[00:00:25] Speaker 03:
Okay, the next target case is number 16, 2080, Microsoft Corporation against Biscotti Incorporated.

[00:00:33] Speaker 03:
Mr. Trela.

[00:00:39] Speaker 01:
Thank you, Your Honor, and may it please the Court.

[00:00:42] Speaker 01:
The invention of the 1A2 patent was, according to the patent and the arguments below, a video conferencing system that improved on existing systems by allowing

[00:00:52] Speaker 01:
to allow you to move videoconferencing out of the office into the living room and allowing a setup where you could have two people on calls from different locations basically watching the same TV show or sporting event.

[00:01:05] Speaker 01:
Now the claims at issue here, 6 and 69, don't actually call for any of that.

[00:01:10] Speaker 01:
Those claims are collections of generic parts commonly used in videoconferencing systems and used for the normal purposes without any particular novel arrangement or combination.

[00:01:21] Speaker 01:
The Knoyer patent

[00:01:22] Speaker 01:
that we asserted below anticipates these claims.

[00:01:26] Speaker 01:
Under Section 102, a claim is anticipated if it's described in a prior patent or publication.

[00:01:33] Speaker 01:
Does it mean that the prior art reference has to have a specific embodiment in correspondence?

[00:01:38] Speaker 00:
And our standard review is substantial evidence, unanticipation correct?

[00:01:43] Speaker 01:
Your standard review on factual determinations on anticipation is substantial evidence.

[00:01:48] Speaker 00:
And I'm telling this so that you can kind of go to the core of my concern.

[00:01:55] Speaker 00:
And that is that I may agree with all your arguments.

[00:02:02] Speaker 00:
But the problem is that I'm looking at this from a substantial evidence point of view.

[00:02:07] Speaker 00:
And we do have an expert's declaration.

[00:02:11] Speaker 00:
And the board does go out and base part of the reasoning on that declaration.

[00:02:18] Speaker 00:
That's a big hurdle for you to get over.

[00:02:22] Speaker 00:
What are you going to do?

[00:02:23] Speaker 00:
How do you deal with that problem?

[00:02:24] Speaker 01:
Let me address that in two ways, Your Honor.

[00:02:26] Speaker 01:
First of all, I'm sure there are expert declarations, but the board's determinations in this case had nothing to do with any expert opinions.

[00:02:34] Speaker 01:
This is a matter of reading plain English, reading the Kenoyer reference and reading plain English.

[00:02:40] Speaker 01:
There are no terms of art.

[00:02:41] Speaker 04:
Right.

[00:02:42] Speaker 04:
The board relied on expert testimony and specifically rejected your expert testimony.

[00:02:50] Speaker 04:
Anticipation is a question of fact.

[00:02:51] Speaker 04:
I was shocked that you tried to make the argument that it's not.

[00:02:54] Speaker 04:
I mean, our case law is very clear on this, that anticipation is a question of fact.

[00:02:59] Speaker 04:
What a prior art reference teaches is a question of fact.

[00:03:02] Speaker 04:
It's supposed to be looked at from the perspective of one of skill in the art.

[00:03:05] Speaker 04:
So there were experts of skill in the art who talked about what that prior reference showed.

[00:03:11] Speaker 01:
Your Honor, we're certainly not.

[00:03:12] Speaker 01:
We completely recognize that anticipation is a question of fact, substantial evidence review.

[00:03:19] Speaker 01:
But here we think the board made a legal error because it was looking for specific linking, specific cross-references in Kenoyer where Kenoyer says one thing in one column and then refers again without repeating everything in the next column and the board found that deficient.

[00:03:38] Speaker 04:
Well, that's a very different argument than your argument that somehow we shouldn't treat anticipation as a question of fact.

[00:03:44] Speaker 01:
Well, and if we gave the impression that we were saying, generally, you shouldn't treat anticipation as a question of fact, then that's my mistake.

[00:03:51] Speaker 01:
That certainly wasn't what we were trying to convey.

[00:03:53] Speaker 01:
What we were saying here is that the way the board read Knoyer, it was looking for the specific cross-references linking specific language that we think, as a legal matter, the anticipation standard doesn't require.

[00:04:06] Speaker 01:
And maybe the best way to get into this is let me talk about the findings, the way the board decided the case.

[00:04:13] Speaker 01:
I think that makes two points.

[00:04:15] Speaker 01:
I think one is it shows that the board misapplied the legal standard by requiring more than the statute requires.

