[00:00:00] Speaker 01:
is 161374, IPR Licensing versus ETE.

[00:00:05] Speaker 01:
Mr. Bell.

[00:00:17] Speaker 04:
Chief Judge Rost, you may please the Court.

[00:00:19] Speaker 04:
The Court made three errors in this case.

[00:00:22] Speaker 04:
First, in its claim instruction, it failed to place the claims in context.

[00:00:28] Speaker 04:
Specification makes clear that the device that's sending data, and here that's the subscriber unit, must be able to select the channels it uses to send that data.

[00:00:38] Speaker 00:
Mr. Bell, you're here representing the owner of a patent, appealing from a proceeding in the Patent Office.

[00:00:47] Speaker 00:
I assume you're familiar with patent practice?

[00:00:51] Speaker 00:
Yes.

[00:00:54] Speaker 00:
There are ten columns of

[00:00:57] Speaker 00:
references cited here.

[00:00:59] Speaker 00:
Hundreds of references.

[00:01:01] Speaker 00:
Do you know why they were cited?

[00:01:05] Speaker 00:
I do not.

[00:01:06] Speaker 00:
But you're familiar with patent practice, why a reference is cited by an applicant to comply with the duty of disclosure.

[00:01:17] Speaker 00:
Do you think it complies with the duty of disclosure to bury the only

[00:01:23] Speaker 00:
reference that's cited in hundreds of other references?

[00:01:32] Speaker 00:
We're dealing with an obviousness issue.

[00:01:36] Speaker 00:
How can you be arguing that the claimed dimension is unobvious when there are hundreds of cited relevant prior art references cited by the applicant?

[00:01:50] Speaker 00:
How can the invention be unobvious?

[00:01:53] Speaker 04:
I think the procedure set up by Congress through the PTAP allows challengers to bring forth the most relevant pieces of prior art.

[00:02:01] Speaker 04:
And in this case, they brought forth the Juanda reference and the GPRS reference.

[00:02:08] Speaker 04:
And through that procedure, it allows the board and this court to narrow what pieces of prior art we should be focusing on.

[00:02:18] Speaker 04:
And so I think that's what happened in this case, and it was inappropriate.

[00:02:23] Speaker 04:
procedural mechanism to do that.

[00:02:24] Speaker 00:
In other words, what happened earlier, you don't think that was a violation of the duty of disclosure to file hundreds of references reporting to help the examiner?

[00:02:38] Speaker 04:
I do not.

[00:02:38] Speaker 04:
When it's available to petitioners to bring multiple actions to the challenge, that's obvious.

[00:02:44] Speaker 04:
And ultimately, they were successful here.

[00:02:46] Speaker 04:
So there is something in the procedure that allows for that.

[00:02:51] Speaker 04:
complied with the duty of disclosure in this case.

[00:02:54] Speaker 04:
They could have disclosed less, perhaps, but I think in this case it was appropriate.

[00:02:59] Speaker 00:
All right, go ahead.

[00:03:00] Speaker 04:
Thank you, Your Honor.

[00:03:03] Speaker 04:
So the specification of the 244 patent describes this ability to select channels in sending data as an important feature of the present invention.

[00:03:13] Speaker 04:
And there, in fact, are no contrary volumes.

[00:03:17] Speaker 04:
The district court in the parallel litigation

[00:03:19] Speaker 02:
Where's the language of important feature of the present invention?

[00:03:24] Speaker 04:
Certainly.

[00:03:25] Speaker 04:
It's at A49, column 4, lines 23 to 25.

[00:03:32] Speaker 04:
And in that place, it talks about it's important that the device sending data be able to allocate channels, quote, only when needed.

[00:03:45] Speaker 02:
Isn't all of that under the

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the second paragraph that begins within one preferred embodiment?

[00:03:54] Speaker 04:
It is, but it is reflective of key features throughout the patent.

[00:03:59] Speaker 04:
For example, it's mentioned again on A52, column 10, line 49, where it says, the device sending data must be able to send it only when there is actual data presented.

[00:04:14] Speaker 04:
In other words, the device has some measure of control over

[00:04:19] Speaker 04:
when to use the channels, what channels to use, how many, and so forth.

