[00:00:00] Speaker 00:
Court, ICON Health and Fitness v. Strava, an appeal from the Patent Trial and Appeal Board relating to the PTO's determination to deny issuance of a patent or with respect to a reexamination.

[00:00:33] Speaker 00:
Okay, counsel, how much time do you want for rebuttal?

[00:00:36] Speaker 04:
Five minutes, please.

[00:00:38] Speaker 00:
Okay.

[00:00:39] Speaker 00:
We'll see if you can keep that.

[00:00:42] Speaker 00:
It rarely happens, but... Thank you, Your Honor.

[00:00:44] Speaker 04:
I'll do my best.

[00:00:47] Speaker 04:
May it please the court, I'm Larry Laycock of the Mashup Brennan firm, appearing on behalf of ICON Health and Fitness.

[00:00:55] Speaker 04:
In this case, the facts, when combined with governing law, demonstrate that reversal is appropriate as to all claims

[00:01:03] Speaker 04:
for the reason that no authorized entity has actually rendered the decision of invalidity for obviousness.

[00:01:11] Speaker 03:
Do you agree with the statement that something would be obvious to one skilled in the art as a fact established by evidence, but then obviousness is a legal conclusion?

[00:01:26] Speaker 04:
Yes, the standard here would be that the facts relating to

[00:01:32] Speaker 04:
the underlying or the underpinnings of that analysis would be a factual determination, but they require substantial evidence to support them.

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If I interrupt you, you don't interrupt me.

[00:01:43] Speaker 03:
Please.

[00:01:43] Speaker 03:
I don't interrupt you.

[00:01:44] Speaker 03:
Yes.

[00:01:45] Speaker 03:
Do you contend that expert declarations stating that something would have been obvious must be disregarded in their entirety?

[00:01:55] Speaker 03:
No, Your Honor.

[00:01:56] Speaker 04:
However, if they are so fraught with improper legal opinion,

[00:02:02] Speaker 04:
If the opinions of that paid legal expert are so heavily laid... You answered it when you said, no, I don't want to waste your time.

[00:02:11] Speaker 04:
I think the qualification is important in this instance.

[00:02:15] Speaker 00:
I actually think that is important because the first argument you make is that the board can incorporate findings of the examiner, but the examiner can't incorporate findings of the expert.

[00:02:27] Speaker 00:
But that's not really your argument, right?

[00:02:30] Speaker 00:
It's that the examiner can't incorporate legal opinions of the expert.

[00:02:35] Speaker 04:
Right.

[00:02:35] Speaker 04:
They have to conduct that legal examination on their own, and they have to give reasonable and sufficient analysis so that there's actually something that you can look at and determine that a determination has been appropriately made as a matter of law.

[00:02:52] Speaker 04:
And that's the however in the answer to the question, because sure, we can have

[00:02:57] Speaker 04:
an expert, a paid expert whose intent is to destroy the patent, come in and actually use the word obvious.

[00:03:05] Speaker 04:
That's appropriate.

[00:03:05] Speaker 04:
We acknowledge that.

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However, when his legal, his opinion becomes a legal opinion that goes on and on, page 16 of our initial brief gives you numerous examples, but where you have repeated instances of improper legal opinion of obviousness

[00:03:26] Speaker 04:
that are so heavily laden in that opinion, and then that is incorporated by reference without explanation, without explication, without any reasoning.

[00:03:36] Speaker 04:
And in fact, the most egregious example of that.

[00:03:38] Speaker 03:
Are you dodging, then, the bullet in the red brief where they argue, you waved your argument, that Mr. Capurta's declarations contain improper legal conclusions?

[00:03:52] Speaker 03:
and the examiner erred in relying on those conclusions because you're saying, well, that's not what I was actually arguing.

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I wasn't arguing just that.

[00:04:02] Speaker 03:
That's why I asked one of that no yes to start.

[00:04:06] Speaker 04:
No, I don't have to dodge that bullet.

[00:04:08] Speaker 04:
Your honor, the bullet lands here and squarely for two reasons.

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Number one, I can't complain about what the board does until the board does it.

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So I can't wave an argument about what the board does

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in a deficient manner, not providing any analysis or reasoning sufficient for you to review.

[00:04:26] Speaker 00:
But did you argue that the examiner had committed error by incorporating these legal conclusions?

[00:04:34] Speaker 04:
No, that leads to the second reason why the bullet lands here.

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Because in a matter of actual pure legal analysis, that is one of the exceptions to the waiver doctrine.

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Therefore, there is no waiver in this instance.

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This court reviews the analysis de novo.

[00:04:51] Speaker 04:
This is not a situation where a waiver can occur.

