[00:00:39] Speaker 04:
the next case this morning is number sixteen thirteen sixty-one intellectual ventures versus motorola mobility mister babcock good morning your honors may it please the court this is a case of two clear legal errors with respect to two claim limitations the first is the land routing system limitation the second

[00:01:09] Speaker 04:
is the standalone system limitation.

[00:01:12] Speaker 04:
While this is a swear-behind case, this is not a substantial evidence case.

[00:01:19] Speaker 04:
The board committed legal error with respect to each of these limitations that requires reversal.

[00:01:26] Speaker 04:
I'm going to spend a little bit of time first on the land routing system limitation.

[00:01:30] Speaker 04:
I think that one's probably the clearest in the brief.

[00:01:33] Speaker 04:
Let me walk it through it quickly.

[00:01:34] Speaker 05:
The argument is that the board construed that limitation as not requiring authentication, but then when terming the swear behind question said that it was a limitation, right?

[00:01:49] Speaker 05:
That's almost perfect, Your Honor.

[00:01:51] Speaker 05:
Authentication or control.

[00:01:53] Speaker 05:
But I'm a little puzzled because didn't you, that is the patentee, argue for a limitation that required authentication?

[00:02:02] Speaker 04:
The patentee argued for a narrow claim construction which required authentication and control.

[00:02:10] Speaker 04:
The board rejected that limitation and said no.

[00:02:14] Speaker 04:
Well, suppose we were to say that you were right in the first place.

[00:02:19] Speaker 05:
Where would that leave us?

[00:02:20] Speaker 05:
Wouldn't you lose then?

[00:02:22] Speaker 04:
Well, no, Your Honor.

[00:02:22] Speaker 04:
We wouldn't lose because the problem then is that the prior art didn't teach it.

[00:02:26] Speaker 04:
That's why the board gave a broad construction

[00:02:30] Speaker 04:
which left out authentication and control for the sole purpose of reading the claim on the Mitchell, which didn't have those features.

[00:02:38] Speaker 04:
So in order to find that the claim covered the prior art, the board gave a very broad construction.

[00:02:45] Speaker 04:
But then when it turned to look at our swear behind evidence, it said, ah, we're going to use a narrow construction that actually requires authentication and control.

[00:02:54] Speaker 04:
Your evidence doesn't show that.

[00:02:56] Speaker 04:
That's the legal error.

[00:02:56] Speaker 04:
So if the court were in fact to adopt

[00:03:00] Speaker 04:
the narrower construction, then the prior art's a problem because the prior art doesn't disclose those features.

[00:03:08] Speaker 04:
There's no question that Mitchell doesn't disclose authentication or control.

[00:03:14] Speaker 04:
So at a minimum, there's got to be a consistent claim construction applied on both sides.

[00:03:20] Speaker 04:
The board can't argue a narrow construction for purposes of swear behind.

[00:03:26] Speaker 04:
and then penalize the patentee by using a broad construction for purposes of reading the claims onto the prior art.

[00:03:34] Speaker 04:
And that's exactly what happened here.

[00:03:36] Speaker 04:
And that's error.

[00:03:37] Speaker 04:
Well, normally this would be a substantial evidence case.

[00:03:40] Speaker 04:
That's not what happened here.

[00:03:41] Speaker 04:
This particular limitation, the board was inconsistent in how it applied it.

[00:03:46] Speaker 04:
It construed it two different ways for purposes of achieving the result it wanted to achieve.

[00:03:51] Speaker 01:
Well, that's relevant only if you are in a position to swear behind.

[00:03:55] Speaker 01:
Is that correct?

[00:03:59] Speaker 01:
Yes, I believe that's correct, Your Honor.

[00:04:01] Speaker 01:
So the question before that question is, when did conception occur?

[00:04:10] Speaker 01:
Isn't that a fundamental question in this discussion?

[00:04:14] Speaker 04:
The fundamental question, Your Honor, is was there adequate corroboration for that conception reduction practice evidence.

[00:04:25] Speaker 04:
Our position is October 22nd.

[00:04:27] Speaker 01:
before you get to your position tell me what our standard of review is with regard to the board's determination as to when conception occurred and as to the underlying facts of exactly what the inventor said and what corroboration yet what's the standard of review for corroboration of the inventors testimony your honor substantial evidence

[00:04:58] Speaker 01:
if it's a matter of weighing the evidence and deciding substantial evidence with regard to conception or substantial evidence with regard to the corroborating evidence or is it the same standard of review?

[00:05:12] Speaker 04:
Conception, reduction of practice, going to be a legal test but based on underlying factual considerations.

[00:05:19] Speaker 04:
Corroboration is a factual termination reviewed by substantial evidence.

[00:05:23] Speaker 04:
But that isn't our focus here, Your Honor.

[00:05:25] Speaker 04:
The focus here is on the rule of reason.

[00:05:29] Speaker 04:
The rule of reason requires that the board, the finder of fact, look at all contemporaneous evidence that's presented.

[00:05:41] Speaker 04:
And the reason we have a complaint here, Your Honor, and I think it's a legal issue, is the board categorically excluded a key piece of corroborating evidence because it was dated five weeks after the critical date.

[00:05:54] Speaker 04:
This is a situation where the board

[00:05:56] Speaker 04:
balanced the evidence and said, well... What do you mean by contemporaneous evidence?

[00:06:01] Speaker 05:
The rule of reason requires contemporaneous evidence.

[00:06:03] Speaker 05:
There is no... What's your definition of contemporaneous evidence?

[00:06:07] Speaker 05:
Is there something a year later contemporaneous?

[00:06:10] Speaker 04:
There is... Your Honor, we've thought about that question and the answer is there is no hard... there's no bright light.

[00:06:16] Speaker 04:
There's no hard and fast rule.

[00:06:17] Speaker 05:
The Ohio Willowwood case... There must be, even if there's not a hard and fast rule, there has to be a precise

[00:06:24] Speaker 05:
a number of days or weeks, there's still got to be outer boundaries to it.

[00:06:29] Speaker 04:
And whatever that number is, Your Honor, you don't have to decide that because in this case, there's no question that the evidence that was presented here was contemporaneous.

