[00:00:00] Speaker 02:
Our next case is number 16-1859.

[00:00:03] Speaker 02:
Again, HTC Corporation versus cellular communications equipment.

[00:00:07] Speaker 02:
Mr. Moore.

[00:00:09] Speaker 00:
Good morning, Your Honor.

[00:00:10] Speaker 00:
If it please the Court.

[00:00:12] Speaker 00:
We believe the Board made about four different errors in this case.

[00:00:17] Speaker 00:
First of all, the Board overlooked the explicit teachings of the home network preference limitation in Lawrence.

[00:00:24] Speaker 00:
In the Board's construction of the term home network,

[00:00:29] Speaker 00:
It explicitly construed it, but then in its application, it imported additional limitations, giving us a false implicit construction of home network.

[00:00:40] Speaker 00:
The board also aired in its overlooking of the explicit evidence of the home network preference limitation in SUSUDA.

[00:00:51] Speaker 00:
And lastly, we believe that when the board reached the inherency analysis that it undertook, its analysis was fatally flawed.

[00:01:00] Speaker 00:
So, turning specifically to the teachings of Lawrence, instead of applying the teachings of Lawrence at line 3, 23 through 20.

[00:01:08] Speaker 03:
Can I just double check one thing?

[00:01:12] Speaker 03:
Is there a place in the board's, you have a subheading about teaching away, is there a place in the board's opinion that uses the language of teaching away?

[00:01:24] Speaker 00:
Their analysis kind of indicated that they were applying a teaching away theory that was brought up by the patent owner.

[00:01:32] Speaker 00:
And our only position with respect to that is teaching away is completely inappropriate in an anticipation regime.

[00:01:41] Speaker 03:
And so to my mind, the most responsive words in your answer were kind of indicates.

[00:01:49] Speaker 03:
Does that mean the answer to my question is no, there is no language in the board's opinion?

[00:01:54] Speaker 03:
That uses the language of teaching away.

[00:01:58] Speaker 00:
There is not, Your Honor.

[00:02:00] Speaker 00:
Specifically, the teachings of Lawrence.

[00:02:03] Speaker 00:
Column 3, lines 23 through 29, which can be found with appendix 21.

[00:02:08] Speaker 00:
The board states that they explicitly declined to take judicial notice that every work and cell phone has a home network that it gives preference to.

[00:02:17] Speaker 00:
They based this analysis on the analysis they've done with respect to Susuda.

[00:02:22] Speaker 00:
That completely ignores the teachings of Lawrence that say, alternatively, if the wireless communicator is already registered on the appropriate network, the wireless communicator simply conducts communication with the network so that the desired service feature is provided to the user.

[00:02:39] Speaker 00:
You can find that at appendix 768.

[00:02:43] Speaker 00:
So we believe that the application of inherency when there's an explicit teaching was inappropriate.

[00:02:51] Speaker 00:
Now, with the construction issue, the board explicitly construed the home network as being the network that the mobile communicator is subscribed to.

[00:03:00] Speaker 00:
And we take no issue with that construction.

[00:03:04] Speaker 00:
In fact, we believe it to be appropriate.

[00:03:07] Speaker 00:
In doing so, the board explicitly rejected the patent donor's analysis that would require additional limitations of being preconfigured or any other additional limitations into that claim.

[00:03:21] Speaker 00:
into that claim term.

[00:03:23] Speaker 00:
Unfortunately, when they went to application of it, they did that exactly.

[00:03:29] Speaker 00:
They imported additional limitations with respect to Lawrence.

[00:03:32] Speaker 02:
So you're suggesting that they imported a pre-configured limitation?

[00:03:36] Speaker 00:
Well, at the hearing, they asked my colleague, Mr. Thill, whether or not it was pre-configured.

[00:03:41] Speaker 00:
And in the Lawrence reference, it is.

[00:03:45] Speaker 00:
But what they also imported was

[00:03:50] Speaker 00:
the preference for how that channel is chosen.

[00:03:54] Speaker 02:
So in other words... I thought that was... I'm a little confused here.

[00:04:00] Speaker 02:
I thought that in the art, that a home network was a network where it was pre-configured to use it.

[00:04:08] Speaker 02:
Isn't that the case?

[00:04:10] Speaker 02:
I mean, it doesn't seem to me that... In the patent.

