
PTO only gave me intuitive.

[00:04:18] Speaker 01:
I can't go line by line through these references and go on a hunt for my own motivation to combine.

[00:04:23] Speaker 03:
Fair enough.

[00:04:24] Speaker 03:
So then the question is, does the court send it back, or does the court just say, look, we've got a record here.

[00:04:30] Speaker 03:
On this record, there is no substantial evidence.

[00:04:32] Speaker 01:
No, but that requires me to go line by line to determine whether there is substantial evidence in the record for a fact finding that nobody made.

[00:04:40] Speaker 04:
Or, Your Honor, or, Your Honor, go to the... Except that we can't look at the finding about Gillespie.

[00:04:50] Speaker 04:
Because the PTAB found Gillespie teaches something.

[00:04:54] Speaker 03:
If PTAB found Goleski teaches one of the elements, the PTAB was wrong.

[00:05:00] Speaker 04:
That interface.

[00:05:01] Speaker 03:
Yeah.

[00:05:02] Speaker 03:
I'll get to that element in a moment.

[00:05:03] Speaker 03:
The PTAB was wrong about that element.

[00:05:06] Speaker 03:
But it never said, here's how a person of skill in the art would know to combine that element, which was itself a combination of two embodiments, with Hawkins.

[00:05:16] Speaker 03:
And so just to finish the response to Judge Moore, this court is presented with records.

[00:05:24] Speaker 03:
evidence that even now that the PTO points to in their brief, forget about the prior art references.

[00:05:29] Speaker 03:
The PTO still in its brief has now had 50 pages or up to 60 pages to explain what the motivation to combine is, and it still hasn't done it.

[00:05:39] Speaker 03:
But let me explain to you why the PTAB failed to do it.

[00:05:45] Speaker 03:
It's because you simply can't point to anything in the prior art, at least the references before this court,

[00:05:52] Speaker 03:
that would lead you to the reason to combine.

[00:05:55] Speaker 03:
And again, this is going back 10 years.

[00:05:58] Speaker 03:
I was saying before that there were two things that the prior art was teaching that Apple did differently.

[00:06:04] Speaker 03:
The first was, if you are going to let a user reconfigure an interface, so move everything on their interface around, you hid that ability behind clunky menus

[00:06:17] Speaker 03:
and or physical buttons to make sure that you didn't inadvertently and perhaps catastrophically completely reconfigure.

[00:06:26] Speaker 03:
And secondly, if you were going to allow someone to do that on an interface with a mere touch, you would not use the same touch just a bit longer as the single most common touch that you use to interact with your smartphone.

[00:06:42] Speaker 03:
Apple did that first.

[00:06:44] Speaker 03:
And I want to underscore what this reconfiguration mode is.

[00:06:48] Speaker 03:
This is not just any action on any device.

[00:06:53] Speaker 03:
It is a reconfiguration on a mobile device.

[00:06:57] Speaker 03:
Reconfiguration is different from any action that you take on your phone, precisely because, especially when you're talking about a touch-sensitive device, reconfiguration could take your to-do list and your podcast

[00:07:11] Speaker 03:
and either delete them entirely or banish them to a spot from which you will never find it.

[00:07:17] Speaker 03:
And it's not just reconfiguration.

[00:07:19] Speaker 03:
It's reconfiguration on a phone that you would use with one hand, and you walk with your child in the other hand, and you can really accidentally completely re-figure.

[00:07:31] Speaker 03:
So Apple figured out a way to say, you know what?

[00:07:34] Speaker 03:
We are OK not putting everything behind clunky menus or physical buttons.

[00:07:40] Speaker 03:
We can accept the possibility of a little bit of inadvertence in service of much greater user flexibility.

[00:07:48] Speaker 03:
So finally, Judge Wallach to Gillespie.

[00:07:50] Speaker 03:
So Gillespie does not teach what the P tab says it teaches.

[00:07:55] Speaker 03:
Gillespie is the most oddball of inventions.

[00:08:01] Speaker 03:
It is a laptop, a normal laptop.

[00:08:04] Speaker 03:
It's got a touch screen down here

[00:08:07] Speaker 03:
that is used as a trackpad.

[00:08:09] Speaker 03:
So this is like your mouse, but it's also a touch screen.

[00:08:12] Speaker 03:
And the touch screen has icons on it, which is very weird.

[00:08:17] Speaker 03:
So it looks like this.

[00:08:26] Speaker 03:
So here's the little trackpad.

[00:08:29] Speaker 03:
The problem Gillespie was trying to figure out was,

[00:08:32] Speaker 03:
How does the laptop know whether you're using this as a mouse and tapping to click on things on your screen or using it to launch the icons that the user can see but the icons can't see you unless they're activated?

[00:08:51] Speaker 03:
Gillespie gave two ways to do it.

[00:08:53] Speaker 03:
They are distinct.