[00:04:21] Speaker 01:
The statute says described.

[00:04:22] Speaker 01:
It doesn't say exactly replicated.

[00:04:25] Speaker 04:
But it is required that it has to be sort of in the, has to at least be able to envisage the order.

[00:04:33] Speaker 01:
At once envisage or immediately recognize or something like that.

[00:04:36] Speaker 01:
Correct.

[00:04:37] Speaker 01:
But in the order laid out in the claims.

[00:04:39] Speaker 01:
Well, that's true.

[00:04:40] Speaker 01:
Pardon me.

[00:04:41] Speaker 01:
Although it's also important to note here that there's no particular order that's important in these claims.

[00:04:49] Speaker 01:
They're a collection of parts.

[00:04:51] Speaker 01:
There's no detailed part-to-part relationships or anything like that.

[00:04:54] Speaker 01:
So certainly that proposition laid out as a range in the claims is true.

[00:05:00] Speaker 01:
But where the arrangement and the claims is not of any particular import, that enters into the analysis, I think.

[00:05:05] Speaker 04:
Yeah, the problem is that the board actually, I mean, I agree with all your laying out what you think the standards are for anticipation determination.

[00:05:13] Speaker 04:
And it appears the board did as well.

[00:05:14] Speaker 04:
They laid out all of those standards.

[00:05:16] Speaker 04:
They cited them all.

[00:05:18] Speaker 04:
And so it seems to me that you're really more complaining about the way they applied those standards to this particular reference.

[00:05:26] Speaker 01:
Well, I think that's fair.

[00:05:27] Speaker 01:
And so let me talk about how they applied it.

[00:05:30] Speaker 01:
Because frankly, I think that shows that they misapplied the legal standard.

[00:05:34] Speaker 01:
And I also think it shows that even under a deferential substantial evidence standard, the board should be reversed.

[00:05:40] Speaker 01:
So claim six, the only issue with respect to claim six have to do with the limitation requiring certain instructions.

[00:05:49] Speaker 01:
And it's undisputed that Kenoyer in column 15 discloses that embed.

[00:05:56] Speaker 01:
I think his terms are embodiments or portions of embodiments above can be executed by instructions stored in a storage medium executed by a processor.

[00:06:06] Speaker 01:
Now, the board concluded that that was not a sufficient disclosure of the Claim 6 limitation because the board read that as referring only to the immediately preceding embodiment, the Figure 22 embodiment.

[00:06:21] Speaker 01:
That was a mistake.

[00:06:22] Speaker 01:
That misreads the plain English, the plain language of Knoyer.

[00:06:26] Speaker 01:
And also, frankly, even if it did refer only to the figure 22 embodiment, all the instructions are there.

[00:06:32] Speaker 01:
All the functions to be performed are there.

[00:06:34] Speaker 01:
Now, the program instruction sentence in Knoyer begins a paragraph.

[00:06:41] Speaker 00:
You're not suggesting that we combine embodiments, right?

[00:06:44] Speaker 01:
No, not at all.

[00:06:46] Speaker 01:
And I think that's part of where the board went astray.

[00:06:49] Speaker 01:
What you have in Kenoyer is you have a set of paragraphs after each walk through all of the different embodiments and figures.

[00:06:58] Speaker 01:
And this program instruction sentence says, embodiments or portions of embodiments described above may be implemented by program instructions in a storage medium executed by a processor.

[00:07:09] Speaker 01:
Now, there's no dispute that in the embodiments described above, all of these various functions that claim six requires are disclosed.

[00:07:18] Speaker 01:
There was no dispute about that, but the board said, we're not going to read that sentence as applying to everything up above.

[00:07:23] Speaker 01:
We're going to read it as applying only to the Figure 22 embodiment.

[00:07:27] Speaker 01:
Now, even if you do that, if you just focus on the Figure 22 embodiment, it discloses all of those Claim 6 instructions.

[00:07:38] Speaker 01:
The first two instructions are instructions for controlling the audio capture device and the video capture device.

[00:07:44] Speaker 01:
And the description of embodiment of Figure 22 expressly lays out having a video capture device, namely a camera, which is one of the options that the 182 patent identifies, and a microphone, the audio capture device.

[00:07:59] Speaker 01:
So there's really no dispute about those.

[00:08:02] Speaker 01:
Now, the Figure 22 method also calls for processing the video and audio for transmission.

