[00:00:20] Speaker 00:
The next case for argument is 161671 Erickson versus Intellectual Ventures.

[00:00:26] Speaker 00:
Why don't we give it a chance to clean out here.

[00:01:07] Speaker 03:
The 408 patent claims here relate to any method for frequency hopping on a broadband base station.

[00:01:20] Speaker 03:
The prior art here included the 480 patent from the same inventor group with a remarkably similar base station, the only difference not being in the claims, explicitly referencing the GSM frequency hopping standard and the GSM frequency hopping standard expressly telling you how to frequency hop.

[00:01:37] Speaker 03:
The board's conclusions on both anticipation and obviousness were each based on issues never raised by the appellee and for which all of the record evidence from both sides was to the contrary.

[00:01:47] Speaker 00:
I've got a problem with your case and so I want to give it to you so you can address it.

[00:01:54] Speaker 00:
It seems to me that none of your arguments go beyond how we should interpret the record.

[00:02:00] Speaker 00:
And given the deferential standard of review, I have a hard time seeing how you're leading us to a path that would get around that.

[00:02:08] Speaker 00:
And the sub-part of that is there are also credibility determinations implicated, like Dr. Stark, I guess, his testimony and evaluation of his testimony, where there was testimony on the other side.

[00:02:20] Speaker 00:
That, too, is an area where we have to show extreme deference to the board in terms of its conclusions.

[00:02:27] Speaker 00:
So how, given all of that, tell me where there's room here for reversal.

[00:02:31] Speaker 03:
Absolutely.

[00:02:32] Speaker 03:
And the room for reversal here is the issues that the board found.

[00:02:37] Speaker 03:
The 480 patent base station only does modulation.

[00:02:40] Speaker 03:
It can't map that into DSPs.

[00:02:42] Speaker 01:
Do you agree that there's a difference between frequency hopping on a base station and allowing frequency hopping by phones that use a base station?

[00:02:56] Speaker 03:
I think to allow frequency hopping on phones that use a base station, you need a frequency hopping base station.

[00:03:01] Speaker 01:
So there's no difference between them.

[00:03:03] Speaker 03:
I don't think there's a difference.

[00:03:05] Speaker 03:
So to return to Judge Poehler's question, what you're talking about is two issues, only modulation.

[00:03:12] Speaker 03:
You can't make that map data to DSPs.

[00:03:14] Speaker 03:
That's what underlaid the finding.

[00:03:17] Speaker 03:
And both sides' experts testified directly to the contrary.

[00:03:20] Speaker 03:
So this isn't a situation where you have battled the experts.

[00:03:23] Speaker 03:
This is an expert in a situation where both sides' experts were directly at home.

[00:03:27] Speaker 00:
Wait, are we talking about the 480 reference?

[00:03:29] Speaker 00:
Yes, that's right.

[00:03:31] Speaker 00:
No, that's not the way I read it, so tell me if I'm wrong.

[00:03:34] Speaker 00:
I mean, the board drew its conclusions by reading the references, by evaluating the testimony of experts, by construing what I think it fairly construed was no mission by your counsel as to what the reference says.

[00:03:49] Speaker 00:
And putting all of that together, it strikes me that that's clearly a substantial evidence review, is it not?

[00:03:54] Speaker 03:
It's a substantial evidence review, obviously, but there's no substantial evidence in the record.

[00:04:00] Speaker 03:
If you look at what the board found at A17, the reason it says that there's no anticipation is because it says that column five, line four to 17 would be understood only as referencing modulation.

[00:04:13] Speaker 03:
Both sides expert testified that's not the case.

[00:04:16] Speaker 03:
With respect to Dr. Wells, at the least.

[00:04:19] Speaker 00:
Well, what they said was we find, I'm looking at A17, we find that this passage states at most, so I think you know which passage we're talking about.

[00:04:27] Speaker 00:
At most, that the system described in the 480 patent supports the modulation specified by the GSM standard.

[00:04:35] Speaker 03:
Yeah, but the evidence from the other sides expert even agreed that this part of the specification

[00:04:41] Speaker 03:
is indicating support for the standards themselves, not just modulation.

[00:04:46] Speaker 03:
You can't have a phone, a base station that just does modulation.