[00:08:56] Speaker 03:
Paragraph 71 and Paragraph 61.

[00:09:00] Speaker 03:
Neither of those involves a sustained

[00:09:02] Speaker 03:
So one does, 71 does.

[00:09:06] Speaker 03:
So here's 71.

[00:09:06] Speaker 03:
71 says, go and use your trackpad as a mouse.

[00:09:14] Speaker 03:
Click to your heart's content.

[00:09:16] Speaker 03:
Nothing will happen to these icons.

[00:09:19] Speaker 03:
When you do a sustained touch on the envelope, email opens up.

[00:09:23] Speaker 03:
No reconfiguration.

[00:09:24] Speaker 03:
You just launched the email app.

[00:09:28] Speaker 03:
Completely separate paragraph, 61.

[00:09:31] Speaker 03:
Different embodiment.

[00:09:33] Speaker 03:
I'm sorry because I misspoke.

[00:09:36] Speaker 03:
It doesn't teach reconfiguration in response to a system.

[00:09:41] Speaker 03:
It does not teach what I would call an element which is sustained touch to launch reconfiguration.

[00:09:48] Speaker 03:
It absolutely doesn't.

[00:09:49] Speaker 03:
Neither does 61.

[00:09:51] Speaker 03:
Does Gillespie even have a reconfiguration mode?

[00:09:53] Speaker 03:
It does.

[00:09:54] Speaker 03:
Paragraph 58 tells you exactly how you reconfigure.

[00:09:58] Speaker 03:
What do you do?

[00:09:59] Speaker 03:
You go behind a clunky menu to the software control panel.

[00:10:06] Speaker 03:
So you go on the laptop.

[00:10:08] Speaker 03:
And that activates the software control panel.

[00:10:12] Speaker 03:
But let's talk about 61, because 61 is what the PTO is combining with 71.

[00:10:19] Speaker 03:
So it's taking the sustained touch from 71.

[00:10:22] Speaker 03:
It's moving it down to 61, which has no sustained touch.

[00:10:26] Speaker 03:
61 says, use this as a mouse to your heart's content.

[00:10:31] Speaker 03:
Click wherever you want.

[00:10:33] Speaker 03:
If you want to launch an icon, you can't do it from the mouse pad.

[00:10:38] Speaker 03:
But what you can do is go to your laptop, hit a button, and that will change it to active mode.

[00:10:46] Speaker 03:
All of a sudden now, this is no longer a mouse.

[00:10:49] Speaker 03:
Every time you touch, not sustained, but any touch on an icon is the launching of an icon.

[00:10:56] Speaker 03:
And paragraph 73 warns, don't use multiple different ways to go into this activation.

[00:11:03] Speaker 03:
Now, what is fundamentally clear, what is fundamentally important.

[00:11:06] Speaker 01:
I'm a little bit confused.

[00:11:08] Speaker 01:
What is missing from 71?

[00:11:10] Speaker 01:
I looked at the PTO's argument, and I'm sure you'll tell me why I'm wrong, as really relying on the sustained touch of 71

[00:11:19] Speaker 01:
And then it's referenced to activated being explained by paragraph 61 as once it is activated, then the icons become functional and can be dragged or moved around the screen.

[00:11:31] Speaker 01:
How is that different from the reconfiguration element?

[00:11:35] Speaker 01:
I'm not getting why you're arguing that Gillespie doesn't disclose it.

[00:11:40] Speaker 01:
What am I missing in your argument?

[00:11:42] Speaker 03:
So there are two things, Your Honor.

[00:11:45] Speaker 03:
The first is 71 teaches a sustained touch

[00:11:48] Speaker 03:
to activate this icon.

[00:11:51] Speaker 01:
The ability to move the icons around.

[00:11:53] Speaker 01:
No.

[00:11:53] Speaker 01:
Yes, it references 61 expressly.

[00:11:55] Speaker 01:
And 61 says to activate, you can move the icon around.

[00:11:58] Speaker 03:
No.

[00:11:58] Speaker 03:
So I would say no to both.

[00:12:00] Speaker 03:
First, 71 does not allow you to move anything around.

[00:12:05] Speaker 03:
Paragraph 58 is what tells you how to move things around.

[00:12:08] Speaker 03:
Paragraph 61 doesn't allow an interface configuration mode where the user gets to move things around.

[00:12:18] Speaker 03:
Paragraph 61 is a toggle switch between two states.

[00:12:23] Speaker 03:
The two states may have different reconfigurations.

[00:12:26] Speaker 03:
Excuse me.

[00:12:26] Speaker 03:
The two states may have different configurations.

[00:12:30] Speaker 03:
But the second state is.

[00:12:33] Speaker 01:
So let's just, you know what?

[00:12:34] Speaker 01:
Your rhetoric is great, but why don't you pull out Gillespie?

[00:12:37] Speaker 01:
Because I have to give this fact-finding substantial evidence deference.