[00:08:06] Speaker 04:
So are you arguing now that Figure 22 alone is enough to anticipate claim 6?

[00:08:14] Speaker 01:
We are.

[00:08:14] Speaker 01:
OK.

[00:08:15] Speaker 04:
Well, where was that in your petition?

[00:08:18] Speaker 01:
We argued that below in this fashion.

[00:08:22] Speaker 01:
When we argued that Kenoyer discloses all the instructions, each time we identified one, we cited column 15, which is that description of the figure 22 embodiment.

[00:08:33] Speaker 01:
But we didn't call it out.

[00:08:35] Speaker 01:
And say, as I did, we didn't use the words that I just did, which is even if you ignore the rest of the disclosure, you can just look at the figure 22 embodiment.

[00:08:44] Speaker 01:
But each instruction, we pointed to the column 15 description and cited to those particular steps in that description of that method.

[00:08:54] Speaker 01:
As we pointed out in our opening and reply briefs here.

[00:08:57] Speaker 03:
Is it fair to say that what the board really relied on was just the order in which the steps were performed?

[00:09:05] Speaker 01:
No, I don't think that's true, Your Honor.

[00:09:08] Speaker 01:
I think what the board relied on was just that I think the board made two mistakes with respect to point six.

[00:09:18] Speaker 01:
One is it limited that program instruction sentence just to the figure 22 embodiment.

[00:09:25] Speaker 01:
And then having done that, it failed to look at the figure 22 embodiment to see that, in fact, those steps are there.

[00:09:32] Speaker 04:
point me to a page, a paragraph site, a page site in your IPR, in your petition where you rely on 22 solely with respect, saying that that alone is enough as it relates to claim six?

[00:09:47] Speaker 01:
I can't because we didn't say it that way.

[00:09:49] Speaker 01:
What we said was we cited to the figure 22 embodiment

[00:09:55] Speaker 01:
in identifying places in Kenoyer where it disclosed each of the functions implemented by the program instructions.

[00:10:06] Speaker 04:
OK, but you can't tell me where you did that?

[00:10:09] Speaker 01:
Oh, sure I can.

[00:10:10] Speaker 01:
I'll give you several sites.

[00:10:11] Speaker 01:
Appendix pages 177 and 78, 245 to 46, 1401 to 02, 84, 24 to 25, these are all places where

[00:10:22] Speaker 01:
We talk about the instructions, and we reference the column 15 discussion in Kenoyer, where it lays out those.

[00:10:29] Speaker 04:
And that's in your petition?

[00:10:32] Speaker 01:
I think the first few pages are there, 177 to 78.

[00:10:38] Speaker 03:
Hang on.

[00:10:38] Speaker 03:
Well, the petition, I think, according to the statute, refers to you only have to show one claim.

[00:10:46] Speaker 03:
Is your sense that the law has evolved to the stage where the petition has to have

[00:10:52] Speaker 03:
everything that's going to be evolved during the ensuing trial?

[00:10:58] Speaker 01:
No, I don't think that's true, Your Honor.

[00:11:00] Speaker 01:
I think you're right.

[00:11:02] Speaker 01:
It has to show enough to institute on one claim.

[00:11:06] Speaker 01:
And you can't bring in new prior art, but I don't think it constrains you that narrowly in terms of the arguments you make.

[00:11:15] Speaker 01:
Now, if I could turn very briefly to claim 69, which was the other independent claim at issue,

[00:11:21] Speaker 01:
And as with claim six, the focus here was on a single limitation, and that was receiving an audio-visual stream from a set-top box on an audio-visual interface.

[00:11:32] Speaker 01:
Now, Knoyer in column 10 expressly discloses connecting its codec to a set-top box with signals from the set-top box passing through the codec to the display when there's no call going on and a portion of

[00:11:50] Speaker 01:
basically in both going through when a call is going on.

[00:11:54] Speaker 01:
That is the Claim 69 limitation.

[00:11:56] Speaker 01:
Now, the mistake the board made there was it said, well, there's nothing in that particular passage that talks about the audiovisual inputs.

[00:12:05] Speaker 01:
Well, apart from the fact that there have to be because the signal is going from the set-top box through the codec, Column 7 through 9, the immediately preceding discussion, went through the explanation of the external codec in detail and explained

[00:12:19] Speaker 01:
the audio-visual inputs that it has, including giving specific examples that were the same as the examples in the 1A2 patent.