[00:04:55] Speaker 04:
In the first instance, for the reason that we're complaining about the board's totally inadequate decision, not subject to review.

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If you look at this decision, the inherent power in this court is to require that the board's decision be capable of review.

[00:05:11] Speaker 04:
It is not.

[00:05:12] Speaker 00:
In addition.

[00:05:13] Speaker 00:
Some of the examples, though, that you give us of the legal conclusions being incorporated, when you read the whole context of what was incorporated, there are references to the factual conclusions and the opinions, the factual opinions that were rendered by the expert.

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So it doesn't necessarily appear that the examiner was really relying on the legal conclusions and was, in fact, relying on

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the expert's opinions.

[00:05:43] Speaker 04:
Well, in that regard, Your Honor, the incorporation by reference in itself is improper.

[00:05:50] Speaker 04:
And so to even get to the level that you're talking about, what we have to have is a particularized statement of the reasoning of the examiner in one instance or the board in the other.

[00:06:01] Speaker 00:
We're all judges.

[00:06:02] Speaker 00:
And whether we do it at the district court level, whether we did it at the trial level, or we do it now, we often say, for all the reasons articulated by the district court, or all the reasons articulated by counsel for the defendant, we rule this way.

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And sometimes that's because we couldn't say it better.

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And we don't have time to say it better, because we've got so much else to do.

[00:06:25] Speaker 00:
So the question is, I mean, I don't think you can say they can never incorporate by reference.

[00:06:30] Speaker 00:
The question is, what did they incorporate?

[00:06:33] Speaker 04:
Right.

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And we have no idea what they incorporated.

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And we have no idea what the reasoning is.

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And therefore, it cannot meet the standard of sufficiency for review.

[00:06:41] Speaker 04:
I'll give you one egregious example that is stark in relief and a backdrop for this argument.

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If you look at the arguments as they relate to claims 57 through 62 and claims 65, you'll recall that the reasoning

[00:06:59] Speaker 04:
in the board at page 19 of their decision, that's A20 and 21, in two consecutive statements, they say, our reasoning is set forth above.

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They chide ICON Health and Fitness for advancing the arguments that they've advanced below, and then they say, and for the reasons that we discussed above.

[00:07:18] Speaker 04:
You can look in vain, and there are no discussions of that issue.

[00:07:24] Speaker 04:
None.

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No basis.

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No sufficiency.

[00:07:28] Speaker 04:
No explication, no reliance on any of these questions.

[00:07:33] Speaker 03:
Say again.

[00:07:33] Speaker 03:
I'm letting you give your egregious example, but I have some questions.

[00:07:37] Speaker 03:
Please.

[00:07:39] Speaker 03:
What are the qualifications required for a cuisine in this instance?

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In this particular instance, the person of ordinary skill in the relevant art has to have knowledge with respect to an exercise system that has portability, that has the ability to

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test the physical activity of an individual engaged in the activity and incorporate a separate communication system.

[00:08:07] Speaker 04:
And so it expands the breadth.

[00:08:09] Speaker 03:
So was Mr. Coperta qualified as an expert?

[00:08:12] Speaker 03:
Say again?

[00:08:12] Speaker 03:
Was Mr. Coperta qualified as an expert?

[00:08:18] Speaker 04:
Mr. Coperta may be qualified as a person of ordinary skill in an aspect of the art.

[00:08:26] Speaker 04:
However, he has no basis for rendering a legal opinion.

[00:08:29] Speaker 04:
Where did you object to his qualifications?

[00:08:31] Speaker 04:
We did not object to his qualifications because the opinions that he rendered are not sufficient to overcome the elements and elegance of elements in this patent.

[00:08:43] Speaker 04:
And that's demonstrated all the way through.

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And if I may, just in the few minutes that I have left.

[00:08:49] Speaker 00:
Well, there's a couple options here.

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And maybe this is partially because of page limits, and there's so many claims at issue here.

[00:08:57] Speaker 00:
But on one hand, you sort of say, they can't incorporate by reference, so just send it all back and tell them to do it right.

[00:09:05] Speaker 04:
Right?

[00:09:06] Speaker 04:
That is one basis for a reversal here.

[00:09:09] Speaker 04:
Yes, Your Honor.

[00:09:10] Speaker 00:
Now, what if we did that and all he did was rewrite?

[00:09:15] Speaker 00:
the expert's conclusions rather than incorporate them by reference.

[00:09:19] Speaker 00:
Would that change things?

[00:09:20] Speaker 04:
If there is a demonstration of appropriate reasoning that shows why, but here that can't happen.

[00:09:27] Speaker 04:
Let me give you a couple of examples.

[00:09:29] Speaker 04:
You can't use, for example, the Poulton reference, which has an array of CRTs, and these are large cathode ray tube monitors, and you can't have that in a portable device.

