[00:00:03] Speaker 01: Our first case today is 2016-2416, Inray Intellectual Ventures. [00:00:11] Speaker 01: Mr. Petrie, please proceed. [00:00:17] Speaker 02: Thank you. [00:00:17] Speaker 02: Good morning, Your Honors. [00:00:18] Speaker 02: May it please the Court? [00:00:19] Speaker 02: I'd like to focus on what I think is the clearest error by the Board, and that is that there is no substantial evidence to support a finding of a motivation to combine Kobayashi and Obradovich. [00:00:31] Speaker 02: The Board's decision does not cite any evidence to support such a finding, and the evidence that is of record, specifically the teaching of Kobayashi itself, directly contradicts any finding of a motivation to combine. [00:00:46] Speaker 02: If the Court agrees with us on this point, the Board's decision should be reversed, and the Court need not reach the other issues that we raise in the appeal, including whether Kobayashi teaches away from the combination with Obradovich. [00:00:59] Speaker 02: I think the issues regarding the motivations combined are straightforward. [00:01:04] Speaker 02: Claim 1 requires a detachable handset unit that has circuits including at least a video interface, a communication interface, and a data input interface. [00:01:15] Speaker 02: The examiner and the board here are relying on Kobayashi's personal processor module, or the PPM, as meeting this detachable handset unit limitation. [00:01:26] Speaker 02: However, both the examiner and the board concede that Kobayashi's PPM does not have the interfaces that are required by claim one. [00:01:35] Speaker 02: So the obvious rejection here is to modify Kobayashi's PPM to include the interfaces that are shown in Obradovich. [00:01:46] Speaker 02: And the critical issue on this appeal is would one of ordinary skill in the arc have been motivated to add interfaces from Obradovich [00:01:55] Speaker 02: to the PPM of Kobayashi. [00:01:58] Speaker 02: Now, there are three paragraphs in the board's decision where it identifies what it characterizes as additional functionalities that Kobayashi's PPM would have if these interfaces were incorporated into it from Obradovich. [00:02:12] Speaker 02: And I'd like to focus on each one of those paragraphs because none of the findings in those paragraphs are supported by substantial evidence. [00:02:21] Speaker 02: So first, on Appendix Page 8 in the middle of the page, [00:02:24] Speaker 02: The paragraph in the middle, the board states that adding IO interface components to Kobayashi's processing unit, as taught for example by Obradovich, merely allows Kobayashi's system to be independently operable in addition to being used with each docking station. [00:02:43] Speaker 02: Now as you see, the board doesn't cite any evidence to support that finding that Kobayashi would be independently operable. [00:02:51] Speaker 02: And in fact, the evidence that is of record, namely the teachings in Kobayashi itself, directly contradict the statement by the board. [00:03:00] Speaker 02: Now, Kobayashi's PPM is adapted so that a user can carry it around and connect it to one docking station or another docking station in different computer configurations. [00:03:11] Speaker 02: And because it's supposed to be easily portable, it includes the minimum number of components in this PPM that make it personalized for the user. [00:03:21] Speaker 02: specifically processor and logic, memory and mass storage that would have the user software on it. [00:03:29] Speaker 02: And all the rest of the components that make the computer system functional are located in the docking station. [00:03:38] Speaker 02: And I think this is the critical disclosure that shows why there would not be a motivation to combine or motivation to add these interfaces to Kobayashi's PPM. [00:03:49] Speaker 02: So apart from [00:03:51] Speaker 02: the processor and logic and the memory and mass storage, everything else is in the computer system, including the power supply for the system. [00:04:00] Speaker 02: Kobayashi repeatedly explains this. [00:04:03] Speaker 02: Column 6, lines 27 to 29, the PPM expressly does not include a power supply sufficient to support normal operation of the processor and other logic. [00:04:14] Speaker 02: Kobayashi, column 5, lines 64 to 66, he describes that the docking station [00:04:19] Speaker 02: includes a power supply that powers the entire system, both the docking station and the PPM. [00:04:26] Speaker 02: And then finally, I think it's the clearest example, column six, lines 36 to 38, the PPM-2 does not contain a power supply for the system, nor human interface units, and therefore always needs a docking station to work with. [00:04:43] Speaker 02: So all those teachings in Kobayashi just show that it always needs a docking station to work with directly contradict [00:04:50] Speaker 02: the board's finding that somehow adding these interfaces to Kobayashi's system would make it independently operable. [00:04:59] Speaker 02: Kobayashi's PPM doesn't work unless it's connected to a docking