[00:06:38] Speaker 04:
We have a scenario where on November 22, 2002... It wasn't like the next day or the next week.

[00:06:46] Speaker 04:
What was it, eight weeks?

[00:06:48] Speaker 04:
Five weeks after the critical date.

[00:06:49] Speaker 04:
Five weeks after the critical date, seven weeks after

[00:06:52] Speaker 04:
they've the first successful test at some of your corroborating evidence is based on stuff that you say you could establish on the record some years later no no no your honor let let let let that's okay we can we can we can talk about the microsoft documents the most important evidence is exhibit twenty twenty which is the sort of it but some of it the manual uh... windows ninety-eight manual right was months later

[00:07:23] Speaker 04:
The key issue here, yes, it's dated years, years after.

[00:07:30] Speaker 04:
But here's the key inquiry, Your Honor.

[00:07:32] Speaker 05:
But are you suggesting that years after is contemporaneous?

[00:07:38] Speaker 04:
What I'm suggesting is that piece of evidence is still relevant to show what Microsoft Windows intrinsically had.

[00:07:46] Speaker 04:
But to answer my question, is years later contemporaneous?

[00:07:49] Speaker 04:
In this context, yes, it's relevant for the rule of reason.

[00:07:53] Speaker 04:
It's relevant to be considered for the rule of reason.

[00:07:55] Speaker 02:
But the important thing for this panel... Is that because that document, let's say corroborated the type of functionality that Windows 98 had?

[00:08:04] Speaker 04:
Exactly.

[00:08:04] Speaker 04:
That document is a Microsoft document publicly available, and it shows what the Microsoft functionality had.

[00:08:12] Speaker 04:
So it's not... For one version of it, yes.

[00:08:15] Speaker 04:
For the version that was in place, there's no dispute that that was the version that was in place.

[00:08:21] Speaker 04:
at this point in time that was a nineteen ninety nine implementation windows ninety eight this was two thousand two the testimony is the book that there's went out by the new computer in two thousand to develop the system so what that's our primary evidence our primary evidence is looking at these pieces of manual doesn't show that they use that the manual shows the use windows ninety eight

[00:08:43] Speaker 05:
but it doesn't show that they use that functionality.

[00:08:45] Speaker 04:
Your Honor, your analysis is the same as the board and the same as Motorola's.

[00:08:50] Speaker 05:
That doesn't mean it's necessarily wrong.

[00:08:54] Speaker 04:
The key evidence here is the inventor's testimony.

[00:08:57] Speaker 04:
The inventor's testimony is unequivocal.

[00:08:59] Speaker 04:
Every element of the claim is satisfied on October 22, 2002.

[00:09:03] Speaker 01:
And what you're missing

[00:09:06] Speaker 01:
for the record is what we're debating, which is, is there corroboration for the inventor's testimony is not enough.

[00:09:15] Speaker 01:
You need to corroborate the inventor's testimony.

[00:09:18] Speaker 01:
And the question here is, what is the nature of that corroboration?

[00:09:24] Speaker 01:
And I'm still unclear as to what the standard of our review is over that corroborating evidence.

[00:09:32] Speaker 01:
Are we looking for facts?

[00:09:34] Speaker 01:
Are these factual issues?

[00:09:36] Speaker 04:
All we're asking this panel to do is to say the board had to, in the rule of reason analysis, at least consider exhibit 2020, which is the user guide.

[00:09:47] Speaker 01:
Rule of reason analysis of what?

[00:09:50] Speaker 04:
Rule of reason for corroboration.

[00:09:52] Speaker 04:
The rule of reason is a very flexible test, and the test is simply to determine whether or not the inventor's testimony

[00:09:59] Speaker 04:
in this case wasn't even the post un unquestionably but i think there's testimony more likely than not true that's all we were more likely than not true that and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and and

[00:10:28] Speaker 04:
there's a bit of a posin was not a question is not whether there's a negative evidence that he wasn't telling the truth the question you have this should establish is whether your inventor was telling the truth i'd get it your honor and the point is they took exhibit twenty twenty seven are you gonna put it on scale because it's dated post critical date that was a hard one they do they said it's dated after the critical date it goes out of analysis a hundred percent that's illegal air

[00:10:56] Speaker 04:
they had to at least consider they listen to the evidence and then they found that non they say it's not your honest i'm i'd with all due respect your honor they did not look at exhibit twenty twenty on the merits they did not evaluate the contents of that exhibit they said very clearly that is dated after the critical date therefore we agree with petitioners it is entitled to zero zero weight for anything for establishing what the inventor had done back then

[00:11:25] Speaker 01:
Why isn't that a sensible position?

[00:11:28] Speaker 04:
Because Ohio Willowwood, Your Honor, says very clearly, and I'll read the quote, the corroborating evidence quote does not become irrelevant to the credibility determination simply because a patentee questions whether it was created shortly after the critical date.

[00:11:55] Speaker 05:
Well, that's surely true.

[00:11:57] Speaker 05:
It doesn't become irrelevant just because it's questioned.

[00:12:02] Speaker 05:
But you've got NTP also, which talks about this and suggests that stuff after the critical date.

[00:12:11] Speaker 04:
In that case, Your Honor, they weighed it.

[00:12:13] Speaker 04:
They weighed it and determined that it was after the critical date, but they looked at it on its content and said, because there's issues here about

[00:12:21] Speaker 04:
contradictions we're not going to give it we're not going to say it's adequate cooperation or asking for your honor is this and i i think this is this is a very fair request under the rule of reason the board had to at least consider the evidence and evaluate whether or not it it assisted and it's a key to get to be cute that's a key piece of the value of state written that opinion a little differently if that evaluates around doesn't mean anything you would be without a case

[00:12:48] Speaker 04:
We would certainly have a different issue.

[00:12:51] Speaker 04:
We certainly would have had a different analysis before we decided to bring the appeal.

[00:12:54] Speaker 04:
But that's not... This isn't the job of... The job of the board is to write up their analysis and their analysis isn't... It's not equivocal here, Your Honor.

[00:13:05] Speaker 04:
They said very clearly, we look at this piece of evidence, it's dated after the critical date, QED, it's out.

[00:13:14] Speaker 04:
We're not going to consider it for any purpose whatsoever.