[00:09:42] Speaker 04:
So the suggestion that that in combination would

[00:09:44] Speaker 04:
render a claim obvious is ludicrous.

[00:09:48] Speaker 04:
Going on, if you talk about the Teller reference and you want to talk about the requirements for infrared or the requirement for the electrical connections, Teller gives you nothing in that regard.

[00:10:01] Speaker 04:
In fact, Teller cannot give you anything.

[00:10:06] Speaker 04:
And on that particular instance, you have contradiction between Strava and their own expert.

[00:10:12] Speaker 04:
And so all you have, they could write an opinion,

[00:10:14] Speaker 04:
But it would be based on contradictory evidence that would be proposed.

[00:10:18] Speaker 04:
If you take the Schoen reference, which deals with adding an accelerometer to a sophisticated GPS system, once again, that would be a classic case of incorporating teaching away art.

[00:10:29] Speaker 04:
Because what you would be doing is taking a little device that is inferior, that senses motion, and replacing a GPS device, rendering that particular reference inadequate for its intended purpose.

[00:10:44] Speaker 04:
And this can be done in each and every instance on your de novo review.

[00:10:49] Speaker 04:
And in each instance, Your Honors, for those reasons, there should be a reversal in total on all the claims, on individual and deeper inspection.

[00:11:00] Speaker 04:
What you will find is that none of these proposed bases for invalidity based on obviousness are sufficient to accomplish the task.

[00:11:11] Speaker 04:
And that is why, Your Honor, you see

[00:11:13] Speaker 04:
someone in a board decision saying, as discussed above, and then nothing is there.

[00:11:19] Speaker 04:
Its conspicuous absence cries out in this case for reversal.

[00:11:25] Speaker 04:
The board should be held to a standard not only where they give sufficiency of reasoning and explanation for their decision to be held up to public scrutiny, but more importantly, to allow this court an opportunity to appropriately and properly review

[00:11:41] Speaker 04:
what is before us.

[00:11:42] Speaker 02:
Council, what about a situation where it could be said that the examiner is somewhat cursory in its analysis, but yet the board goes through and says, we agree with the examiner, and then goes through and plucks out elements of evidence to reach its conclusion?

[00:12:02] Speaker 04:
The statutory requirement here, Your Honor, is that there be a detailed account of the underlying evidence supporting a finding of fact

[00:12:11] Speaker 04:
or the underlying facts supporting a conclusion of law.

[00:12:15] Speaker 02:
So by your definition, if you argue that before the board now, we're reviewing the board's decision.

[00:12:24] Speaker 02:
So if the board's decision recites evidence and says, we agree with the examiner's conclusion,

[00:12:35] Speaker 02:
for these reasons and no precise evidence, but yet the examiner's own analysis is sparse, let's say.

[00:12:44] Speaker 02:
Isn't that enough for us to review the board's decision?

[00:12:49] Speaker 04:
Yes, of course it's enough to review, but it's likely that a cursory decision in that regard doesn't provide.

[00:12:56] Speaker 02:
Isn't that what this discussion is all about?

[00:12:58] Speaker 02:
Whether we have before us sufficient information upon which to review and render a judgment?

[00:13:05] Speaker 04:
It is an aspect of the decision.

[00:13:08] Speaker 04:
There are independent bases why all of these claims are not obvious to demonstrate that they are not obvious.

[00:13:14] Speaker 04:
But the overall and overreaching conclusion that could be reached summarily is that there is no sufficient reasoning that has been advanced.

[00:13:22] Speaker 04:
There's been no entity authorized to make the legal conclusion that has done so.

[00:13:28] Speaker 04:
And never was there a better example of this than in this case where they say,

[00:13:33] Speaker 04:
We discussed this above, and they didn't.

[00:13:36] Speaker 04:
So that doesn't even meet your standard, Your Honor, in this question of a cursory explanation.

[00:13:43] Speaker 04:
That kid could never reach the standard required of a detailed account of the underlying evidence supporting a finding of fact or showing that they have executed their obligations and duties under the law.

[00:13:58] Speaker 04:
Under those circumstances, Your Honors,

[00:14:00] Speaker 04:
The scales of justice perceptibly tip in favor of reversal in this case.

[00:14:06] Speaker 04:
And re-institution of these claims is valid in the forceful claim.

[00:14:10] Speaker 00:
OK.

[00:14:15] Speaker 00:
You used up almost all your rebuttal.

[00:14:17] Speaker 00:
I'll give you three minutes.

[00:14:18] Speaker 00:
Thank you, Your Honor.

[00:14:21] Speaker 01:
May it please the Court, Your Honor.