[00:12:41] Speaker 01:
And so as persuasive as you may be about what you think it does or doesn't disclose, let's look at the actual language

[00:12:47] Speaker 01:
And then let's keep in mind the deferential standard of review for this disclosure.

[00:12:52] Speaker 01:
So paragraph 71 has a sustained touch, which triggers activation function of the icon.

[00:12:59] Speaker 01:
It says it right there in paragraph 71.

[00:13:01] Speaker 01:
Then you can look at paragraph 61, which is what the office also cited.

[00:13:08] Speaker 01:
And it says there's activated and unactivated states, and existing icons could also be removed or rearranged.

[00:13:16] Speaker 03:
Yes.

[00:13:17] Speaker 01:
So, and this is during the activated state.

[00:13:20] Speaker 03:
Nope.

[00:13:21] Speaker 03:
Never says during the activated state.

[00:13:23] Speaker 03:
So let me explain, Your Honor, what 61 does.

[00:13:27] Speaker 01:
Okay.

[00:13:27] Speaker 01:
You say it doesn't say during the activated state.

[00:13:29] Speaker 01:
I certainly actually read it that way.

[00:13:31] Speaker 01:
Number one.

[00:13:32] Speaker 01:
Number two, the PTO made a factual finding that it said that, and that factual finding is entitled to substantial evidence deference.

[00:13:39] Speaker 01:
So you got to convince me why not only is my reading wrong,

[00:13:44] Speaker 01:
But their reading is not supported by any evidence.

[00:13:47] Speaker 04:
And keep in mind that 61 illustrates the same set of icons in the activated and unactivated state.

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

[00:13:54] Speaker 03:
So here's what 61 explains.

[00:13:57] Speaker 03:
And first, looking at the language.

[00:13:59] Speaker 03:
However, activation of the touch screen could also create additional icons.

[00:14:04] Speaker 03:
So you're touching the button to activate the touch screen.

[00:14:08] Speaker 03:
Additional icons will show up.

[00:14:10] Speaker 03:
It is a fixed state.

[00:14:12] Speaker 03:
So I'm now going to show you

[00:14:13] Speaker 03:
what paragraph 61 describes.

[00:14:16] Speaker 01:
Well, it says additional icons could show up.

[00:14:19] Speaker 01:
It gives what seems to me a laundry list of things that could happen when you act.

[00:14:23] Speaker 03:
They could show up.

[00:14:24] Speaker 03:
They could be removed.

[00:14:26] Speaker 03:
They could be rearranged.

[00:14:27] Speaker 03:
So this is an illustration, just one example.

[00:14:31] Speaker 03:
This is not a figure in the patent itself.

[00:14:33] Speaker 03:
But here's what it's describing.

[00:14:35] Speaker 03:
It's describing toggling between one state and a different state.

[00:14:41] Speaker 03:
where the icons are then reconfigured.

[00:14:44] Speaker 03:
So there are fewer icons.

[00:14:46] Speaker 03:
They can move.

[00:14:47] Speaker 03:
But it's a steady fixed state toggle back and forth.

[00:14:50] Speaker 03:
If you want to know how to move the icon, nothing describes the user moving the icon.

[00:14:57] Speaker 03:
This is not an interface configuration mode in which the user then moves things around.

[00:15:03] Speaker 03:
Paragraph 58 explains how the user moves things around.

[00:15:07] Speaker 03:
How does the user do it?

[00:15:09] Speaker 03:
The user goes to a menu, and then

[00:15:11] Speaker 03:
Then Gillespie is totally fine with users consciously moving the icons around.

[00:15:17] Speaker 03:
But you will find nowhere in Gillespie, 71 or 61, the ability to enter into a mode where things are moved around at the instance of the user once you are in that mode.

[00:15:30] Speaker 03:
Can the PTAB rely on 58 saying,

[00:15:36] Speaker 04:
The only example it gives is a software control panel, where it says, possibly using a software control panel.

[00:15:44] Speaker 03:
But it doesn't teach it.

[00:15:45] Speaker 03:
It doesn't teach anything of this.

[00:15:47] Speaker 03:
It doesn't teach anything.

[00:15:48] Speaker 03:
So the answer to your honor's question is, first, the examiner didn't rely on it.

[00:15:52] Speaker 03:
The PTAB didn't rely on it.

[00:15:54] Speaker 03:
58, if anything teaches away, it says, if the person of skill in the art is reading this patent, the person of skill in the art says, what do I do to reconfigure?

[00:16:04] Speaker 03:
Well, 58 tells me what I do to reconfigure.

[00:16:06] Speaker 03:
If I want this state to have different icons in different places, I go to a software... He clearly doesn't have the idea.

[00:16:13] Speaker 03:
That is correct.

[00:16:16] Speaker 03:
The author of the inventor has no idea and doesn't want users using their fingers to reconfigure.

[00:16:25] Speaker 03:
He wants users going behind to a menu to reconfigure.