[00:04:12] Speaker 02:
Well, no, just in the art general.

[00:04:14] Speaker 02:
And in Lawrence itself, when the background section where it describes home network.

[00:04:19] Speaker 02:
I mean, isn't that just

[00:04:20] Speaker 02:
generally part of what a home network is that's pre-configured to use that network?

[00:04:25] Speaker 00:
In certain instances it is, but we believe it inappropriate to limit this link construction to that instance because the applicant was their own lexicographer and the board specifically adopted the language that the applicant had used in the patent that made no mention of further limitation.

[00:04:43] Speaker 00:
They clearly defined exactly what they meant by home network and the board adopted it.

[00:04:48] Speaker 00:
Now when they applied it,

[00:04:49] Speaker 00:
they imported additional limitations.

[00:04:51] Speaker 02:
With respect to Lawrence, they said... Well, I mean, that sounds to me as though they just elaborated on the claim construction when they applied it and said that home network has a pre-configured aspect to it.

[00:05:03] Speaker 00:
Well, that's not really what they're saying.

[00:05:05] Speaker 00:
They're saying that Lawrence specifically did nothing in Lawrence.

[00:05:08] Speaker 02:
Let's assume for the moment that home network does have a pre-configured requirement.

[00:05:14] Speaker 02:
Where are we with respect to Lawrence, if we interpret it

[00:05:17] Speaker 00:
If it's interpreted that way, Lawrence absolutely provides it.

[00:05:20] Speaker 00:
So Suda may not.

[00:05:22] Speaker 00:
But the claim construction that was adopted by the board requires nothing more than the mobile unit be subscribed to that network for it to be the home network.

[00:05:34] Speaker 00:
Nothing more, nothing less.

[00:05:35] Speaker 00:
If your handset is logged into that network, that is your home network.

[00:05:40] Speaker 00:
And to import additional limitations of some sort of algorithm with respect to

[00:05:47] Speaker 00:
how that network is chosen, which you can see at appendix page 20 with respect to Lawrence or appendix page 15 when they're talking about Susuda.

[00:05:58] Speaker 00:
They say these portions of Susuda don't describe a home network or any other type of network that's selected first among those of the catalog.

[00:06:05] Speaker 00:
To the contrary, the language corresponding with big three describes communicator unit 1001 choosing service provider 103 for its telephone interconnection service

[00:06:15] Speaker 00:
without any further explanation.

[00:06:18] Speaker 00:
So in other words, the board is specifically looking for an additional algorithm that they explicitly excluded from the claim construction.

[00:06:27] Speaker 00:
Now when they are applying the claim construction, they import this notion of additional limitations

[00:06:33] Speaker 00:
And that's why we believe it's a claim construction.

[00:06:34] Speaker 02:
Let's assume that the breach and figured limitation exists as part of the claim construction.

[00:06:38] Speaker 02:
Let's assume that.

[00:06:40] Speaker 02:
Talk to us about Lawrence and tell us why Lawrence nonetheless anticipates.

[00:06:47] Speaker 02:
With respect to Lawrence, the hands... What page is Lawrence's at?

[00:06:53] Speaker 00:
The Lawrence reference, I believe, is at Appendix 767 through... I don't know exactly where.

[00:07:02] Speaker 00:
The way Lawrence works is the handset has something called a NAM, which is the address module inside of the handset.

[00:07:14] Speaker 02:
But I mean, in Lawrence on column one, line 46, it talks about a SID, which uniquely identifies a particular wireless signal, which is primarily intended to provide airtime.

[00:07:25] Speaker 02:
That's right.

[00:07:25] Speaker 02:
So that's pre-configured, right?

[00:07:28] Speaker 00:
Absolutely, Your Honor.

[00:07:29] Speaker 00:
And that's why my colleague, Mr. Phil, when he was asked,

[00:07:32] Speaker 00:
Is Lawrence preconfigured?

[00:07:33] Speaker 00:
He answered any of that.

[00:07:34] Speaker 03:
Preconfigured to do what?

[00:07:36] Speaker 03:
Maybe I'm misremembering, but what I'm remembering, correct me if I'm wrong, is that the essence of the board's conclusion or finding about why Lawrence doesn't meet the claim limitation is that while Lawrence talks about a home network, it does not inherently require, and I think you've just confirmed this, and it doesn't expressly say that you check the home network

[00:08:01] Speaker 00:
Your Honor, it does.