[00:14:23] Speaker 01:
Glenn Forbus on behalf of the appellees.

[00:14:26] Speaker 03:
Mr. Forbus, as to claims 57 to 62, 65, and 86, looking at pages 20 and 21 of the record, 19 and 20 in the decision, the PTAP says that ICON's arguments were, quote, discussed above, close quote, and, quote, addressed previously, close quote.

[00:14:48] Speaker 03:
So would you show me where in the record that happened?

[00:14:51] Speaker 01:
Your Honor, we can't show you where, because they didn't explicitly address those.

[00:14:55] Speaker 01:
But what the PTAB did say is that where we haven't explicitly addressed an argument, there was a catch-all phrase.

[00:15:03] Speaker 01:
And they said that where we haven't explicitly addressed an argument, we incorporate by reference.

[00:15:08] Speaker 01:
But they said they did.

[00:15:09] Speaker 01:
I know.

[00:15:10] Speaker 01:
No doubt that was contradictory.

[00:15:12] Speaker 01:
And they did not do that.

[00:15:13] Speaker 01:
So I submit to the court that

[00:15:16] Speaker 01:
They made an error in saying that they had discussed it above.

[00:15:20] Speaker 01:
To the extent that they didn't, by default, they're incorporating the reasoning of the examiner's position.

[00:15:26] Speaker 00:
This was a really frustrating case for me, because I'm going through trying to figure out what the heck was the basis for the board's decision.

[00:15:36] Speaker 00:
And so in order to find it, I have to go back and say, OK, first of all,

[00:15:41] Speaker 00:
Sometimes they said they were incorporating the examiner's reasoning.

[00:15:45] Speaker 00:
Sometimes they didn't even say that.

[00:15:46] Speaker 00:
And then when they did say they were incorporating the examiner's reasoning, the examiner's reasoning wasn't there.

[00:15:51] Speaker 00:
It just was incorporating something else.

[00:15:53] Speaker 00:
And you have to go back and figure out what they must have been incorporating.

[00:15:58] Speaker 00:
How is that an appropriate record upon which we should conduct an appellate review?

[00:16:04] Speaker 01:
Well, Your Honor, there's multitudes of claims here.

[00:16:08] Speaker 01:
And what you just described occurs

[00:16:11] Speaker 01:
one or two instances, a number of the instances of the claims that are addressed here where the board may say, we agree with what the examiner did.

[00:16:19] Speaker 01:
You go to the examiner's actual findings, and there's actually written out findings there.

[00:16:23] Speaker 03:
Can the examiner incorporate a party's arguments as its factual findings?

[00:16:29] Speaker 01:
No, Your Honor.

[00:16:30] Speaker 01:
But what the board can do is incorporate the factual findings of the examiner from the right of appeal notice, and that's perfectly fine.

[00:16:38] Speaker 01:
And so I understand that there's a reference there where the board indicated they incorporated and relied upon the examiner's findings and the right of appeal notice, and also respondents' arguments in the brief.

[00:16:51] Speaker 03:
Well, I'm interested in what the examiner can do.

[00:16:54] Speaker 03:
So if the examiner incorporates a party's arguments, does that include the underlying prior art references and expert declarations on which they're relying?

[00:17:08] Speaker 01:
Yes, Your Honor.

[00:17:08] Speaker 01:
I mean, I think that in... So which parts?

[00:17:12] Speaker 01:
Everything that's referenced in the argument.

[00:17:16] Speaker 01:
So in this case, what we... The quoting parts?

[00:17:19] Speaker 01:
The paragraphs that are cited?

[00:17:22] Speaker 01:
The cited paragraphs.

[00:17:23] Speaker 01:
So what you're asking is... The whole document?

[00:17:25] Speaker 01:
No, I think, Your Honor, is what is incorporated by reference when the examiner says, I'm relying upon the comments, right, the requestor's comments,

[00:17:35] Speaker 01:
from these pages.

[00:17:36] Speaker 01:
And that's what was done.

[00:17:38] Speaker 01:
The examiner said, I rely upon the requester's comments from these pages.

[00:17:42] Speaker 01:
In those pages are references to Caperta's declaration.

[00:17:46] Speaker 00:
Yeah, but they're also just lawyer arguments in those pages.

[00:17:50] Speaker 00:
So we're supposed to go through those pages and figure out what the examiner was really relying on, and then assume the board did the same thing.

[00:18:02] Speaker 01:
Well, Your Honor.

[00:18:04] Speaker 01:
I concede that for ease of reference for a reviewing court like yourself, it would be better and preferable if it actually gets written out.

[00:18:13] Speaker 01:
No doubt it's easier because you don't have to go through the process of what was incorporated and what was incorporated.