[00:13:16] Speaker 04:
That bright line is inconsistent with the rule of reason.

[00:13:21] Speaker 04:
That bright line test, just like you were asking me about, bright line test, what's contemporaneous?

[00:13:26] Speaker 04:
I don't know, but it's certainly, after the critical date, is okay, as long as it's part of the same endeavor.

[00:13:32] Speaker 04:
In this case, you have a situation where there's a development, there's a reduction of practice, and then what happens?

[00:13:39] Speaker 04:
They keep working on it, and they come up with a user guide and a troubleshooting guide.

[00:13:43] Speaker 05:
But part of your problem, if you look at page 17 of the board opinion, what the board is saying is, as noted by Petitioner, this failure to show contemporaneous intent by the inventors to use these functions in a manner now asserted defeats conception.

[00:14:00] Speaker 05:
That doesn't seem to rest on the notion that Windows 98 didn't necessarily have the functionality.

[00:14:08] Speaker 05:
But they're saying there's no evidence to corroborate that the inventors used that functionality.

[00:14:16] Speaker 05:
So it says even if the version of Windows 98 used by, used in the MHS 1, did have the functions as asserted.

[00:14:24] Speaker 05:
In other words, they're saying even if you're right, even if the manual

[00:14:28] Speaker 05:
confirms that it has those functions.

[00:14:32] Speaker 05:
The board is saying there's no evidence corroborating that the use of those functions.

[00:14:38] Speaker 05:
That seems to me to be a problem.

[00:14:40] Speaker 05:
Even if you are correct that the board had to look at this manual, even if you are correct that Windows 98 had the functionality, they are still saying you lose

[00:14:55] Speaker 05:
because there's no corroboration of the use of that function.

[00:14:59] Speaker 04:
Because they didn't look at exhibit 2020 at all.

[00:15:02] Speaker 04:
2020 does provide that exact evidence.

[00:15:06] Speaker 05:
No, no, no.

[00:15:06] Speaker 05:
2020 does not provide evidence of what these inventors did.

[00:15:10] Speaker 05:
It can't.

[00:15:11] Speaker 04:
Exhibit 2020 does, Your Honor.

[00:15:13] Speaker 04:
It has the user manual, right?

[00:15:15] Speaker 04:
No, it's the troubleshooting guide for this system created after it was developed to show how to use the system and if there's problems.

[00:15:22] Speaker 04:
And it says very clearly,

[00:15:24] Speaker 04:
This assigns DHCP locally.

[00:15:27] Speaker 04:
That's what that device, that's what that document says created by the inventors.

[00:15:31] Speaker 04:
Five weeks after the fact, very reasonable, that after they develop the product, they get it working, they write up a user manual, a troubleshooting guide, they say, how's this going to work?

[00:15:40] Speaker 05:
But that may be an issue, but basically it is correct that the question of whether the manual provides corroboration

[00:15:48] Speaker 05:
is kind of irrelevant to this aspect of the board's decision, right?

[00:15:52] Speaker 04:
No, Your Honor.

[00:15:53] Speaker 04:
That particular troubleshooting guide does corroborate that feature.

[00:15:58] Speaker 05:
The board kind of corroborates the existence of the feature.

[00:16:01] Speaker 05:
It doesn't corroborate the use of the feature.

[00:16:03] Speaker 04:
Yes, it does, Your Honor.

[00:16:04] Speaker 04:
Because it says that this is the system.

[00:16:07] Speaker 04:
This is how it works.

[00:16:09] Speaker 04:
And it uses the DHCP locally.

[00:16:11] Speaker 04:
That's exactly what that manual says, that what that troubleshooting guy says.

[00:16:15] Speaker 04:
The reason the board concluded that there's no evidence of how it's being used is because they... By the inventor.

[00:16:21] Speaker 04:
By the inventors.

[00:16:22] Speaker 04:
This is the inventor's troubleshooting guide.

[00:16:25] Speaker 01:
No evidence of it being used by the inventor.

[00:16:27] Speaker 04:
Yes.

[00:16:29] Speaker 04:
Because they're the ones that are testing it to develop the troubleshooting guide.

[00:16:33] Speaker 04:
They're running the system through its paces, and they're determining where our problems are rising, and that's what the troubleshooting guide is for.

[00:16:41] Speaker 04:
It's for telling people how to fix problems if they arise.

[00:16:45] Speaker 04:
And the troubleshooting guide very clearly shows that the system was using this feature, this DHCP feature.

[00:16:52] Speaker 04:
The reason the board says there's no evidence of that is because they said its post-critical date, we're not using it at all.

[00:17:00] Speaker 05:
Okay, thank you, Mr. Babcock.

[00:17:03] Speaker 05:
We'll restore your three minutes of rebuttal.

[00:17:04] Speaker 05:
Thank you, Your Honors.

[00:17:13] Speaker 00:
Mr. Alemany.

[00:17:14] Speaker 00:
Good morning, Your Honors.

[00:17:14] Speaker 00:
May it please the Court?

[00:17:17] Speaker 00:
The Board did consider all of IV's evidence of corroboration.

[00:17:21] Speaker 01:
Speak up, please.

[00:17:22] Speaker 00:
I'm sorry.

[00:17:22] Speaker 00:
The Board did consider all of IV's evidence of corroboration, including Exhibit 2020, and they reached

[00:17:30] Speaker 00:
a factual conclusion that the evidence did not corroborate Mr. LeBlanc's testimony.

[00:17:34] Speaker 00:
And that factual conclusion is supported by substantial evidence.

[00:17:39] Speaker 01:
In relation to exhibit 2020, which is... Well, the board didn't make it clear that they were applying a rule of reason, did they?

[00:17:48] Speaker 00:
The board did in fact state explicitly that they were applying the rule of reason.

[00:17:52] Speaker 00:
They went through each of the pieces of evidence.

[00:17:54] Speaker 00:
Where do they say that?

[00:17:55] Speaker 00:
They said that they were applying the rule of reason.

[00:17:57] Speaker 03:
Counselor, where do they say that in their opinion?

[00:18:00] Speaker 00:
It says it directly after, I believe it's page 20 of the final written decision, directly after the analysis of each of the prior art references.