station. [00:05:04] Speaker 02: So the board was simply wrong in saying that it could be independently operable. [00:05:09] Speaker 02: The next paragraph on page 8, at the bottom of page 8 of the appendix, the board talks about additional functionalities that are in abroad of it. [00:05:20] Speaker 02: And on the top of Appendix Page 9, the board suggests that if the interfaces were included from Obradovich to the Kobayashi PPM, the Kobayashi PPM would also have these additional functionalities of Obradovich. [00:05:36] Speaker 02: But again, the board doesn't cite any evidence to support its conclusion that the PPM itself would have these functionalities just because the interface was added to it. [00:05:47] Speaker 02: And as I already mentioned, Kobayashi already describes how the PPM cannot function or does not work unless it's connected to a document station. [00:06:01] Speaker 02: And so regardless of whether there's any additional interfaces that are added from Obradovich, Kobayashi's PPM wouldn't have the additional functionality of Obradovich. [00:06:12] Speaker 02: And then since also [00:06:14] Speaker 02: The docking station already has all the rest of the components of the system. [00:06:18] Speaker 02: There could be no motivation to add the interfaces to the PPM. [00:06:23] Speaker 02: And then finally, on appendix page nine, the board includes kind of a summary paragraph where it repeats these additional functionalities, independently operable, detachable handset unit, more robust portability as taught by Obradovich. [00:06:42] Speaker 02: And here again, [00:06:44] Speaker 02: The board doesn't cite any evidence to support those findings. [00:06:48] Speaker 02: And the board also, and as I mentioned before, they're also specifically contradicted by the teachings of Kobayashi. [00:06:59] Speaker 02: And then the board does also refer, at the bottom of this paragraph on page 9, to some of the examiner's findings, where it would achieve cellular communication capability and more robust portability. [00:07:12] Speaker 02: But as I already mentioned, Kobayashi is clear that his PPM doesn't function unless it's connected to a docking station. [00:07:19] Speaker 02: Therefore, there is no evidence to support that this putting the interfaces in the PPM would give it cellular communication capability or more robust portability. [00:07:31] Speaker 01: I don't understand. [00:07:33] Speaker 01: Kobayashi doesn't say it doesn't function unless it's attached to the docking station. [00:07:37] Speaker 01: My recollection is it says normally [00:07:40] Speaker 01: the power source is in the docking station. [00:07:43] Speaker 01: Implicit in that is that it doesn't have to be. [00:07:45] Speaker 01: And are you suggesting to me that a skilled artisan at this particular point in time would not know how to power a handset absent the docking station? [00:07:53] Speaker 01: Clearly, Obradovich does that. [00:07:57] Speaker 01: So I guess I'm wondering, are you just making a technical argument that Kobayashi does not itself disclose power in the handset and therefore nobody would put any of the processing there? [00:08:08] Speaker 02: A couple of points on that. [00:08:10] Speaker 02: First, there is an express disclosure in Kobayashi, and this is at Column 6, Lines 36 to 38. [00:08:16] Speaker 01: In the preferred embodiment, yeah, go ahead. [00:08:20] Speaker 02: That the PPM does not contain a power supply for the system nor human interface units, and therefore always needs a docking station to work with. [00:08:31] Speaker 02: So that's not just reciting a [00:08:34] Speaker 02: preferred embodiment that sometimes it might need a docking station and sometimes it doesn't. [00:08:38] Speaker 02: He says it always needs a docking station to work with. [00:08:41] Speaker 02: And in fact, in his specification, he specifically distinguishes from prior ARC devices that had power in them. [00:08:51] Speaker 02: And he called them the brick or the Mobi brick. [00:08:54] Speaker 02: And he said that those were too big to carry around with you and they'd be no better than just having a notebook computer. [00:08:59] Speaker 02: And so he avoided having the power supply in his system [00:09:03] Speaker 02: in order to have this small compact unit that could be moved from docking station to docking station that had the minimum number of components in order for it to have personal processing capabilities. [00:09:17] Speaker 02: Now, in the solicitor's brief, they do make the argument that, oh, well, they kind of allege that we didn't show that it was beyond the skill of someone's skill in the art to, ordinary skill in the art, to incorporate a power supply into Kobayashi's PPM. [00:09:32] Speaker 02: But that's flipping the burden proof here. [00:09:34] Speaker 02: It's not our burden to show that if someone could have done it. [00:09:38] Speaker 02: It's the office's burden to show that. [00:09:40] Speaker 01: Doesn't Obradovich have a power supply in the portable device? [00:09:45] Speaker 02: Yes. [00:09:46] Speaker 01: So