[00:18:17] Speaker 01:
But here, I don't think it's a mystery.

[00:18:19] Speaker 01:
I don't think that while it takes effort on behalf of your honors and counsel to elicit out what the board did and then what the examiner did, it's doable.

[00:18:28] Speaker 01:
And that's what was done in the briefs.

[00:18:30] Speaker 01:
It's not a mystery what was relied upon.

[00:18:32] Speaker 00:
You know, part of my concern here is that this whole reason we have IPRs is because there was some belief that the examination process wasn't clear and thorough enough.

[00:18:43] Speaker 00:
And so now we spend all this money and time getting rid of patents, but we have the examination process being short-circuited.

[00:18:55] Speaker 01:
I understand the concern, and quite frankly, there's nothing perfect in the patent system.

[00:18:59] Speaker 00:
But I guess on this particular- Including us, I assume you mean.

[00:19:02] Speaker 01:
Well, I'm not commenting.

[00:19:05] Speaker 01:
But look- You have to argue that to the Supreme Court.

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

[00:19:09] Speaker 01:
But on these particular facts, Ron, I'm not saying that short-cutting things is preferable for the ease of reference for the court or for counsel.

[00:19:17] Speaker 01:
What I'm saying is that on these particular facts, the question is whether or not this court can, in fact, review what the examiner did and the board did.

[00:19:25] Speaker 01:
And I think-

[00:19:27] Speaker 03:
that, at least as to some claims, they just erroneously stated the thing.

[00:19:36] Speaker 01:
No, Your Honor, I don't concede that.

[00:19:37] Speaker 01:
What I concede is with respect to one set of claims, one set of claims only, that's 50.

[00:19:41] Speaker 01:
57 to 62, 65, and 86.

[00:19:46] Speaker 01:
That's right.

[00:19:46] Speaker 01:
Not 86.

[00:19:47] Speaker 01:
Yes, 86.

[00:19:50] Speaker 01:
Not 86.

[00:19:51] Speaker 01:
Addressed previously.

[00:19:53] Speaker 01:
Regarding 86.

[00:19:56] Speaker 01:
OK, with respect to 86, I agree.

[00:19:58] Speaker 01:
OK.

[00:19:58] Speaker 01:
With respect to those claims only, the board did make a mistake by saying, for the reasons we stated above.

[00:20:06] Speaker 01:
But they do have a catch-all.

[00:20:08] Speaker 01:
And they do have a statement that says, look, to the extent that we don't explicitly say.

[00:20:10] Speaker 01:
Supposing the catch-all said, everything we said was right.

[00:20:13] Speaker 01:
No, what it says explicitly, what the board said explicitly was,

[00:20:21] Speaker 01:
uh... the uh... to the east to any extent that we can access the finance uh... action the conclusions of all of the terms which is lost ice boilerplate right you're out again i go back to the issue here that on these facts is it is it the mystery as to what the board and examiner actually relied upon and what their conclusions were i say no this is an opinion that is reviewable

[00:20:47] Speaker 00:
But so the question, is it a mystery?

[00:20:50] Speaker 00:
That's my big thing.

[00:20:51] Speaker 00:
Is it a mystery, or is the question really, how much time and effort would the Court of Appeals need to go through to ferret out the answer to that mystery?

[00:21:02] Speaker 01:
Well, again, Your Honor, I think that in this particular instance, there's a lot of burden on the council for going back and ferreting out what the board relied upon and then what the examiner relied upon, because there's two levels of incorporation, no doubt.

[00:21:17] Speaker 01:
But again, it is doable.

[00:21:19] Speaker 01:
Council did it in the briefs.

[00:21:21] Speaker 01:
And it is a matter of substitution of what was written in the requestor's comments into the right of appeal notice and then into the board's opinion.

[00:21:31] Speaker 01:
Is it optimal?

[00:21:32] Speaker 01:
Is it easy?

[00:21:33] Speaker 01:
Is it the easiest thing possible?

[00:21:35] Speaker 01:
No.

[00:21:37] Speaker 01:
But it is doable.

[00:21:38] Speaker 01:
And in this particular case, you shouldn't overturn the reason.

[00:21:41] Speaker 02:
I think the other question is, is it error?

[00:21:45] Speaker 02:
And when we have a board opinion, for example, that relies on the examiner analysis, and then the examiner says, quotes segments of expert testimony, and you look at them, and the expert there is stating legal opinions.

[00:22:05] Speaker 02:
That's another issue, whether those words actually have what type of effect they have.

[00:22:10] Speaker 02:
But when an examiner does not undertake a legal analysis and then cites to an expert report that does take a legal analysis, then I have a big problem with that.

[00:22:23] Speaker 02:
Because it's not an issue of my fair reading out and how much time I have to do the work.

