[00:00:19] Speaker 04:
Okay, please proceed, Mr. Mei.

[00:00:21] Speaker 01:
Your Honor, similar to the first appeal with respect to Unified, Dragon raised a single issue here in this appeal, that is whether the recited prior art discloses the solid limitation of the claimed control circuit.

[00:00:36] Speaker 01:
Again, the solid limitation is a very narrow limitation, and it was the very reason that the patent office allowed these claims over prior art simultaneous recording and playback devices, including

[00:00:49] Speaker 01:
Goldwasser.

[00:00:51] Speaker 01:
In other words, contrary to this assertion, simultaneous record.

[00:00:55] Speaker 02:
Why correct an understanding that in the prosecution history, where the PTO and that supplemental examination, when it allowed the claims, it wasn't looking at IFRAC, right?

[00:01:09] Speaker 01:
It wasn't looking at IFRAC at all.

[00:01:11] Speaker 02:
The PTO did not have IFRAC in front of it.

[00:01:12] Speaker 01:
No.

[00:01:13] Speaker 01:
And there's a similar reference, Smith, that teaches a record

[00:01:17] Speaker 01:
a keyboard having a record key and a playback key, but no IFRAC.

[00:01:24] Speaker 01:
And contrary to these assertions, simultaneous recording.

[00:01:27] Speaker 04:
Just so I understand it, to follow up on Joan's question, the board in this case used IFRAC only for the remote, right?

[00:01:36] Speaker 01:
Correct.

[00:01:36] Speaker 04:
And in the earlier prosecution, they used Smith only for the remote, correct?

[00:01:42] Speaker 04:
Correct.

[00:01:42] Speaker 04:
And in both cases, they used Goldwasser for everything else?

[00:01:46] Speaker 01:
Correct.

[00:01:47] Speaker 04:
Except in the first case, they said it wasn't enough.

[00:01:49] Speaker 01:
Correct.

[00:01:50] Speaker 04:
But this case, they said it is enough.

[00:01:51] Speaker 01:
Correct.

[00:01:52] Speaker 04:
OK.

[00:01:53] Speaker 01:
And the specific limitation, simultaneous recording and playback itself does not equate the solar limitation.

[00:02:02] Speaker 01:
During the supplemental examination, examiner made very clear that Goldwasser does not teach the recited control circuit, even though Goldwasser teaches simultaneous recording and playback.

[00:02:14] Speaker 02:
That was in the context of anticipation, right?

[00:02:17] Speaker 02:
I mean, I read the decision on obviousness to be kind of a cursory treatment, if you will.

[00:02:23] Speaker 02:
It was maybe one paragraph.

[00:02:26] Speaker 02:
Is that correct?

[00:02:27] Speaker 01:
There was one paragraph in reference to Smith's thing.

[00:02:30] Speaker 01:
Goldwasser, along with in combination with Smith's, does not teach the recited control circuit.

[00:02:36] Speaker 01:
But I think Dragon does not agree that's conclusory.

[00:02:41] Speaker 01:
Because the entire office communication was very concise.

[00:02:45] Speaker 01:
The examiner went through different references and pointed out various claim limitations that were not met.

[00:02:53] Speaker 01:
And I think examiner clearly examined the combination of Goldwasser and Smith and found that did not teach the recited control circuit.

[00:03:02] Speaker 01:
And that finding was confirmed, or at least the examiner checked with two other examiners during the supplemental examination.

[00:03:10] Speaker 01:
and reach that decision.

[00:03:13] Speaker 01:
So it's not a situation where a single examiner decided to make a conclusory statement there.

[00:03:23] Speaker 01:
And in this case, the board's finding, again, is not accompanied by any articulated reasoning as to how the cited prior discloses the solar limitation.

[00:03:35] Speaker 01:
Again, the Supreme Court in KSR held that in order to facilitate review

[00:03:40] Speaker 01:
This analysis should be made explicit and cannot be sustained by mere conclusory statements.

[00:03:47] Speaker 01:
Here, the board provided no evidence, let alone substantial evidence, other than conclusory statements to support its obviousness finding.

[00:03:57] Speaker 01:
This expert also provided conclusory statements that Goldwasser teach the Soli limitation, which is contrary to examiner's finding during the supplemental examination.

[00:04:09] Speaker 01:
As a result, this expert's conclusory opinion is entitled to little or no weight.

[00:04:16] Speaker 02:
I would like to ask you about eFRAC.

[00:04:18] Speaker 02:
Because the way I read PTAB's decision is they say that it's the combination of the references that would teach the solely limitation.

[00:04:28] Speaker 02:
Correct.

[00:04:29] Speaker 02:
And eFRAC, I realize the control circuit itself is different.

[00:04:36] Speaker 02:
Goldwasser is the reference that was relied on by the PTAB for the control circuit.

[00:04:42] Speaker 02:
But then Euphrax says, that's what I think could be a good evidence supporting the PTAB's decision.

[00:04:49] Speaker 02:
So I want to tell you what I'm focusing on so you can respond to it.

[00:04:52] Speaker 02:
So I'm looking at column four and near the bottom around line 64.

[00:05:01] Speaker 02:
This is Euphrax.

[00:05:02] Speaker 02:
It's on page 170 of the appendix.

[00:05:08] Speaker 02:
And I'll probably keep it.