[00:04:50] Speaker 03:
If I could direct your honors to the testimony, A2558, we asked Dr. Wells, specifically with respect to this section, okay, so let's go to line nine, column five, line nine, the particular modulation in use may be any one of a number of wireless standards, correct?

[00:05:07] Speaker 03:
Answer, that's what it says, yes.

[00:05:09] Speaker 03:
question.

[00:05:09] Speaker 03:
So the language in the 480 patent says it can perform a variety of wireless standards, right?

[00:05:14] Speaker 03:
Answer, yes it does.

[00:05:15] Speaker 03:
And he goes on to explain that the standards include

[00:05:18] Speaker 03:
everything listed in that section, GSM, IS54B, IS95, AMPS, PCN, and that's at appendix 2559, 2568 to 69, and 2710.

[00:05:31] Speaker 03:
And the APOLIS brief itself also conceded specifically, CARNI 84, and this is at appendix 384, specifically CARNI 480 only states that it could be used to support a number of wireless standards, such as AMPS, IS95,

[00:05:46] Speaker 03:
IS-54B, GSM, and PCNs.

[00:05:49] Speaker 03:
The question was never, could it support standards?

[00:05:52] Speaker 03:
The question was never, is it just supporting modulation out of standards?

[00:05:56] Speaker 03:
Everyone agreed it supported the standards, and this was the basis for the board's holding, and that's why there's no substantial evidence on anticipation.

[00:06:04] Speaker 03:
For obviousness, we start that there's legal errors to get through before you get to the board's actual finding, and the first one being the failure to do any analysis of the grand factors.

[00:06:14] Speaker 03:
Here, the only element

[00:06:16] Speaker 03:
that the board found lacking for anticipation was this changing frequency element.

[00:06:22] Speaker 03:
But that's just basic frequency hopping.

[00:06:23] Speaker 03:
In fact, if you look at the red brief page three, they point to the GSM standard as showing how this element is met.

[00:06:31] Speaker 03:
And so there's no differences between the priority and the claims.

[00:06:34] Speaker 03:
The only difference alleged with respect to the base station itself in the 480 patent was that the 408 patent added this extra memory element.

[00:06:43] Speaker 03:
That's not a claim law.

[00:06:44] Speaker 03:
So there's no difference between the claims and what's in the prior art.

[00:06:49] Speaker 03:
The appellee does not dispute the motivation to combine here.

[00:06:51] Speaker 03:
There's no secondary consideration.

[00:06:53] Speaker 03:
So there's an unrebutted, prima facie case of Boggum says, which the board never reached, never addressed in its holding.

[00:07:01] Speaker 03:
This is important for numerous reasons.

[00:07:03] Speaker 03:
First, the court's authority requires a grand factor analysis as part of any obvious inquiry.

[00:07:08] Speaker 03:
Second, you can't do an expectation success analysis, which is all the board did, just completely unmoored from an understanding that everything's in the prior art.

[00:07:17] Speaker 03:
There's an express motivation combined and express teachings for how the frequency happens.

[00:07:20] Speaker 00:
Where's the express motivation combined?

[00:07:22] Speaker 00:
I'm sorry.

[00:07:22] Speaker 03:
Well, it's in two aspects.

[00:07:24] Speaker 03:
First of all, if you look at Red Reef 37 and 38.

[00:07:27] Speaker 00:
Did the board find there was a motivation to combine?

[00:07:30] Speaker 03:
The board didn't address the subject.

[00:07:33] Speaker 03:
If you look at A37, I'm sorry, the Redbrief 37 and 38, we point out in our briefing, you have the statement that this does frequency hopping in the patent and then a frequency hopping standard that you want to implement on a base station.

[00:07:48] Speaker 03:
Redbrief 37 and 38 don't dispute that there's some motivation to combine here.

[00:07:53] Speaker 01:
Redbrief argues that the PTAB factually found

[00:07:57] Speaker 01:
The disclosure of the GSM standard in 480 did not teach that the 480's base station performed frequency hopping.

[00:08:07] Speaker 01:
Do you agree that's a factual finding?

[00:08:12] Speaker 03:
Where the red brief argued that the 480 patent doesn't teach that it does frequency hopping?