there are two references that amount to the combination. [00:09:49] Speaker 01: I don't know. [00:09:50] Speaker 01: Does the office have to show that one of them has it if the other one does? [00:09:53] Speaker 02: I think the critical thing here is would it have been obvious to want to scale in the art to incorporate a power supply into Kobayashi's PPM? [00:10:02] Speaker 01: The fact that there was all these other devices out there that had... Yeah, but I think that the problem I'm having is your argument that somebody had to prove that One of Skill and the Art would know how to put a power supply in a processor is defied by... It doesn't seem to me that is a basis that anybody held anything in this case because one of the two references used in the obviousness rejection has it. [00:10:24] Speaker 01: So clearly, One of Skill and the Art knew how to do that. [00:10:26] Speaker 01: It's disclosed in one of the references. [00:10:29] Speaker 02: The key thing to keep in mind is the claim that we're talking about here has this detachable handset unit and it's adapted to be attached to this portable docking display unit. [00:10:41] Speaker 02: So the closest that the office came up with was this Kobayashi system with this PPM and the docking station. [00:10:50] Speaker 02: So that's the context of what we're looking at is would it have been obvious in Kobayashi system to put a power supply into this PPM [00:10:59] Speaker 02: And then Kobayashi says no. [00:11:01] Speaker 02: He says it always needs a docking station to work with. [00:11:04] Speaker 02: And he specifically distinguished those devices that were out there that had power supplies in them, saying they were the brick or the Mobi brick, and I don't want to do that. [00:11:13] Speaker 02: I want to keep the components in this PPM to the minimum to allow for personal processing capabilities. [00:11:21] Speaker 02: And adding power supply, adding these additional features, that's not what Kobayashi says to do. [00:11:29] Speaker 02: It really, it doesn't, I would submit it doesn't matter that there were these prior art devices that had power supplies because they weren't being used in a system like Kobayashi's. [00:11:41] Speaker 01: Okay. [00:11:41] Speaker 01: Would you like to save the remainder of your time for the bottle? [00:11:43] Speaker 02: Yes, your honor. [00:11:44] Speaker 01: Let's hear from the government. [00:11:53] Speaker 00: May it please the court. [00:11:59] Speaker 00: Claim 1 of the 462 patent simply takes, it doesn't claim to have invented the handset, the portable handset, interface devices, or a docking station. [00:12:10] Speaker 00: It's simply taking the known elements and using them in their known function for their known purpose. [00:12:16] Speaker 00: It's just rearranging the deck chairs. [00:12:18] Speaker 00: I mean, if you look at Kobayashi, if you look at Okudoguchi, if you look at the prior art to Kobayashi, all of them are talking about portable devices with interfaces, keyboards, screens, [00:12:29] Speaker 00: They're talking about docking stations that you can then connect those devices with to make them more usable, maybe a bigger screen, bigger keyboard, whatever it is. [00:12:37] Speaker 00: This is really about design choices. [00:12:39] Speaker 00: Kobayashi recognizes that all the prior devices, they have these input-output devices. [00:12:44] Speaker 00: It makes them more user-friendly, but perhaps, in his view, a little bit bulky to be portable. [00:12:49] Speaker 00: And remember, Kobayashi is 1993. [00:12:51] Speaker 00: So he says, I'm going to discard some functionality, [00:12:55] Speaker 00: in favor of portability. [00:12:57] Speaker 00: So he takes those input, output devices, screens, keyboards. [00:13:00] Speaker 00: He puts them on his docking station to make his portable device more portable. [00:13:04] Speaker 00: But Oberdovich is doing the exact opposite. [00:13:06] Speaker 00: Oberdovich is favoring functionality over portability, perhaps by saying, I want my portable handset device to have these screens, to have these keyboards, because you can do more with it. [00:13:16] Speaker 00: Give it cellular capability. [00:13:17] Speaker 00: Give the users what they want. [00:13:19] Speaker 00: They want access to up-to-date information. [00:13:21] Speaker 00: So this is just [00:13:23] Speaker 00: artisans taking what's already out there and rearranging it in the way that suits their particular direction. [00:13:29] Speaker 00: So, and this is exactly what the examiner and the board explained when they explained why one of ordinary skill in the art would have combined the teachings of Kobayashi and Obradovich. [00:13:37] Speaker 00: The increased functionality that comes almost inherently from having screens and keyboards on Obradovich, you put them on Kobayashi, you have a more user-friendly device. [00:13:47] Speaker 00: If the board specifically decided to [00:13:50] Speaker 00: Oberdovich at appendix page 443, column 2, lines 53, 56, where Oberdovich teaches that his personal device