[00:08:03] Speaker 00:
If we go to Lawrence at column 3, lines 23 through 29, specifically beginning at 26, it says alternatively, if the wireless communicator is already registered onto the appropriate network, the wireless communicator simply conducts communication with the network so that the desired service feature is provided to the user.

[00:08:25] Speaker 00:
Now that's an explicit teaching of the preference.

[00:08:28] Speaker 00:
So don't go to any other network

[00:08:31] Speaker 00:
or service provider if the feature that you're looking for is found where you currently are.

[00:08:38] Speaker 00:
And that's the explicit teaching that was overlooked in Lawrence.

[00:08:42] Speaker 00:
The board, during the discussion of SESUDA, overlooked the explicit record and moved on.

[00:08:52] Speaker 03:
The sentence you just read, why is that

[00:09:01] Speaker 03:
referring to the home network.

[00:09:05] Speaker 03:
The claim says always check the home network, which I take it to mean even if you're away from your home network and are registered while being away on, let's call it a roaming network, that you still, under this claim, have to check the home network first.

[00:09:25] Speaker 03:
I take this sentence to refer to check whatever network you happen to be registered on.

[00:09:31] Speaker 03:
which might be, you know, the one in France instead of D.C.

[00:09:36] Speaker 00:
Two issues there, Your Honor.

[00:09:37] Speaker 00:
I think a reading that would require an absolute checking of the home network would be completely inappropriate because instances where I am in China, it doesn't check with AT&T first.

[00:09:50] Speaker 00:
It can't.

[00:09:52] Speaker 00:
So the claim does require a preference be given to the home network.

[00:09:57] Speaker 00:
And when the communicator is on the home network,

[00:10:01] Speaker 00:
This passage illustrates that it will check that network first, prior to any other.

[00:10:08] Speaker 01:
I share Judge Toronto's view here.

[00:10:12] Speaker 01:
When I'm looking at the claim I think that you pointed out to you, it doesn't, it says the appropriate network.

[00:10:19] Speaker 01:
It doesn't limit that to a home network.

[00:10:23] Speaker 01:
An appropriate network seems to me to, it can be something

[00:10:31] Speaker 00:
whatever you want to register to.

[00:10:33] Speaker 00:
And under the board's construction, that merely being logged onto the network makes it your home network.

[00:10:40] Speaker 00:
Under that construction, the appropriate network is the one that you're logged onto, i.e.

[00:10:45] Speaker 00:
the home network.

[00:10:49] Speaker 00:
If I can move on to Susuda for just a few moments.

[00:10:53] Speaker 03:
The difficulty that we have with Susuda is the board's construction of home network is the network

[00:11:01] Speaker 03:
to which a mobile station subscribes.

[00:11:03] Speaker 03:
So to use your example, that's not China.

[00:11:07] Speaker 00:
When I'm in China, my handset subscribes to China Mobilecom.

[00:11:13] Speaker 00:
It does.

[00:11:13] Speaker 00:
It logs on.

[00:11:15] Speaker 00:
My handset cannot reach an AT&T network from Shenzhen.

[00:11:23] Speaker 02:
When you're in China, you select the network, right?

[00:11:26] Speaker 00:
My handset selects a network.

[00:11:29] Speaker 00:
I can set it to automatic or manual.

[00:11:31] Speaker 00:
but my handset does log on to a network in China.

[00:11:35] Speaker 00:
And when it does, under the board's construction, that is my home network.

[00:11:41] Speaker 00:
Now, moving briefly on to Susuda, if I might.

[00:11:44] Speaker 00:
The difficulty that we have with Susuda is this.

[00:11:46] Speaker 00:
The board lifted a passage from the hearing where my colleague, Mr. Thill, stated that the issues of the teachings of Susuda and the home network preference limitation

[00:12:01] Speaker 00:
We're not in the petition and not in the expert declaration.

[00:12:06] Speaker 00:
And they accurately quoted that particular passage from the hearing, but it was taken dramatically out of context.

[00:12:16] Speaker 00:
Within just a few additional lines, my colleague says but.

[00:12:21] Speaker 00:
This was addressed during the cross-examination.