[00:05:18] Speaker 02:
OK.

[00:05:18] Speaker 02:
OK.

[00:05:18] Speaker 02:
So column four at the bottom, round line 63 or so, it says, whenever the listener wishes to play back the 60 seconds of a broadcast frozen by depressing the freeze key, this is affected by depressing the playback button.

[00:05:37] Speaker 02:
Why isn't that one touch playback from the beginning?

[00:05:43] Speaker 01:
Very good question, Your Honor.

[00:05:45] Speaker 01:
To understand that disclosure, we need to understand claim one of the 444 pattern.

[00:05:55] Speaker 01:
In addition to solid limitation, there's subsequent limitation talking about the interval of the time delay being the same as the time elapsed between the actuation of said record key

[00:06:06] Speaker 01:
and subsequent actuation of that playback key.

[00:06:09] Speaker 01:
And eFRAC is always adding one 60 seconds.

[00:06:14] Speaker 01:
So that particular limitation is not met.

[00:06:17] Speaker 01:
I believe that's the reason D expressly disclaimed any relevance of eFRAC to teach the control circuit.

[00:06:26] Speaker 02:
I understand your answer.

[00:06:28] Speaker 02:
But it does seem to me that in giving that answer, you're looking at the control circuit of eFRAC.

[00:06:34] Speaker 02:
as opposed to the control circuit of Goldwasser.

[00:06:37] Speaker 01:
Correct.

[00:06:38] Speaker 02:
And then the question is, if you were to take the buttons, the idea of the buttons in EFRAC, and use Goldwasser's functionality, control circuit, how would you, it seems that that combination would result instead in a playback button that is not just the result of continually recording 60 seconds.

[00:07:02] Speaker 01:
So, I mean,

[00:07:04] Speaker 01:
there's no evidence in the underlining proceeding as to how that would be obvious.

[00:07:11] Speaker 01:
Obviously, related circuitry has to be changed to have both the solar limitation and the interval of the time delay limitation.

[00:07:22] Speaker 01:
So that's the reason I think it's in the underlining proceeding.

[00:07:28] Speaker 01:
And also in the briefing, in this appeal, this should expressly disclaim.

[00:07:32] Speaker 01:
Dragon had no opportunity to respond specific to the question you already just raised here.

[00:07:37] Speaker 01:
It was not in this particular IPR proceeding.

[00:07:41] Speaker 01:
And just from my perspective as somebody having a computer engineering degree, I think the implementation could be varied.

[00:07:51] Speaker 01:
There might be different ways in order to come up.

[00:07:54] Speaker 01:
And it may not necessarily be obvious to a person ordering skill in the art, especially keeping in mind

[00:08:02] Speaker 01:
The 444 pattern claims priority to 1992, 25 years ago.

[00:08:08] Speaker 01:
And the reference are even before that.

[00:08:11] Speaker 01:
So it's difficult at this point, with the hindsight, to say whether it's obvious or not.

[00:08:17] Speaker 01:
But the point is, they should not make that argument.

[00:08:20] Speaker 01:
They expressly disclaim any relevance of EFRAC to the control circuit.

[00:08:25] Speaker 01:
And what we have now is Goldwasser.

[00:08:28] Speaker 01:
And Goldwasser does not teach that particular element

[00:08:31] Speaker 01:
At least the board did not articulate any reasoning to show that.

[00:08:37] Speaker 01:
And these experts also only relied on conclusory statements, did not point to any specifics within Goldwasser to disclose the solar limitation.

[00:08:50] Speaker 01:
Your Honor, now I'm going to turn to the waiver issue.

[00:08:53] Speaker 01:
That's an issue brought up and also subject to motion for sanctions.

[00:08:57] Speaker 01:
So this actually asserts that Dragon had waived

[00:09:01] Speaker 01:
the sole limitation in the underlining proceeding, but the doctrine of waiver is limited in its application, right?

[00:09:10] Speaker 01:
Curse, even cryptic arguments, not the case here, but even curse cryptic arguments raised in abbreviated form are enough to defeat any assertion of waiver.

[00:09:24] Speaker 01:
So in this case,

[00:09:25] Speaker 02:
Your position is that it's not enough that somebody identify a particular claim limitation.

[00:09:32] Speaker 02:
They have to focus, if they're going to make a particular argument based on a particular set of words within that limitation, they need to make that more clear at the beginning when they file their petition?

[00:09:42] Speaker 01:
Oh, no, no.

[00:09:43] Speaker 01:
They are arguing the waiver by the patent owner.

[00:09:47] Speaker 01:
So the patent owner actually argued the solar limitation six times during the PTAB hearing.

[00:09:55] Speaker 01:
And then the outside argue, oh, that's not enough.

[00:09:59] Speaker 01:
Even though those six times when the story limitation was argued, there was no objection.

[00:10:04] Speaker 01:
Everyone understood that that issue was preserved in writing.

[00:10:09] Speaker 01:
So now they're arguing.

[00:10:11] Speaker 03:
And the PTAB addressed that issue, its opinion.

[00:10:13] Speaker 01:
Correct.

[00:10:13] Speaker 01:
Yeah, correct.

[00:10:14] Speaker 01:
And then I actually, then the dish argued that, no, that's not enough.

[00:10:20] Speaker 01:
You need to have it in writing.

