[00:00:00] Speaker 04:
To begin with our arguments this morning, I have the distinct pleasure of making three motions.

[00:00:08] Speaker 04:
And Judge Raina will preside in making the motions, and Judge Plager will get to vote on the motions.

[00:00:16] Speaker 04:
And the motions are motions to admit three of my law clerks to the bar of this court.

[00:00:22] Speaker 04:
And the first one is Aaron Frumkin.

[00:00:27] Speaker 04:
I move the admission of Aaron Frumkin, who is a member of the bar and is in good standing with the highest court of California.

[00:00:35] Speaker 04:
I acknowledge of his credentials and am satisfied that he possesses the necessary qualifications.

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And then my second motion concerns my court, Chris Morton.

[00:00:47] Speaker 04:
I move the admission of Christopher Morton, who is a member of the bar and is in good standing with the highest court of New York.

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I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

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And then the third motion relates to my law card, David Yin.

[00:01:06] Speaker 04:
And I move the admission of David P. Yin, who's a member of the bar and is in good standing with the highest court of New York.

[00:01:14] Speaker 04:
I have knowledge of his credentials and am satisfied that he possesses the necessary qualifications.

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And I would say with respect to all three of you,

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And with respect to my fourth court, Oliver, as well, it's been a great pleasure having you this year.

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You've really done an outstanding job.

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And you'll be distinguished members of the bar here.

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And we'll look forward to seeing you appear here in the future.

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And that'll be a great pleasure, too.

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So thank you.

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Those are my motions.

[00:01:50] Speaker 02:
Thank you.

[00:01:50] Speaker 02:
Thank you, Judge Blader.

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We have a motion before the court.

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How do you vote on the motion?

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Well, this is not easy.

[00:01:59] Speaker 03:
It's not easy.

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Don't be unduly informed.

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It's not easy only because we always hate to see our clerks leave us.

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But we're always grateful to see them go on to the wonderful careers we wish for them in the future.

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And I'm delighted to vote to include these three fine people in our court.

[00:02:26] Speaker 02:
OK.

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And I'll vote likewise.

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So it looks like the motion has passed.

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And I direct the clerk of the court to swear you in.

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Please raise your right hand.

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Do you solemnly swear or affirm that you will comport yourself as an attorney and counselor of this court, uprightly and according to law, and that you will support the Constitution of the United States of America?

[00:02:56] Speaker 03:
I do.

[00:02:56] Speaker 00:
I do.

[00:02:57] Speaker 00:
Welcome to the Bar of the United States Court of Appeals for the Federal Circuit.

[00:03:00] Speaker 00:
Thank you.

[00:03:01] Speaker 00:
Thank you.

[00:03:02] Speaker 04:
Yes, welcome to the Bar, and thank you for all your good work.

[00:03:04] Speaker 04:
Nice to meet you.

[00:03:06] Speaker 02:
And for everybody else here, you've seen some of the real brains behind this court, OK?

[00:03:16] Speaker 04:
All right.

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With that accomplished, we'll turn to our four arguments today.

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Our first case is number 15, 1822, LG Electronics Inc.

[00:03:28] Speaker 04:
versus Toshiba Samsung Storage, Mr. Lieberman.

[00:03:36] Speaker 05:
Good morning, Judge Dyke.

[00:03:37] Speaker 05:
May it please the court?

[00:03:38] Speaker 05:
I'd like to reserve five minutes of my time for rebuttal.

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If I might, I'd like to focus my time here today principally on two issues.

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One is the claim construction issue regarding claims one, seven, and eight, and how it interacts with the Kiwano anticipation issue.

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The second has to do with claim two and whether or not there was substantial evidence

[00:04:05] Speaker 05:
for the PTEP's finding of obviousness, combining the Kawano and the Ohara reference to find claim to obvious.

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I'd like to begin by just a very short discussion of the technology.

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The technology here involves rewritable disks, like a DVD-RAM disk.

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A DVD-RAM disk or other optical disk has different areas on it.

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It has, for example, the areas that

[00:04:32] Speaker 05:
the user would put his or her information.

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It also has what's called a spare area, so that if when the user tries to write something in the user area and there's dust or a scratch or a stain, something like that.

[00:04:45] Speaker 02:
Councilman, I think you can assume that we know the facts and hopefully we have a good understanding of the technology.

[00:04:52] Speaker 02:
Why don't you address the board's construction of the first mode term?