[00:16:29] Speaker 03:
And again,

[00:16:30] Speaker 01:
Yes.

[00:16:31] Speaker 01:
What is the precise reconfiguration element, and precisely what claim does it appear?

[00:16:36] Speaker 01:
So I can read the language.

[00:16:40] Speaker 03:
OK, so let's start with claim 38.

[00:16:45] Speaker 03:
So there is a. Yep, I got it.

[00:16:47] Speaker 01:
Where's the word reconfigure?

[00:16:49] Speaker 03:
So I think the easiest place to see it is the second to last paragraph.

[00:16:55] Speaker 03:
So interpreting the detective second longer, so that's the sustained touch,

[00:17:00] Speaker 03:
as an input, initiating an interface reconfiguration mode.

[00:17:07] Speaker 03:
So you need a long touch to get into a mode.

[00:17:10] Speaker 03:
And what do you do in that mode?

[00:17:11] Speaker 03:
Next paragraph.

[00:17:13] Speaker 03:
When you are in that mode, you engage in a second movement.

[00:17:17] Speaker 03:
That is the movement that moves things around.

[00:17:20] Speaker 03:
But you have to be in the mode first.

[00:17:23] Speaker 03:
And that's done with a sustained touch.

[00:17:25] Speaker 03:
And then, only then,

[00:17:27] Speaker 03:
are your icons in a position where you can move them around.

[00:17:31] Speaker 03:
Gillespie doesn't teach anything like that.

[00:17:34] Speaker 03:
And Hawkins, to the extent that you move things around, the way you enter it is not a sustained touch.

[00:17:40] Speaker 03:
It too hides it away on a physical key.

[00:17:44] Speaker 03:
If there are no further questions, I'll reserve whatever time remains for rebuttal.

[00:17:50] Speaker 00:
You have rebuttal time.

[00:17:54] Speaker 00:
Thank you, Your Honor.

[00:18:07] Speaker 00:
Mr. Lucilla.

[00:18:09] Speaker 02:
May it please the court.

[00:18:11] Speaker 02:
Before addressing the arguments made by counsel for Vanos, I think it's important to briefly clarify the context in which this appeal rises.

[00:18:18] Speaker 02:
The board determined that the vast majority of claims presented in this case were patentable.

[00:18:22] Speaker 02:
Importantly, these claims all require the additional feature of simultaneously varying the position of the icons, for example, to make them appear like they're floating on the screen.

[00:18:32] Speaker 02:
predefined user interface reconfiguration process is initiated.

[00:18:36] Speaker 01:
Have you ever thought about how they allowed the claim because of the wiggle limitation?

[00:18:39] Speaker 02:
That's right.

[00:18:39] Speaker 01:
Okay.

[00:18:41] Speaker 02:
But the claims before this court do not have this limitation and they broadly claim known finger gestures.

[00:18:48] Speaker 01:
You mean that just to make sure everybody understands what you mean by wiggle.

[00:18:51] Speaker 01:
It's like when you push your finger on your iPhone icon and hold it there and how the thing starts jiggling back and forth.

[00:18:55] Speaker 02:
That's correct.

[00:18:56] Speaker 01:
I just want to make sure we're all on the same page.

[00:18:58] Speaker 02:
That's correct.

[00:18:58] Speaker 02:
But the claims at issue in this case do not have that limitation.

[00:19:03] Speaker 02:
Instead, these claims are much broader.

[00:19:05] Speaker 02:
They claim known finger gestures in the prior art, such as the sustained touch of an icon, to accomplish the same features that are taught in prior art, including allowing a user to rearrange icons on a touch screen, including by dragging them to a new position on the touch screen.

[00:19:21] Speaker 02:
Council for Vanos repeatedly criticizes the articulation of the obviousness rejection by the examiner and affirm by the board

[00:19:28] Speaker 02:
in his argument before this court.

[00:19:31] Speaker 00:
That takes us to the universal question, and is the question of law.

[00:19:36] Speaker 00:
Is the motivation to combine why do we select this piece from this prior art, perhaps another part of the same reference, plus another reference, and put them together?

[00:19:50] Speaker 00:
So the examiner tells us it's intuitive.

[00:19:53] Speaker 00:
I don't know that as a

[00:19:56] Speaker 00:
word whose legal significance has been established.

[00:20:00] Speaker 00:
So let's just stay with the reasons to combine that we understand.

[00:20:06] Speaker 02:
Yes, Your Honor.

[00:20:07] Speaker 04:
So my point is to where in the record, other than the word intuitive, the examiner or the PTAB identify a motion to combine the elements from the prior art?

[00:20:20] Speaker 02:
And I will certainly answer that question, but setting the table with that briefly is that it's important to note that counsel for Vanos did not argue that there was some problem with the examiner's articulation of the motivation to combine below.

[00:20:35] Speaker 00:
I don't think that's a fair statement.