[00:10:22] Speaker 01:
So Your Honor, I want to point you to

[00:10:25] Speaker 01:
pattern owner's response after institution.

[00:10:36] Speaker 01:
So on page, appendix page 1173, on the top of that page, pattern owner

[00:10:53] Speaker 01:
specifically listed three sub-elements of control circuit.

[00:10:57] Speaker 01:
The element number two is the Soli limitation.

[00:11:01] Speaker 01:
Then on the next page, Appendix 1174, the first full paragraph had only stated that the address controller of Goldwasser is not the control circuit of claim one, or within the broadest reasonable construction of control circuit, because Goldwasser contains no disclosure

[00:11:23] Speaker 01:
that the address controller is configured as described in claim one, and specific pointing to element one, two, and three above.

[00:11:33] Speaker 04:
OK, Mr. Mei, you're using up your rebuttal time.

[00:11:35] Speaker 04:
Would you like to save the rest?

[00:11:37] Speaker 01:
Yes, Your Honor.

[00:11:37] Speaker 04:
Thank you.

[00:11:49] Speaker 00:
Good afternoon, Your Honors.

[00:11:50] Speaker 00:
The issue here is whether the PTAB acted reasonably when it found it would be obvious to use a playback button to command playback of Goldwasser's recording.

[00:11:58] Speaker 00:
The answer to that is clearly yes, and the reasoning on this point is both explicit and thorough.

[00:12:04] Speaker 00:
We can start at joint appendix 18 where you see the PTAB's most relevant finding on the point.

[00:12:09] Speaker 00:
They say, we find that Goldwasser's address controller, when viewed in light of Yifric's two-button interface and Goldwasser's user control panel, would have taught

[00:12:18] Speaker 00:
one of ordinary skill in the art, a control circuit configured to allow for simultaneous recording when the record key is actuated to begin recording, and playback, when the playback key is subsequently and solely actuated to begin playback.

[00:12:30] Speaker 00:
Even that sentence by itself is neither conclusory nor insufficient because it's obvious what the points of interest in the references were, right?

[00:12:40] Speaker 00:
You'll notice here in this single

[00:12:42] Speaker 00:
conclusionary sentence that's been alleged to be insufficient, the PTAB explicitly identifies three things.

[00:12:47] Speaker 00:
The address controller of Goldwasser, the user control panel of Goldwasser, and Yifrack's interface for interfacing with a control circuit.

[00:12:56] Speaker 00:
And those three things together are what focused the board's attention in its well-written, final-written decision.

[00:13:02] Speaker 00:
Let's now look at how it got to that result.

[00:13:06] Speaker 00:
First, the board started by correctly summarizing the invention here as a substantially immediate and seamless resumption of interrupted perception of program information.

[00:13:15] Speaker 00:
That is the one key solely playback limitation that's now being asserted on appeal.

[00:13:22] Speaker 00:
That occurs at Joint Appendix 12, where they analyze independent claim and reach that conclusion.

[00:13:28] Speaker 00:
The board also analyzes Goldwasser's disclosure and finds that it's identical to what's being

[00:13:34] Speaker 00:
claimed and claim one in respect to this notion of you know substantially immediate and seamless resumption of interrupted programming so joint appendix 9 when the board describes Goldwasser they say for example they quote here from Goldwasser for example one often one will be watching a particular program when one must temporarily cease watching for example to take a telephone call or the like it would obviously be convenient to be able to record the program from that point forward complete the telephone call and simply watch the remainder

[00:14:04] Speaker 00:
delayed by the length of time of the interruption.

[00:14:07] Speaker 00:
That in itself, which is substantial evidence in the record, it's the exact teachings of Goldwasser, the primary reference, was clearly significant to the board's conclusion.

[00:14:16] Speaker 00:
And what that teaching tells you, even by itself would be enough for obviousness here, because it says, all you do is simply watch the remainder of the delay.

[00:14:24] Speaker 00:
So the only question that's left, the only difference now that we can even articulate between what's explicitly described in Goldwasser and this claim,

[00:14:32] Speaker 00:
is how do you simply watch the remainder?

[00:14:34] Speaker 00:
Do you need to do something more than push a single button?

[00:14:37] Speaker 00:
There's no reason to think that you do.

[00:14:39] Speaker 00:
And the board goes on to explain why that is.

[00:14:42] Speaker 00:
So if you look at Joint Appendix 10, the board focuses there on the address controller of Goldwasser.

[00:14:49] Speaker 00:
And they note that the address controller 58 controls the storage of the digitized video samples and is responsive to commands from the user control panel.

[00:14:59] Speaker 00:
So we know that this controller, which allows you to simply watch the remainder of your program when your telephone call is over, responds to commands.

[00:15:06] Speaker 00:
And those commands come from what he calls a control panel.

[00:15:10] Speaker 00:
Again, so what's left?

[00:15:11] Speaker 00:
Well, we need now a button that is effectively, how do you implement this control panel?

[00:15:15] Speaker 00:
You implement it with buttons.

[00:15:16] Speaker 00:
Those buttons contain commands from a user, and so where does the board turn to find those buttons?

[00:15:21] Speaker 00:
It turns to Yifrack quite correctly.

[00:15:24] Speaker 00:
and the relevant passage of IFRAC is the one Judge Stoll you've already identified.

[00:15:28] Speaker 00:
That's discussed at Joint Appendix page.