[00:04:23] Speaker 04:
It's a key feature of this invention to increase efficiency.

[00:04:28] Speaker 04:
So instead of having the bandwidth all to itself, it will know that it can allocate.

[00:04:35] Speaker 04:
For example, it will also know.

[00:04:37] Speaker 02:
And allocation is not in the claim language, the claim one claim language, at least.

[00:04:43] Speaker 04:
Correct, Your Honor.

[00:04:44] Speaker 04:
So in this case, the claim language

[00:04:47] Speaker 04:
talks about the assigned physical channels.

[00:04:49] Speaker 04:
The claim language says that it is a subscriber unit that uses these assigned physical channels to communicate with the network.

[00:04:57] Speaker 04:
So that's what the claim language provides.

[00:04:59] Speaker 04:
What the parties have agreed is undisputed in this case, and actually proposed by the petitioner, was that this communication involves two steps.

[00:05:08] Speaker 04:
First, an initial assignment by the network of the available channels to the subscriber unit.

[00:05:15] Speaker 04:
And then there's no dispute on that.

[00:05:18] Speaker 04:
A station, something other than the subscriber unit, can and does do that.

[00:05:22] Speaker 04:
On the second step, the subscriber unit allocates those.

[00:05:27] Speaker 04:
And it's on this step that parties have a dispute.

[00:05:31] Speaker 02:
But that's not an actual claim step.

[00:05:34] Speaker 04:
It is not a claim.

[00:05:36] Speaker 02:
Except in claim 15, which you don't argue separately, right?

[00:05:40] Speaker 04:
Correct.

[00:05:41] Speaker 04:
On claim 15, Your Honor, we would submit that

[00:05:44] Speaker 04:
The difference there is not that it adds the allocation and deallocation, but that it specifies what part of the subscriber unit components are going to do that particular feature.

[00:05:55] Speaker 04:
And it says the processor is further configured to allocate and deallocate.

[00:06:00] Speaker 04:
And of course, in the claim language, there are multiple components, one of which is a transceiver, which actually sends the data out.

[00:06:07] Speaker 04:
Another one is a processor that can do different things.

[00:06:09] Speaker 04:
You could conceive of

[00:06:11] Speaker 04:
the functions of allocating and deallocating as being done by the transceiver.

[00:06:15] Speaker 02:
In the various specification passages that you rely on, does something other than the processor and the actual brains of the subscriber unit do the allocating?

[00:06:26] Speaker 04:
I don't think it specifies that, but what it does specify in column six of the patent, excuse me, column nine of the patent, is that the various components

[00:06:41] Speaker 04:
can be arranged in different ways.

[00:06:43] Speaker 04:
So the invention is largely indifferent to how the components within the subscriber unit are arranged.

[00:06:49] Speaker 04:
For example, the protocol converter.

[00:06:51] Speaker 04:
And that's one of the key components that I'd like to talk about.

[00:06:54] Speaker 04:
It says it can be a separate component.

[00:06:57] Speaker 04:
It can be integrated fully with the subscriber unit.

[00:06:59] Speaker 01:
Are you at line 50 or 52?

[00:07:01] Speaker 01:
Where are you on column 9?

[00:07:05] Speaker 04:
About halfway down, starting with figure 6, shows a terminal.

[00:07:09] Speaker 04:
And then the discussion following that puts forth various iterations of how the components can be described.

[00:07:15] Speaker 04:
But look, the common theme is throughout, all of the discussions throughout the patent that talk about, explain how the sending data is done, they all have a common feature, and that's the protocol converter, which in turn has a bandwidth management function.

[00:07:32] Speaker 04:
That is consistent throughout.

[00:07:33] Speaker 04:
Whenever there is present invention language, that is there.

[00:07:37] Speaker 04:
In all of the figures,

[00:07:39] Speaker 02:
that depict sending data, there is a protocol converter ultimately.

[00:07:44] Speaker 02:
And when you refer to present invention language, there are radically different kinds of present invention language.

[00:07:54] Speaker 02:
One feature covered by the present invention or

[00:08:01] Speaker 02:
at another extreme.