[00:12:26] Speaker 01:
Things like S-Video, VGA, DVI inputs, the RCA inputs for the audio.

[00:12:32] Speaker 01:
So it was all there.

[00:12:33] Speaker 01:
And essentially what the board was requiring was that all of this be repeated.

[00:12:38] Speaker 01:
Again, each time you mention the codec.

[00:12:41] Speaker 01:
But when the same term is used throughout a specification, persons of ordinary skill understand

[00:12:45] Speaker 01:
Well, OK, yeah, I just read about the codec, and now they're talking about connecting that codec to a set-top box.

[00:12:52] Speaker 01:
So that claim 69 limitation is expressly there.

[00:12:55] Speaker 01:
The other thing I would say on that, and this goes to the claim construction issue we argued, the way set-top box is defined in the 182 patent is broad enough to include a computer with the capability to bring in signals and transmit video.

[00:13:13] Speaker 01:
A couple of places in Kenoyer, in column 8 and column 9, expressly disclosed the codec receiving video input from a computer.

[00:13:22] Speaker 01:
So had the board recognized that a set-top box as defined in the 1A2 patent is broad enough to include a computer as used in Kenoyer, it would have seen multiple disclosures.

[00:13:34] Speaker 01:
of this claim 69 receiving audiovisual input limitation.

[00:13:38] Speaker 04:
And I just want to clarify, you have disclaimed any reliance on figures 7A and B in connection with this.

[00:13:45] Speaker 01:
That's correct.

[00:13:46] Speaker 01:
And I'm glad you asked that.

[00:13:48] Speaker 01:
The discussion of this external codec, the standalone codec connected to a set-top box, follows right after it's in the same

[00:13:55] Speaker 01:
Paragraph basically is the description of figure 7A and 7B, but it's expressly set out as different because figure 7A and 7B are about an integrated set-top box and codec.

[00:14:07] Speaker 01:
And then it says, or the codec can be separately housed, in which case it's coupled to the set-top box and can pass through audiovisual signals.

[00:14:17] Speaker 01:
So these are two different things.

[00:14:19] Speaker 01:
They happen to appear close in physical location, but they're different embodiments, and we are not relying

[00:14:25] Speaker 01:
on figure 7A and 7B.

[00:14:26] Speaker 01:
I'd like to reserve the rest of my time.

[00:14:29] Speaker 03:
We'll save you enough rebuttal time.

[00:14:31] Speaker 01:
Thank you, Your Honor.

[00:14:38] Speaker 03:
Mr. O'Quinn.

[00:14:39] Speaker 02:
Thank you, Judge Newman.

[00:14:40] Speaker 02:
May it please the Court, John O'Quinn on behalf of the Scottie.

[00:14:43] Speaker 02:
This case is controlled by the Board's factual findings and the standard of review.

[00:14:49] Speaker 00:
And I'd like to turn to... Is there a situation at all, I mean, if every case that we deal with

[00:14:55] Speaker 00:
for reviewing an anticipation determination.

[00:15:01] Speaker 00:
If there's the substantial evidence, as I said in this case, I saw, does that mean that's it?

[00:15:09] Speaker 00:
There's no room for legal error?

[00:15:12] Speaker 02:
Well, Judge Raina, it's certainly possible that the board could misstate the law and misapply the law of anticipation.

[00:15:19] Speaker 02:
The board didn't do that here.

[00:15:20] Speaker 02:
In fact, the board recited the very cases that Microsoft relies on

[00:15:25] Speaker 02:
for the very proposition that Microsoft relies on them for.

[00:15:28] Speaker 02:
So I suppose that if the board were to say, in order to anticipate, were to impose a requirement that this court has not found to be in the law of anticipation, or the Supreme Court has not imposed, then yes, there could be a legal question.

[00:15:44] Speaker 00:
How about in the region other than just

[00:15:47] Speaker 00:
like a misapplicational case.

[00:15:49] Speaker 00:
Set that aside.

[00:15:50] Speaker 00:
Just in the legal reasoning where they're looking at applying certain limitations in the prior reference to just part of the claims at issue, but not to the entire claims at issue.

[00:16:04] Speaker 02:
Judge Raina, I think once you've gotten to the application of a piece of prior art to the claims that are issued,

[00:16:11] Speaker 02:
That's the world of substantial evidence review.