[00:15:31] Speaker 04:
Page 10 that you're pointing to with the address controller, that's just something that controls storage and it says it's responsive to commands, plural, from the user control panel, 50.

[00:15:44] Speaker 04:
How is that teaching one button playback?

[00:15:47] Speaker 00:
Well, it's not, which is why, again, for the purpose of identifying the particular commands that would be available to a user, we look to IFRAC.

[00:15:55] Speaker 00:
IFRAC gives us two commands, pause and playback.

[00:15:58] Speaker 04:
Is that what the board did?

[00:15:59] Speaker 04:
Did it look at IFRAC for the commands?

[00:16:01] Speaker 00:
Yes, absolutely.

[00:16:02] Speaker 00:
So, let's look at page 14 of the joint appendix.

[00:16:09] Speaker 00:
In the paragraph that begins, petitioner cites IFRAC's freeze and playback keys.

[00:16:13] Speaker 00:
A little further down, the board says, in describing IFRAC,

[00:16:17] Speaker 00:
Remember the difference here, YFRAC was an audio recording circuit, not necessarily video, but that difference is irrelevant for this discussion.

[00:16:25] Speaker 00:
So in describing YFRAC, the board notes, this recorded audio may then be played back when the user depresses the playback button.

[00:16:33] Speaker 00:
That's the key limitation that's now being disputed on appeal, which is, do you need to do more than push a playback button?

[00:16:40] Speaker 00:
The answer is no, YFRAC teaches this explicitly and the board comments on it.

[00:16:45] Speaker 00:
You playback when you press the playback button.

[00:16:47] Speaker 00:
And then the board correctly identifies petitioner's argument below, which is under petitioner's ground, this teaching is to be viewed in connection with teaching of Goldwasser, which allows this.

[00:16:56] Speaker 04:
I'm sorry.

[00:16:56] Speaker 04:
You're going so fast.

[00:16:57] Speaker 00:
OK.

[00:16:58] Speaker 04:
I can't find where you are.

[00:16:59] Speaker 00:
On page 14?

[00:17:01] Speaker 04:
Yes, I guess.

[00:17:02] Speaker 04:
You're on page 14.

[00:17:04] Speaker 04:
Yes.

[00:17:04] Speaker 04:
But you're going so fast.

[00:17:05] Speaker 00:
I'm sorry.

[00:17:05] Speaker 04:
And I think that you're quoting things.

[00:17:07] Speaker 00:
I am.

[00:17:07] Speaker 04:
And I want to see them.

[00:17:08] Speaker 00:
Yep.

[00:17:08] Speaker 00:
Let's look at them.

[00:17:12] Speaker 00:
Let's just make sure I'm

[00:17:13] Speaker 00:
On the right page, yes.

[00:17:14] Speaker 00:
That's it.

[00:17:15] Speaker 00:
So it's the paragraph beginning petitioner sites, the first full paragraph.

[00:17:19] Speaker 04:
I found the this recorded audio, but by the time I found it, you were saying something else.

[00:17:23] Speaker 00:
So I didn't know what you were saying about it.

[00:17:24] Speaker 00:
So this recorded audio may be played back when the user depresses the playback button.

[00:17:31] Speaker 00:
That's the allegedly missing limitation now that's being asserted on appeal.

[00:17:34] Speaker 00:
How does the user send the command in to playback?

[00:17:38] Speaker 00:
Does it need to do anything besides hit playback?

[00:17:40] Speaker 00:
The answer is no.

[00:17:41] Speaker 00:
EFRAC teaches that.

[00:17:43] Speaker 00:
You push the playback button.

[00:17:44] Speaker 00:
EFRAC, by the way, has only two buttons in this embodiment.

[00:17:47] Speaker 00:
Pause and playback.

[00:17:49] Speaker 00:
Which is exactly what this claim is directed to.

[00:17:52] Speaker 00:
A two-button interface to pause and then resume playback.

[00:17:55] Speaker 00:
That's what EFRAC teaches you.

[00:17:57] Speaker 00:
And the board correctly applies that teaching.

[00:18:01] Speaker 00:
On Joint Appendix 16, then,

[00:18:09] Speaker 00:
Around the middle of the page, you'll see the board says, we find that it would not have been beyond the skill of an ordinary skill.

[00:18:16] Speaker 04:
Here's one problem.

[00:18:17] Speaker 04:
So this is your frac on page 10, right?

[00:18:20] Speaker 04:
Where you say, this recorded audio may then be played back when the user presses the play button.

[00:18:26] Speaker 04:
Well, this is solely the functionality, right?

[00:18:30] Speaker 04:
This is the functionality component.

[00:18:31] Speaker 04:
What happens when you press a button?

[00:18:35] Speaker 00:
It's the command.

[00:18:36] Speaker 00:
No, I disagree.

[00:18:38] Speaker 00:
The relevance of YFRAC is what commands can the user send in to the controller.

[00:18:45] Speaker 00:
For this system to work, you need a controller, you need random access memory so that you can record and read back at the same time.

[00:18:52] Speaker 00:
Goldwasser has that.

[00:18:52] Speaker 00:
And you need a controller that controls the recording and reading back.

[00:18:55] Speaker 04:
But wait, look on page 15 how the board characterizes your argument.