[00:18:12] Speaker 01:
So if we go to... I'm looking at page 20 of their

[00:18:22] Speaker 01:
Opinion, where am I looking?

[00:18:26] Speaker 00:
It's page 19 at the bottom of the last full paragraph.

[00:18:33] Speaker 00:
Upon reviewing the record as a whole under the rule of reason, we determine the evidence does not establish the adventurers conceived in the invention.

[00:18:40] Speaker 01:
Okay.

[00:18:41] Speaker 01:
I stand corrected.

[00:18:45] Speaker 05:
We've got a problem about the claim construction because the board does seem to have applied to arrive at a claim construction which excluded authentication and then when it addressed the issue of conception, it said that there was a requirement of authentication.

[00:19:06] Speaker 05:
So isn't it inconsistent?

[00:19:08] Speaker 05:
Don't we have to send it back to consider that, to have them resolve that inconsistency?

[00:19:14] Speaker 00:
It is not inconsistent.

[00:19:15] Speaker 00:
They did not apply it inconsistently.

[00:19:18] Speaker 00:
We would agree that it's improper had the board applied a different construction to the corroboration evidence versus the prior.

[00:19:25] Speaker 00:
That would be error, but that's not what the board did.

[00:19:28] Speaker 05:
Okay.

[00:19:28] Speaker 05:
Well, help me understand why that's the case.

[00:19:32] Speaker 05:
I mean, didn't the board say in its claim construction that authentication is not required?

[00:19:39] Speaker 05:
They did.

[00:19:39] Speaker 05:
That's true.

[00:19:40] Speaker 05:
Yes.

[00:19:40] Speaker 05:
Okay.

[00:19:41] Speaker 05:
So why isn't it inconsistent?

[00:19:44] Speaker 00:
Because then the board stepped through the arguments that Ivy made.

[00:19:47] Speaker 00:
Ivy never argued for an alternative claim construction.

[00:19:50] Speaker 00:
The board and the institution decision said that it was not construing that portion managing the data path of the land routing term.

[00:19:58] Speaker 00:
So at the institution point, we both knew Ivy and Motorola knew that they were putting forth a construction or not construing plain and ordinary meaning.

[00:20:08] Speaker 00:
So Ivy proposed in its response the construction that Mr. Babcock mentioned.

[00:20:14] Speaker 00:
that they require control or authentication.

[00:20:16] Speaker 00:
And so the board had that argument that there was control or authentication shown by the documents.

[00:20:22] Speaker 05:
The other argument that I mentioned... Well, they rejected that in the claim construction.

[00:20:26] Speaker 05:
They just agreed to that.

[00:20:27] Speaker 00:
That's true, but that's the only argument.

[00:20:30] Speaker 05:
That's the only argument.

[00:20:32] Speaker 05:
Didn't they not apply that claim construction to the authentication evidence?

[00:20:38] Speaker 00:
To the corroboration evidence?

[00:20:41] Speaker 00:
The corroboration evidence, yeah.

[00:20:42] Speaker 00:
They applied that.

[00:20:45] Speaker 00:
They applied the construction, the plain and ordinary meaning to the corroboration evidence.

[00:20:51] Speaker 00:
The only evidence, the only argument that IV provided that the corroboration evidence supported was of authentication or control.

[00:20:59] Speaker 00:
So the only, well they had, the other argument they made was communication.

[00:21:02] Speaker 00:
And the board took those two arguments in turn.

[00:21:05] Speaker 05:
Where is this?

[00:21:06] Speaker 00:
This is at page 17 of the final written decision.

[00:21:11] Speaker 00:
So if we turn to page 17,

[00:21:17] Speaker 00:
It's the final paragraph on page 17, the paragraph that begins on the end of page 17.

[00:21:22] Speaker 00:
Patent on his argument that exhibit 2009 demonstrates the inventors intended the MHS1 to communicate internet data between the local internet access point and the internet access point is insufficient to show conception of the invention as recited because the invention, the claim requires managing the data path

[00:21:46] Speaker 00:
between the internet access interface and the local area network.

[00:21:50] Speaker 00:
So merely communicating between those two would not be sufficient.

[00:21:54] Speaker 00:
Then they turn to the second argument that IV provided.

[00:21:57] Speaker 00:
And they say, furthermore, we disagree that exhibit 2009, that the requirement document demonstrates that the hotspot would control, which was what IV argued was managing the data path.

[00:22:11] Speaker 00:
So they took both of IV's arguments in turn and... But at the bottom of the...

[00:22:16] Speaker 05:
17 at the top of 18, they say there's no mention of providing authentication or any other type of control, which seems to be imposing a claim requirement which they earlier rejected.

[00:22:31] Speaker 05:
Why am I wrong about that?

[00:22:33] Speaker 05:
I hesitate to say you're wrong.

[00:22:35] Speaker 00:
But the argument's incorrect.

[00:22:38] Speaker 00:
The only argument that Ivy put forth is that when you look at that short section,

[00:22:44] Speaker 00:
of the requirement document to which Mr. LeBlanc refers and on which IV relies, that that short section somehow evidenced that there was authentication or some sort of control.

[00:22:54] Speaker 00:
That's the only argument they put forth.

[00:22:57] Speaker 00:
I assume it was a strategic decision not to put forth an alternative argument under bar instruction.

[00:23:01] Speaker 00:
I'm sorry.

[00:23:01] Speaker 05:
I'm not understanding what you're saying.

[00:23:03] Speaker 05:
I'm reading this language at the bottom of 17 and the top of 18, and they seem to be saying that exhibit 2009

[00:23:13] Speaker 05:
is merely describes displaying a welcoming page.

[00:23:16] Speaker 05:
There's no mention of providing authentication or any other type of control.

[00:23:20] Speaker 05:
So they're saying that that doesn't provide corroboration, right?

[00:23:27] Speaker 00:
I agree.

[00:23:28] Speaker 00:
That is what they are saying, and they are responding to the only argument that was presented to them.

[00:23:34] Speaker 00:
That that document evidences, corroborates the inventor's testimony,

[00:23:39] Speaker 00:
that there was authentication and control.

[00:23:41] Speaker 00:
That's the only argument I'd be presenting.