has interfaces that combine the capabilities of a GPS receiver, a cell phone, all of these things into one device. [00:14:04] Speaker 00: So many more things for the user to use because it has these capabilities. [00:14:08] Speaker 00: Secondly, they pointed to Oberdovich at page 443, column 1, line 13 to 18. [00:14:13] Speaker 00: Users desire the up-to-date information access that the cellular capabilities give them. [00:14:19] Speaker 00: That's why a one-of-ordinary skill in the art would have taken those interfaces and put them on Kobayashi's device. [00:14:24] Speaker 01: But the board didn't cite that. [00:14:26] Speaker 00: They did, Your Honor. [00:14:27] Speaker 01: Where? [00:14:27] Speaker 01: Where did the board explain that users prefer that, and that's why they would have done it? [00:14:34] Speaker 00: So at appendix pages eight to nine, the board is making the findings that underlie its conclusion on page nine about why a one-of-ordinary skill in the art would have had the motivation to combine the teachings of Kobayashi over and over again. [00:14:46] Speaker 00: Starting at the first whole paragraph on the page, [00:14:48] Speaker 00: Appendix Page 8. [00:14:50] Speaker 00: The board makes sort of an initial finding that says, look, Kobayashi's focus on making the portable device more portable isn't focusing on the separation of devices. [00:15:00] Speaker 00: It's focusing on keeping them all on one device. [00:15:06] Speaker 00: And so moving into the next paragraph, the board says, Kobayashi expressly teaches the desirability of a flexible system that can be used with different types of docking stations. [00:15:15] Speaker 00: Moving on to Oberdovich says that this is the bottom of Appendix Page 8. [00:15:20] Speaker 00: Oberdovich, this is a quote, Oberdovich teaches a processing unit including I.O. [00:15:25] Speaker 00: interface components that provides additional functionality, such as one that combines the capabilities of a cell phone and a GPS receiver. [00:15:33] Speaker 00: Exciting the language from Oberdovich. [00:15:35] Speaker 01: I'm sorry, I can't actually follow where you are. [00:15:36] Speaker 01: You said you're in the bottom of Appendix Page 8 and the sentence began, Oberdovich teaches? [00:15:41] Speaker 01: I can't find that. [00:15:42] Speaker 00: For example, Oberdovich teaches a processing unit. [00:15:45] Speaker 00: And then at the end of the cited sites, the answer is page 36. [00:15:48] Speaker 00: In Oberdovich, at column 2, lies 53 to 56, which is where I just directed the court. [00:15:53] Speaker 00: That's appendix page 443. [00:15:55] Speaker 00: Then in the next sentence, the board quotes from Oberdovich's, says, Oberdovich further notes that, quote, people want to be well-informed, end quote, and that, quote, availability of up-to-date information is more important today than ever, end quote, citing column 1 in Oberdovich, which was the second site that I provided to you. [00:16:15] Speaker 00: Moving into the next paragraph on appendix page 8, given these teachings, quote, of Kobayashi and Oberdovich, it would have been readily apparent to the skilled arson at the time to modify Kobayashi to add the interfaces of Oberdovich. [00:16:28] Speaker 00: That is the board's motivational findings in its conclusion. [00:16:31] Speaker 00: It's supported by the references themselves. [00:16:35] Speaker 00: So the additional finding that the board made about independent operability, and we addressed this in our brief at pages 16 to 18, [00:16:42] Speaker 00: As an initial matter, this focus on a battery is actually not a claim element of claim law. [00:16:49] Speaker 00: Second, the point we made in our brief that there's no evidence that it wouldn't have been beyond the ordinary skilled artisan's ability to take the already known batteries and devices like Oberdovich and put them in Kobayashi if they wanted was simply the observation that if you're moving the interfaces and you need a battery to use them, it seems almost as a matter of practicality that they would have put the battery in there as well. [00:17:11] Speaker 00: And on the teaching away point, [00:17:13] Speaker 00: The teaching away law requires something more than a preference for a particular orientation. [00:17:19] Speaker 00: And particularly in an art like this, as the references teach, this is a pretty crowded field. [00:17:23] Speaker 00: Kobayashi's, the prior author Kobayashi, Kobayashi and Rodovich, they're all moving around three or four different themes to suit their particular orientation and design needs. [00:17:34] Speaker 00: So there's no reason to think that Kobayashi's preference for moving the devices off the handset to the paddocking station [00:17:41] Speaker 00: would have dissuaded an arson from doing what Oberdovich is doing, which is putting the devices on the handset. [00:17:46] Speaker 00: So if there are no further questions from the court, I'll yield the remaining time. [00:18:10] Speaker 02: So just a couple of points regarding Kobayashi. [00:18:13] Speaker 