[00:04:59] Speaker 05:
Yes, Your Honor.

[00:05:00] Speaker 05:
So the question

[00:05:03] Speaker 05:
The claim construction issue is whether or not the definition of the terms mode one and mode two should be read in light of every single embodiment in the specification, all of which make clear that for mode one, you have more spare area than in mode two.

[00:05:24] Speaker 05:
That's made clear in figure six.

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It's made clear in Figure 4B.

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It's made clear in every place in the specification that talks about the two modes.

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The PTAB, in concluding that what we were asking it to do was to read something from the specification into the claim, made two errors.

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One, it did not focus on this court's decisions, like the Abbott diabetes case, which say that when every single embodiment

[00:05:59] Speaker 05:
has a particular aspect.

[00:06:01] Speaker 05:
The claim can be read in light of that embodiment.

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So in the after-diabetes case, you were talking about an electrochemical sensor can be read or must be read.

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Well, we believe must be read.

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Even under the broadest reasonable interpretation?

[00:06:17] Speaker 05:
Yes, Your Honor.

[00:06:18] Speaker 05:
And here's why.

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Going back to the purpose of this technology, let's assume two individuals.

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One has an album of wedding photographs.

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And that person does not want to run any risk that any of the photos will be lost.

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That person may want on a disk to have more spare area to take care of the possibility of defects and less user area because the capacity is not so important.

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On the other hand, if you have a movie that you're watching because the frames come so quickly, you don't really care if there are lots of defects.

[00:06:55] Speaker 05:
So you want to have more space for the movie.

[00:06:57] Speaker 05:
This is all in the prior art.

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It's in figure three.

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And the prior art talks about mode one and mode two and why one can pick one or the other mode, depending upon one's purposes, given the content.

[00:07:14] Speaker 05:
Mode one and mode two is described as having a meaning in the prior art.

[00:07:19] Speaker 05:
And that term is then used in the patent claims.

[00:07:22] Speaker 05:
And again, every single embodiment talks about mode one having

[00:07:27] Speaker 05:
more spare area than mode two.

[00:07:30] Speaker 05:
Now the two mistakes I would submit that the PTAB made, one was they looked at figure five, which is a flow chart.

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It said in the flow chart here, it doesn't say anything about the relative sizes of mode one and mode two.

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But that's not what one would expect from a flow chart.

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In a flow chart, you get a flow of the process, a flow of the steps.

[00:07:48] Speaker 05:
Number two, the PTAB found what it called a clear disclaimer, clear disclaimer language in column four, lines five and six of the patent.

[00:07:57] Speaker 05:
This is at the Joint Appendix, page 13.

[00:08:01] Speaker 05:
And there the patent was talking about the different size disks that could be used.

[00:08:09] Speaker 05:
And this was the language that... I'm not following this.

[00:08:11] Speaker 04:
The claim language doesn't say anything about relative size, right?

[00:08:14] Speaker 04:
It does not.

[00:08:15] Speaker 04:
So normally we wouldn't read a relative size limitation in there.

[00:08:20] Speaker 04:
Does the specification say that there's a relative size limitation?

[00:08:23] Speaker 05:
Every single embodiment reflects a difference in size.

[00:08:27] Speaker 04:
But it doesn't say that there has to be a difference in size, right?

[00:08:31] Speaker 05:
What it does say is every time mode one or mode two is described in the specification, it is described as mode one having a greater spare area size than mode two.

[00:08:43] Speaker 05:
That's the whole purpose of the invention.

[00:08:46] Speaker 05:
The wedding album versus the movies.

[00:08:48] Speaker 02:
Does that show that the sizes are proportional or relative to each other?

[00:08:52] Speaker 05:
Relative.

[00:08:52] Speaker 05:
That is, that one is larger than the other.

[00:08:55] Speaker 05:
It doesn't talk about necessarily the specific ratio, but that one is larger than the other.

[00:09:02] Speaker 05:
And the language, the express disclaimer language, the clear disclaimer language, the PTAB, what the PTAB characterizes clear disclaimer language.

[00:09:09] Speaker 04:
Well, what do we need clear disclaimer language for?

[00:09:11] Speaker 04:
The language of the claim is broad.

[00:09:20] Speaker 04:
And you're the one who would have to find clear disclaimer language if you follow that line of cases here, right?

[00:09:30] Speaker 05:
Your Honor, the PTAB said that the reason why it was not convinced by the fact that every embodiment had more spare area in mode one than mode two was because of what it called clear disclaimer language.