[00:23:42] Speaker 01:
Is that statement inconsistent with their earlier interpretation?

[00:23:47] Speaker 00:
It is not inconsistent with their early interpretation because their early interpretation is their construction of the claim term.

[00:23:55] Speaker 00:
This section of the opinion, pages 17 and 18, they're addressing the only argument presented to them.

[00:24:01] Speaker 00:
It's not within the board's purview to go back and try to make up new arguments to support a position that the patent owner never took.

[00:24:08] Speaker 00:
under the recent nuvasive decision, that would be error.

[00:24:12] Speaker 00:
They can't go back and find something in the record that would somehow support an argument that was never made.

[00:24:17] Speaker 00:
The argument that IV made to them was that the hotspot either communicates or it authenticates and controls.

[00:24:26] Speaker 00:
The board looked at the communicate argument and said, that's not enough.

[00:24:29] Speaker 00:
They looked at the authentication and control and said, that's not shunt.

[00:24:33] Speaker 00:
And so the two arguments that you made to us, neither one of them were corroborated by the evidence.

[00:24:37] Speaker 00:
And so it was not an incorrect or inconsistent application of the Clinton construction.

[00:24:43] Speaker 05:
You're saying because they argued that 2009 showed authentication that the board was responding to that argument.

[00:24:55] Speaker 05:
Is that what you're saying?

[00:24:57] Speaker 00:
I'm saying that.

[00:24:58] Speaker 00:
that they presented two arguments with relation to the requirements document and that, yes, they are responding to the second argument as well as the first.

[00:25:05] Speaker 05:
Where do we find that argument, the patentee's argument, that 2009 shows authentication?

[00:25:15] Speaker 00:
That's throughout the briefing and throughout the person below.

[00:25:18] Speaker 05:
I can't deal with that.

[00:25:19] Speaker 05:
Where?

[00:25:20] Speaker 05:
Show me a page.

[00:25:23] Speaker 05:
Show you a page, OK.

[00:25:24] Speaker 05:
Show me where they make that argument.

[00:25:27] Speaker 05:
Not on appeal, but I'm talking about before the board.

[00:25:30] Speaker 00:
In the adjoined appendix on pages 323 and 324, IV's argument, and this is cited in the board's decision of page 14, IV's argument is thus the routing system communicates between the local network and the internet.

[00:25:46] Speaker 00:
So that's the communication argument.

[00:25:48] Speaker 00:
I'm sure I'll let you get there.

[00:25:49] Speaker 05:
Where's the other argument?

[00:25:51] Speaker 00:
So I'm on pages JA, 323 and 324.

[00:25:57] Speaker 00:
And I'm not exactly sure where on the page.

[00:25:58] Speaker 00:
I can find that if you like.

[00:26:05] Speaker 01:
Your basic point is that there were two different issues that were raised by this construction problem and they were properly construing the claim one way for one issue and the other way for the other issue.

[00:26:23] Speaker 01:
Is that really what it comes down to?

[00:26:26] Speaker 00:
I'm saying they are not doing that, that they construed it one way, and then they walked through the arguments that the parties presented in relation to corroboration.

[00:26:35] Speaker 01:
How that construction would apply to different arguments.

[00:26:38] Speaker 01:
That's what you're saying.

[00:26:39] Speaker 00:
Yes, exactly.

[00:26:40] Speaker 00:
How that same construction would apply to different arguments.

[00:26:44] Speaker 00:
To different arguments.

[00:26:45] Speaker 00:
At the bottom of page J323, it's the last sentence that starts there.

[00:26:52] Speaker 00:
This demonstrates that the inventors intended that the MHS1 would communicate

[00:26:57] Speaker 00:
internet data between the internet card interface and the access point.

[00:27:01] Speaker 00:
In addition to this functionality of communicating, and I'm going to skip forward, Exhibit 2009 also references the fact that the MHS1 would control clients' devices' access to the internet.

[00:27:12] Speaker 00:
So the two arguments that they presented below to the board were communicate and control.

[00:27:18] Speaker 05:
Well, as discussed with regard to the volume of the 771 patent, the welcome page is used to provide authentication.

[00:27:27] Speaker 05:
And the board is saying it doesn't provide authentication.

[00:27:33] Speaker 00:
That's correct, it does not.

[00:27:34] Speaker 00:
The document, the requirement document is dated in September of 2002.

[00:27:39] Speaker 00:
And a patent application wasn't filed until March.

[00:27:44] Speaker 00:
And then these claims weren't amended in March of 2003.

[00:27:47] Speaker 00:
These claims weren't amended to include that language which doesn't appear anywhere else but in the claims until 2007.

[00:27:53] Speaker 05:
I understand what you're saying, and there seems to be some merit to the notion that they argued that the welcome page provided authentication and that the board rejected that argument.

[00:28:04] Speaker 05:
But still I'm troubled by the lack of consistency in the claim interpretation.

[00:28:09] Speaker 05:
The patentee originally suggested that authentication was required, so it seems to be arguing with respect to Exhibit 2009, consistent with the claim construction that is proposed,

[00:28:21] Speaker 05:
that there had to be authentication and that you found it in the welcome page.

[00:28:26] Speaker 05:
But shouldn't the board have said, well, you know, under our claim construction, authentication is no longer a requirement when it was dealing with that argument?

[00:28:37] Speaker 05:
And it didn't say that.

[00:28:38] Speaker 05:
That seems to me to be the problem.

[00:28:41] Speaker 00:
So the question you put us has a number of layers.

[00:28:44] Speaker 00:
One is that whether or not the welcome page presents authentication.

[00:28:49] Speaker 00:
And there was no evidence that merely displaying a welcome page provides authentication.

[00:28:56] Speaker 00:
So there's no proof in the record that authentication is actually provided at that point.

[00:29:01] Speaker 03:
And then going forward... I think what you were citing before shows that the welcome page does not come up unless there's authentication.

[00:29:10] Speaker 00:
No, the welcome page is displayed regardless.

[00:29:13] Speaker 00:
If you turn to exhibit 2009 in the record,

[00:29:21] Speaker 00:
Mr. LeBlanc, in his declaration, which is Exhibit 2006, points to one very short section in Exhibit 2009 and then to a sentence in Exhibit 2009.