[00:12:26] Speaker 00:
And our point is just this.

[00:12:27] Speaker 00:
If our colleagues that represent the patent owner

[00:12:31] Speaker 00:
had limited their cross-examination to Dr. Williams' direct testimony at his deposition, we wouldn't be having this conversation.

[00:12:40] Speaker 00:
But they opened the door.

[00:12:41] Speaker 00:
They opened the door and started questioning Dr. Williams about the teachings of Sosudan.

[00:12:47] Speaker 00:
And in great detail, Dr. Williams opined about home network limitations in such great detail that their expert had to rebut this in his declaration.

[00:13:00] Speaker 00:
which you can see at Joint Appendix 2040 and 41.

[00:13:06] Speaker 00:
Some of Dr. Williams' testimony can be found at 1892 and 1978 as well.

[00:13:12] Speaker 00:
And what does SESUDA teach?

[00:13:16] Speaker 00:
SESUDA teaches, again, a very elaborate set of embodiments, some of which teach exactly this home network preference limitation.

[00:13:25] Speaker 00:
Now, what is the home network in SESUDA?

[00:13:28] Speaker 00:
Again, we have to get back to the original claim construction.

[00:13:32] Speaker 00:
The original claim construction says the home network is the network that you're subscribed to.

[00:13:38] Speaker 00:
You know, once we have that claim construction, then the teachings of CSUDA that are in evidence clearly illustrate that CSUDA anticipates.

[00:13:51] Speaker 00:
The difficulty that we have here is

[00:13:55] Speaker 00:
The board has made a couple of different leaps of faith, so to speak.

[00:13:59] Speaker 00:
Number one, it ignored the explicit teachings of Lawrence and the explicit evidence in the record of Susuda.

[00:14:06] Speaker 00:
The board explicitly gave us a claim construction with respect to home network and then in application imported a lot of additional limitations into home network.

[00:14:17] Speaker 00:
A lot of additional limitations?

[00:14:21] Speaker 02:
I thought you were just talking about the pre-configured.

[00:14:24] Speaker 00:
Pre-configured or they're asking for some other additional algorithm.

[00:14:29] Speaker 00:
They say it doesn't illustrate how.

[00:14:32] Speaker 00:
Now that could be pre-configured or it could be any other additional algorithm that they're looking for.

[00:14:37] Speaker 00:
So we believe that to be an error.

[00:14:38] Speaker 00:
But if we take it all the way down to the board's inherency argument, we believe that argument to be fatally flawed as well.

[00:14:45] Speaker 00:
And here's the reason.

[00:14:47] Speaker 00:
My cell phone, I use a ZTE Axon phone.

[00:14:52] Speaker 00:
It's a pretty nice phone, but it has a slot right along the side where I can take the SIM card out.

[00:14:59] Speaker 00:
And I would just invite the court to remove the SIM card from your mobile phone and then try to make a phone call or log on to the network.

[00:15:07] Speaker 00:
The problem is the SIM card has your phone number.

[00:15:10] Speaker 00:
The SIM card has your authentication information.

[00:15:13] Speaker 00:
The SIM card in my phone is how my wife and daughter know how to call me and the phone call doesn't reroute to someone else.

[00:15:20] Speaker 00:
Without that SIM card,

[00:15:21] Speaker 00:
You're not logged onto the network.

[00:15:24] Speaker 02:
Okay, Mr. Moore, I think we're about out of time.

[00:15:26] Speaker 02:
We'll give you two minutes for the bottle.

[00:15:28] Speaker 02:
Thank you, Your Honor.

[00:15:32] Speaker 02:
Mr. Granahan?

[00:15:46] Speaker 04:
Good morning, Honors.

[00:15:47] Speaker 04:
May it please the Court

[00:15:49] Speaker 04:
Chris Granigan on behalf of the Appellee Cellular Communications Equipment.

[00:15:54] Speaker 04:
The court should affirm the board's final written decision because substantial evidence supports the board's findings that neither Lawrence nor... Does Lawrence disclose a home network?

[00:16:06] Speaker 04:
Your Honor, the board found that Lawrence in the background of the invention discloses a home network.

[00:16:11] Speaker 04:
We have not argued on appeal that that finding was not

[00:16:16] Speaker 04:
supported by substantial evidence.