[00:08:02] Speaker 02:
The present invention requires that the words present invention all by themselves don't tell you whether this is a necessary part of everything covered by the invention.

[00:08:13] Speaker 02:
It matters what other words surround present invention.

[00:08:16] Speaker 02:
And I'm not sure we really have any kind of language of the sort that we have relied on in the past in the absence of claim language.

[00:08:25] Speaker 02:
to say the specification makes clear that something not expressively referred to in the claim is nevertheless necessary.

[00:08:32] Speaker 04:
So I would agree with the first part of your honor's statement.

[00:08:34] Speaker 04:
It's absolutely true that there are no magic words.

[00:08:37] Speaker 04:
It's all a contextual reading.

[00:08:39] Speaker 04:
And there is nothing here that says the present invention shall be the following and then lists everything in the present invention.

[00:08:45] Speaker 04:
That's not here either.

[00:08:47] Speaker 04:
But we know that the limiting of the claims based on the specification doesn't have to be as expressed as that.

[00:08:55] Speaker 02:
And I would submit that in this case... No, but we are under a broadest reasonable interpretation.

[00:09:00] Speaker 02:
So that we and the board get to say, in the absence of claim language, if you're telling us something is limited, you have to show us that it really would be unreasonable to conclude otherwise, conclude that the spec doesn't actually limit this

[00:09:22] Speaker 02:
limited in a way that you can limit in the absence of claim language, which is already something of a hurdle.

[00:09:28] Speaker 04:
That's true.

[00:09:29] Speaker 04:
At the same time, cases like the Microsoft case and others make clear that the broadest reasonable interpretation does not get licensed to an incorrect interpretation.

[00:09:39] Speaker 04:
It just has to be the broadest reasonable one.

[00:09:41] Speaker 04:
And that must be read in light of the specification.

[00:09:45] Speaker 04:
So you see cases like the PPC broadband case as well that had a very general claim from around, the word around.

[00:09:52] Speaker 04:
And the dispute was over whether the specification limited.

[00:09:56] Speaker 04:
And this court made very clear that you have to read it in light of the specification to breathe life into that claim.

[00:10:03] Speaker 04:
You cannot just go and grab a dictionary definition and have it be the broadest reasonable construction.

[00:10:10] Speaker 01:
You want to turn to claim eight briefly before your time runs out.

[00:10:13] Speaker 04:
Yes, Your Honor.

[00:10:14] Speaker 04:
Thank you.

[00:10:15] Speaker 04:
On claim eight, so putting aside the claim construction issue,

[00:10:20] Speaker 04:
As to claim eight, the board's obviousness determination was flawed because petitioners introduced no evidence whatsoever of a reason to combine the key prior art feature from the GPRS protocol.

[00:10:38] Speaker 04:
That's one protocol.

[00:10:39] Speaker 04:
And that's where the board found the feature, the, quote, maintained feature, located.

[00:10:45] Speaker 04:
There is no motivation whatsoever to combine that

[00:10:48] Speaker 01:
with a completely separate protocol, the CDMA protocol, in claim eight.

[00:10:58] Speaker 04:
For example, if there were expert testimony saying these two things were close enough

[00:11:06] Speaker 04:
that it would be a mere design choice to plop the one into the other, and there were no technical barriers to doing that.

[00:11:12] Speaker 01:
Well, isn't that what they were really trying to get to?

[00:11:15] Speaker 01:
I mean, I know you called Dr. Stark hindsight, but isn't that another way of construing what he was saying, that it was ultimately done and there were no problems, and so we're going to sort of move that back?

[00:11:28] Speaker 04:
Not at all, Your Honor.

[00:11:30] Speaker 04:
The hindsight there was in response to what they said our argument was, which was that it was technologically impossible, which we never contended that was technologically impossible at all.

[00:11:41] Speaker 04:
We contended that it was their burden to come forth with evidence that it was possible and or other evidence showing why you would take these two completely different standards and ad hoc kind of buffet style, take one out of one and put it with another and then combine that all in to jawando.

[00:11:59] Speaker 02:
Can I ask you about something that the board did not rely on so it might make a difference only between remand and reversal?

[00:12:08] Speaker 02:
And that's what Dr. Bims said.