[00:29:34] Speaker 00:
The section is on J1355.

[00:29:37] Speaker 00:
It says, the user turns on his or her laptop or PDA, selects to connect to the mobile hotspot

[00:29:44] Speaker 00:
and then associates with the local hotspot and then starts browsing.

[00:29:48] Speaker 00:
So that was known.

[00:29:49] Speaker 00:
That's the connection part of connecting with the Wi-Fi network.

[00:29:53] Speaker 03:
Go back to JA0324, that same paragraph that you took us through.

[00:30:00] Speaker 03:
It says, as discussed with regard to the embodiment of 771, the welcome page is used to provide authentication.

[00:30:12] Speaker 01:
That was the patentees argument.

[00:30:13] Speaker 00:
That was a patentees argument.

[00:30:14] Speaker 00:
That's not shown by the evidence, Your Honor.

[00:30:17] Speaker 01:
Before your time runs out, Council, if I may, I want to go back for a minute.

[00:30:22] Speaker 01:
I didn't mean to interrupt you.

[00:30:26] Speaker 01:
I want to go back to Mr. Babcock's argument that he refreshed our recollection that the Board did say it was using the rule

[00:30:38] Speaker 01:
of reason, but he says they didn't, they said they were doing it, but he says they really didn't do it because they simply refused to look at in any significant way, certain evidence that was allegedly corroborating the inventor's testimony that the invention had occurred before

[00:31:03] Speaker 01:
the piece of prior, the invalidating prior art appeared, right?

[00:31:07] Speaker 00:
He did argue that, yes.

[00:31:09] Speaker 01:
And what is your response to his argument?

[00:31:12] Speaker 00:
My response is that the board did consider that evidence.

[00:31:15] Speaker 00:
And I'll point out, Exhibit 2020 is the user's guide.

[00:31:19] Speaker 00:
It's what they gave to users.

[00:31:22] Speaker 00:
It's mainly pictures.

[00:31:24] Speaker 00:
It's not a very technical document.

[00:31:25] Speaker 00:
It's mainly pictures used for the users.

[00:31:28] Speaker 00:
It's only used, there are two key claim limitations here.

[00:31:31] Speaker 00:
As Mr. Babcock pointed out, it's the land routing limitation managing the data path and the standalone limitation.

[00:31:37] Speaker 00:
They only rely on Exhibit 2020 for the standalone limitation, the assignment or the standalone limitation.

[00:31:43] Speaker 00:
They don't rely on it for the other limitation, which is managing the data path.

[00:31:48] Speaker 00:
The board did look at that evidence.

[00:31:50] Speaker 00:
Mr. LeBlanc only refers to that evidence briefly in his declaration.

[00:31:55] Speaker 00:
He says, in December

[00:31:57] Speaker 00:
We had a user's guide that we would give to our users when they were trying to use the device.

[00:32:02] Speaker 00:
Dr. Tufek never gives any testimony on it, neither in direct, nor on cross, nor in redirect.

[00:32:08] Speaker 00:
So there's no testimony there.

[00:32:09] Speaker 00:
The only testimony IV has about the document, explaining the documents from our expert, Dr. Roy, as the board steps through each of the pieces of evidence, they talk about all the patent owner's arguments.

[00:32:21] Speaker 00:
They talk about the evidence the patent owner cites.

[00:32:24] Speaker 00:
Then they make a decision about the document and whether or not it cooperates with Mr. LeBlanc.

[00:32:28] Speaker 00:
It's precisely what they did in the paragraph for exhibit 2020 for the troubleshooting guide.

[00:32:34] Speaker 00:
They look at Dr. Roy's testimony.

[00:32:35] Speaker 00:
Again, that's the only testimony relevant to exhibit 2020.

[00:32:39] Speaker 00:
Then they look at the date and they conclude based on that, that that post-bomb evidence, that evidence from December of 2002,

[00:32:48] Speaker 00:
does not corroborate his testimony that he conceived of or reduced the dimension of practice before the November 4th bomb date.

[00:32:55] Speaker 01:
Now as I read his brief and understand, I think I understand a part of that argument, which is that the board was wrong in looking at individual pieces of corroborating evidence as it applied to each of the

[00:33:15] Speaker 01:
elements of the inventor's invention that you're not supposed to do that.

[00:33:21] Speaker 01:
You shouldn't take the inventor's testimony and tear it apart.

[00:33:25] Speaker 01:
You should look at it as a whole and look at the corroborating evidence as a whole and say, on the whole, it adds up or it doesn't add up.

[00:33:35] Speaker 01:
They didn't quite do that.

[00:33:36] Speaker 01:
They took it piece by piece.

[00:33:38] Speaker 01:
And he thinks that's wrong.

[00:33:40] Speaker 01:
What's your response to that?

[00:33:42] Speaker 00:
I disagree.

[00:33:43] Speaker 00:
I think they took a very reasoned approach to evaluating the evidence.

[00:33:47] Speaker 00:
The rule is that the inventor has to show each limitation is claimed.

[00:33:55] Speaker 00:
What the inventor is not required to do is he's not required to corroborate verbatim what's listed in the claim.

[00:34:03] Speaker 00:
He's also not required to corroborate every specific fact that he testifies to.

[00:34:06] Speaker 00:
But he is, in fact, required to corroborate

[00:34:10] Speaker 00:
that he conceived of the entire invention of his claim.

[00:34:13] Speaker 01:
Each of his limitations in his claim.

[00:34:15] Speaker 00:
Each of the limitations.

[00:34:16] Speaker 00:
And so what the board did is they focused on the two key claim limitations.

[00:34:20] Speaker 00:
And that's what the courts do throughout the cases that are cited in IVs, briefs, and hours.

[00:34:25] Speaker 00:
They look at those key claim limitations.

[00:34:27] Speaker 00:
So for Ohio Willowwood, it's whether the gel goes through the prosthesis liner.

[00:34:33] Speaker 00:
For TransWeb, it's whether or not Ms.

[00:34:35] Speaker 00:
Rogale

[00:34:37] Speaker 00:
gave out plasma-infused material at the expo.

[00:34:40] Speaker 00:
There are specific things that the board's looking for to support that those key claim limitations that whoever the witness is testified about actually happened.