[00:09:50] Speaker 05:
Column four, lines five and six, which I would submit, when you look at that language, it relates only to the size of the disk.

[00:09:57] Speaker 04:
That is, that the claim is not related to disks of particular... Why do they have to find clear disclaimer language to give the full scope of the claim as it's written?

[00:10:08] Speaker 05:
Because I believe under the Abbott diabetes case, when you have every single embodiment reflecting a particular aspect of the invention,

[00:10:17] Speaker 05:
and the terms mode one and mode two have a particular meaning in the prior art.

[00:10:21] Speaker 05:
And that meaning is cited and discussed in the specification.

[00:10:25] Speaker 05:
It is not improper to read the claim language in light of the prior art meaning and in light of the way every single embodiment deals with those two terms.

[00:10:35] Speaker 03:
It is not improper to read it that way, but you don't have to read it that way.

[00:10:39] Speaker 03:
You can read it differently if you find that the

[00:10:46] Speaker 03:
calls for a different result, or that the claims don't have a sufficient limiting factor in them?

[00:10:53] Speaker 05:
Only if you do it correctly, Your Honor.

[00:10:55] Speaker 05:
This is an issue of law, and we believe that the PTAB was incorrect in its legal analysis of this crime language.

[00:11:01] Speaker 05:
If I might, I'd like to switch to Claim 2 for a moment, because I think it presents a completely different issue.

[00:11:08] Speaker 05:
This is a substantial evidence issue.

[00:11:11] Speaker 05:
On Claim 2,

[00:11:15] Speaker 05:
The PTAB combined two references, a reference called Kawano and a reference called Ohara.

[00:11:22] Speaker 05:
And I'd like to focus on what the evidence was before the PTAB on this issue.

[00:11:30] Speaker 05:
In the joint appendix at 2862, there is a paragraph in the declaration submitted by TSST, the declaration of Dr. Hesselink.

[00:11:41] Speaker 05:
This is the only

[00:11:43] Speaker 05:
the only evidence that was before the board that was submitted by TSST regarding why one should combine these two references and as you'll see this is a 2862 in paragraph 32 Dr. Hesseling says provides the motivation at the bottom of paragraph 32 for combining these two references he says if the

[00:12:09] Speaker 05:
If one switches between modes and the two primary spare areas are of equal size, and claim two is the additional element in claim two over claim one, is that the primary spare areas are of equal size.

[00:12:22] Speaker 05:
What he says is none of the information stored in the spare area would need to be moved and the information would remain intact after conversion.

[00:12:30] Speaker 05:
So this is what he says the rationale is for combining these two references.

[00:12:36] Speaker 05:
That rationale

[00:12:37] Speaker 05:
is expressly identified in the 126 patent as the reason for the invention.

[00:12:44] Speaker 05:
The problem and the solution to the problem.

[00:12:48] Speaker 05:
That is, the 126 patent at the top of column four and also in column two talks about the compatibility problems when you have primary spare areas that are of different sizes.

[00:13:01] Speaker 05:
What Hessel Link does here, and this is the only evidence, is he takes the solution which is identified

[00:13:06] Speaker 05:
and the 126 patent and says, this is why you would combine the two references.

[00:13:12] Speaker 05:
But this court has repeatedly held that you cannot use the solution in the invention as a hindsight roadmap to help you through the different references.

[00:13:24] Speaker 05:
And that's the NTP case.

[00:13:26] Speaker 05:
It's a case directly on point.

[00:13:28] Speaker 05:
So what else does Hessel Link say?

[00:13:31] Speaker 05:
There's paragraph 33 in Hessel Link.

[00:13:35] Speaker 05:
And by the way, the entire section in Hessel Link, on claim two, runs from paragraphs 29 to paragraphs 33.

[00:13:42] Speaker 05:
The only substantive ones are 32 and 33.

[00:13:45] Speaker 05:
In Hessel Link, in paragraph 33, essentially what Hessel Link says is there's motivation to combine because it would have been obvious to combine.

[00:13:55] Speaker 05:
There is no reasoning here.

[00:13:57] Speaker 05:
There is no rationale.

[00:13:59] Speaker 05:
There is no scientific discussion.

[00:14:01] Speaker 05:
And what do you have on the other side?

[00:14:04] Speaker 05:
You have on the other side of this a detailed declaration from LG's expert, Dr. Mansourapour.