[00:22:28] Speaker 02:
It's whether the board and the examiner got it right or wrong.

[00:22:31] Speaker 02:
And they need to state why.

[00:22:34] Speaker 02:
They reached the result they did in order for me to make that determination.

[00:22:39] Speaker 02:
I think there's a problem here.

[00:22:40] Speaker 01:
I understand your concern, Your Honor.

[00:22:42] Speaker 01:
Let me try to address that.

[00:22:43] Speaker 01:
First of all,

[00:22:44] Speaker 01:
When you look at the expert's declaration here, he did not render legal opinions.

[00:22:49] Speaker 01:
He said he gave factual analyses and opinions detail.

[00:22:53] Speaker 01:
This is not a case where you have a conclusory opinion and the expert just went down and listened.

[00:22:58] Speaker 02:
The other side of the page, this is 16 of the brief, but I like 15 better, where it says, it would have been novice to combine Jacob and Ruth.

[00:23:07] Speaker 02:
It would have been obvious to one ordinary skilled in the art to incorporate.

[00:23:11] Speaker 02:
It would have been obvious to configure, and these are all different statements.

[00:23:17] Speaker 02:
Now, if this case wasn't teed up the way it is, maybe I don't have a problem with that.

[00:23:21] Speaker 02:
But if the examiner doesn't undertake a legal analysis, and the board says, we adopt by incorporation the examiner's analysis, then there is no legal analysis.

[00:23:31] Speaker 01:
Well, with respect, Your Honor, no doubt,

[00:23:36] Speaker 01:
Mr. Capurta, the expert, rendered opinions that it would be obvious to make certain combinations.

[00:23:42] Speaker 01:
But that followed on the heels of detailed factual reasons and analyses as to why he believed that.

[00:23:49] Speaker 01:
And as Judge Wallace

[00:23:52] Speaker 01:
He's on the Ninth Circuit.

[00:23:53] Speaker 01:
I'm sorry, Judge Walley.

[00:23:55] Speaker 01:
You know, earlier asked, is that an opinion, a legal opinion?

[00:24:00] Speaker 01:
The answer is no.

[00:24:02] Speaker 01:
He gave a factual opinion.

[00:24:03] Speaker 01:
As a person of ordinary skill in the art, he gave an opinion that it would have been obvious to make these particular combinations.

[00:24:08] Speaker 01:
He did not say, I weighed all the factors, and I've come to a legal opinion on that.

[00:24:12] Speaker 01:
OK?

[00:24:13] Speaker 01:
We have to believe that the examiners and the board knows it's their job

[00:24:20] Speaker 01:
to come to the ultimate conclusion of obviousness as a legal principle, as it is this court's job to review that de novo.

[00:24:30] Speaker 02:
But we don't do that with hope.

[00:24:31] Speaker 02:
We do that by looking at the actual decision that they rendered.

[00:24:36] Speaker 01:
And I would submit, Your Honor, that on these facts, when you look at the decision that was rendered, if you do the incorporation, if you will, if you go through the effort,

[00:24:44] Speaker 01:
to take the board's opinion, incorporate what the examiner did, and in instances where the examiner relied upon the arguments of the requester, incorporate those and create and affect the document that the final opinions of obviousness are all supported by substantial facts.

[00:25:00] Speaker 01:
And we can go through them.

[00:25:03] Speaker 01:
They're submitted.

[00:25:04] Speaker 01:
They're supported by substantial evidence.

[00:25:07] Speaker 02:
You're seriously arguing that we're the ones that should decide, in the first instance, the obviousness.

[00:25:14] Speaker 01:
Oh, no, I'm not arguing that, Your Honor.

[00:25:16] Speaker 01:
But I'm arguing that the examiner found it to be obvious as a legal matter.

[00:25:20] Speaker 01:
The board affirmed that.

[00:25:21] Speaker 02:
But what is it that we should be constructing here?

[00:25:25] Speaker 02:
Why do you think it's up to us to go back and figure this out?

[00:25:29] Speaker 01:
No, I'm not saying that it's your job to decide obviousness in the first instance.

[00:25:33] Speaker 01:
I'm acknowledging the fact that there isn't the board opinion that goes through and copies.

[00:25:42] Speaker 01:
They didn't go through the effort.

[00:25:44] Speaker 01:
of copying the examiner's analysis, and where the examiner incorporated comments from the requester, their actual arguments into a single document that could be given to this court to review.

[00:25:56] Speaker 01:
That's unfortunate, but I don't think it's legal error.

[00:26:01] Speaker 01:
And I think that on these facts, it would be wrong to reverse it, because it is doable.

[00:26:05] Speaker 01:
You can review the opinion.