[00:16:13] Speaker 02:
And I think that, of course, the board and district courts can commit error in doing that, but that is reviewed for substantial evidence.

[00:16:22] Speaker 04:
What about the argument that there is a legal error because, before they even got to that point, they should have construed the claims so they knew what they were looking for in Kenoyer, in terms of the set-top box, at least.

[00:16:35] Speaker 02:
Thank you for that question, Judge O'Malley.

[00:16:37] Speaker 02:
With respect to set-top box,

[00:16:39] Speaker 02:
There was never an argument made to the board by Microsoft about why anything turned on the construction that it was advocating.

[00:16:48] Speaker 02:
Microsoft never advocated to the board in its petitions or in its replies why its particular construction would change the outcome with respect to that case.

[00:16:58] Speaker 02:
Now, the one thing that they cite in their brief, it says CEG Appendix 1450.

[00:17:02] Speaker 03:
You're talking about the construction that is a computer?

[00:17:05] Speaker 02:
the construction of the term set-top box and whether that could encompass a computer.

[00:17:10] Speaker 02:
And the question is, did they ever advocate to the board that the computer of Knoyer would satisfy the set-top box limitation?

[00:17:19] Speaker 02:
And the answer to that question is no.

[00:17:21] Speaker 02:
And that's why the board didn't need to construe the term set-top box.

[00:17:25] Speaker 02:
It applied to plain and ordinary meaning.

[00:17:27] Speaker 02:
They had the opportunity under that construct to argue to the board that the computer of Knoyer was a set-top box.

[00:17:33] Speaker 02:
You will not find that argument in their briefing.

[00:17:37] Speaker 02:
It's not in the petition.

[00:17:38] Speaker 04:
So are you saying that what Mr. Trela just said to me, which is the reference to column 10, lines 25 through 35 in Knoyer, that he didn't actually make that argument to the board?

[00:17:52] Speaker 02:
The only argument that they made to the board, and it's the only thing they cite in their brief, and it's telling.

[00:17:57] Speaker 02:
It says CEG, but this is it.

[00:17:58] Speaker 02:
It's the one thing that they cite.

[00:18:00] Speaker 02:
It's Appendix 1453.

[00:18:02] Speaker 02:
And it comes in a discussion in their reply in which we had made the argument that they were mixing and matching references, so that they were mixing and matching different embodiments, Judge Raina.

[00:18:17] Speaker 02:
They absolutely were doing that.

[00:18:20] Speaker 02:
And we had made that argument.

[00:18:21] Speaker 02:
We said that they were mixing and matching between a set-top box embodiment and a computer embodiment.

[00:18:26] Speaker 02:
And at the end of that discussion, they say, quote, moreover, a computer can be a set-top box,

[00:18:32] Speaker 02:
which the 1-8-2 patent defines as a device that can provide tuning, decryption, and or decoding functionality for the reception of broadcasts, cable, and or satellite television signals."

[00:18:43] Speaker 02:
That's it.

[00:18:44] Speaker 02:
It's not followed by an argument that this is what is then disclosed by Knoyer, that a person of ordinary skill in the art would immediately recognize that the computer in Knoyer could be an annotation.

[00:18:57] Speaker 03:
I'm trying to understand this argument.

[00:18:59] Speaker 03:
How many times does someone have to make a point before we accept that it was communicated to the board?

[00:19:07] Speaker 02:
Well, I think at a minimum once.

[00:19:08] Speaker 02:
And what I'm telling you is the number of times that an argument was made that Knoyer disclosed a computer that satisfied the limitations of the 182 patent claim 6.

[00:19:23] Speaker 02:
And we're just talking about claim 6.

[00:19:24] Speaker 02:
None of these arguments affect claim 6.9.

[00:19:26] Speaker 02:
That argument was never made.

[00:19:28] Speaker 02:
And in fact, their expert conceded in his deposition that he was asked, can a computer be a sat-top box?

[00:19:37] Speaker 02:
And the answer was, and this is an appendix 10.749, quote, you have to look at what the computer is capable of.

[00:19:45] Speaker 02:
You have to show me the computer, and I have to look at what it can do.

[00:19:50] Speaker 02:
And he conceded that it was, quote, not a standard portion of a PC that you would just buy off the shelf.

[00:19:56] Speaker 02:
that would provide the tuning capability to receive the signals.

[00:19:59] Speaker 02:
That's at appendix 10750.