[00:19:02] Speaker 04:
page 15 in the center where it says, in other words, petitioners relying on yearfrac to teach the two button interfaces and not the actions that occur when those buttons are pushed.

[00:19:14] Speaker 04:
So you just told me yearfrac discloses solely because yearfrac tells you recording begins when the button is pushed.

[00:19:22] Speaker 04:
But then in the very next page, the PTO says, you don't rely on yearfrac to teach anything other than buttons.

[00:19:29] Speaker 04:
And you certainly don't rely on it to teach what actions occur when those buttons are pushed.

[00:19:33] Speaker 04:
I don't know what to make of that.

[00:19:35] Speaker 00:
I would say that discussion that you're referring to at page 15 would suggest that the board actually found that Goldwasser itself already taught this notion of sole playback from the disclosure I showed you earlier, where Goldwasser says you would simply watch the delayed playback after your call is over.

[00:19:52] Speaker 04:
OK, but you're telling me that your FREC discloses it,

[00:19:57] Speaker 04:
And I see, I see everything you're saying, but then you're telling me, but the board did not rely on you for that disclosure.

[00:20:03] Speaker 04:
that what the next sentence demonstrates is the board instead relied on Goldwasser for that disclosure.

[00:20:08] Speaker 04:
So show me where Goldwasser discloses that, since that's the fact-finding the board, actually.

[00:20:12] Speaker 00:
Well, so I'm not clear that the board, I don't necessarily think the board made the fact-finding that you're referring to.

[00:20:17] Speaker 00:
No pointing.

[00:20:18] Speaker 00:
No pointing.

[00:20:18] Speaker 00:
I'm sorry.

[00:20:19] Speaker 00:
Yeah, I'm sorry.

[00:20:20] Speaker 00:
I apologize.

[00:20:20] Speaker 02:
What about in the bottom, on page JA15, where it says, refrax, playback, and freeze the keys, combined with Goldwasser's simultaneous recording and playback,

[00:20:31] Speaker 02:
Functionality doesn't say functionality, but I'm reading that in.

[00:20:34] Speaker 02:
And turn to the next page, and it says, would have taught one of ordinary skill in the art to claim keyboard, having a record key and a playback key.

[00:20:42] Speaker 00:
Yeah, so I believe that teaching is exactly what I was going to get to in answer to Judge Moore's question, which is I don't think the board actually made the fact finding that they were merely relying on UFRAC to teach the interface and not the actions.

[00:20:55] Speaker 00:
That was my point.

[00:20:57] Speaker 00:
I think they could also have made that finding.

[00:20:59] Speaker 00:
It's not clear that they did.

[00:21:01] Speaker 00:
But when you get to the bottom of 15 and over to 16, I do think that's where the fact-finding becomes quite clear as to what the obviousness rationale was.

[00:21:09] Speaker 00:
They point to, at page 16, our expert, Mr. Russelberger's testimony that the use of buttons as disclosed in YFRAC was a well-known user interface design choice, that all VCRs from the 80s had buttons that had these sort of commands.

[00:21:25] Speaker 00:
And then they say, we find that it would not have been beyond

[00:21:28] Speaker 00:
the skill of an ordinary skill artist to implement Goldwasser's user control panel with keys as recited in GIFRAC.

[00:21:36] Speaker 00:
And then more directly I think to Judge Moore's question if you look to now page 19.

[00:21:51] Speaker 00:
This is the second full paragraph.

[00:21:56] Speaker 00:
On page 19, the paragraph begins petitioner response.

[00:22:01] Speaker 00:
Okay, so petitioner's ground is directed to implementing Goldwasser's user control panel with a two button user interface as described in YFRAC.

[00:22:10] Speaker 00:
As discussed above, we find that one of ordinary skill in the art would have been motivated to implement Goldwasser's control panel with buttons and that such a modification would have been within the knowledge of one of ordinary skill in the art.

[00:22:21] Speaker 00:
So that to me is the clear teaching.

[00:22:23] Speaker 00:
This was the argument that was being made below

[00:22:26] Speaker 00:
this controller in Goldwasser gives you all of the functionality you need because it gives you imminent flexibility.

[00:22:33] Speaker 00:
It accepts commands from a user control panel.

[00:22:36] Speaker 00:
Where does the board make the finding about this flexibility, you might ask?

[00:22:40] Speaker 00:
It's at page 12.

[00:22:50] Speaker 00:
Okay.

[00:22:55] Speaker 00:
So it's in this

[00:22:57] Speaker 00:
Second full paragraph.

[00:23:00] Speaker 00:
And in that paragraph, the board notes, as described in Goldwasser, recording is controlled by address controller 58, which is responsive to commands received from user control panel 50.

[00:23:16] Speaker 00:
It goes on, the user control panel may be used to send an interrupt that varies the playback of the video recorded by the device

[00:23:23] Speaker 00:
This is exactly what I'm referring to.

[00:23:25] Speaker 00:
This is the flexibility that this controller gives you.

[00:23:27] Speaker 00:
It's responsive to a control panel.

[00:23:30] Speaker 00:
It lets the user put commands in.

[00:23:32] Speaker 00:
Those commands then could permit playback from, again, as the board had discussed at page 10, any portion of the memory at any speed without impacting the recording.

[00:23:44] Speaker 00:
That's the finding I made at 10.