[00:16:18] Speaker 02:
So why isn't, given that concession, why isn't Lawrence in column three, when it's talking about roaming for service, talking about home network embodiment rooms for service?

[00:16:38] Speaker 04:
Well, Your Honor, if you look at the background of the invention in Lawrence, what it describes is that the mobile device knows whether it's in a home network by the SID that's stored in its number assignment module.

[00:16:52] Speaker 04:
If you don't have a number assignment module, there's really no home network because there's no way for the device to know whether it's in its home network.

[00:16:59] Speaker 04:
The detailed description of the invention, which the appellants have pointed to,

[00:17:07] Speaker 04:
as describing this process by which you look to the first network, determine whether it provides the service that you're looking for, and then look to the second network, says nothing about a number assignment module.

[00:17:17] Speaker 04:
All it says is that this control channel broadcasts a system identification number, which is just that.

[00:17:23] Speaker 04:
It's an identification number that identifies the network.

[00:17:26] Speaker 04:
There's no disclosure of a NAM that would allow the device to determine whether it's in its home network.

[00:17:35] Speaker 04:
So that's why we think that Lawrence doesn't disclose it.

[00:17:38] Speaker 02:
I'm not sure that I understand that.

[00:17:40] Speaker 02:
I mean, here we have in column one, it describes a home network, talks about a system identification number, and then in column three, again, it's talking about a system identification number, and it's talking about roaming for service, right?

[00:17:55] Speaker 02:
Correct.

[00:17:56] Speaker 02:
So why isn't that a description of,

[00:18:04] Speaker 02:
a phone that has a home network and then is roaming for service.

[00:18:10] Speaker 02:
What am I missing?

[00:18:11] Speaker 02:
Sorry, go ahead.

[00:18:12] Speaker 02:
What am I missing?

[00:18:14] Speaker 04:
Well, Your Honor, the background describes that full sentence that you're pulling the system identification number from and the background of the invention says, a NAM is a memory location within the wireless communicator in which an installer technician stores an assigned telephone number and a system identification number which uniquely identifies a particular wireless network

[00:18:35] Speaker 04:
which is primarily intended to provide airtime service for that communicator.

[00:18:38] Speaker 04:
So it is the system identification number within the NAM that identifies the home network.

[00:18:44] Speaker 04:
There is nothing in column three that refers to a system identification number stored in the NAM.

[00:18:49] Speaker 04:
And your honor, I said a second ago that yes, column three does describe roaming for service.

[00:18:55] Speaker 04:
I should qualify that a bit.

[00:18:58] Speaker 04:
If you mean roaming

[00:18:59] Speaker 04:
in the sense that there's necessarily a home network and by roaming we mean we're looking outside the home network.

[00:19:04] Speaker 04:
No, we don't believe that column three describes roaming for service.

[00:19:08] Speaker 04:
By roaming for service you just mean it looks to different networks to see which one provides the desired service.

[00:19:14] Speaker 04:
In that sense it does describe roaming for service.

[00:19:17] Speaker 04:
Does that answer your Honor's question?

[00:19:20] Speaker 02:
I'm not sure, but go ahead.

[00:19:24] Speaker 03:
I do want to... Can I just see if I understand

[00:19:31] Speaker 03:
Kalman describes two things, something that tells you what the home network is.

[00:19:36] Speaker 03:
That's the NAM and a system identification number.

[00:19:40] Speaker 03:
Maybe that's connected with that.

[00:19:42] Speaker 03:
But you can have a system identification.

[00:19:45] Speaker 03:
Is it a D or an N?

[00:19:47] Speaker 03:
System identification.

[00:19:49] Speaker 03:
So what's the SID?

[00:19:51] Speaker 03:
SID.

[00:19:51] Speaker 04:
I believe ID is just identification.

[00:19:52] Speaker 03:
System identification number without the NAM.

[00:19:57] Speaker 04:
Correct.

[00:19:58] Speaker 03:
And column three is talking about system identification numbers generally, not for the specific instance where there is one connected with a NAM.

[00:20:08] Speaker 03:
Correct.

[00:20:09] Speaker 03:
That's what I understand the board to be saying.

[00:20:11] Speaker 03:
Yes, it mentions a NAM type SID to start using awful acronyms, but the description in column three of choosing networks is about SIDs that are not necessarily connected to a NAM.