[00:12:12] Speaker 02:
That Dr. Bims said there was a draft version of a CDMA covered protocol or standard WMTS or some... WCMA or UNTS.

[00:12:24] Speaker 02:
UNTS, UMTS.

[00:12:26] Speaker 02:
And maybe, he said, I'm not sure, skilled artisans knew about that.

[00:12:30] Speaker 02:
And that had this maintenance ability for CDMA in it.

[00:12:36] Speaker 02:
And it's true that the board didn't say anything about that, unless I'm misremembering.

[00:12:41] Speaker 02:
But why would what Dr. Bim say not be enough evidence to support a finding of the sort that the board made, maybe a finding on remand.

[00:12:55] Speaker 02:
Why, as an evidentiary matter, what's insufficient about what Dr. Bim said?

[00:13:00] Speaker 04:
Well, I think it's very hard to answer that unless it's tested against other expert testimony to the contrary.

[00:13:07] Speaker 04:
And that would certainly be fleshed out in a proceeding.

[00:13:09] Speaker 04:
And there may be competing views on that.

[00:13:11] Speaker 04:
And that's precisely the type of thing that the board is empowered to figure out and why we shouldn't be looking at it here.

[00:13:18] Speaker 04:
And it's certainly not evidence to affirm.

[00:13:20] Speaker 04:
And so the short answer is, it's hard to say.

[00:13:24] Speaker 04:
It's hard to say, given the technical nature of the things here.

[00:13:27] Speaker 04:
And the different standards are notoriously difficult to change.

[00:13:31] Speaker 04:
There's inertia.

[00:13:32] Speaker 04:
There's reasons why, even if it's a great idea, you might not want to import one feature from a standard into another.

[00:13:37] Speaker 04:
So there's all kinds of barriers that could come into play.

[00:13:40] Speaker 04:
But ultimately, what the board relied on was three things.

[00:13:44] Speaker 04:
The hindsight that we talked about, which is the fact that it was eventually done, which Supreme Court President and this Court President says is not enough.

[00:13:51] Speaker 04:
But it made another important error there.

[00:13:54] Speaker 04:
it actually shifted the burden to the patent owner to show that there was no evidence that it would have been obvious.

[00:14:02] Speaker 04:
And that is completely improper and foreclosed by this board decision in Magnum Oil.

[00:14:07] Speaker 04:
That's exactly what happened in Magnum Oil.

[00:14:10] Speaker 04:
And the third thing the board pointed to was a reference in Jwanda itself that said you can implement the dual-mode device of Jwanda in different protocols.

[00:14:20] Speaker 04:
But what it didn't say is you could take one feature from one of those protocols, and a couple from another, and thereby implement it.

[00:14:27] Speaker 01:
Juana.

[00:14:27] Speaker ?:
OK.

[00:14:29] Speaker 01:
Why don't you save the rest of the rebuttal?

[00:14:30] Speaker 01:
We'll restore it two minutes.

[00:14:32] Speaker 01:
Same.

[00:14:32] Speaker 01:
I don't want to see it from the other side.

[00:14:33] Speaker 01:
Thank you.

[00:14:45] Speaker 03:
Come on.

[00:14:45] Speaker 03:
Your Honor, it's Charles McBann for the petitioner appellees.

[00:14:50] Speaker 03:
May it please the court, the 244 patent claims an obvious combination of well-known features, and the board was correct to conclude that those features were obvious and to cancel all the challenge claims.

[00:15:01] Speaker 03:
There are a few disputes before the court, and I plan to address three main points.

[00:15:05] Speaker 03:
The first is that on the point of claim construction, the board was legally correct to conclude the very, to construe the very simple phrase, assign physical channels in the way that it did.

[00:15:16] Speaker 03:
On the question of obviousness, the board's factual findings are supported by substantial evidence across the board, including as to CDMA and Claim 8.

[00:15:24] Speaker 02:
Do I understand right that if you're right, or rather the board is right about that claim construction point, the other side doesn't at that point dispute obviousness for anything but Claim 8?

[00:15:38] Speaker 02:
That's what I understand from the briefing.

[00:15:40] Speaker 02:
Correct, Your Honor.

