[00:00:38] Speaker 03:
Good morning, Your Honors, and may it please the court, Eric Shumsky, representing EMC and VMware.

[00:00:45] Speaker 03:
Your Honors, this is a case in which the board simply got things wrong in a pretty fundamental way.

[00:00:51] Speaker 03:
It looked at each reference, Allen and Barnett, individually, and in doing so, it failed to consider what was most important about each of them.

[00:01:01] Speaker 03:
There were two elements at issue in the final written decision, when a likely solution cannot be determined

[00:01:08] Speaker 03:
and a problem in a computer system.

[00:01:11] Speaker 04:
You know, if I could just interrupt for a moment, this seems like a very odd case to me because it's really, your appeal seems based on the fact that the board misunderstood what the argument was, right?

[00:01:25] Speaker 04:
I mean, is that what this comes down to?

[00:01:27] Speaker 03:
I think in some fundamental sense, probably that's right.

[00:01:30] Speaker 03:
Chief Judge Prost.

[00:01:31] Speaker 04:
And that's it.

[00:01:32] Speaker 04:
In fairness to the board, I mean, at A7, for instance, in their opinion, I mean, it's clear that they thought that from in its claim chart for claim six, petitioner refers to Alan 664 for the entire limitation.

[00:01:44] Speaker 04:
So that seems to be the question, right?

[00:01:46] Speaker 04:
When the board evaluated this case, it said, well, we're going to look at Alan for the entirety of this missing limitation.

[00:01:55] Speaker 04:
And Alan doesn't operate on a computer system.

[00:01:58] Speaker 04:
Done deal.

[00:01:58] Speaker 04:
You're finished, right?

[00:02:00] Speaker 03:
something like that, Chief Judge Prost, and it was wrong in its assessment of the arguments that we were making.

[00:02:06] Speaker 04:
If you look at the claim chart... Well, yeah, the claim chart is quite hard to follow, right?

[00:02:12] Speaker 03:
So the thing that is... So I don't think it's hard to follow, but the thing that is absolutely clear about the claim chart and about every single argument that was made at every phase along the way is that the combination is what was being argued, not just Alan,

[00:02:29] Speaker 03:
And insofar as there was any question about a problem in a computer system, recall that that's a limitation that the board sort of imported into step five.

[00:02:38] Speaker 03:
It doesn't actually appear in the claim language of step five.

[00:02:42] Speaker 03:
That's just step one.

[00:02:44] Speaker 03:
Step one of claim six is detecting a problem in the computer system.

[00:02:51] Speaker 03:
And everyone agreed all along that Barnett discloses steps one through four, Barnett is

[00:02:56] Speaker 03:
all about problems in computer systems.

[00:02:59] Speaker 03:
That's actually what the title of Barnett means.

[00:03:00] Speaker 04:
Right, but we're looking at step five.

[00:03:02] Speaker 04:
I mean, I thought this case was really about step five.

[00:03:05] Speaker 03:
Yes, Your Honor, but my point is, insofar as this notion of a problem of a computer system gets imported from step one into step five, Barnett's what's doing all of that work.

[00:03:18] Speaker 03:
And so step five, whether you think of it as having these two elements or also this third element of a computer system,

[00:03:27] Speaker 03:
It's predicated upon the combination.

[00:03:29] Speaker 04:
No, I understand what you're saying.

[00:03:30] Speaker 04:
I guess what I'm focusing on is in your view of it, the board clearly misunderstood.

[00:03:36] Speaker 04:
I mean, I think the board's decision was predicated on it looking at step five and says it talks about a computer system.

[00:03:43] Speaker 04:
And if you are putting forth Alan and Alan exclusively for that step, you lose, right?

[00:03:50] Speaker 04:
Is that the way you're reading what the board concluded?

[00:03:54] Speaker 03:
Simply put, Your Honor, yes.

[00:03:55] Speaker 03:
I mean, I think that's right, but I think it misunderstood the arguments in that, again, Barnett, which is the base reference here, which everyone agrees discloses, sensors for detecting problems in computer systems, is all about computer systems.

[00:04:12] Speaker 03:
We don't need Allen, again, to be specifically reiterating problems in computer systems

[00:04:18] Speaker 03:
in order to make step five obvious, we already have Barnett doing that work.

[00:04:24] Speaker 03:
What about this supposed concession that was made during the argument?