[00:08:17] Speaker 01:
Mm-hm.

[00:08:17] Speaker 03:
Well, the board never.

[00:08:18] Speaker 01:
They argued that it was a factual finding.

[00:08:19] Speaker 01:
That's my interest.

[00:08:20] Speaker 03:
Well, the only factual finding the board made on this was at A17 where it just said it does modulation.

[00:08:28] Speaker 03:
No one ever said that.

[00:08:29] Speaker 03:
Everyone was saying it supported the standards.

[00:08:31] Speaker 03:
But when we get to obviousness, there's no dispute that frequency hopping is in the GSM standard itself.

[00:08:38] Speaker 03:
Now this court, KSR recognizes that obviousness can be decided as matter of law, where the grand factor is not a material dispute, and the obvious of the claim is apparent in light of these factors.

[00:08:48] Speaker 03:
And that's precisely the case here.

[00:08:50] Speaker 03:
Everything's in the prior art, motivation to combine, no secondary considerations.

[00:08:55] Speaker 03:
Now, the expectation of success analysis the board actually did was itself flawed, because it only looked at can you combine, can you GSM frequency hop on the 4-8-0 patent base station.

[00:09:06] Speaker 03:
That was the analysis.

[00:09:07] Speaker 03:
That's not the right standard.

[00:09:08] Speaker 03:
It's not, can the prior art references be physically combined?

[00:09:12] Speaker 03:
It's, do they render the claim as a whole obvious?

[00:09:15] Speaker 03:
And that's the allied erecting case.

[00:09:17] Speaker 03:
Here, GSM had explicit instruction for how to frequency opt.

[00:09:21] Speaker 03:
It was a standard.

[00:09:22] Speaker 03:
It was designed to be implemented on base stations so people knew how to make base stations to follow it.

[00:09:27] Speaker 03:
The record was clear that frequency opting base stations were already known in the prior art.

[00:09:32] Speaker 03:
Just narrow band ones, not broad band ones.

[00:09:34] Speaker 03:
Now, Appellee never argued or submitted any evidence that there was anything different about frequency hopping on a broadband-based station as opposed to an air one.

[00:09:42] Speaker 03:
This by itself provides a reasonable expectation of success.

[00:09:46] Speaker 03:
Furthermore, as this Court recognizes, the expectation of success need only be reasonable, not a guarantee.

[00:09:52] Speaker 03:
Here, again, the only difference was the air net and vendors added a piece of memory.

[00:09:57] Speaker 03:
Now, to the extent you needed that piece of memory to frequency hop,

[00:10:01] Speaker 03:
The record testimony was undisputed that it would be obvious to add a person skilled in the art would know if they're working on a base station to add a piece of memory.

[00:10:08] Speaker 03:
There's nothing unexpected, nothing unpredictable about simply adding a piece of memory.

[00:10:13] Speaker 03:
But the analysis of the board actually did do

[00:10:17] Speaker 03:
for why the prior allegedly couldn't frequency hop this itself based on issues which were never argued by intellectual ventures and for which no substantial evidence exists in the record.

[00:10:27] Speaker 00:
Can you point us to what you've said that twice now?

[00:10:31] Speaker 03:
So what the board actually found finally in the rehearing decision which was underlying the ultimate conclusion is that A41 DP RAM enabled 202 of figure 6 does not determine which slot is associated with which DSP.

[00:10:47] Speaker 03:
That's the underlying finding which supports the board's ultimate conclusion that you can't map that as a DSP.

[00:10:51] Speaker 00:
I'm sorry, I'm still, I just found A41.

[00:10:55] Speaker 00:
So what are you talking about in A41?

[00:10:59] Speaker 03:
The DPRAM-enabled 202 of figure 6 does not determine which slot is associated with which DSP.

[00:11:05] Speaker 03:
That was ultimately why the board found the 480 patent-based station couldn't frequency hop.

[00:11:10] Speaker 03:
But that was never disputed.

[00:11:11] Speaker 03:
It was never disputed that the base station could map data to DSPs.

[00:11:14] Speaker 03:
You have to do that to support phone calls in general.

[00:11:17] Speaker 03:
Forget about frequency helping.