[00:23:45] Speaker 00:
So taken together, it's imminently reasonable for the board to have said,

[00:23:50] Speaker 00:
If the only thing that's missing is a single button to resume playback, even if that's not in Goldwasser by itself, Goldwasser itself suggests such a technique, and Yifrack explicitly teaches a technique.

[00:24:04] Speaker 00:
Two buttons that pause and resume a recording, or pause or playback a recording, which is what Deledge difference is.

[00:24:16] Speaker 00:
One last thing I would note is

[00:24:18] Speaker 00:
In Dragon's great brief, they respond to an argument we made in the opening brief that the board's analysis of substantially immediate and seamless resumption of interrupted perception was not, in fact, an analysis of the solely limitation.

[00:24:33] Speaker 00:
It clearly was.

[00:24:35] Speaker 00:
And I would point the court to Joint Appendix 1503, which was the transcript of the oral hearing below, where Dragon itself made the connection between one key seamless playback, they said,

[00:24:46] Speaker 00:
one key seamless playback corresponds to the limitation, which says, quote, and then the sole limitation.

[00:24:57] Speaker 04:
fault the board if they didn't go into more detail on the solely limitation when it wasn't raised until the oral hearing.

[00:25:03] Speaker 00:
Well, that was what I was going to get to next.

[00:25:05] Speaker 00:
Isn't that right?

[00:25:05] Speaker 00:
Yes.

[00:25:05] Speaker 04:
So are you going to argue all of the time then?

[00:25:07] Speaker 04:
I was waiting for the switch.

[00:25:08] Speaker 00:
No, yes, I'm solitized.

[00:25:09] Speaker 00:
I took the rest of the time by agreement.

[00:25:11] Speaker 00:
Yeah, so on the waiver, let me just get to that quickly, if I might.

[00:25:14] Speaker 04:
So you can try to get to it quickly.

[00:25:16] Speaker 04:
Go ahead.

[00:25:17] Speaker 00:
Well, I'm happy to answer.

[00:25:18] Speaker 00:
If you have a question, we can start with that.

[00:25:19] Speaker 04:
Well, I don't understand the waiver argument.

[00:25:21] Speaker 00:
OK, so then let me just quickly characterize it.

[00:25:25] Speaker 04:
I was assuming it wasn't going to be quick.

[00:25:28] Speaker 00:
OK.

[00:25:28] Speaker 00:
Well, the problem is this.

[00:25:29] Speaker 00:
Dragon made five arguments below.

[00:25:31] Speaker 00:
We identify them in our brief.

[00:25:32] Speaker 04:
So let me help.

[00:25:34] Speaker 04:
Why don't I start by telling you my problems with your waiver argument, which represents the vast majority of your brief.

[00:25:39] Speaker 04:
I'm really glad that you flipped your argument and went with, you know, you were flexible in recognizing where we were, and that was a good thing.

[00:25:49] Speaker 04:
Because if I thought 13 minutes of waiver and two minutes of merits, and I was really worried.

[00:25:54] Speaker 04:
So in any event, Waiver, here's my problem.

[00:26:00] Speaker 04:
You agree, in fact you argue, that the board decided that the Soli limitation was present, and you've walked me through carefully, thoughtfully, and methodically how they did that and what they relied on.

[00:26:13] Speaker 04:
So the board decided Soli.

[00:26:16] Speaker 04:
There is no question Soli was argued during the oral hearing.

[00:26:22] Speaker 04:
Your argument to me then of waiver, it seems to me, is the board erred.

[00:26:28] Speaker 04:
And you also say at one point, and you objected to this below, which you objected to something, but we won't go into details about what you objected to.

[00:26:36] Speaker 04:
So really what your argument is is the board abused its discretion in failing to hold waiver because it was raised below, maybe not as much as you think it ought to have been or in the right place, but it was raised below.

[00:26:49] Speaker 04:
It was decided below.

[00:26:53] Speaker 04:
and now it's on appeal to us.

[00:26:55] Speaker 04:
So it seems to me that your question, your entire argument couldn't possibly have been framed as they waived it because they never made it below and thus they can't raise it on appeal because they did make it below and it was addressed below.

[00:27:09] Speaker 04:
Your argument it seems to me is the board abused its discretion by not agreeing with us that they didn't raise it at the right time below and therefore you should vacate and remand this case Judge Moore.

[00:27:20] Speaker 00:
Okay, so that's not, you're correct in your prediction.

[00:27:23] Speaker 04:
I want almost everything except the fact that you don't want it vacated and remanded.

[00:27:26] Speaker 04:
No, no, no.

[00:27:28] Speaker 04:
I'm correct on everything else.

[00:27:29] Speaker 00:
You're correct in your prediction that this would take longer than two minutes because I'm already well over, so let me try just to address your concern very quickly.

[00:27:36] Speaker 00:
The board obviously had an obligation to address every element of the claim in its final written decision.

[00:27:40] Speaker 00:
There's no dispute about that.

[00:27:41] Speaker 00:
That's its obligation in analyzing the claim for invalidity.

[00:27:45] Speaker 00:
So it had to reach the sole limitation even if it wasn't pressed below at all.

[00:27:49] Speaker 00:
They have to say something about it.

[00:27:50] Speaker 00:
The problem we have is the entire theory of Appellant's case is that the board didn't spend sufficient time on the sole limitation.

[00:27:57] Speaker 00:
And our response to that is because it's a very simple reason.