[00:20:38] Speaker 00:
This is what this case is about.

[00:20:41] Speaker 02:
Well, I say that just to explain that.

[00:20:45] Speaker 02:
It's not surprising then that the board did not feel the need to provide a more verbose explanation of the motivation to combine.

[00:21:00] Speaker 02:
It's important to look at the full record of the motivation to combine.

[00:21:05] Speaker 02:
It was not just the word intuitive way in a vacuum.

[00:21:12] Speaker 02:
What the examiner found was that

[00:21:18] Speaker 02:
In particular, that Gillespie's technique of entering a user interface reconfiguration mode in response to a user sustaining a touch in proximity to an icon displayed on the touch screen would be the intuitive way for users of Hawkins' device to enter into the editing mode in which they could rearrange the icons corresponding to the applications on the interface.

[00:21:40] Speaker 02:
In other words,

[00:21:42] Speaker 02:
What the examiner found was the very nature of the finger gesture, placing your finger over the icon or close to the icon to initiate the... And holding it down.

[00:21:53] Speaker 02:
And holding it down as taught in Gillespie, combined with the same finger gesture taught in Hawkins, holding your finger on an icon and then dragging it across the screen to reconfigure the user interface.

[00:22:10] Speaker 02:
It would be simply intuitive to just marry those two finger gestures together.

[00:22:15] Speaker 01:
Why?

[00:22:15] Speaker 01:
That feels like an awful lot of hindsight.

[00:22:17] Speaker 01:
Why would it be intuitive to choose Hawkins necessarily with Gillespie, which isn't really, I mean, this is portable electronic device.

[00:22:32] Speaker 01:
I mean, these two references are not really, it's not like we're looking at two smartphone references side by side.

[00:22:37] Speaker 01:
These references are different from each other.

[00:22:39] Speaker 01:
So why is it that it would be so intuitive to take this element of this one and this element of the other one?

[00:22:45] Speaker 01:
It really feels like you said it would be obvious to do it.

[00:22:49] Speaker 01:
That's why.

[00:22:49] Speaker 01:
It's obvious because it would be obvious.

[00:22:51] Speaker 01:
That's what intuitive means to me.

[00:22:53] Speaker 01:
I don't know another definition.

[00:22:55] Speaker 01:
So I don't know the because.

[00:22:56] Speaker 01:
I need the because.

[00:22:57] Speaker 02:
Well, I believe that the examiner and the board found that Hawkins teaches all of the aspects of claim 38 and claim 40.

[00:23:08] Speaker 02:
except for the sustained second touch.

[00:23:12] Speaker 02:
They looked to Gillespie just merely as an example.

[00:23:16] Speaker 02:
Gillespie teaches that it was well known in the art to use a sustained touch next to an icon to enter a mode that reconfigures the icons on the screen.

[00:23:28] Speaker 04:
In the red brief at 22, you say, in the examiner's words, repurposing is exactly what

[00:23:36] Speaker 04:
Gillespie teaches.

[00:23:39] Speaker 04:
And you're quoting from 2147 in the record.

[00:23:47] Speaker 04:
In the gray brief, Apple responds that the PTO mischaracterized the statement by implying it was a finding of the examiner when in fact it's from the examiner's brief before the PTAB.

[00:23:58] Speaker 04:
So I wanted to give you a chance to tell me where in the record the examiner makes that finding.

[00:24:05] Speaker 02:
Sure, the examiner made that finding on page A, 2062 to 2063.

[00:24:17] Speaker 02:
I've got it in front of me.

[00:24:26] Speaker 02:
So that's where he discusses Gillespie's teaching detecting a first user touch on a touch sensitive display.

[00:24:34] Speaker 02:
For example, a touch screen, as discussed in paragraph 36, the first user touch of a duration and at a location proximate to a first icon of a plurality of icons.

[00:24:43] Speaker 02:
And then more importantly, jumping down to the detecting a second user touch on the touch sensitive display, the second user touch of a second duration longer than the first duration and at a location proximate to a second icon of the plurality of icons, for example, holding the finger steady over an icon for a given duration as discussed in paragraph 71.

[00:25:04] Speaker 02:
and then interpreting the detected second longer user touch as an input, initiating an interface reconfiguration mode.

[00:25:12] Speaker 02:
And then he points to paragraph 61.

[00:25:14] Speaker 04:
You're confusing me.

[00:25:17] Speaker 04:
I'm looking for the words repurposing is exactly what Gillespie teaches in the examiner's words.

[00:25:27] Speaker 02:
The examiner did not use the word repurposing, per se.

[00:25:30] Speaker 02:
That was what Apple

[00:25:33] Speaker 02:
That's how Apple characterizes the actual claim language.

[00:25:36] Speaker 02:
The examiner looked to the claim language and found all of the limitations and elements in the prior art.

[00:25:42] Speaker 02:
This repurposing and dual role are monikers by accountants.