[00:15:42] Speaker 02:
Can you talk about Claim 8?

[00:15:43] Speaker 03:
Sure.

[00:15:45] Speaker 03:
Do you want me to just begin, or do you have a specific question?

[00:15:48] Speaker 02:
Well, I guess it seems to me that we answered, if you would, I guess a couple of points that were discussed.

[00:15:57] Speaker 02:
That what the board did say is not sufficient, because it's infected by hindsight.

[00:16:02] Speaker 02:
And there really wasn't a cited basis for a finding of a motivation to do for CDMA what now, by assumption,

[00:16:14] Speaker 02:
the GSM standard said you can do for TDMA.

[00:16:19] Speaker 02:
And so at a minimum, a vacator and remand would be necessary.

[00:16:26] Speaker 02:
And then my additional question is, is there actually, if you put aside factor IMS,

[00:16:35] Speaker 02:
It seems to me there isn't actually sufficient evidence, but maybe Dr. Bims might supply such sufficient evidence, but we can't decide that.

[00:16:44] Speaker 02:
That would have to be something requiring new findings by the board.

[00:16:48] Speaker 03:
So all of that.

[00:16:49] Speaker 03:
I'll try to unpack that one at a time.

[00:16:52] Speaker 03:
Beginning with the claim, claim aid is a very simple dependent claim.

[00:16:55] Speaker 03:
All it says is use CDMA as the cellular network and the cellular transceiver.

[00:17:00] Speaker 03:
Jwanda says exactly that.

[00:17:02] Speaker 03:
The board pointed to that.

[00:17:03] Speaker 03:
That's the evidence that petitioners cited in their petition originally.

[00:17:06] Speaker 02:
But Jwanda doesn't say use every feature in the GSM standard or even the GPRS piece of the GSM standard, particularly the packet control protocol context feature.

[00:17:23] Speaker 02:
And you can use that for CDMA.

[00:17:27] Speaker 02:
It doesn't say any of those things.

[00:17:29] Speaker 03:
Jwanda is a very open-ended suggestion.

[00:17:31] Speaker 03:
Jwanda, at its core, is describing the idea of using two networks, much like the 244 pattern, saying you've got a Wi-Fi network and a cellular network.

[00:17:40] Speaker 03:
You can switch back and forth and send data grains, as Jwanda calls them, between the two as needed.

[00:17:45] Speaker 03:
But in the context of describing that, it says when you use a cellular network, you can use any network you want.

[00:17:50] Speaker 03:
It's very open-ended.

[00:17:51] Speaker 03:
You can use any current or any future.

[00:17:53] Speaker 03:
cellular network.

[00:17:53] Speaker 03:
And it gives CDMA and GPRS as examples.

[00:17:56] Speaker 03:
So it's giving a broad invitation to say, go out and use whatever cellular features you want to use.

[00:18:00] Speaker 03:
That's not material to what I'm teaching you.

[00:18:02] Speaker 03:
What I'm teaching you is that you can use that on one side for the cellular connection.

[00:18:06] Speaker 02:
But didn't the obviousness case putting aside claim eight

[00:18:12] Speaker 02:
depend on, I think the board said, Juanda doesn't actually teach the maintaining the cell connection while you're busy using the Wi-Fi.

[00:18:21] Speaker 02:
But it's reasonable to find that in the GSM standard and reasonable to combine them.

[00:18:28] Speaker 02:
But I didn't see where there was evidence to say, and there was a motivation to and ability to, two separate things, ability to and motivation to do the same kind of combination

[00:18:41] Speaker 02:
with a CDMA.

[00:18:43] Speaker 03:
Well, the reason we're talking about an obvious miscombination here is that the two references are Jwanda and the GPRS standards.

[00:18:52] Speaker 03:
And the GPRS standards provides the idea of maintaining a communication session.

[00:18:57] Speaker 03:
The board gave some credit to the disclosure in Jwanda as coming close to describing that, but said

[00:19:03] Speaker 03:
We're not sure that it's expressed in Jwanda, but it's certainly provided in the GPRS standard, which we're combining with Jwanda to provide this obviousness combination.

[00:19:14] Speaker 02:
So what would be missing, as far as I can tell from here, is there's nothing that says, oh, here's a CDMA standard.