[00:34:49] Speaker 00:
And so in this case, Mr. LeBlanc in his declaration says, I conceived of this invention.

[00:34:55] Speaker 00:
And exhibit 2009, this requirement document, proves that I conceived of the invention.

[00:35:00] Speaker 00:
And he points to specific areas of that.

[00:35:02] Speaker 00:
So the board looks at those specific portions of that document

[00:35:06] Speaker 00:
and comes to the conclusion that they don't corroborate his testimony that he conceived of it.

[00:35:10] Speaker 00:
They do the same with the other pieces of evidence.

[00:35:12] Speaker 00:
And the structure for each of those pieces of evidence is precisely the same.

[00:35:16] Speaker 00:
We're not judging the form of what they did.

[00:35:18] Speaker 00:
We're trying to judge that they actually followed the rule of reason, that there's substantial evidence to support their conclusion that that testimony was not corroborated.

[00:35:26] Speaker 00:
And in this case, it certainly does.

[00:35:28] Speaker 03:
It seems to me that what we're looking at is whether the board applied something more restrictive than the rule of reason.

[00:35:36] Speaker 03:
And here a problem that I have is that the inventor's testimony was unrebutted.

[00:35:42] Speaker 03:
You didn't depose the inventor, did you?

[00:35:45] Speaker 00:
We did not, but that does not mean that we didn't rebut his testimony.

[00:35:48] Speaker 03:
No, but you rebutted it with the same type of evidence.

[00:35:52] Speaker 03:
So we start off with the rule of reason with unrebutted testimony of the inventor.

[00:35:57] Speaker 03:
And I find that to be

[00:36:00] Speaker 03:
It's going to be harder for you to rebut.

[00:36:03] Speaker 03:
And I think it's easier to corroborate that type of unrebutted testimony.

[00:36:10] Speaker 03:
How do you see the failure to have deposed the Panty within the scope of rural reason?

[00:36:21] Speaker 03:
Is there any change there?

[00:36:23] Speaker 00:
I don't believe that it's a failure.

[00:36:25] Speaker 00:
The basic rule is that the inventor's testimony must be corroborated, that it's not credible.

[00:36:29] Speaker 03:
In this case, where the inventor testifies... But we start the analysis here, it's unrebutted testimony.

[00:36:35] Speaker 03:
You did not depose them.

[00:36:37] Speaker 00:
But I don't believe that that leads to a conclusion it's unrebutted.

[00:36:40] Speaker 00:
We challenge the substance of the testimony on its face.

[00:36:43] Speaker 05:
That's always the assumption we're dealing with corroboration, is that you have testimony from the inventor, which is favorable to him.

[00:36:52] Speaker 05:
The question is, okay, in addition to that testimony, it has to be corroborated, right?

[00:36:58] Speaker 00:
The testimony must be corroborated because it's presumed to not be credible.

[00:37:04] Speaker 05:
And you don't dispense with the requirement of corroboration.

[00:37:08] Speaker 05:
by saying that the inventor testified a particular way and that his testimony was not questioned as testimony, right?

[00:37:17] Speaker 05:
His testimony was questioned.

[00:37:20] Speaker 05:
It's always the case that you start off in addressing the corroboration evidence with testimony by the inventor that says, you know, I conceived of it on a particular day.

[00:37:33] Speaker 00:
That's true, Your Honor.

[00:37:34] Speaker 00:
You always start off with testimony that says that.

[00:37:36] Speaker 00:
That's correct.

[00:37:37] Speaker 00:
And then there has to be corroboration of those statements that the inventor makes.

[00:37:43] Speaker 03:
You said that we start off with the testimony, with the view that the testimony of the inventor is not credible.

[00:37:51] Speaker 03:
Is that your argument?

[00:37:52] Speaker 00:
I believe that's correct under the caseload, yes, your honor.

[00:37:54] Speaker 05:
Because otherwise the testimony... No, I don't think that's quite right.

[00:37:57] Speaker 05:
I mean, I don't think you start out with the notion that his testimony is not credible.

[00:38:01] Speaker 05:
You start out with the notion that

[00:38:04] Speaker 05:
that people are self-interested and that we're not going to accept the testimony unless it's corroborated.

[00:38:09] Speaker 05:
It's not that he's not credible.

[00:38:11] Speaker 05:
It's that it's not standing alone enough.

[00:38:14] Speaker 01:
It's not persuasive without corroboration, I think is the idea.

[00:38:19] Speaker 00:
I agree with that.

[00:38:20] Speaker 00:
And I'm not saying, I didn't say in the record below, I'm not saying now that I think Mr. LeBlanc is lying.

[00:38:25] Speaker 00:
I think the problem that the rule recognizes is that when an inventor gives testimony, it can be self-interested.

[00:38:32] Speaker 00:
Not only that, but he's testifying over a decade later.

[00:38:35] Speaker 00:
And so that testimony becomes questionable on its face and must be corroborated.

[00:38:40] Speaker 00:
So we're not trying to make the point he's lying.

[00:38:44] Speaker 00:
There's no broad discovery in these PTAP proceedings.

[00:38:47] Speaker 00:
There's really no way for us to know one way or the other.

[00:38:49] Speaker 00:
All we can do is look at his testimony, which again, it's a little different than a district court proceeding where we'd have Mr. LeBlanc sitting there giving testimony.

[00:38:57] Speaker 00:
It's all on the papers.

[00:38:58] Speaker 00:
And so we take that testimony.

[00:39:00] Speaker 00:
We look at the corroborating evidence.

[00:39:02] Speaker 00:
We look at it on the papers, and then we make a decision.

[00:39:05] Speaker 00:
Did IV meet its burden to corroborate Mr. LeBlanc's testimony?

[00:39:09] Speaker 00:
Is this testimony accurate?

[00:39:10] Speaker 00:
Is it corroborated?

[00:39:12] Speaker 00:
In this case, there wasn't enough testimony to meet their burden.

[00:39:15] Speaker 00:
It didn't show what they needed to show, and it wasn't corroborated.

[00:39:20] Speaker 00:
And so the fact that we didn't depose them, there's no requirement that we have to depose witnesses.