[00:25:49] Speaker 04:
I'm not reading from Apple's brief.

[00:25:50] Speaker 04:
I'm reading from yours.

[00:25:53] Speaker 02:
Well, so what the examiner did in the examiner's answer, he put his factual findings in context

[00:26:01] Speaker 02:
of the arguments provided by Apple and its opening brief before the board.

[00:26:05] Speaker 02:
So Apple challenged the examiner's findings that there was a second sustained touch, and that second sustained touch would then initiate a user interface reconfiguration mode.

[00:26:19] Speaker 02:
And the examiner pointing back to his findings of paragraphs 61 and 71 in Gillespie,

[00:26:30] Speaker 02:
say that's what that teaches.

[00:26:32] Speaker 02:
It teaches a sustained, second, longer touch that initiates a user reconfiguration interface.

[00:26:40] Speaker 01:
And that's taught in paragraph 71.

[00:26:41] Speaker 01:
And that is what the- Gillespie teaches in paragraph 71.

[00:26:45] Speaker 02:
That's correct.

[00:26:46] Speaker 01:
OK, so one question.

[00:26:47] Speaker 01:
You said a few minutes ago, before you started in response to Judge Wallach's question, when you were answering mine, you said, Gillespie demonstrates that it's well known in the art to have a sustained touch.

[00:27:00] Speaker 01:
Where does Gillespie demonstrate that?

[00:27:03] Speaker 01:
I don't think I'm paraphrasing you.

[00:27:04] Speaker 01:
I think you said well-known in the art.

[00:27:06] Speaker 01:
I mean, paragraph 71 discloses it, and so certainly it is in this piece of prior art.

[00:27:12] Speaker 01:
But do you see that there's a difference?

[00:27:13] Speaker 01:
When I'm trying to think of a motivation to combine, plucking one element from one reference in a shoebox in the basement of a chemistry library in Germany and taking one of its elements,

[00:27:25] Speaker 01:
How does that demonstrate it's well-known in the arts?

[00:27:27] Speaker 02:
So if you look at paragraph 70, the language immediately preceding paragraph 71 in Gillespie, talking about the activation state of the touchscreen, Gillespie teaches that numerous other activation mechanisms are well-known that could serve for touchscreen activation, such as finger motion gestures.

[00:27:48] Speaker 02:
Now, the following paragraph, paragraph 71, is then a list of known finger gestures, one of which is holding a finger steady over an icon for a given duration.

[00:28:01] Speaker 02:
So Gillespie itself teaches that it was well known that you could hold your finger over an icon for a steady duration in order to... He says that many methods are well known.

[00:28:12] Speaker 00:
The focus is now this particular method,

[00:28:16] Speaker 00:
in combination with everything else to achieve a result that I think we all agree neither of these references by itself achieves.

[00:28:27] Speaker 00:
So the examiner tells us it's intuitive.

[00:28:31] Speaker 00:
That's very interesting because there was a time gap in all of the other circumstances that intervened.

[00:28:41] Speaker 02:
I think that

[00:28:45] Speaker 02:
As I stated before, the fact that the examiner found the same finger gesture, which places the finger in the same location, to both initiate a user reconfiguration mode and to drag the icon across the screen and reposition it in Hawkins, the very nature of those finger gestures and the placement of them at the same location

[00:29:14] Speaker 02:
provides the bridge to marry those two things together and make it a predictable and an intuitive way to combine those, those pieces of prior art.

[00:29:24] Speaker 00:
It just seems conspicuous.

[00:29:25] Speaker 00:
The examiner shows no teaching to combine, no suggestion to combine, no motivation to combine and to bring it up to date with KSR, no common sense to combine.

[00:29:38] Speaker 00:
And so we have a new criterion of obviousness that's intuitive

[00:29:44] Speaker 00:
To who?

[00:29:45] Speaker 00:
To the examiner, in retrospect?

[00:29:48] Speaker 02:
No, I mean, I don't believe that that is correct.

[00:29:52] Speaker 02:
I think the examiner did make clear that he was talking about one of ordinary skill in the art at the time of the invention.

[00:29:59] Speaker 00:
But where are all these buzzwords, all these words of art that have appeared in thousands of decisions?

[00:30:07] Speaker 00:
We have something new, some new concept that's somehow untethered from history.

[00:30:14] Speaker 00:
but nonetheless intuitive.

[00:30:18] Speaker 00:
And again, intuitive, if it's to be intuitive to persons of skill in the art, one would think that there would be some support for that.

[00:30:29] Speaker 00:
The examiner doesn't say, he says it's intuitive.

[00:30:33] Speaker 02:
Again, I think if you look back then at the actual factual findings made by the examiner, that puts context to

[00:30:43] Speaker 02:
the examiner's use of the word intuitive in this case.

[00:30:47] Speaker 02:
What the examiner was saying was that the user's touch that was described in Gillespie was an intuitive way to... What does intuition mean in a legal sense?