[00:20:02] Speaker 02:
There are certainly no arguments.

[00:20:03] Speaker 03:
So it says you can't buy the set-top box off the shelf.

[00:20:08] Speaker 03:
But where does it say that it can't be a computer?

[00:20:13] Speaker 02:
Oh, my point was simply that it was not that you can't imagine having a computer that you would add things to that perhaps could satisfy the construction of set-top box that they're advocating.

[00:20:25] Speaker 02:
My point simply

[00:20:26] Speaker 02:
They never argued to the board that the computer of Knoyer satisfied that limitation.

[00:20:32] Speaker 02:
In fact, if you look at their petition, they were always relying on the combination of set-top box 705 with other features.

[00:20:41] Speaker 02:
And you can see that at appendix 172 to 176.

[00:20:44] Speaker 04:
So your point is that if the expert conceded that it would have to be a particular type of computer, that there was never any argument that Knoyer met that standard.

[00:20:55] Speaker 02:
There was never any argument that the computer of Kenoyer met the standard of being a set-top box.

[00:21:02] Speaker 02:
And indeed, their concessions from their expert demonstrate that you can't just simply say, well, any person of ordinary skill and regard would assume that any generic computer would be a set-top box.

[00:21:16] Speaker 02:
And in fact, their expert conceded that that's not true.

[00:21:19] Speaker 02:
So that issue was never presented to the board.

[00:21:22] Speaker 02:
And it dovetails into his arguments about figure 22.

[00:21:28] Speaker 02:
They also did not argue to the board that the embodiment with respect to figure 22 was sufficient to anticipate.

[00:21:36] Speaker 02:
And indeed, if you look at appendix 172 to 176, and you can look at appendix 173 in particular, where they're making reference to set top box 705

[00:21:47] Speaker 02:
in order to be able to satisfy the set-top box limitations.

[00:21:52] Speaker 04:
How specific does the petition itself actually have to be?

[00:21:56] Speaker 04:
And if they cite to a particular reference and say this reference anticipates, clearly they're supposed to spell out in what ways, but do they have to say every possible theory that they have for that?

[00:22:06] Speaker 02:
Well, I don't know, Judge O'Malley, that they have to spell out every possible theory, but it certainly has to be presented to the board at some point.

[00:22:14] Speaker 02:
And it's not in the petition.

[00:22:16] Speaker 02:
And it's not in the reply.

[00:22:18] Speaker 02:
And indeed, as I said, the only argument with respect to the reply is the one page that they cite in their briefs.

[00:22:24] Speaker 02:
And that doesn't get you there.

[00:22:25] Speaker 02:
That's just simply a statement that a computer might be able to be a set-top box, but not any argument to the board about why the computer disclosed in Knoyer would satisfy the set-top box limitation.

[00:22:40] Speaker 02:
And so that, I would say, is an argument that they have not properly presented to the board and certainly not properly preserved for this court.

[00:22:48] Speaker 02:
Now, that's with respect to Claim Six.

[00:22:51] Speaker 03:
Would you comment on this issue of the breadth of, whether the prior attorney or others does speak very broadly, and these claims are broad, and in trying to focus on

[00:23:05] Speaker 03:
the specificity, because I gather that you haven't really focused particularly on any of the subordinate claims.

[00:23:12] Speaker 03:
They all rise and fall together.

[00:23:14] Speaker 03:
Is that right?

[00:23:15] Speaker 02:
Well, I don't think that that's quite correct, Judge Newman, in the sense that they certainly don't all fall together.

[00:23:23] Speaker 02:
The arguments that the board reached, the board only reached a subset of the arguments that we presented.

[00:23:31] Speaker 02:
And in fact, I think the board probably started with the

[00:23:35] Speaker 02:
storage medium limitation, because if you look at appendix 1977, that's where we actually started our argument in front of the board.

[00:23:42] Speaker 02:
The board didn't reach, for example, the consolidated output stream issue with respect to both independent claim 69 and with respect to a number of the dependent claims of claim six.

[00:23:54] Speaker 02:
Now, it is true that the board's reasoning with respect to claim six turned on the storage medium limitation.

[00:24:01] Speaker 02:
But the board also had the very same argument about interfaces

[00:24:05] Speaker 02:
before it with respect to Claim 6 that it had with respect to Claim 69.

[00:24:09] Speaker 02:
It just didn't reach it in its analysis of Claim 6, but the analysis with respect to Claim 69 was separate and apart from the issue of the storage medium and the software, whether or not you had the software that was encoded with specific instructions.