[00:26:07] Speaker 01:
You know what the examiner did, because he said, I relied upon these comments from these pages.

[00:26:13] Speaker 01:
and this portion of the evidence.

[00:26:15] Speaker 01:
And I could go through each one of these and demonstrate why these final conclusions of obviousness are supported by the record and supported by the evidence.

[00:26:28] Speaker 02:
Well, I appreciate that you could do it.

[00:26:31] Speaker 02:
And I'm sure that we could do it.

[00:26:33] Speaker 02:
But I believe this is a job of the PTAC to do.

[00:26:39] Speaker 01:
Your Honor, if I may.

[00:26:40] Speaker 01:
Was that an agreement?

[00:26:43] Speaker 01:
No, it's not an agreement.

[00:26:45] Speaker 01:
So I acknowledge your position on it.

[00:26:49] Speaker 01:
I don't believe that on these facts, Your Honors, that we should reverse because the board could have done the job of incorporating physically into a single opinion.

[00:27:00] Speaker 01:
Let me address some of the individual issues for a second.

[00:27:04] Speaker 01:
The issue of contacts in those claims

[00:27:09] Speaker 01:
claims 57 to 62 and 65 and 68.

[00:27:13] Speaker 01:
Just let's look at this for a second, what we're talking about.

[00:27:16] Speaker 01:
The teller reference is one that says you have a mobile device to monitor physical attributes of a person.

[00:27:24] Speaker 01:
And you can communicate that data to a computer.

[00:27:28] Speaker 01:
You can do it a couple of different ways.

[00:27:30] Speaker 01:
One is through an electrical connection through a USB port, which is obviously an electrical connection.

[00:27:35] Speaker 01:
Or you can, for convenience purposes, put that sensor into a cradle.

[00:27:40] Speaker 01:
And the cradle communicates to the computer by an electronic communication, an electronic connection.

[00:27:48] Speaker 01:
And the argument that we have here is that the connection between the sensor and the cradle wasn't explicitly disclosed in Teller to have contacts, electrical contacts.

[00:28:02] Speaker 01:
The sensor has to talk to the cradle somehow.

[00:28:05] Speaker 01:
Teller actually explicitly says that the sensor would be put into the cradle the way a conventional PDA or palm pilot at that time frame would have done.

[00:28:15] Speaker 01:
And those palm pilots and PDAs have electrical contacts.

[00:28:17] Speaker 01:
They have to communicate.

[00:28:19] Speaker 01:
It's common sense.

[00:28:20] Speaker 01:
And that common sense is supported by the Declaration of Cropurdon, who says PDAs communicated by electrical contacts.

[00:28:29] Speaker 01:
I mean, that's the level of what we're talking about here, and it's supported by the record.

[00:28:33] Speaker 01:
There's no question that something like that is obvious.

[00:28:39] Speaker 01:
Going on to the next one, for example, day 86.

[00:28:45] Speaker 01:
The only thing that's different about 86 is that what we just discussed is that the cradle is to receive communications from the sensor by infrared, another known mechanism for communicating data.

[00:28:59] Speaker 01:
Well, the references, the Root and the Teller reference together already said, look, Root said you got a sensor, a mobile sensor, it can communicate with a computer, either electrical connection direct or by IR.

[00:29:12] Speaker 01:
Teller said, for convenience purposes, you can put a cradle in between.

[00:29:15] Speaker 01:
So you put the sensor in the cradle, and the cradle talks to the computer.

[00:29:18] Speaker 01:
And remember, Teller says the cradle talks to the computer either by electrical connection or by IR.

[00:29:25] Speaker 01:
The sensor has to talk to the cradle.

[00:29:29] Speaker 01:
And it does so in any number of conventional ways, electrical, IR.

[00:29:34] Speaker 01:
And the record was replete with ways in which electrical connections and IR are interchangeable.

[00:29:43] Speaker 01:
So the substantial evidence in this case.

[00:29:46] Speaker 00:
You're out of time.

[00:29:48] Speaker 01:
Thank you.

[00:29:57] Speaker 03:
But as you argued, your hands were an appropriate distance apart, so maybe biosafe applies to them.

[00:30:05] Speaker 04:
By way of clarification, the teller reference does not mention or disclose in any way, shape, or form IR.

[00:30:13] Speaker 04:
That was a completely false statement.

[00:30:16] Speaker 04:
You can look at the teller reference in vain and strain, and you will never find that disclosure as it was represented to you.

[00:30:24] Speaker 00:
There are a lot of different claims here.

[00:30:26] Speaker 00:
Even if we agreed with you that it's hard to overcome the total absence of discussion as it relates to 57 to 62, 65, and 86, there are a lot of other claims.