[00:20:27] Speaker 04:
That's correct, John.

[00:20:28] Speaker 04:
And that is our argument.

[00:20:29] Speaker 04:
The SID is what identifies a network.

[00:20:34] Speaker 04:
If the presence of an SID in and of itself meant that whatever network was broadcasting the SID was a home network, there would be no reason for the NAM.

[00:20:48] Speaker 04:
The mobile device would receive an SID and say, that's my home network.

[00:20:51] Speaker 04:
But that is not what the background of the invention discloses.

[00:20:54] Speaker 04:
The SID in column three is

[00:20:57] Speaker 04:
separate and apart from the NAM.

[00:20:59] Speaker 04:
It's just identifying the network.

[00:21:02] Speaker 04:
At the very least, we believe this is a permissible reading of Lawrence, and the standard review here is substantial evidence.

[00:21:09] Speaker 02:
What about the sentence beginning at line 26 in column 3?

[00:21:15] Speaker 04:
So this, Your Honor, two things with respect to this.

[00:21:17] Speaker 04:
First, this sentence was never pointed out by the appellants before the board.

[00:21:22] Speaker 04:
I don't believe it showed up in this court until we... That happens all the time, and it's not a waiver.

[00:21:28] Speaker 02:
Well, Your Honor... It's the same argument.

[00:21:30] Speaker 02:
People just look at different parts of the specification when they get on a PIA.

[00:21:34] Speaker 04:
Sure.

[00:21:34] Speaker 04:
Well, I mean, even putting the waiver argument aside, there is nothing in those three lines that we believe says anything about home network.

[00:21:42] Speaker 04:
It says if the wireless communicator is already registered onto the appropriate network, then the wireless communicator simply conducts communications with the network so that the desired service feature... Give us an example of

[00:21:56] Speaker 01:
the situation where you have an appropriate network, have a device registered to the appropriate network, and it's not the home network?

[00:22:05] Speaker 04:
Sure.

[00:22:05] Speaker 04:
And there was no expert testimony on this issue, so I'm just, you know, not putting it on.

[00:22:11] Speaker 04:
Correct.

[00:22:12] Speaker 04:
So I mean, you know, one example could be it was registered with a network for the same service before.

[00:22:19] Speaker 04:
It never deregistered.

[00:22:20] Speaker 04:
And so it's still registered with that network.

[00:22:22] Speaker 04:
It's not the home network.

[00:22:24] Speaker 01:
Then does that become the home network?

[00:22:27] Speaker 04:
I don't think so, your honor.

[00:22:32] Speaker 04:
Give me another example.

[00:22:36] Speaker 03:
Is the China example an example of that or not?

[00:22:42] Speaker 04:
So as I understand the China example, let me just clarify your question.

[00:22:46] Speaker 03:
Right, so I live in DC and my home network is whatever my local cellular network is.

[00:22:52] Speaker 03:
in DC.

[00:22:53] Speaker 03:
I go to China.

[00:22:54] Speaker 03:
I've never had any economic relationship whatsoever with whatever the Chinese cell phone company is, but my phone finds it and uses it.

[00:23:04] Speaker 03:
Now, it seems to me a little odd to call that a network to which I am subscribing, which is the definition of the home network.

[00:23:17] Speaker 03:
But if I'm there and I'm

[00:23:19] Speaker 03:
registered because my phone is programmed to register me for that China network.

[00:23:24] Speaker 03:
This is what I think is the example that was talked about earlier, that this sentence says, if you're already registered for it, check it first.

[00:23:37] Speaker 03:
It seems to me the question is, if that sentence applies to that and the Chinese network is not my home network, then that's an example.

[00:23:48] Speaker 03:
Is that what we're talking about?

[00:23:49] Speaker 04:
I would agree that that's an example.

[00:23:52] Speaker 02:
Why isn't it the Chinese network you subscribe to become the home network when you're in China?

[00:23:59] Speaker 04:
I guess it depends on what we mean by subscribe.

[00:24:02] Speaker 04:
And I don't think that's been fully fleshed out in the record.

[00:24:07] Speaker 04:
If we talk about how we normally use cell phones, a subscription is whichever carrier you pay your monthly fee to to provide you normal service when you're at home.

[00:24:18] Speaker 04:
I don't think that definition would apply if you're in China on some network that you've never been for.