[00:11:18] Speaker 03:
You can't map data to DSPs.

[00:11:20] Speaker 03:
You can't have a phone call without that.

[00:11:22] Speaker 03:
And the patent owner himself and their expert throughout the briefing conceded that the 480 patent could do exactly that.

[00:11:29] Speaker 03:
If you look at the expert report of Dr. Wells at 3337 to 38, he says, quote, the architecture in the 480 patent

[00:11:38] Speaker 03:
then uses internally synchronized switchboard before the relevant sample frequency components to a specific DSP.

[00:11:44] Speaker 03:
And then at 3351, this flexible configuration is possible because supposing the TDM bus between the channelizer and the demodulator DSPs allow DSPs to be allocated as needed.

[00:11:54] Speaker 03:
There was never any dispute that the base station could do this.

[00:11:57] Speaker 03:
In fact, Dr. Wells at A26, appendix 2637 to 38,

[00:12:02] Speaker 03:
2655 to 59, agreed that the 480 Patton base station could update the mapping periodically over time as calls are added, dropped, or changed zones.

[00:12:13] Speaker 03:
That's all you need to do for frequency hopping, is update the mapping.

[00:12:17] Speaker 03:
What the Patton owner's real position below was, was that they couldn't do this fast enough every 4.3 milliseconds to support GSM frequency hopping.

[00:12:27] Speaker 03:
Their expert had no scientific analysis

[00:12:29] Speaker 03:
Ours did, proving it was 5,000 times fast enough.

[00:12:32] Speaker 03:
But the claims don't even require frequency hopping under GSM every 4.3 milliseconds.

[00:12:37] Speaker 03:
You can frequency hop every minute, every hour, every day, and still satisfy these claims.

[00:12:43] Speaker 03:
And with Dr. Wells' concession that it could update the mapping, that's an admission that you could update it on a period sufficient to support frequency hopping.

[00:12:52] Speaker 03:
But more fundamentally, we have a prior base station that's remarkably identical.

[00:12:58] Speaker 03:
The only difference isn't in the claims.

[00:12:59] Speaker 03:
You have VSM's express instructions for how to frequency hop.

[00:13:03] Speaker 03:
The primary case of obviousness was un-rebutted and the obviousness of these claims is readily apparent in light of this.

[00:13:09] Speaker 03:
And so the board's decision should be reversed.

[00:13:25] Speaker 02:
Thank you.

[00:13:25] Speaker 02:
Good morning.

[00:13:25] Speaker 02:
It may please the court.

[00:13:27] Speaker 02:
Byron Picard on behalf of Intellectual Ventures.

[00:13:30] Speaker 01:
I don't believe there are any... I want you to address the question I asked your opposing counsel about factual finding of frequency hopping.

[00:13:39] Speaker 01:
And you said it in your red brief, and I underline language at A18 at the bottom and 19 at the top, which sure seems to support your statement.

[00:13:54] Speaker 01:
And I want you to address that.

[00:13:56] Speaker 02:
Yes.

[00:13:58] Speaker 02:
I don't recall the exact question you asked Mr. Spears at.

[00:14:00] Speaker 01:
Well, I was referencing.

[00:14:03] Speaker 01:
I'm sorry.

[00:14:03] Speaker 01:
I was referencing your, your brief at 21 where you said, quote, the PTAF actually found that just the disclosure of the GSM standard and 4.0 patent did not teach that the 4.8, 8.0 patents had the base station perform frequency hopping and.

[00:14:18] Speaker 01:
I went in, when somebody said that, I went, look, it sure seems to support it, and he just blew it off.

[00:14:24] Speaker 02:
Yeah, I think your honor's right.

[00:14:26] Speaker 02:
I read the final written decision as making that factual finding, and the board reiterated it.

[00:14:31] Speaker 01:
Because they discussed the JSM standard, and then they make the next.

[00:14:34] Speaker 02:
Yes, and they discussed the 480 patent itself.

[00:14:37] Speaker 00:
And just to... Is that what this comes down to?

[00:14:41] Speaker 00:
I mean, this is very difficult technology, at least for me.

[00:14:43] Speaker 00:
It is.