[00:04:30] Speaker 03:
So I would say a couple of things about that, Chief Judge Prost.

[00:04:33] Speaker 03:
First of all, there was no concession at all.

[00:04:37] Speaker 03:
And second of all, to the extent it were a concession, it was a very limited one.

[00:04:43] Speaker 03:
So let me explain what I mean by that.

[00:04:45] Speaker 03:
The specific question that was asked was,

[00:04:48] Speaker 03:
does Alan explicitly disclose operating in a computer system?

[00:04:54] Speaker 03:
Now, the candid and correct answer to that was yes, but it doesn't matter.

[00:05:00] Speaker 03:
And it doesn't matter for multiple reasons.

[00:05:02] Speaker 03:
First of all, even though Alan didn't use those magic words, there was nothing about Alan that limited it from operating in a computer system.

[00:05:10] Speaker 03:
And indeed, there is evidence that the help desk embodiment

[00:05:15] Speaker 03:
is a disclosure of a computer system.

[00:05:17] Speaker 03:
But far more importantly, and this gets to the exchange we were having a moment ago, Barnett discloses problems in a computer system.

[00:05:26] Speaker 02:
And so even if you construe, see, I'm not sure that I agree with you about step five here.

[00:05:32] Speaker 02:
It seems to me that it is referring to problems with the computer system.

[00:05:41] Speaker 02:
And that to the extent that the board

[00:05:43] Speaker 02:
construed it that way that seems to me likely correct but what you're really saying is that you're relying on under that construction Allen for part of step five and Barnett for the other part and that they should be combined and that gives you step five and what the board seemed to refuse to do was to consider the combining of Allen and Barnett to achieve step five as though

[00:06:11] Speaker 02:
the board were saying that you can't have obviousness unless each single limitation were found in a single piece of prior art, which isn't correct, right?

[00:06:23] Speaker 03:
Judge Dyk, that is a much better way of putting what I was trying to articulate.

[00:06:27] Speaker 03:
That's exactly what happened here.

[00:06:29] Speaker 04:
But you just told, going back to that, I guess I'm getting, I'm sympathetic to the board's confusion only because your other argument,

[00:06:38] Speaker 04:
was not, well, we have to rely on Barnett, but that there's nothing in Allen that precludes use of a computer system.

[00:06:45] Speaker 04:
And so if that was your argument, was that your argument, or was that an argument that was fairly construed by the board?

[00:06:53] Speaker 03:
It was an argument in the alternative, Your Honor.

[00:06:55] Speaker 03:
It was a secondary argument.

[00:07:00] Speaker 03:
Well, simply put, Your Honor, and if I have anyone regret about the way this case was presented, it's that we tried to take advantage of an embarrassment of riches.

[00:07:10] Speaker 03:
Yes, we made an argument in the alternative that Allen also discloses operating in a computer system, or at a minimum, isn't foreclosed from doing it.

[00:07:18] Speaker 03:
And to the extent the board rejected that, fine.

[00:07:22] Speaker 03:
But it rejected or found waived what was a secondary argument.

[00:07:25] Speaker 03:
Barnett is the thing that's all about.

[00:07:28] Speaker 03:
sensors detecting problems in computer systems, which everyone agreed from the get-go.

[00:07:32] Speaker 04:
Did you ask for reconsideration?

[00:07:35] Speaker 03:
No, Your Honor.

[00:07:35] Speaker 04:
Why not?

[00:07:36] Speaker 04:
It seems to me like if the board really misunderstood your argument and went on from there, that that's reconsideration is the perfect vehicle

[00:07:47] Speaker 04:
to save everybody a lot of time and go back to the board and say, no, you misunderstood our argument.

[00:07:52] Speaker 04:
Here's why our argument included Barnett and not just Allen alone for step five and so forth.

[00:08:00] Speaker 04:
Right?

[00:08:00] Speaker 03:
Your Honor, I'm not sure I can speak to the litigation strategy.

[00:08:03] Speaker 03:
I would simply note that motions for reconsideration in the board like in any other tribunal are

[00:08:10] Speaker 03:
generally disfavored and almost always unsuccessful.

[00:08:14] Speaker 03:
Certainly there's no obligation to file that kind of a motion.

[00:08:20] Speaker 04:
I understand.

[00:08:21] Speaker 04:
It's just difficult when you're really honing in on what you contend was the board not correctly construed your argument.