[00:24:27] Speaker 03:
Was the question of the meaning or scope of subscribe in the definition of home network the subject of expert or other evidence?

[00:24:38] Speaker 04:
It was not your arm.

[00:24:44] Speaker 04:
If I may just move quickly to the argument that the board somehow imported some other limitations into its construction of home network.

[00:24:56] Speaker 04:
I don't think that's what it was doing.

[00:24:58] Speaker 04:
I think it was just applying the plain language of the claims.

[00:25:02] Speaker 04:
And claim one appears on, it's in a certificate of correction.

[00:25:05] Speaker 04:
It's at page 1136 of the appendix, or at least part of claim one is.

[00:25:10] Speaker 04:
This idea that the mobile device first has to look to the home network and then if the home network does not provide a desired service, it looks to other networks I think is plain from the claim.

[00:25:22] Speaker 04:
It requires choosing a desired service to be requested, determining if the desired service belongs to said first set, and then if the desired service belongs to the first set, registering with the first network.

[00:25:33] Speaker 04:
And if it doesn't, then you proceed and look at the second network and register with the second network.

[00:25:39] Speaker 04:
So I don't think the board was importing limitations into the definition of home network.

[00:25:43] Speaker 04:
I think it was just applying the plain language of the claims.

[00:25:52] Speaker 04:
Let me move briefly to Susuda.

[00:25:57] Speaker 04:
As I understood from the briefing, the only argument that was being made on appeal with respect to Susuda was that the board legally erred by rejecting this argument that

[00:26:08] Speaker 04:
Susuda does not disclose that the first network is the home network because it wasn't required to enable Susuda.

[00:26:18] Speaker 04:
While it is true that the case law does state that a specification does not need to describe what is well known in the art to be enabling, that doesn't displace petitioner's burden to point to something in the record to show that every single limitation of the challenge claims are described either explicitly or implicitly.

[00:26:39] Speaker 04:
The board found that petitioner had not met its burden here.

[00:26:44] Speaker 04:
And indeed, the appellants admitted that they didn't have any evidence on this point at the oral argument.

[00:26:51] Speaker 04:
That is at page 577 of the appendix.

[00:26:59] Speaker 04:
If I may have one moment to make sure I've covered everything that I wanted to cover.

[00:27:04] Speaker 04:
uh... one point with respect to the teaching away argument judge toronto i believe is you that recognize that the board never used the words teaching away uh... below when we talked about teaching away we weren't relying on teaching away is a standalone argument for why laurence does not anticipate it was just a we believe that laurence teaches away that explains why laurence does not disclose that the first network is the home network and regardless the board did not ever rely on any teaching away argument you used the words teaching away

[00:27:33] Speaker 04:
We did use the word teaching way below.

[00:27:35] Speaker 04:
If the board has no further questions, I'll see the remainder of my time.

[00:27:42] Speaker 04:
Court.

[00:27:43] Speaker 04:
Did I say board?

[00:27:43] Speaker 04:
I'm sorry, court.

[00:27:45] Speaker 04:
I've done that over and over.

[00:27:46] Speaker 01:
Thank you, Mr. Brennan.

[00:28:03] Speaker 00:
Your Honor, just a couple of points that I think need to be addressed here.

[00:28:08] Speaker 00:
First, the assertion that we had admitted during oral argument a lack of evidence is completely unsupported by the record.

[00:28:18] Speaker 00:
That was lifted out of context by the Board.

[00:28:20] Speaker 00:
The discussion in Dr. Williams' cross-examination is very thorough as to how a home network is selected and the specific preferences given to it.

[00:28:29] Speaker 00:
Our position here is the Board ignored that discussion

[00:28:33] Speaker 00:
in favor of moving into a form of analysis based on inherency and then misapplying those teachings or that analysis not just on Susuda but back over to Lawrence.

[00:28:47] Speaker 00:
So again we believe that they've completely missed the mark with respect to the explicit teachings and the explicit evidence.

[00:28:54] Speaker 00:
One other thing that came up during the oral argument here and that's the

[00:29:03] Speaker 00:
The concept of subscription and what exactly is required under subscription.

[00:29:10] Speaker 00:
First of all, it never was construed below and unfortunately when the board's explicit construction of the network that the mobile unit is subscribed to,

[00:29:24] Speaker 00:
that kind of imports something into the claim that needs further explanation.