[00:31:01] Speaker 02:
I'm not sure if I have a legal definition of intuitive, but I think what it means is... That's your word.

[00:31:10] Speaker 02:
You must be sure.

[00:31:13] Speaker 02:
In this case, I think it means predictable and common sense.

[00:31:20] Speaker 04:
I thought intuitive meant I know it even though I can't explain it.

[00:31:27] Speaker 02:
Um, that may be one definition of the word, but I don't believe that that's what the examiner was saying, um, in his, in his answer and in, and in Ford saying in his decision.

[00:31:38] Speaker 00:
Extraordinarily difficult.

[00:31:40] Speaker 00:
It goes through the examiner.

[00:31:41] Speaker 00:
It goes through this entire appeals process, goes through the solicitor's office with no attempt to explain in terms of, in terms that we're used to the criterion here.

[00:31:56] Speaker 00:
for obviousness of a combination whose result, whose product, is not in the art?

[00:32:06] Speaker 02:
I do believe that in this case, as the director pointed out in the red brief, there are statements in the prior art, for example, that

[00:32:22] Speaker 02:
designers of these interfaces should avoid overly complex uses of finger gestures.

[00:32:28] Speaker 02:
I think Council for Aventos cited that in his opening argument here.

[00:32:34] Speaker 02:
Those things do provide the roadmap for the obviousness and intuitive motivation combined provided by the examiner and the board in this case.

[00:32:46] Speaker 02:
So I do believe that there are

[00:32:48] Speaker 02:
things in the record that do support the examiner and the board's finding of a motivation to combine and that it would have been an intuitive way to use the same finger gesture in the same location in the same way.

[00:33:04] Speaker 02:
Perhaps I wanted to make one point before my time ran out with respect to figure four of Gillespie.

[00:33:12] Speaker 02:
Council makes much of the moving around and appearing and disappearing of icons here, but I just wanted to make sure that everyone realized that the examiner and the board relied on Hawkins.

[00:33:26] Speaker 01:
Hawkins for the movement of the icons, the dragon.

[00:33:30] Speaker 02:
That's correct.

[00:33:30] Speaker 01:
Lesby was just the sustained finger touch.

[00:33:32] Speaker 02:
That's correct.

[00:33:34] Speaker 01:
That's probably my fault.

[00:33:35] Speaker 01:
I sort of took him down that road a little bit, although he did bring that giant board.

[00:33:38] Speaker 01:
So I kind of think maybe he wanted to take us down that road.

[00:33:42] Speaker 02:
I appreciate that, but I think in the end, it does not get counsel for Avanos very far because the board and the examiner did rely on Hawkins to teach the dragging of the icons.

[00:33:54] Speaker 01:
And there's no dispute that Hawkins teaches that dragging.

[00:33:56] Speaker 02:
That's correct.

[00:33:58] Speaker 00:
Any more questions for Mr. O'Sullivan?

[00:34:02] Speaker 00:
Thank you, Mr. O'Sullivan.

[00:34:04] Speaker 00:
Mr. Rosencrantz, let's resurrect the minutes.

[00:34:11] Speaker 03:
Thank you, Your Honor.

[00:34:12] Speaker 03:
Just a couple of things on the merits and then the procedural questions.

[00:34:16] Speaker 03:
So on the merits, it's worth looking at paragraph 73, which is the only additional fact the PTO has pointed to for motivation to combine.

[00:34:28] Speaker 03:
Paragraph 73 in Gillespie says, there are any number of ways to get into an activation state

[00:34:36] Speaker 03:
Please, whatever you do, don't combine them because it confuses the users.

[00:34:42] Speaker 03:
So don't have this kind of activation this way and another kind of activation on the screen.

[00:34:51] Speaker 03:
It says activate in one way.

[00:34:53] Speaker 03:
It most certainly doesn't say don't use clunky menus because paragraph 58 teaches.

[00:34:59] Speaker 01:
Actually, it doesn't say what you just said.

[00:35:01] Speaker 01:
What you just claimed it says is don't use multiple ones.

[00:35:04] Speaker 01:
It discourages the use of multiple ones because they can cause confusion, but then says multiple different special functions should be used with caution because of the likelihood of causing confusion.

[00:35:16] Speaker 01:
So it doesn't say don't use them.

[00:35:17] Speaker 01:
It says use them with caution.

[00:35:19] Speaker 01:
There's a big difference between telling someone not to do something and telling someone be careful when you do it.

[00:35:24] Speaker 01:
My children would come here and make it very clear to you that they understand when mom says they can't do something.

[00:35:29] Speaker 01:
as opposed to when they need to be careful when they do it.

[00:35:31] Speaker 03:
Understood, Your Honor.

[00:35:32] Speaker 03:
My point is, it certainly doesn't teach you that you should combine.

[00:35:35] Speaker 03:
It says be careful not to combine, or be careful when you combine.