[00:39:25] Speaker 00:
And often in these PTAP proceedings, witnesses aren't deposed, even expert witnesses, because their direct testimony is already on the paper.

[00:39:32] Speaker 00:
And they're not going to testify again unless called.

[00:39:38] Speaker 00:
I'm well over my time.

[00:39:40] Speaker 05:
Thank you, Mr. Alamani.

[00:39:43] Speaker 05:
You charge extra for overtime.

[00:39:45] Speaker 05:
I hope you understand.

[00:39:49] Speaker 04:
And just to be clear, Mr. LeValk's testimony did have every element.

[00:39:56] Speaker 04:
It was complete inaccurate.

[00:39:58] Speaker 04:
Well, sure, but... So I understand.

[00:40:01] Speaker 04:
That's not enough.

[00:40:02] Speaker 04:
It's not enough.

[00:40:03] Speaker 04:
It's not enough.

[00:40:04] Speaker 04:
I want to go back to the discussion we had, Your Honor.

[00:40:06] Speaker 04:
I got a little excited.

[00:40:06] Speaker 01:
You want to go back to what?

[00:40:07] Speaker 04:
The discussion that we had about this statement in the board's decision that you were focusing on.

[00:40:15] Speaker 04:
I think we have to look at what the board did.

[00:40:16] Speaker 04:
They went first to 2009.

[00:40:18] Speaker 04:
2009 is a pre-critical date document, and they looked at 2009 and said,

[00:40:24] Speaker 04:
There is insufficient evidence the inventors intended to use the functionality to avoid the need for an external server.

[00:40:29] Speaker 04:
That's what Your Honor pointed to.

[00:40:31] Speaker 04:
That's at JA 18.

[00:40:33] Speaker 04:
So they're going through all of the evidence, right?

[00:40:35] Speaker 04:
They're going through the evidence to say 2009 isn't enough.

[00:40:38] Speaker 04:
I get you.

[00:40:41] Speaker 04:
But the reason I was pushing back, Your Honor, is because then we go to the more critical evidence, which is 2020.

[00:40:47] Speaker 04:
This statement has nothing to do with Exhibit 2020.

[00:40:50] Speaker 04:
This is about this 2009

[00:40:53] Speaker 05:
provided evidence answers no twenty-twenty says did your computer receive an i p address from the mobile hotspot that's not the manual it's a different argument it's fine it's a different argument yeah it's a different argument the manual was used to show the capability of the windows ninety-eight and what the what i pointed to you is that the board said uh...

[00:41:23] Speaker 05:
That doesn't show that they used it.

[00:41:24] Speaker 05:
And now you're saying, okay, I'm turning to this other issue as to whether they used it, and I'm saying that Exhibit 2020 shows that they used it.

[00:41:32] Speaker 04:
Correct.

[00:41:32] Speaker 04:
That's correct.

[00:41:34] Speaker 04:
It was a systems requirements guide, and the board said that document doesn't show that they used it.

[00:41:40] Speaker 04:
And then they turned to this document, which does show they used it.

[00:41:44] Speaker 04:
And here's what they said.

[00:41:45] Speaker 04:
This is the bottom of J18.

[00:41:48] Speaker 04:
They said that we presented that this

[00:41:52] Speaker 04:
document, this page shows that the DHCP server itself was not a relay agent, but actually assigned the DHCP.

[00:42:02] Speaker 04:
That's what it says.

[00:42:02] Speaker 04:
Did you receive an IP address from the mobile hotspot?

[00:42:05] Speaker 04:
And here shows how it does it.

[00:42:08] Speaker 04:
Mr. Alamani says the board considered this evidence, weighed it, and concluded it didn't show it.

[00:42:13] Speaker 04:
Here's what the board says.

[00:42:16] Speaker 04:
They say, patent owners own evidence, however,

[00:42:20] Speaker 04:
shows that Exhibit 2020 was created after November 4, 2002.

[00:42:25] Speaker 04:
We thus agree with Petitioner that Exhibit 2020 does not corroborate any pre-bomb conception or reduction of practice of any feature recited in the claim.

[00:42:40] Speaker 04:
That's not looking at this and saying, well, we don't think it says what... They're saying it's dated post-critical date and thus it doesn't provide

[00:42:51] Speaker 04:
any evidence for anything.

[00:42:53] Speaker 01:
Mr. Babcock, let's assume for discussion purposes that you're right.

[00:42:59] Speaker 01:
That statement is an erroneous statement by the board.

[00:43:04] Speaker 01:
Let's assume that.

[00:43:07] Speaker 01:
The issue, however, as you have made clear to us, is that the question is whether the totality of the evidence under the rule of reason

[00:43:17] Speaker 01:
supports the board's conclusion.

[00:43:20] Speaker 01:
The board came to the conclusion that your inventor's testimony was not adequately corroborated by all of the evidence you brought in.

[00:43:33] Speaker 01:
Is that correct?

[00:43:36] Speaker 01:
Is that a correct statement?

[00:43:37] Speaker 04:
That's correct, Your Honor.

[00:43:38] Speaker 04:
I agree with that.

[00:43:39] Speaker 01:
Except they didn't consider this.

[00:43:40] Speaker 01:
Let's assume that in the course of looking at all that evidence, they

[00:43:44] Speaker 01:
made a wrong call as to one piece of it.

[00:43:47] Speaker 01:
What do we do at that point?

[00:43:49] Speaker 04:
Because this is the piece they said was missing is the one they overlooked.

[00:43:54] Speaker 04:
They said you're missing this one piece, DHCP assignment.

[00:43:57] Speaker 04:
Your evidence doesn't show that.

[00:43:59] Speaker 04:
And the one piece that does, we're not going to look at it at all because it's post-critical date.

[00:44:04] Speaker 05:
That's an error.

[00:44:06] Speaker 04:
i think they did your honor it says it's dated post-credital date we've got to agree it doesn't show anything there's no other mention of exhibit twenty twenty in this opinion there's no discussion of this exhibit at all the only discussion is that's post-credital date therefore it gets completely disregard that's legal error the board was required under the rule of reason okay to throw it in the mix evaluated i got that thank you mister i think you're right so i think both counsel cases

[00:44:36] Speaker ?:
B R A V E