[00:14:44] Speaker 00:
And so it seems like what it comes down to is whether or not the 480E includes, implements, describes a system that implements frequency hopping.

[00:14:55] Speaker 00:
Is that what the underlying issue is with respect to all these arguments?

[00:14:59] Speaker 02:
For anticipation, it is, Your Honor.

[00:15:01] Speaker 02:
They want to just...

[00:15:03] Speaker 02:
draw the court's attention to one thing on the question whether the finding that the 480 patent doesn't describe a base station that performs frequency hopping.

[00:15:12] Speaker 02:
I think the board clarified things in its rehearing decision, and this would be at A39.

[00:15:22] Speaker 02:
And they pointed in this instance directly to Dr. Wells' testimony.

[00:15:27] Speaker 02:
We find that Dr. Wells has testified consistently that the portion of the 480 patent quoted above actually means that it can support GSM, and that it characterizes GSM as a frequency hopping standard.

[00:15:38] Speaker 02:
It doesn't say that it supports frequency hopping.

[00:15:40] Speaker 02:
So the board not only had the 480 patent, which is substantial evidence, but it had expert testimony when it made that decision.

[00:15:46] Speaker 02:
And a lot of it, too.

[00:15:48] Speaker 02:
I agree.

[00:15:51] Speaker 02:
I would like to turn to the obvious in this issue.

[00:15:54] Speaker 02:
I think if there is a difficult issue in this case, it would be those.

[00:15:57] Speaker 02:
And there's been a change in emphasis, I think, in the briefing here between the blue brief and gray brief.

[00:16:02] Speaker 02:
And now there's a theme in the reply brief that somehow the board didn't do the proper GRAM analysis.

[00:16:07] Speaker 02:
And I don't think that's a fair criticism of the board here.

[00:16:10] Speaker 02:
The board, the thorough consideration of the scope and content of the prior art, if you look at the final decision, they spend pages on what's disclosed in the 480 patent, what's disclosed in the GSM

[00:16:21] Speaker 02:
standard.

[00:16:23] Speaker 02:
They considered the patent itself, they construed the claims, they looked at the specification, and then of course in the anticipation analysis they're necessarily considering the differences between the prior art and the claims.

[00:16:34] Speaker 02:
And then on the motivation to combine issue, I don't think it's fair to say that there wasn't a rebuttal there.

[00:16:39] Speaker 02:
The inoperability issues below, that's a direct rebuttal to the motivation to combine.

[00:16:43] Speaker 02:
And although, and I'll just add one thing, there was an explicit finding about the level of skill in the art.

[00:16:47] Speaker 02:
So I don't think it's fair to say that the court didn't step through the Graham analyses.

[00:16:51] Speaker 02:
It certainly quoted the case.

[00:16:54] Speaker 02:
It was cognizant of that requirement.

[00:16:55] Speaker 02:
And then when it comes to the final written decision, the issues on obviousness had really boiled down to two questions.

[00:17:01] Speaker 02:
And that was, did the skilled artist, and would that skilled artist have had a reasonable expectation of succeeding in combining the teachings of GSM and the 480 patents?

[00:17:10] Speaker 02:
And it's an operability issue.

[00:17:11] Speaker 02:
I think it's not fair to criticize the board for focusing its final written decision on the two things that were really in dispute there.

[00:17:17] Speaker 02:
And on those issues, the board was supported by ample substantial evidence on both questions.

[00:17:22] Speaker 02:
We have a classic battle of the experts here.

[00:17:25] Speaker 02:
Petitions expert Dr. Stark had a theory.

[00:17:28] Speaker 02:
Dr. Wells went through a great detail to show why that theory simply couldn't work.

[00:17:32] Speaker 02:
And the board credited that testimony of Dr. Stark.

[00:17:35] Speaker 02:
And it cannot be a basis for Eric to say that there was

[00:17:39] Speaker 02:
weight on the other side of the scale in opposition to what the board found.

[00:17:43] Speaker 02:
The question is, is there substantial evidence and that exists here?

[00:17:47] Speaker 02:
If the court has any questions, I'd be happy to address them or yield the remainder of my time.

[00:17:54] Speaker 02:
Thank you.

[00:18:22] Speaker 03:
May it please the court?