[00:24:27] Speaker 02:
That issue turned on how you read the specification of Knoyer, and it turned on

[00:24:33] Speaker 02:
our expert's analysis and the board's consideration of their expert, of the program instruction sentence, and other features of Connolyer.

[00:24:40] Speaker 02:
That is with respect to Claim 6.

[00:24:42] Speaker 02:
With respect to Claim 69, the issue there was the interfaces and whether or not that you had an input interface from a set-top box to the Kodak.

[00:24:53] Speaker 02:
And the argument that Mr. Trela has made is, well, you know it's the same Kodak because it refers to Kodak throughout.

[00:25:00] Speaker 02:
But that's not really a fair interpretation of the specification of Conoyer.

[00:25:04] Speaker 02:
It's not the one that the board adopted because, in fact, there are different codex that are referred to within the specification of Conoyer.

[00:25:12] Speaker 02:
There is a Code Act 209.

[00:25:14] Speaker 02:
There's a Code Act 309.

[00:25:16] Speaker 02:
When the specification intends to refer to Code Act 309, it does so.

[00:25:21] Speaker 02:
You can see it referred to in Figure 3 with respect to Figure 5, with respect to Figure 6, I believe also with respect to Figure 8.

[00:25:29] Speaker 02:
But in the figure 9 embodiments, excuse me, in the figure 7a and 7b embodiments, and in the discussion that also goes with those embodiments, there's no reference to Kodak 309.

[00:25:44] Speaker 02:
And there's no discussion with respect to the set top box, I forget how the specification refers to it, the coupled

[00:25:54] Speaker 02:
stand-alone housing with the set-top box.

[00:25:57] Speaker 02:
There's no reference back to Kodak 309.

[00:25:59] Speaker 03:
Let me tell you what troubles me about this case.

[00:26:04] Speaker 03:
The claims which have survived, it seems to me, can be read and would be infringed by Kanoya.

[00:26:14] Speaker 03:
And that would end the anticipation issue.

[00:26:22] Speaker 03:
because of their breadth.

[00:26:25] Speaker 03:
How do we get to the point so their claims must be read so that acting, pursuing the Kenoyer procedure would not be covered by these claims?

[00:26:40] Speaker 02:
Well, Judge Newman, I think you can imagine a situation all the time where you have something that could be designed with

[00:26:52] Speaker 02:
pursuant to prior art, that would infringe both the prior art and the subsequent patterns.

[00:26:58] Speaker 03:
So that is a matter of imagination, but just without any complex claim interpretation or construction.

[00:27:06] Speaker 03:
Well, I... Accepting for the sake of my question that there are differences.

[00:27:13] Speaker 03:
At the same time, looking at the claims and the scope with which they are before us at the moment,

[00:27:21] Speaker 03:
It does look as if anyone practicing what Kanoia tells you to do would be infringing these claims.

[00:27:27] Speaker 02:
Oh, well, I don't think that that is true at all, Judge Newman.

[00:27:30] Speaker 02:
For example, with respect to these claims, various functions have to be performed using a software solution.

[00:27:40] Speaker 02:
Various aspects of the claims have to be performed with a software solution.

[00:27:44] Speaker 03:
But there is a software solution.

[00:27:45] Speaker 03:
You're saying there's no software solution in Kanoia?

[00:27:48] Speaker 02:
Well, not necessarily.

[00:27:50] Speaker 02:
And there's certainly not one that is disclosed with respect to the elements that we have been talking about.

[00:27:59] Speaker 02:
That's the very argument about why it is that Knoyer does not anticipate.

[00:28:02] Speaker 02:
Because the only software solution that it discloses is with respect to a subset of the instructions that are required by Knoyer.

[00:28:14] Speaker 02:
So just like it is a solution.

[00:28:15] Speaker 00:
Why would that matter?

[00:28:16] Speaker 00:
Why would that be anticipated?

[00:28:18] Speaker 02:
Well, Judge Raina, in the same way that I think, if I could use the old chestnut about the windshield wiper, a patent on a windshield wiper doesn't anticipate a patent on the intermittent windshield wiper.

[00:28:32] Speaker 02:
They may both be windshield wipers, and it may be that the person who is practicing the earlier in time patent... Well, it would be if all you're looking for is a windshield wiper.