02: I think it's important to keep in mind that when looking for a motivation to combine, I believe you have to consider what the teachings of Kobayashi actually are. [00:18:22] Speaker 02: And Kobayashi says the PPM does not contain a power supply for the system, nor human interface units, and therefore always needs a docking station to work with. [00:18:33] Speaker 02: And so that directly contradicts all of the board's findings about all these additional functionalities that might be there [00:18:39] Speaker 02: And that might have existed in Obradovich and all these other devices. [00:18:43] Speaker 02: Kobayashi is saying, I don't have those in my unit. [00:18:46] Speaker 02: I always need a docking station to work with. [00:18:49] Speaker 02: And that ties right into the teaching away point. [00:18:52] Speaker 02: His goal is to make this easily portable. [00:18:55] Speaker 02: And he does that by minimizing the number of components that are on this PPM. [00:18:59] Speaker 02: And he limits it to just the bare minimum of a processor and logic storage and memory and mass storage. [00:19:07] Speaker 02: And that gives this PPM the personal processing capability. [00:19:11] Speaker 01: So I guess here's the problem. [00:19:13] Speaker 01: Kobayashi is 95 reference. [00:19:15] Speaker 01: It came out in 1995. [00:19:18] Speaker 01: And it's true that he expresses a preference and or a distaste. [00:19:25] Speaker 01: Either way, you could frame it for the idea of having the battery in the handset, because the batteries were really big and bulky and would have caused the device to be much larger. [00:19:35] Speaker 01: But as you move forward in time, [00:19:37] Speaker 01: to the time of Oberdovich, which is 2000, at this point, everything's getting smaller. [00:19:44] Speaker 01: I mean, every year, things shrink, right, in the electronics industry. [00:19:48] Speaker 01: So as you're moving forward, if it is the case that people overcame the big battery problem and figured out how to make small little batteries that could be, therefore, more portable, why should I read Kobayashi and its docking station technology as not being receptive to that [00:20:07] Speaker 01: so long as the new system didn't create the problem of it's going to be so large, it's going to be like hauling a laptop around. [00:20:13] Speaker 01: Do you understand? [00:20:14] Speaker 01: That was his concern. [00:20:15] Speaker 01: His concern was batteries are too big. [00:20:18] Speaker 01: And if I put the power in the handset, it's going to be way too big. [00:20:22] Speaker 01: But as you move forward in time and things shrink and get smaller, maybe the new technology allows for the utilization of a stocking station, but with smaller, more compact portable devices, even though they have a battery. [00:20:35] Speaker 01: Why is it not okay to use a reference in that way? [00:20:39] Speaker 01: It's almost like you think because the reference stuck in time in 1995 teaches away for one reason, even if later references can overcome that reason, you can't use it. [00:20:49] Speaker 02: Well, there's a couple of, I have a couple of responses to that. [00:20:52] Speaker 02: First, there's no evidence. [00:20:53] Speaker 01: And I'm going to give you the lecture times. [00:20:54] Speaker 01: I took way too long to get that question out. [00:20:56] Speaker 02: I was almost wrapped up in it myself. [00:20:59] Speaker 02: A couple of responses. [00:21:00] Speaker 02: There's no evidence in the record that it would have been obvious or within the abilities of someone skilled in the art to have a power supply on the Kobayashi PPM at the time of the invention that would make Kobayashi's docking station operable. [00:21:15] Speaker 02: I mean, there's no evidence that Obradovich has the technology or the power supply that would make Kobayashi's docking stations operable. [00:21:25] Speaker 02: So there's simply no evidence on that point. [00:21:27] Speaker 01: Well, you're assuming a single [00:21:29] Speaker 01: power supply. [00:21:30] Speaker 01: Why can't there be a power supply in the docking station and a power supply in the PPM? [00:21:34] Speaker 01: So the PPM can act independently and the docking station has a source of power. [00:21:39] Speaker 02: I think, again, that what Kobayashi itself teaches away from doing that because he says there is no power supply on it. [00:21:47] Speaker 02: And I think this is a new ground of rejection, if you will, that we're not just putting [00:21:53] Speaker 02: Obradovich interfaces on here, we're now going to add a power supply in order to power up those interfaces. [00:21:59] Speaker 02: And that wasn't a finding by the board. [00:22:01] Speaker 02: And that was never alleged by in the solicitor. [00:22:04] Speaker 02: I'm sorry, neither the board nor the examiner made that argument. [00:22:07] Speaker 01: OK, thank you, Mr. Petrie. [00:22:08] Speaker 01: I think we have your argument. [00:22:10] Speaker 01: I thank both counsel. [00:22:10] Speaker 01: The case is taken under submission.