[00:28:00] Speaker 00:
It was never argued below on the papers.

[00:28:03] Speaker 00:
And that's the problem.

[00:28:04] Speaker 00:
It wasn't argued until it sprang up suddenly at the oral hearing after all the papers and evidence had been collected and put into the record.

[00:28:10] Speaker 00:
The board's rules are clear that it's not the time to raise new arguments.

[00:28:13] Speaker 00:
This court's case law is clear that that's not the time to raise new arguments.

[00:28:17] Speaker 00:
That's the Dell case.

[00:28:18] Speaker 00:
So that's the objection we have, is that this argument, their entire theory of the case, is one they never press below.

[00:28:24] Speaker 04:
They pressed five arguments, most of which have to do with the... I understood your argument on appeal to be they waived the right to argue the solely limitation.

[00:28:32] Speaker 04:
What am I missing?

[00:28:34] Speaker 04:
Did I really misconstrue all of those many pages of your brief that were devoted to this?

[00:28:38] Speaker 00:
I don't think you've misconstrued them, but you might have misconstrued the import, because we're certainly not seeking remand.

[00:28:43] Speaker 04:
Well, no, I got that.

[00:28:44] Speaker 04:
But I guess what I'm suggesting to you is that's the only thing the law would give you based on the facts of this case.

[00:28:50] Speaker 04:
But you seem to not appreciate that because you argued waiver and thought therefore it should result in an affirm.

[00:28:56] Speaker 04:
But I don't see how waiver can result in an affirm in a case where something was argued below, was addressed by the adjudicator below, and then is appealed to us.

[00:29:06] Speaker 04:
Your main argument was the board didn't comply with its own rules.

[00:29:10] Speaker 04:
It has rules that say it shouldn't reach an issue that wasn't raised in the briefs.

[00:29:14] Speaker 04:
So that all goes to whether the board abused its discretion, doesn't it?

[00:29:18] Speaker 04:
It doesn't really go to whether an appellate court should consider the argument on the merits.

[00:29:24] Speaker 04:
Am I wrong in my understanding of trial and appellate procedure?

[00:29:27] Speaker 00:
You are not wrong, but I think you've misconstrued what the remedy we're actually seeking is, which is that the appellant should not be permitted to seek a remand or reversal on an argument that was not properly raised below.

[00:29:39] Speaker 00:
That's the waiver.

[00:29:39] Speaker 04:
But the board concluded it was properly raised because they addressed it and they

[00:29:44] Speaker 04:
didn't agree with your objection, which you made.

[00:29:47] Speaker 00:
Well, they never explicitly addressed my objection.

[00:29:49] Speaker 04:
So again, they abused their discretion.

[00:29:51] Speaker 04:
Should I send it back to them for that?

[00:29:53] Speaker 00:
No, Your Honor.

[00:29:54] Speaker 00:
All right.

[00:29:54] Speaker 04:
We're good.

[00:29:55] Speaker 04:
Sit down.

[00:30:00] Speaker 01:
Talking about raising new argument, Your Honor, what I heard regarding the substantive merits of the case, it appears that this now is walking away from the position that Goldwasser teach the sole limitation.

[00:30:12] Speaker 01:
Now they rely on IFRAC.

[00:30:14] Speaker 04:
But if... I didn't understand them to walk away from it.

[00:30:17] Speaker 04:
I understood them to incorporate both of them to say, listen, it's in both places.

[00:30:22] Speaker 01:
Right.

[00:30:22] Speaker 01:
Still raising new argument, Your Honor.

[00:30:23] Speaker 01:
If you look at page 11 of the blue brief, we have quoted multiple block codes, two paragraphs, where D. Schmidt made very clear that in the underlining IPR proceeding, it relied upon IFRAC only for the large buttons, not for anything to do with control circuit.

[00:30:43] Speaker 01:
So as a result, I think Dragon is prejudiced, because Dragon relied on that.

[00:30:49] Speaker 01:
Now we are talking about a different case.

[00:30:51] Speaker 02:
We are talking about, I mean... Are we supposed to be looking, though, at what the PTAB said?

[00:30:56] Speaker 02:
I mean, we're supposed to be focusing on what the PTAB said, right?

[00:30:59] Speaker 02:
Correct.

[00:31:00] Speaker 02:
I mean, so even if you think they've shifted a little bit, and I'm not sure if I agree with you on that, but even if you do, I'm looking at the PTAB.

[00:31:08] Speaker 01:
Right.

[00:31:09] Speaker 02:
So... So what's wrong with the PTAB?

[00:31:11] Speaker 02:
with the PTags decision.

[00:31:12] Speaker 01:
Right, let's take a look at page 14 of appendix.

[00:31:16] Speaker 01:
The portion that council just read regarding IFRAC, it's about one, two, three, four, five, six, seven, eight, about 10th line from the top says this recorded audio may then be played back when the user depresses the playback button.

[00:31:35] Speaker 01:
This does not address the sole limitation.

[00:31:42] Speaker 01:
Right, it's still talking about IFRAC teach a keyboard having a record key and a playback key.

[00:31:49] Speaker 01:
So even with two buttons, just logically, a user could press record key again to stop recording, then press playback.

[00:31:57] Speaker 01:
So there's just no teaching here to talk about the solar limitation.

[00:32:02] Speaker 01:
That's consistent with the party's conduct in the underlining.