[00:08:29] Speaker 04:
It seems that the board may have understood that.

[00:08:34] Speaker 03:
Perhaps that's right, Chief Judge Prost.

[00:08:36] Speaker 03:
I guess the only other thing I would say about that is that if you look at the transcript of the oral hearing, which my friend on the other side has emphasized heavily here, it does seem that the board in some sense actually had those arguments and was asking questions about them.

[00:08:50] Speaker 03:
I'm not quite sure where the slip was between those discussions of those issues in the oral hearing and the final written decision that was released, but I'm not sure that a

[00:09:01] Speaker 03:
a motion for reconsideration would have advanced the ball much.

[00:09:06] Speaker 00:
Well, if there was a slip in terms of where to attribute in the prior, the last step of saving the state of the computer system, this is what the board's decision turned on, is it not?

[00:09:24] Speaker 03:
No, Judge Newman.

[00:09:25] Speaker 03:
I would say actually sort of the opposite.

[00:09:28] Speaker 03:
The board said,

[00:09:31] Speaker 03:
Allen doesn't operate in a computer system, and then it separately says Barnett doesn't disclose a circumstance where a likely solution cannot be determined, but the board actually never got to the element of saving a state.

[00:09:45] Speaker 03:
Now, we think that there is only one right answer to that element of saving a state, but the board doesn't actually make any finding about that piece of step five.

[00:09:58] Speaker 00:
They were relying on the petitioner to provide it to them, were they not?

[00:10:04] Speaker 03:
Well, sure, Your Honor, and we did so.

[00:10:06] Speaker 03:
I mean, the argument there was extensive.

[00:10:09] Speaker 03:
We pointed to Alan.

[00:10:11] Speaker 03:
We pointed specifically to column 8, lines 19 to 40.

[00:10:15] Speaker 03:
And Alan, again, is really quite unmistakable about this.

[00:10:20] Speaker 03:
Alan says, when you can't find a solution, the genius of the invention is you need to

[00:10:27] Speaker 03:
save the case template so that the knowledge base is enriched so that it, in the words of Alan's summary, it dynamically learns.

[00:10:37] Speaker 03:
It gets better and better and better and is able to solve additional problems in the future.

[00:10:43] Speaker 03:
And that's exactly what saving a state is.

[00:10:46] Speaker 03:
So to your question, Judge Newman, to the extent the board was relying on the petitioner to put forward that argument, we absolutely did so.

[00:11:00] Speaker 03:
The other side makes an argument that that aspect of Allen doesn't amount to saving a state.

[00:11:09] Speaker 03:
They make an argument, for instance, that in the operation of Allen, it's a user who's supplying the information rather than the censors that are doing it.

[00:11:18] Speaker 00:
Yes, because that seems to be what the board was relying on.

[00:11:23] Speaker 03:
I don't think so, Judge Newman.

[00:11:25] Speaker 03:
The board really doesn't look at all anywhere in the final written decision at this

[00:11:30] Speaker 03:
saving a state piece of things.

[00:11:32] Speaker 03:
It doesn't look at what it means to save a state.

[00:11:34] Speaker 03:
It doesn't talk about whether or not Allen actually saves a state.

[00:11:38] Speaker 03:
It focuses on problem in a computer system, and it focuses on when a likely solution cannot be determined, but it never actually gets to this other piece of the analysis.

[00:11:47] Speaker 04:
So you're advocating for a remand so that they would go back and look at that?

[00:11:51] Speaker 03:
I think that's probably the right answer, Chief Judge Proske.

[00:11:54] Speaker 03:
Certainly in some circumstances, this Court has concluded that

[00:11:58] Speaker 03:
There is only one right answer, and so the only thing to do is reverse, but at a minimum, vacate it would be appropriate.

[00:12:06] Speaker 03:
If I can reserve the balance of my time.

[00:12:08] Speaker 03:
Thank you.

[00:12:08] Speaker 03:
Thank you.

[00:12:18] Speaker 01:
Good morning, Your Honors.

[00:12:19] Speaker 01:
May it please the Court, Tarek Fahmy on behalf of Clouding.

[00:12:23] Speaker 02:
Do you agree that under an obviousness analysis it's not necessary to find that each claim limitation appears in a single piece of prior art?

[00:12:35] Speaker 01:
Of course.