[00:14:11] Speaker 05:
And Dr. Mansourapour has a detailed explanation as to why you would not combine these references.

[00:14:18] Speaker 05:
And that's a JA3013 to 15.

[00:14:22] Speaker 05:
So you have essentially no evidence on the one side except for the solution that was identified in the 126 patent.

[00:14:30] Speaker 05:
And they can't use that as a hindsight basis for combining references.

[00:14:34] Speaker 05:
And on the other side, you have a detailed declaration, which explains why you wouldn't combine these references.

[00:14:41] Speaker 05:
The PTEP had no substantial evidence that would support its conclusion that it would be obvious to combine these two references.

[00:14:51] Speaker 05:
I believe I've run past my 10 minutes, Your Honor.

[00:14:53] Speaker 04:
All right.

[00:14:54] Speaker 04:
Do you want to save the rest of your time?

[00:14:56] Speaker 04:
I do.

[00:14:56] Speaker 04:
OK.

[00:14:56] Speaker 04:
Thank you, Mr. O'Leary.

[00:14:58] Speaker 04:
Thank you.

[00:15:11] Speaker 01:
Mr. Rohr.

[00:15:14] Speaker 01:
Good afternoon, your honors.

[00:15:15] Speaker 01:
May it please the court.

[00:15:18] Speaker 01:
Joe Rohr of Nixon and Vander High.

[00:15:20] Speaker 01:
We were not on the original briefs in this case.

[00:15:24] Speaker 01:
We became of record probably a month, maybe two months ago.

[00:15:28] Speaker 03:
Are you just claiming the briefs in the case?

[00:15:30] Speaker 01:
No, your honor.

[00:15:32] Speaker 01:
Not at all.

[00:15:32] Speaker 01:
I just wanted to make that clear.

[00:15:37] Speaker 01:
Claim one.

[00:15:39] Speaker 01:
of the 126 patent requires a first mode and a second mode.

[00:15:44] Speaker 01:
Claim one says the first mode has both a primary spare area and a supplementary spare area.

[00:15:50] Speaker 01:
Claim two states, claim one also states that the second mode has a primary spare area.

[00:15:57] Speaker 01:
That's what the claim says.

[00:15:59] Speaker 01:
LG's main argument is a claim construction argument.

[00:16:03] Speaker 01:
And LG's argument in that respect is that the first mode spare area

[00:16:09] Speaker 01:
has to be larger than the second mode spare area.

[00:16:13] Speaker 01:
They want to read this larger limitation into claim one.

[00:16:18] Speaker 01:
The PTAB spent a lot of time on that argument.

[00:16:23] Speaker 01:
The PTAB provided at least five reasons why LG's argument is wrong.

[00:16:30] Speaker 01:
And I'm going to go through those.

[00:16:34] Speaker 01:
LG's argument conflicts with the claim language.

[00:16:36] Speaker 01:
It also conflicts with the specification.

[00:16:38] Speaker 01:
Contrary to what LG argues, all the embodiments do not describe that larger feature that they were arguing.

[00:16:47] Speaker 01:
Final written decision, pages 12 through 17, there's at least five reasons why LG's claim construction argument is wrong.

[00:16:55] Speaker 01:
First is that we're dealing with the broadest reasonable construction, the BRI.

[00:17:00] Speaker 01:
Standard here, we're not under Phillips in this IPR proceeding.

[00:17:06] Speaker 01:
The second is the claim language itself.

[00:17:10] Speaker 01:
As PTAB pointed out, the claim language doesn't say anything about size difference between first mode and second mode.

[00:17:18] Speaker 01:
In fact, there are dependent claims which do have some size limitations.

[00:17:22] Speaker 01:
The patent owner certainly knew how to claim size when the patent owner wanted to.

[00:17:28] Speaker 01:
In claim one, there's no language about size.

[00:17:34] Speaker 01:
The next three reasons demonstrate why

[00:17:36] Speaker 01:
LG's argument is not consistent with the specification.

[00:17:41] Speaker 01:
As the PTAP pointed out, the second mode can also have a supplemental spare area.

[00:17:49] Speaker 01:
Claim 1 mentions a primary spare area for the second mode.

[00:17:54] Speaker 01:
The specification of the patent at column 4, lines 35 through 37, explains that the second mode can also have a supplemental spare area.

[00:18:04] Speaker 01:
Why is this important?