[00:32:06] Speaker 04:
This is the problem you say, it could.

[00:32:08] Speaker 04:
But the PTO held the solely limitation was present, and that's a finding of fact.

[00:32:14] Speaker 04:
What a prior reference discloses is a question of fact.

[00:32:17] Speaker 04:
And I review that question of fact for substantial evidence.

[00:32:20] Speaker 04:
Correct.

[00:32:20] Speaker 04:
So I mean, could doesn't help you.

[00:32:22] Speaker 01:
All right.

[00:32:24] Speaker 01:
So that particular one does not explain the solely limitation at all.

[00:32:29] Speaker 01:
And so let's, again,

[00:32:34] Speaker 04:
So I have what will be an uncomfortable question for you.

[00:32:38] Speaker 04:
OK, sure.

[00:32:39] Speaker 04:
I'd like to let you know, when they're friendly and hostile, this one I'll call uncomfortable.

[00:32:43] Speaker 04:
OK.

[00:32:43] Speaker 04:
If I were to agree with Appellees in this case and uphold the decision in this case, it wipes away all the others that you argued today, doesn't it?

[00:32:54] Speaker 04:
It moots them entirely.

[00:32:56] Speaker 04:
Because this case, as I understand it, includes all of the claims that were asserted in the Apple case.

[00:33:01] Speaker 04:
So if we uphold this.

[00:33:03] Speaker 04:
The non-infringement in the Apple case is irrelevant.

[00:33:06] Speaker 04:
And the unified case includes a subset of the claims argued in this case.

[00:33:12] Speaker 04:
So even if I was going to fine for you on unified, that is mooted if I find against you here as well.

[00:33:18] Speaker 01:
Is that right?

[00:33:20] Speaker 01:
Not exactly.

[00:33:21] Speaker 01:
Because procedurally, in the Apple appeal from the district court, there are still motions for Section 285 attorney fees pending.

[00:33:30] Speaker 01:
So the issue about claim construction will come back to this court

[00:33:33] Speaker 01:
if the court does not make finding there.

[00:33:36] Speaker 04:
Oh, no.

[00:33:36] Speaker 04:
It'll only come back to us if one of you doesn't like whatever the result is on 285, right?

[00:33:41] Speaker 01:
Correct.

[00:33:41] Speaker 04:
Correct.

[00:33:42] Speaker 04:
I mean, so for example, if I find in your favor on one issue here and that moots the other case, I mean, you think it's going to come back there?

[00:33:55] Speaker 04:
Well, wouldn't it?

[00:33:57] Speaker 04:
I don't understand how I would have a case or controversy to decide the issue presented to me in the Apple case.

[00:34:03] Speaker 04:
if I found this case against you.

[00:34:05] Speaker 01:
Right.

[00:34:05] Speaker 01:
In the Apple case, as Your Honor previously stated, the judge found there was the second clearest disclaimer, even though the only review is the novel review.

[00:34:14] Speaker 01:
No, no.

[00:34:14] Speaker 04:
I'm not asking to revisit the Apple case.

[00:34:17] Speaker 04:
I'm just saying to you, I don't think, I can't, I don't know.

[00:34:20] Speaker 04:
If we invalidate all, how about this?

[00:34:23] Speaker 04:
Aren't the claims at issue in this case, aren't all of those claims

[00:34:31] Speaker 04:
There's no claims in the Apple case, are there, that aren't challenged in this case?

[00:34:36] Speaker 04:
That's my understanding.

[00:34:37] Speaker 01:
There might be.

[00:34:39] Speaker 01:
I think I agree with you, Your Honor.

[00:34:41] Speaker 01:
If you reach that decision, then it would be very unfortunate for my client.

[00:34:46] Speaker 01:
But let me just.

[00:34:48] Speaker 04:
His time's not running.

[00:34:49] Speaker 04:
You haven't ever started his time.

[00:34:51] Speaker 01:
Sorry.

[00:34:52] Speaker 01:
I'll just add one quick point, then I'll conclude my argument, Your Honor.

[00:34:57] Speaker 01:
No problem.

[00:34:58] Speaker 01:
I want to remind the court that during the prosecution, the word solely was added to the application claim to indicate the precise function of the playback key.

[00:35:06] Speaker 04:
Is there something wrong with the clock?

[00:35:07] Speaker 04:
Because it's still not running.

[00:35:11] Speaker 04:
I'll conclude in one minute.

[00:35:12] Speaker 04:
Go ahead.

[00:35:12] Speaker 01:
Forget the clock.

[00:35:13] Speaker 01:
And the playback key and associated control circuitry would alone initiate automatic indexing of the playback function so as to enhance the seamless recovery effect.

[00:35:24] Speaker 01:
And the board's opinion in the dish appeal simply

[00:35:28] Speaker 01:
does not contain, other than a conclusive statement, simply does not contain sufficient evidence, or any evidence, let alone substantial evidence, to support its obviousness finding.

[00:35:41] Speaker 01:
As a result, we would request the board's obviousness finding be reversed.

[00:35:47] Speaker 04:
Thank you, Your Honor.

[00:35:48] Speaker 04:
I thank you, Mr. Dey.

[00:35:49] Speaker 04:
I thank both counsel for their arguments in this case.

[00:35:53] Speaker 04:
And this case is submitted.