[00:12:36] Speaker 02:
Right.

[00:12:37] Speaker 02:
Well, but the board seemed to be confused about that because it seems to say that you can't combine Allen and Barnett to achieve the fifth step of the claim.

[00:12:50] Speaker 01:
No, that's not what the board says at all, Your Honor.

[00:12:52] Speaker 01:
What did the board say?

[00:12:53] Speaker 01:
The board said that EMC completely failed in its proof, Your Honor.

[00:12:57] Speaker 01:
EMC's case relied upon Barnett and Allen.

[00:13:00] Speaker 02:
What do you mean completely failed in its proof?

[00:13:02] Speaker 02:
What does that mean?

[00:13:04] Speaker 01:
EMC admitted, both in its papers and at the hearing, neither of the references teaches the limitation at issue.

[00:13:11] Speaker 02:
Correct.

[00:13:11] Speaker 02:
And you admitted that there would be a motivation to combine the two references.

[00:13:15] Speaker 01:
Yes, we didn't argue that there was no motivation to combine.

[00:13:18] Speaker 01:
The failure of proof was in their testimony of

[00:13:21] Speaker 01:
their expert, Dr. Sasserdottie.

[00:13:24] Speaker 01:
The expert rendered an opinion that the board found was completely at odds with the teachings of the references themselves.

[00:13:32] Speaker 01:
And therefore, the board was free to disregard it.

[00:13:35] Speaker 01:
It was that expert opinion, nothing in the references that EMC was looking to in order to supply the disputed... Listen, I'm not understanding what you're saying because if there's a motivation to combine Barnett and Allen,

[00:13:49] Speaker 02:
that achieves the fifth step here, right?

[00:13:52] Speaker 01:
Absolutely not, Your Honor.

[00:13:53] Speaker 02:
No, why not?

[00:13:54] Speaker 01:
Because neither reference supplies that step, Your Honor.

[00:13:57] Speaker 02:
Well, that seems to be what I was saying was something that's not permissible in obviousness now.

[00:14:05] Speaker 02:
So you don't have to insist that one reference or the other include all of a single step.

[00:14:10] Speaker 02:
You can get the step by combining.

[00:14:13] Speaker 01:
Yes, but the combination here, Your Honor, still left that step.

[00:14:17] Speaker 01:
absent.

[00:14:18] Speaker 01:
And the board recognized this.

[00:14:20] Speaker 02:
How did it leave the step absent?

[00:14:22] Speaker 01:
Because you did not have anything that would have suggested that when a likely solution to a problem in the computer system cannot be determined.

[00:14:32] Speaker 01:
And this is what the board actually found when it examined the petitioner's argument.

[00:14:37] Speaker 01:
There's no mystery about what the petitioner's argument was, Your Honor.

[00:14:41] Speaker 01:
It's laid out in not even a complete page.

[00:14:44] Speaker 02:
Try to address what I'm asking.

[00:14:46] Speaker 02:
You admit that you can combine the references.

[00:14:50] Speaker 02:
What's missing when you combine the references as the step five?

[00:14:56] Speaker 01:
There is nothing that suggests saving the state of the computer system in that combination.

[00:15:02] Speaker 02:
But that is not what the board found was missing.

[00:15:06] Speaker 02:
What it said was that what was missing was a situation in which there's no solution.

[00:15:14] Speaker 01:
I disagree, Your Honor.

[00:15:16] Speaker 02:
Saving a state is missing.

[00:15:19] Speaker 01:
Page 15 at the top.

[00:15:20] Speaker 01:
Petitioner has not proven by preponderance of the evidence that the combination of Allen 664 and Barnett teaches or suggests when a likely solution cannot be determined as recited in claims.

[00:15:33] Speaker 02:
But that's what I said.

[00:15:34] Speaker 02:
Now what you say is that they determined that it didn't disclose saving a state.

[00:15:39] Speaker 02:
That's not what it says.

[00:15:41] Speaker 02:
They didn't reach that question.

[00:15:45] Speaker 01:
Well, that is the balance of the step in the claim, Your Honor.

[00:15:50] Speaker 01:
Well, but they didn't address it.

[00:15:54] Speaker 01:
I disagree, Your Honor.

[00:15:55] Speaker 01:
I think they were simply indicating that this step is not what is found in the combination.