[00:19:21] Speaker 02:
And since Jwanda says you can use CDMA, you can combine the Jwanda

[00:19:30] Speaker 02:
two systems idea with not only the GPRS standard, but also separately from the CDMA standard.

[00:19:39] Speaker 02:
But at the time, at least according to the board's findings, putting aside Dr. Bims and the draft, the other standard, there's no reliance on anything like that on the CDMA side.

[00:19:53] Speaker 03:
But again, the combination is Juanda and GPRS, and GPRS gives you,

[00:19:58] Speaker 03:
In other words, GPRS tells you in the context of cellular communication network, you can use a PDP context to maintain a communication session using the claim language.

[00:20:06] Speaker 03:
So that comes from GPRS, right?

[00:20:08] Speaker 03:
And Juwanda tells you you can use GPRS.

[00:20:11] Speaker 03:
Those are the two documents we're combining for the 103, that the board combined for the 103 combination.

[00:20:17] Speaker 03:
In addition to that, all claimate requires is the suggestion that you can use CDMA.

[00:20:21] Speaker 03:
And Juwanda says that too.

[00:20:23] Speaker 03:
That's exactly commensurate with the scope of claimate.

[00:20:27] Speaker 03:
But this division between the two standards is a false assumption.

[00:20:31] Speaker 03:
Juanda provides all of the connections that you need to arrive at everything that's in claim one, as well as everything that is in claim eight.

[00:20:40] Speaker 03:
And the board relied on KSR.

[00:20:42] Speaker 03:
And basically, I'm paraphrasing.

[00:20:44] Speaker 02:
I don't remember the CDMA part of KSR.

[00:20:47] Speaker 02:
Well, what the board said.

[00:20:48] Speaker 02:
I mean, this is really context, technology, fact-specific stuff.

[00:20:53] Speaker 03:
Understood.

[00:20:54] Speaker 03:
At appendix 32-33, which is where the board addressed this, the board provided a quote from KSR, and I don't have the exact quote, I'm going to try to paraphrase it, but it said, if a technique has been used to improve one device, for example, a GPRS device, and a person of ordinary skill in the art would recognize that it would improve similar devices, for example, a CDMA.

[00:21:12] Speaker 02:
Right, but that's the piece that I guess I'm not seeing board-cited evidence for.

[00:21:19] Speaker 02:
Board-cited evidence that said an ordinary skilled artisan would recognize

[00:21:23] Speaker 02:
that the technique described in GPRS would be possible for, would improve, would benefit users of the CBMA system?

[00:21:38] Speaker 03:
GPRS provides this feature.

[00:21:40] Speaker 03:
It was part of the GPRS disclosure at the time.

[00:21:42] Speaker 03:
It's not dependent on the type of channel that's used.

[00:21:44] Speaker 03:
It was a feature of the GPRS system.

[00:21:48] Speaker 03:
And what the board is saying is that feature is easily transferable over to CBMA.

[00:21:53] Speaker 03:
What IPRL argued below was, no, it's not.

[00:21:56] Speaker 03:
It's incompatible.

[00:21:58] Speaker 03:
GPRS uses TDMA channels.

[00:22:00] Speaker 03:
CDMA uses CDMA channels.

[00:22:02] Speaker 03:
The two won't work.

[00:22:03] Speaker 03:
And that's not true.

[00:22:04] Speaker 03:
First of all, you haven't.

[00:22:06] Speaker 03:
And this is where they argue that the board shifted the burden.

[00:22:09] Speaker 03:
The board didn't shift the burden.

[00:22:11] Speaker 03:
The board followed the quote of KSR.

[00:22:13] Speaker 03:
And just to finish that quote, it says, if the things that I read before, then the technique is obvious, unless its actual application

[00:22:21] Speaker 03:
is beyond his or her skill.

[00:22:23] Speaker 03:
And the board looked to IDRL and said, have you presented any evidence that's beyond his or her skill?

[00:22:30] Speaker 03:
It's not shifting the burden.

[00:22:31] Speaker 03:
It's saying, have you rebutted the prima facie case that the petitioners presented?

[00:22:35] Speaker 03:
And they tried.