[00:18:06] Speaker 01:
It's important because the patent never tells us what the size of that supplemental spare area is in the second mode.

[00:18:16] Speaker 01:
If we don't know the size of the supplemental spare area in the second mode, we have no idea reading the patent which mode has larger spare area.

[00:18:25] Speaker 01:
So the argument that LG is making that every single embodiment is consistent with first mode being larger than second mode is flat out wrong.

[00:18:34] Speaker 01:
If you don't know the size of the supplemental spare area in the second mode, that cannot be the case.

[00:18:42] Speaker 01:
LG tries to explain this away in its briefs by saying that we should ignore the supplemental spare area in the second mode because that's not done during formatting.

[00:18:55] Speaker 01:
The problem with that argument is that LG told the board during the oral hearing in the IPR that

[00:19:04] Speaker 01:
The supplemental spare area in the second mode is implemented during formatting.

[00:19:11] Speaker 01:
The board thought so much of that Q&A to LG's council that they put it in the final written decision.

[00:19:19] Speaker 01:
In the final written decision at page 17, the board quotes the Q&A to LG's council.

[00:19:30] Speaker 01:
This Q&A evidences that

[00:19:33] Speaker 01:
LG affirmatively said that the supplemental spare area in the second mode is done during format.

[00:19:40] Speaker 01:
So contrary to what they say in their briefs, you cannot ignore it.

[00:19:51] Speaker 01:
That's the first reason why their argument's inconsistent with the spec.

[00:19:55] Speaker 01:
Second reason, as the board pointed out, figure five of the 126 patent

[00:20:01] Speaker 01:
The spec says that Figure 5 shows the invention.

[00:20:06] Speaker 01:
There's no size in Figure 5.

[00:20:07] Speaker 01:
As the board explained, that's also consistent with not reading a size limitation into Claim 1.

[00:20:14] Speaker 01:
The last point that the board made that I'm going to mention is that the specification states, quote, the present invention is not limited to this example.

[00:20:27] Speaker 01:
The specification says that just before there's a long iteration of statements that LG is trying to rely on.

[00:20:34] Speaker 01:
So the board is certainly reasonable in saying that all of these limitations should not be read into the claim when the spec tells you they shouldn't be read into the claim.

[00:20:43] Speaker 01:
Nowhere does the specification say that the spare area of the first mode has to be larger than the spare area of the second mode.

[00:20:51] Speaker 01:
To the contrary, when you don't know the size of the spare area of the second mode,

[00:20:57] Speaker 01:
as explained, it's impossible to even tell which one's larger.

[00:21:04] Speaker 01:
LG admits in its brief, reply brief page four, that the patentee did not act as its own lexicographer here.

[00:21:14] Speaker 01:
So the argument is not a lexicography argument.

[00:21:17] Speaker 01:
It's simply that, well, the specification says that.

[00:21:20] Speaker 01:
We have to read it into the claim.

[00:21:21] Speaker 01:
That's wrong for the reasons we've discussed.

[00:21:24] Speaker 01:
It's also noteworthy that LG and its opening brief never even offered a construction of first mode or second mode.

[00:21:31] Speaker 01:
That's curiously missing from LG's opening brief.

[00:21:35] Speaker 01:
They never said what their construction would be.

[00:21:39] Speaker 01:
They just said, hey, the board erred by not reading a size then.

[00:21:45] Speaker 01:
The reason they did that, in my view, is that their proposed constructions before the board were long convoluted and

[00:21:54] Speaker 01:
not supported by specification.

[00:21:58] Speaker 01:
In the reply brief, there's a suggestion on what they think the construction should be for first mode.

[00:22:05] Speaker 02:
Isn't the argument here, it's not so much whether a specific size requirement is read into the claims, but a relative size requirement?

[00:22:14] Speaker 01:
Yes, Your Honor.

[00:22:15] Speaker 01:
The argument is that first mode size has to be larger than second mode size.

[00:22:20] Speaker 01:
That's LG's argument, yes.

[00:22:23] Speaker 02:
OK.

[00:22:23] Speaker 02:
I thought you were arguing that there had to be a certain size, a specific size.

[00:22:30] Speaker 02:
That's not your argument.

[00:22:31] Speaker 01:
No, Your Honor.

[00:22:32] Speaker 01:
My argument is that the board properly construed the claim and that you cannot read a relative size in when it would be inconsistent with the specification, especially where you can't even tell what the size of the second mode is when you read the spec because you don't know the size of the supplementary spare area in the second mode.