[00:29:28] Speaker 00:
And then again, that's why that issue of what actually is required is a claim construction issue.

[00:29:37] Speaker 00:
But looking specifically at appropriate, I believe you've appropriately raised the term appropriate.

[00:29:45] Speaker 03:
Because in that context, the question becomes what is the... In a way, this seems to me the reverse of the

[00:29:52] Speaker 03:
first case this morning.

[00:29:53] Speaker 03:
In the first case, your client, I think in the brief, was making only a claim construction argument.

[00:30:01] Speaker 03:
In this case, at least according to the headings, you're making no claim construction argument at all.

[00:30:10] Speaker 03:
It's pure application.

[00:30:13] Speaker 03:
Application to Lawrence, application to Sasuga.

[00:30:16] Speaker 00:
Yes, Your Honor.

[00:30:16] Speaker 00:
We believe there to be two levels to this argument.

[00:30:21] Speaker 00:
The first one is claim construction.

[00:30:22] Speaker 00:
Was it proper to import these additional limitations and create an implicit construction once an explicit one had been given?

[00:30:31] Speaker 00:
And then the two application arguments.

[00:30:34] Speaker 00:
But looking specifically at appropriate, I'd like to address that just momentarily.

[00:30:37] Speaker 03:
I'm sorry.

[00:30:39] Speaker 03:
Where in either the headings or the issues presented, is there anything about claim construction?

[00:30:45] Speaker 03:
We are raising a claim construction argument.

[00:30:47] Speaker 03:
I don't think it's in here.

[00:30:49] Speaker 00:
Those words are not specifically used.

[00:30:51] Speaker 00:
The thrust of our argument is twofold, like I've mentioned, and the first being that by implicitly importing additional requirements, that gave us a claim construction in opposite to the actual claim construction that was given, which we believe the explicit claim construction to be appropriate.

[00:31:12] Speaker 00:
Back to the notion of a... Mr. Brewer, I think we're out of time.

[00:31:16] Speaker 01:
Other questions?

[00:31:17] Speaker 01:
Yeah, let me just ask real quick.

[00:31:18] Speaker 01:
It seems that perhaps there wasn't any claim construction because during oral argument, you admitted that the home network preference limitation is not explicitly taught by Lawrence, but it's only implied.

[00:31:31] Speaker 01:
So your arguments were legal, not claim construction.

[00:31:35] Speaker 01:
Your Honor, I... And you're not... I understand you to now argue that you didn't make that concession.

[00:31:41] Speaker 00:
That concession was taken out of context because it wasn't in

[00:31:45] Speaker 00:
the petition, it wasn't in the declaration.

[00:31:49] Speaker 00:
The discussion of SESUDA was... But you did argue that Lawrence was implicit.

[00:31:59] Speaker 00:
It... The board completely hijacked the conversation from the explicit teachings of Lawrence.

[00:32:06] Speaker 00:
Once they had determined that SESUDA had a problem, they applied the SESUDA analysis back to Lawrence and questioned Mr. Thill accordingly.

[00:32:15] Speaker 00:
uh... he answered within the scope of their question but nothing in in that discussion.

[00:32:22] Speaker 02:
I'm not following this.

[00:32:22] Speaker 02:
What are you saying?

[00:32:24] Speaker 02:
The board specifically found that Lawrence in column one disclosed a home network and pre-configured.

[00:32:35] Speaker 02:
Absolutely.

[00:32:35] Speaker 02:
So what's your point?

[00:32:38] Speaker 00:
My point is they overlooked the explicit teachings in column three which

[00:32:44] Speaker 00:
give the appropriate network a preference.

[00:32:47] Speaker 00:
Now, the term appropriate has obviously two embodiments.

[00:32:51] Speaker 00:
Either it is the home network or it isn't.

[00:32:54] Speaker 00:
To exclude one of those two embodiments by saying nothing here says that it is one of those two embodiments is inappropriate.

[00:33:02] Speaker 00:
Just common sense.

[00:33:03] Speaker 00:
It either is your home network or it's not.

[00:33:05] Speaker 00:
Under this construction, it is because you're logged on to it, but

[00:33:11] Speaker 00:
nothing in the patent or in any of the record would require excluding the other embodiment.