[00:22:36] Speaker 03:
They made an argument.

[00:22:37] Speaker 03:
They said that they're incompatible.

[00:22:39] Speaker 03:
But after that response, we deposed their expert, Dr. Stark, and he admitted, actually, they're not incompatible.

[00:22:44] Speaker 03:
In fact, they were eventually put together.

[00:22:46] Speaker 03:
It was never impossible.

[00:22:54] Speaker 03:
I'd be happy to go back and address the claim instruction question.

[00:22:58] Speaker 03:
The fundamental point on claim instruction is that the claim language is just assigned physical channels.

[00:23:02] Speaker 03:
There's nothing more to the claim language.

[00:23:05] Speaker 03:
I don't think there's any dispute that the plain and ordinary meaning of assigned physical channels does not include the limitation that IPRL has tried to hang on it.

[00:23:14] Speaker 03:
Their argument clearly is one specification disclaimer, but there's just no disclaimer there.

[00:23:19] Speaker 03:
The specification provides examples

[00:23:21] Speaker 03:
But there's nothing in the specification to suggest that any of those are limiting examples.

[00:23:27] Speaker 03:
And the last point I would address is that there was a lot of debate in the briefing about new arguments.

[00:23:32] Speaker 03:
I think it's clear from the record that the petitioners did not make new arguments.

[00:23:37] Speaker 03:
Our arguments were consistent from petition to reply and through this appeal, both on the claim construction issue as well as on claim eight.

[00:23:44] Speaker 02:
I'm not sure it matters at this point whether they were consistent, but really you did change

[00:23:51] Speaker 02:
to propose claim construction to once have this word selected in it, to not have the word selected in it, which is kind of the idea that they're getting at.

[00:24:01] Speaker 02:
I'm not sure it matters.

[00:24:03] Speaker 02:
I mean, you may be right about the claim construction, but no change at all.

[00:24:08] Speaker 03:
I agree that it does not matter, but I also would point out that the constructions that we presented in the petition and in our reply were exactly the same.

[00:24:18] Speaker 03:
We used exactly the same word.

[00:24:20] Speaker 03:
There was an argument about what those words mean.

[00:24:24] Speaker 02:
And then in the ultimate claim construction, the board resolved it by taking that word out.

[00:24:30] Speaker 03:
Right.

[00:24:31] Speaker 03:
I don't think that makes it different.

[00:24:32] Speaker 03:
There's no difference between our original proposed instruction and what they adopted.

[00:24:37] Speaker 03:
They're the same scope, slightly different words.

[00:24:39] Speaker 03:
The board removed two words to resolve what was clearly a dispute between the parties about what that construction meant.

[00:24:48] Speaker 02:
Why did the board not rely on Dr. Bims?

[00:24:52] Speaker 02:
I'm not sure that I can answer that question.

[00:24:55] Speaker 02:
Did you present, rely on what he said?

[00:24:59] Speaker 02:
Is that like 728 to 734 or so of the Joint Appendix?

[00:25:03] Speaker 02:
Right.

[00:25:03] Speaker 03:
It was in the petition.

[00:25:04] Speaker 03:
And I think if you look back through the record, there was really not a whole lot of dispute about claim eight below that the amount of briefing dedicated to claim eight on both sides was relatively small.

[00:25:16] Speaker 03:
So I don't think there was a lot of back and forth, but I agree that that evidence from Dr. Bims certainly supports the conclusion of obviousness in this case and is in the record, but it does not appear to be something that the court specifically cited.

[00:25:35] Speaker 03:
If there are no further questions, then we respectfully ask that the court affirm the board's well-reasoned opinion.

[00:25:40] Speaker 01:
Thank you.

[00:25:41] Speaker 03:
Thank you.

[00:25:51] Speaker 04:
Just a few brief points, Your Honor.

[00:25:53] Speaker 04:
First, on Claim 8, I pulled their petition just to double check.

[00:25:58] Speaker 04:
And all they have in support of their petition for Claim 8 is a single sentence from Juana.

[00:26:04] Speaker 04:
That's it.

[00:26:04] Speaker 04:
And that's the one that says you can implement it.