[00:22:52] Speaker 01:
LG also argues that

[00:22:54] Speaker 01:
TSST's construction or the board's construction of first mode conflicts with the first mode discussed in the background.

[00:23:03] Speaker 01:
Well, that's easily distinguishable.

[00:23:06] Speaker 01:
First of all, the first mode of the invention in the 126 patent is clearly not referring to the first mode in the background.

[00:23:15] Speaker 01:
The first mode in claim one expressly requires two spare areas.

[00:23:21] Speaker 01:
The first mode in the background

[00:23:23] Speaker 01:
only has one.

[00:23:24] Speaker 01:
So clearly the first mode in claim one and in the invention is not referring to the first mode that only has one spare area in the background.

[00:23:34] Speaker 01:
That cannot be more clear.

[00:23:37] Speaker 01:
LG's construction also would conflict with the first mode in the background because LG's construction, if we look at their reply brief where they presented it on page three,

[00:23:51] Speaker 01:
LG's construction also says that the first mode has two spare areas.

[00:23:56] Speaker 01:
Well, that would also conflict with the first mode in the background.

[00:24:00] Speaker 01:
So everything that LG is saying about the PTAB's construction conflicting with the first mode in the background also applies to their own construction.

[00:24:13] Speaker 03:
Just for background information, counsel, I understand there is a district court suit that

[00:24:21] Speaker 03:
triggered all of this.

[00:24:22] Speaker 03:
What is the status of that suit at the present time?

[00:24:25] Speaker 03:
Do you know?

[00:24:25] Speaker 01:
Yes, Your Honor.

[00:24:27] Speaker 01:
The district court suit is ongoing.

[00:24:34] Speaker 01:
It wasn't stayed?

[00:24:35] Speaker 01:
It was not stayed.

[00:24:36] Speaker 01:
Some patents have been stayed.

[00:24:38] Speaker 01:
The 126 patent, which is at issue in this appeal, has not been stayed before the district court.

[00:24:47] Speaker 01:
Other patents

[00:24:48] Speaker 01:
have been stayed in view of IPRs.

[00:24:50] Speaker 01:
But the 126 patent that we're talking about here has not been stayed.

[00:24:55] Speaker 03:
Has the district court ruled on any of this, to your knowledge?

[00:24:59] Speaker 01:
No, Your Honor.

[00:25:00] Speaker 01:
Invalidity contentions were submitted, I believe, about a month ago.

[00:25:04] Speaker 01:
There has not been a marked ruling in that case.

[00:25:08] Speaker 01:
And also, from a status point of view about the district court case, the TSSTK, who is the appellee here,

[00:25:18] Speaker 01:
is the defendant in that district court case, there was a bankruptcy filing in Korea about a month ago.

[00:25:25] Speaker 01:
So there is a motion to stay that is pending, awaiting the results of the bankruptcy.

[00:25:33] Speaker 01:
A bankruptcy filing by your client?

[00:25:35] Speaker 01:
Yes, Your Honor, in Korea.

[00:25:39] Speaker 03:
Just to save time, I'm going to ask you the same question about the second suit.

[00:25:46] Speaker 01:
Yes, Your Honor, the second suit is ongoing.

[00:25:48] Speaker 01:
Because the second suit, our client, TSSTK, is the plaintiff in that suit, there is no motion to stay pending.

[00:25:56] Speaker 01:
That's an asset of the client.

[00:25:59] Speaker 01:
So I would expect that case to go forward even if there is an institution of bankruptcy.

[00:26:08] Speaker ?:
Okay.

[00:26:09] Speaker 01:
Anything else?

[00:26:09] Speaker 01:
With respect to claim two, Your Honor, I would just say that

[00:26:13] Speaker 01:
The PTAB spent nine pages explaining the obviousness, rejection of claim, too.

[00:26:17] Speaker 01:
It's very detailed.

[00:26:19] Speaker 01:
It's well thought out.

[00:26:20] Speaker 01:
And the portion of the declaration that was cited is not the only evidence that was relied upon.

[00:26:28] Speaker 01:
The references themselves are evidence.

[00:26:31] Speaker 01:
Prior art is evidence.

[00:26:33] Speaker 01:
It's all evidence.

[00:26:35] Speaker 01:
It says what it says.

[00:26:37] Speaker 01:
That's all, Your Honor.

[00:26:38] Speaker 04:
OK.