[00:16:03] Speaker 02:
Well, suppose we were to disagree with you and say they didn't reach the question of whether Allen disclosed saving the state.

[00:16:15] Speaker 02:
Suppose we find that the board didn't decide that question.

[00:16:20] Speaker 02:
Where are we?

[00:16:23] Speaker 01:
You should affirm the board, Your Honor, because we would still be... We affirm the board.

[00:16:29] Speaker 02:
If the only question is do Allen and Barnett combined do step five and we put aside saving a state, how is it that they don't perform step five in combination?

[00:16:42] Speaker 01:
The board has indicated that the combination does not teach or suggest when a likely solution cannot be determined.

[00:16:49] Speaker 02:
At least... But surely Alan teaches that.

[00:16:52] Speaker 02:
It deals explicitly with what happens when a likely solution can't be determined.

[00:16:58] Speaker 01:
It's not a likely solution to the problem in the computer system.

[00:17:02] Speaker 02:
That's the point about combining the references.

[00:17:07] Speaker 01:
And that is the point that was missed by petitioners.

[00:17:13] Speaker 01:
That is the part of their argument where I think as I indicated in discussion before the board, they've asked the board to take a leap and they failed to provide the proper factual basis for taking that leap.

[00:17:27] Speaker 01:
What is the leap?

[00:17:29] Speaker 01:
The leap would be that the combination provides for that teaching or suggestion.

[00:17:37] Speaker 01:
EMC admitted that its references didn't provide this teaching.

[00:17:42] Speaker 01:
And the testimony on which they relied of their expert was found to be unpersuasive because it too was unsupported by any proper factual basis.

[00:17:54] Speaker 01:
In fact, the opinion that was rendered by the efforts, excuse me, the opinion that was rendered by the expert was found to be at odds with the very reference itself.

[00:18:05] Speaker 01:
And furthermore, when the board went the extra mile and said,

[00:18:09] Speaker 01:
Let's assume that everything Dr. Sossordati says is correct, and this is their opinion beginning at the bottom of page 13 and carry on to the top of page 14.

[00:18:20] Speaker 01:
He's addressing the wrong thing.

[00:18:24] Speaker 01:
He's saying that there no precise diagnosis would be found, but the claim speaks to a likely solution.

[00:18:33] Speaker 01:
And the board found nothing in EMC's case that would allow

[00:18:39] Speaker 01:
the leap from not knowing a precise diagnosis to when a likely solution cannot be determined.

[00:18:48] Speaker 01:
So this was the problem with their case.

[00:18:56] Speaker 01:
Unless you have further questions, I'll rest on our papers.

[00:19:00] Speaker 01:
Thank you.

[00:19:07] Speaker 03:
I do want to just very briefly address this question of whether it was clear that Barnett operates in a computer system here.

[00:19:16] Speaker 03:
And there are multiple places in the record where this argument was made and preserved.

[00:19:21] Speaker 03:
The claim chart at appendix 112 and then the discussion of step five begins at page 115 is very clear that Barnett and Allen, the combination of the things is being relied on.

[00:19:33] Speaker 03:
If you look at the transcript,

[00:19:35] Speaker 03:
of the oral hearing at page 344 of the appendix.

[00:19:40] Speaker 03:
Again, there's an exchange with the board.

[00:19:42] Speaker 03:
And again, the argument is made very clearly that Judge Dyke is, as you pointed out, Barnett is doing the work of operating it in a computer system or dealing with a problem in a computer system in the combination that's at issue here.

[00:19:58] Speaker 03:
The only other point I would just briefly make if there are no questions is that it is just not right that Dr. Sassordotti is necessary to the arguments that we made to the board.

[00:20:09] Speaker 03:
Certainly, he's supportive of numerous of them, but for all of the things that we've been principally talking about this morning, the references are clear on their face.

[00:20:18] Speaker 03:
And Judge Dyke, as you pointed out, we have an absolutely clear and admitted motivation to combine the references here, which is itself not just admitted,

[00:20:28] Speaker 03:
again this morning at page 22 of their brief and in the board, but absolutely clear on the face of Barnett itself, which indicates that additional rules are useful, and from Alan, which explains the problems that exist with rule-based systems and why it's useful to add a case-based system to them.

[00:20:48] Speaker 03:
And so with that motivation, the references go together very plainly, and there's no question about the limitations of step five being met.

[00:21:00] Speaker 04:
Thank you very much.