[00:26:07] Speaker 04:
This protocol or that protocol.

[00:26:09] Speaker 04:
There was nothing about all the discussion we just heard about, reasons you might take some from one and the other.

[00:26:14] Speaker 04:
Maybe it was technologically feasible.

[00:26:16] Speaker 04:
Maybe it wasn't.

[00:26:17] Speaker 04:
We simply don't know on this record.

[00:26:19] Speaker 04:
And even if you accepted.

[00:26:20] Speaker 04:
Dr. Bin's testimony, Judge Toronto, that was no more or less than exactly what the statement was as well.

[00:26:27] Speaker 04:
So it would provide no additional support.

[00:26:29] Speaker 04:
It didn't provide the motivation to come in and just observe that DeWanda said you can do it in one or the other.

[00:26:37] Speaker 02:
Was your specification the first?

[00:26:40] Speaker 02:
So the existence of this maintenance ability in GPR communicates, does it not,

[00:26:50] Speaker 02:
people in the ARC, the people connected with the formulation of a international standard, right, a standard, saw a benefit in being able to maintain a cellular channel while you were at Starbucks on Wi-Fi.

[00:27:07] Speaker 02:
So why would that benefit not be understood to be something you would want if you were on, you know, what was then, I guess, the Bell-Atlantic wireless system,

[00:27:19] Speaker 04:
So a couple of responses.

[00:27:20] Speaker 04:
One, we know at the time it wasn't included.

[00:27:22] Speaker 04:
So maybe it would have been desirable, maybe it wouldn't.

[00:27:25] Speaker 04:
It wasn't included.

[00:27:26] Speaker 04:
And so what we need is not just that it would be nice to include, but that somebody would have fought to do it and would have been successful.

[00:27:33] Speaker 04:
And certainly, there's nothing about that in the petitioner's petition.

[00:27:37] Speaker 04:
And I would emphasize that it's their burden to come forward.

[00:27:40] Speaker 04:
And so we would ask that our reversal would be appropriate here, because they didn't come forward with enough.

[00:27:46] Speaker 04:
Even when given an additional bite of the apple on reply, and it was a new argument there, the board didn't come up with enough.

[00:27:53] Speaker 04:
And so reversal is appropriate there.

[00:27:55] Speaker 04:
And then I would note one more thing.

[00:27:58] Speaker 04:
It absolutely does matter, the new arguments.

[00:28:03] Speaker 04:
It matters because in evasive, that's exactly the problem that this court faced.

[00:28:07] Speaker 04:
There were new arguments raised.

[00:28:09] Speaker 04:
And this court sent it back so that the board could properly give the patent owner their procedural rights, their due process rights under the APA.

[00:28:18] Speaker 04:
And that in and of itself was a problem.

[00:28:21] Speaker 04:
And as to your point about the claim construction, and maybe it doesn't matter because it's a question of law, I would submit, in the power integrations case, there the problem was the board did not account for the district court's construction.

[00:28:34] Speaker 04:
And actually the same exact thing happened here.

[00:28:36] Speaker 04:
The board did not account for the district court's control.

[00:28:39] Speaker 01:
Well, there's a little difference, right?

[00:28:40] Speaker 01:
At least a little difference, because I think in power integrations, there's complete silence.

[00:28:44] Speaker 01:
And here, the board did acknowledge that they use a different standard, right?

[00:28:47] Speaker 04:
Correct.

[00:28:48] Speaker 04:
But power integrations made clear that you not only needed to cite it, but actually meaningfully consider it if you're going to depart from it.

[00:28:54] Speaker 04:
And for that reason, this court sent it back.

[00:28:57] Speaker 04:
So merely because it's a claim construction issue doesn't get the board out of the box having to follow the correct procedures.

[00:29:06] Speaker 01:
final sentence.

[00:29:09] Speaker 04:
For those reasons, we would ask outright reversal on the claim construction, outright reversal on claim eight, and failing all that at a minimum.

[00:29:18] Speaker 04:
These are distinctly new arguments raised in reply that under an evasive absolutely require a vacancy.

[00:29:25] Speaker 04:
Thank you.

[00:29:25] Speaker 04:
We thank both sides in the case submitted.