[00:26:38] Speaker 04:
Thank you, Mr. Olin.

[00:26:39] Speaker 04:
Thank you.

[00:26:42] Speaker 04:
Mr. Lieberman, you've got

[00:26:43] Speaker 04:
minutes and 42 seconds.

[00:26:45] Speaker 05:
Thank you, Your Honor.

[00:26:47] Speaker 05:
In response to the procedural question the court asked, the district court litigation with respect to the 126 patent is proceeding the motion to stay there was denied by the district court in part because certain claims have not been held invalid by the PTAT.

[00:27:04] Speaker 05:
For example, Claim 11, which survived the final written decision, is being asserted in that underlying litigation.

[00:27:12] Speaker 05:
I'd like to focus, if I may,

[00:27:13] Speaker 05:
on claim two and the obviousness issue.

[00:27:16] Speaker 05:
And what it is that the district, what it is that the PTAB said it was relying upon.

[00:27:22] Speaker 05:
What the PTAB said it was relying upon, and this is on page 27 of the joint appendix.

[00:27:31] Speaker 05:
The PTAB said that it was relying upon an annotated chart of the prior art that was created by council.

[00:27:41] Speaker 05:
And that annotated chart was provided with the patent owner's, with the reply to the patent owner's response in the proceeding below.

[00:27:50] Speaker 05:
So after the evidence was in, in the, in their reply, they submitted an attorney created annotated chart.

[00:27:58] Speaker 05:
It's not the subject of any expert testimony.

[00:28:01] Speaker 05:
Dr. Hesselink does not say anything about it.

[00:28:04] Speaker 05:
He does not talk about the substance of it.

[00:28:06] Speaker 05:
He does not even talk about it in concept.

[00:28:09] Speaker 05:
And what the PTAB said is,

[00:28:11] Speaker 05:
Therefore, petitioner's presentation establishes persuasively that Ohada does not teach away.

[00:28:17] Speaker 05:
They make very clear that the evidence upon which they are relying is a handwritten chart created by the lawyer.

[00:28:25] Speaker 04:
No, no, that's not evidence.

[00:28:26] Speaker 04:
The chart is like a demonstrative exhibit.

[00:28:29] Speaker 04:
It sets forth in convenient form what is elsewhere in the record.

[00:28:35] Speaker 05:
That's what it's supposed to do, but it does not, because there is nothing elsewhere in the record

[00:28:41] Speaker 05:
that would support the Coano-Ohada combination.

[00:28:44] Speaker 05:
So if you look at the Hessling Declaration, paragraphs 32 and 33, indeed any discussion in the Hessling Declaration of Coano, there is no explanation as to why you would combine those two other than the two paragraphs that I cited to this court.

[00:29:02] Speaker 05:
The first paragraph takes the rationale right out of the 126 patent, which are not permitted to do under NTP,

[00:29:09] Speaker 05:
That's classic hindsight analysis.

[00:29:12] Speaker 05:
And paragraph 33 simply says it's obvious to combine because it would be obvious to combine.

[00:29:16] Speaker 05:
It says nothing more than that.

[00:29:18] Speaker 05:
That's the only evidence.

[00:29:20] Speaker 05:
What you then have is the PTAB saying, what I'm persuaded by is this annotated chart.

[00:29:27] Speaker 05:
The annotated chart is not really demonstrative.

[00:29:31] Speaker 05:
This was sort of a substitute for expert testimony.

[00:29:36] Speaker 05:
The lawyers can't do that.

[00:29:38] Speaker 05:
It's the experts that have to provide the testimony.

[00:29:41] Speaker 05:
And there was zero, nothing, from Hessel Link to support the combining of those two references.

[00:29:47] Speaker 05:
If there's nothing, that's less than substantial evidence.

[00:29:50] Speaker 05:
I would therefore ask the court to reverse on Claim 2.

[00:29:53] Speaker 05:
I don't know if the court has questions on the Claim 2 issue.

[00:30:03] Speaker 05:
Again, the entirety of the record on claim two and why you would combine those two references is in those two paragraphs in the Hessel Link Declaration.

[00:30:14] Speaker 05:
That's it.

[00:30:16] Speaker 05:
Now, on the issue of claim construction, the argument that was made about adding a supplemental spare area mode two, if necessary, when a recording takes place, that's at a very different stage in the process.

[00:30:31] Speaker 04:
and the claim language makes that clear.