[00:30:39] Speaker 00:
Should we go through and see which ones we can really ferret an analysis from?

[00:30:46] Speaker 00:
For instance, claims 98 to 100.

[00:30:51] Speaker 04:
No, Your Honor, for two important reasons.

[00:30:54] Speaker 04:
First, with respect to Judge Reyna's observation, that is not your role.

[00:31:03] Speaker 04:
This Court has been very clear in its pronouncements that necessary findings must be expressed, and I quote, with sufficient particularity to enable this Court, without resort to speculation, to understand the reasoning of the Board and determine whether

[00:31:20] Speaker 04:
It applied the law correctly and whether the evidence supported the underlying and ultimate factual findings.

[00:31:26] Speaker 03:
Well, it claims 43 and 71.

[00:31:28] Speaker 03:
Yes.

[00:31:28] Speaker 03:
The PTAB determined that the relevant disclosure of the 800 patent discusses remote displays only and equates virtual reality displays to cathode tubers, displays I'm inserting there, in a similar matter as Poulton.

[00:31:46] Speaker 03:
On appeal,

[00:31:48] Speaker 03:
ICON doesn't address where the 800 patent teaches a remote display, nor presents any evidence supporting its assertions that the non-portable system in Poulton could not inform a procedure about which display to incorporate.

[00:32:04] Speaker 03:
That's insufficient to overturn the PTABS finding.

[00:32:07] Speaker 04:
Actually, the arguments are sufficient to overturn it for three important reasons, Your Honor.

[00:32:12] Speaker 04:
With respect to Poulton, we showed that Poulton certainly did.

[00:32:15] Speaker 04:
teach away and it taught away for the reason that you can't incorporate this large array into a portable, hand-held and integral system.

[00:32:25] Speaker 04:
You can't put a cockpit-like display of CRTs on your hand, have it be hand-held and be integrated.

[00:32:32] Speaker 04:
It won't work.

[00:32:33] Speaker 04:
That would violate the standard and demonstrates that that certainly teaches away, shouldn't be incorporated.

[00:32:39] Speaker 04:
Beyond that,

[00:32:41] Speaker 04:
To get to that point, Your Honor, where they said that the virtual reality display could be only this CRT, that was a tortured and improper analysis that would require you to improperly incorporate limitations from the specification into the claim, number one, and also would have to ignore the disclosures of figures 21 and 22.

[00:33:08] Speaker 04:
that clearly show that that virtual reality display is indeed integrated handheld portable.

[00:33:14] Speaker 04:
So for those reasons, their argument fails.

[00:33:17] Speaker 04:
I see that my time has expired.

[00:33:23] Speaker 04:
May I have leave to conclude?

[00:33:25] Speaker 04:
Yes.

[00:33:26] Speaker 04:
Thank you, Your Honor.

[00:33:27] Speaker 04:
In this case, as you observe carefully what has happened, you look at the examiner's findings.

[00:33:36] Speaker 04:
and their incorporation of reference, they incorporated just simply pages at a time.

[00:33:41] Speaker 04:
You have nothing but speculation to help you guess what happened at that level.

[00:33:47] Speaker 04:
That speculative and lack of any specific particularity required for review was simply incorporated by reference at the next level.

[00:33:58] Speaker 04:
As to these claims,

[00:33:59] Speaker 04:
reversal is appropriate, not only for the reason that there was no sufficient decision, but also on the basis of the actual audit.

[00:34:08] Speaker 00:
Thank you.

[00:34:08] Speaker 00:
That was a long conclusion.

[00:34:09] Speaker 01:
Thank you, Your Honor.

[00:34:13] Speaker 01:
Could I just, I indicated that I made a false statement on the record.

[00:34:17] Speaker 01:
I'd like to just give you the citation to contradict that assertion against me.

[00:34:21] Speaker 01:
Is that possible?

[00:34:21] Speaker 01:
That's fine.

[00:34:23] Speaker 01:
The reference in Teller that talks about infrared is that

[00:34:29] Speaker 01:
A 1079, column 8, lines 31 to 47.

[00:34:35] Speaker 01:
And I quote, the data collected by sensor device 10 may be uploaded by first transferring the data to personal computer 35 by means of short-range wireless transmission, comma, such as infrared or radio.

[00:34:46] Speaker 01:
OK, we can look at the citation.

[00:34:48] Speaker 01:
Yeah, infrared or radio.

[00:34:49] Speaker 01:
OK.

[00:34:49] Speaker 02:
Counselor, I appreciate the correction.

[00:34:52] Speaker 02:
You shouldn't feel that you made a false statement, maybe an incorrect one, not false.

[00:34:57] Speaker 01:
Thank you.

[00:35:01] Speaker 00:
Okay, thank you.