[00:18:23] Speaker 03:
While intellectual ventures does indicate there's substantial evidence in the record, on the obvious issue, the problem is that that substantial evidence does not back up what the board actually found.

[00:18:36] Speaker 03:
If we could go through the history here, we established in our petition that what we had was a TDM bus that flexibly mapped data on and off to the DSP.

[00:18:46] Speaker 03:
Why the arguments for why this could not work to do frequency hopping changed over time.

[00:18:52] Speaker 03:
the Apple East position below, the substantial evidence that they put in was that it couldn't update this mapping fast enough to support frequency hopping every 4.3 milliseconds.

[00:19:01] Speaker 03:
That was their argument.

[00:19:02] Speaker 03:
The board did not credit that argument.

[00:19:04] Speaker 03:
It did not credit the substantial evidence that they presented.

[00:19:07] Speaker 03:
The board instead, in its final decision, came up with a new theory that they weren't arguing.

[00:19:12] Speaker 03:
It said what the board found was that the figure three by itself doesn't map data to DSPs.

[00:19:19] Speaker 03:
That was never our position.

[00:19:21] Speaker 03:
When we showed on rehearing that everyone agreed that it was mapped on the TDM bus by figure three and off the TDM bus by figure six, the board agreed, yes, you're right, we didn't talk about figure six.

[00:19:32] Speaker 03:
And they came up with yet a new theory for why it allegedly couldn't support frequency hopping.

[00:19:37] Speaker 03:
And this was the board's finding.

[00:19:39] Speaker 03:
This was the one that substantial evidence needs support.

[00:19:41] Speaker 03:
And that's at appendix 41.

[00:19:43] Speaker 03:
This is the only reason that they gave for why this somehow can't support frequency hopping.

[00:19:47] Speaker 03:
DP RAM enabled 202 of figure six

[00:19:49] Speaker 03:
does not determine which slot is associated with which DSP.

[00:19:53] Speaker 03:
We pointed to this in our blue brief and said, this is the fundamental finding.

[00:19:56] Speaker 03:
The red brief didn't even mention it.

[00:19:58] Speaker 03:
And if we look throughout, appellees concede that this TDM bus mapping is provided in the sites that I gave you.

[00:20:05] Speaker 03:
Their only position was that it couldn't update it fast enough.

[00:20:08] Speaker 03:
That was all they were arguing below.

[00:20:09] Speaker 03:
The board never credited that conclusion because all of the scientific evidence was the contrary.

[00:20:15] Speaker 03:
The claims don't cover every 4.3 milliseconds.

[00:20:18] Speaker 03:
They cover any frequency output.

[00:20:20] Speaker 03:
So you don't even have to map it that fast.

[00:20:22] Speaker 03:
But I think the more fundamental issue, if you step back, that's not the right reasonable expectation success analysis.

[00:20:30] Speaker 03:
My friend was wrong in saying the expectation success analysis is can you combine expectation success and combining the references.

[00:20:37] Speaker 03:
That's not the analysis.

[00:20:38] Speaker 03:
The analysis, as this court said in allied directing, is a reasonable expectation of success in arriving at the claimed invention.

[00:20:45] Speaker 03:
Here we had explicit instructions in GSM for how to frequency hop.

[00:20:49] Speaker 03:
They told you how to do it.

[00:20:51] Speaker 03:
They were intended to be followed by persons with skill in the art to make base stations to frequency hop.

[00:20:55] Speaker 03:
Frequency hopping base stations were known in the prior art.

[00:20:58] Speaker 03:
And there's never any explanation from how frequency hopping on a broadband base station would be any different.

[00:21:03] Speaker 03:
Sure, we proved that you could do it on the one in the 480 patent.

[00:21:06] Speaker 03:
There was the arguments for why you couldn't weren't correct.

[00:21:11] Speaker 03:
But that's not what you need to prove.

[00:21:13] Speaker 03:
Here, the expectation of success was shown.

[00:21:15] Speaker 03:
The only thing the aeronaut inventors did was add this piece of memory.

[00:21:19] Speaker 03:
And the undisputed evidence was that doing so was something readily apparent and readily available to a personal skill in the art.

[00:21:25] Speaker 00:
How is there not an expectation of success?