[00:35:39] Speaker 01:
Oh, right.

[00:35:40] Speaker 01:
That's the difference, right?

[00:35:40] Speaker 03:
Yeah, I understood.

[00:35:41] Speaker 03:
Yes.

[00:35:42] Speaker 03:
But my point is, it's not teaching you that you should combine.

[00:35:45] Speaker 03:
And that's the only thing that the PTO has pointed to.

[00:35:48] Speaker 03:
It had 14,000 words to supplement what the examiner and then the PTAB did.

[00:35:55] Speaker 03:
And it still hasn't told you what the PTAB could possibly say on remand that would provide the missing motivation to combine the because.

[00:36:05] Speaker 03:
And so the question ends up being.

[00:36:07] Speaker 01:
Maybe the because could be what the PTO attorney pointed to in paragraph 70 where, and granted none of this is in their opinion, below.

[00:36:20] Speaker 01:
So it's certainly not a basis upon which I can affirm.

[00:36:22] Speaker 01:
but the well-known nature of the finger gestures.

[00:36:26] Speaker 01:
And I do recall KSR saying something about the predictable use of well-known functions.

[00:36:35] Speaker 01:
And I have this quote readily in my mind, because it's not just in the same art, but even across art.

[00:36:44] Speaker 01:
And so if the only thing that came from Gillespie was a sustained finger touch,

[00:36:50] Speaker 01:
And if Gillespie's telling us it's well-known, and if you're going to apply it in Hawkins in a very predictable way for a well-known finger touch, I guess the record doesn't convince me that it's not possible for the PTO to establish a motivation to comply.

[00:37:05] Speaker 03:
Your Honor, Gillespie is not being used just for a sustained finger touch.

[00:37:13] Speaker 03:
It is being used for the element that the PTAB and the examiner both acknowledged was missing in Hawkins

[00:37:20] Speaker 03:
which is a sustained finger touch on an icon in order to initiate reconfiguration mode.

[00:37:30] Speaker 03:
No one was doing that.

[00:37:31] Speaker 03:
So simply saying, come on, everyone knew that there's a difference between a tap and a touch doesn't mean that there was a teaching that on a very accident-prone device, you're going to use the same gesture that is the most common gesture you use to launch icons

[00:37:49] Speaker 03:
just a little bit longer in order to enter this activation into this reconfiguration mode.

[00:37:56] Speaker 03:
So just a moment on the remedy, if I may.

[00:37:59] Speaker 03:
Because the question then is remand versus reversal.

[00:38:04] Speaker 03:
Now this court reversed in in-ray NTP.

[00:38:07] Speaker 03:
It reversed just last week in in-ray Magnum.

[00:38:11] Speaker 03:
It reversed in in-ray COTSAB.

[00:38:14] Speaker 03:
That is a standard thing that this court has within its toolkit to do when an opinion is as empty as this one and the PTO still hasn't pointed to an additional motivation to combine.

[00:38:27] Speaker 03:
And I'll just underscore, this is a real problem.

[00:38:31] Speaker 03:
We are seeing more and more of these opinions coming out of the PTAB in the last couple of years.

[00:38:37] Speaker 03:
It's just not fair.

[00:38:38] Speaker 03:
It's not fair to applicants.

[00:38:39] Speaker 03:
We could have amended in response to a more reasoned decision.

[00:38:44] Speaker 03:
It's not fair to this court.

[00:38:45] Speaker 03:
I mean, this court doesn't.

[00:38:47] Speaker 01:
Well, many of the cases you just cited, like when you're talking about, is this?

[00:38:53] Speaker 01:
Remind me.

[00:38:54] Speaker 01:
I just don't even remember.

[00:38:55] Speaker 01:
Is this original prosecution, or is this is not original IPR?

[00:38:59] Speaker 05:
Yes.

[00:39:00] Speaker 01:
So wouldn't it be awfully strange?

[00:39:01] Speaker 01:
I mean, I don't think that we have the ability to order the Patent Office to issue a patent.

[00:39:05] Speaker 01:
I think they always have the right.

[00:39:07] Speaker 01:
All we can do is say they got it wrong.

[00:39:09] Speaker 01:
They always have the right to go back and continue prosecution.

[00:39:12] Speaker 00:
Well, I think we can figure this out.

[00:39:15] Speaker 00:
I think if there's any last word you need to give us on the merits of this case, that might be more.

[00:39:22] Speaker 03:
I understood your answer.

[00:39:23] Speaker 03:
So I'll just finish with one sentence.

[00:39:28] Speaker 03:
If these opinions are upheld, this is what you will see from the P tab, even in original prosecutions.

[00:39:36] Speaker 03:
And this court will be in the position of having to decide obviousness instead of the agency.

[00:39:42] Speaker 00:
Thank you, Your Honor.

[00:39:42] Speaker 00:
I understand this dilemma.