[00:28:45] Speaker 02:
Right, but the point is the 182 requires more.

[00:28:49] Speaker 02:
The 182 requires specific configurations in specific ways, specific combinations of hardware and software solutions that are not disclosed by the Knoyer reference.

[00:29:02] Speaker 02:
Now, it may be that somebody who would be practicing IRPAT would also be practicing Knoyer.

[00:29:09] Speaker 00:
So what specific program instruction would you argue is not performed by Knoyer?

[00:29:13] Speaker 02:
Oh, sure.

[00:29:15] Speaker 02:
The board found that the encoding limitations, that is, that you would have the encoding of packets being done, that that was not disclosed with respect to the embodiment that went with figure 22.

[00:29:32] Speaker 02:
And this feeds back into the argument of why it was that there had to be a mixing and matching and combining of embodiments.

[00:29:39] Speaker 02:
And the same is true with having the input from a set-top box

[00:29:43] Speaker 02:
That's something that is required both by Claim 6 and by Claim 69.

[00:29:48] Speaker 02:
This was the grounds on which the board decided the Claim 69 issue.

[00:29:53] Speaker 02:
And that is something that is not disclosed by Knoyer either.

[00:29:57] Speaker 02:
They made various arguments about why you should assume that it's the same Kodak, that it's the Kodak that's used with the set-top box, must necessarily be the same Kodak that's disclosed in Figure 5.

[00:30:11] Speaker 02:
But there's no reason to assume that a Kodak that is used with a personal computer should be the same one that's used with a cable television receiving box.

[00:30:22] Speaker 02:
And certainly nothing in Knoyer discloses that.

[00:30:25] Speaker 02:
And so that takes you outside the world of anticipation and a combination of disparate embodiments, which is exactly what this court held in net money in was inappropriate for purposes of anticipation.

[00:30:36] Speaker 02:
And that's what this comes down to.

[00:30:38] Speaker 02:
Are all of the elements?

[00:30:40] Speaker 02:
present here as arranged in the claims of the 182 patent.

[00:30:45] Speaker 02:
The board found on the facts, relying on expert evidence, that the answer to that question is no.

[00:30:51] Speaker 02:
And I submit that that is ultimately dispositive with respect to this case.

[00:30:56] Speaker 02:
I'm happy to answer any additional questions that the board may have.

[00:31:00] Speaker 03:
Thank you, Mr. O'Quinn.

[00:31:10] Speaker 01:
Let me make a few points, and I'd like to pick up on the answer that Mr. O'Quinn just gave about the encoding limitation.

[00:31:19] Speaker 01:
I think the question was, what instruction is not shown in Knoyer?

[00:31:24] Speaker 01:
Even if you focus only on the figure 22 embodiment, and that's in column 15 of Knoyer, it talks about codec

[00:31:34] Speaker 01:
It specifically talks about codec 309.

[00:31:38] Speaker 01:
There's no confusion about what codec it's talking about.

[00:31:42] Speaker 01:
And specifically, this is about line 12 or so.

[00:31:46] Speaker 01:
The codec 309 may receive remote video and audio.

[00:31:50] Speaker 01:
The codec 309 may process the remote video and audio.

[00:31:53] Speaker 01:
The specification makes clear throughout, using that specific designation of codec 309, that it transmits and receives signals using the internet protocol.

[00:32:04] Speaker 01:
It's undisputed that that requires that the data be placed in the packets and transmitted in a stream of packets.

[00:32:10] Speaker 01:
So it's there in the figure 22 embodiment, besides being throughout the specification, because the discussion of using the internet protocol is, the specification is replete with references to that.

[00:32:24] Speaker 00:
Is it possible to practice encoding of packets without the use of a computer?

[00:32:31] Speaker 01:
Is it possible?

[00:32:34] Speaker 01:
I think it's possible to do it without what you would call a fully functioned computer.

[00:32:41] Speaker 01:
You would have to have some sort of a circuit or a processor with instructions that would perform that function.

[00:32:49] Speaker 01:
But that may be all it does.

[00:32:51] Speaker 01:
It could be a dedicated device, if you will, that would do that.

[00:32:56] Speaker 01:
A computer obviously will do it.

[00:32:58] Speaker 01:
But I think you could have a stand-alone.

[00:33:01] Speaker 04:
So where did you argue to the board that the particular computer of Kanoir satisfied all of this?

[00:33:09] Speaker 04:
Because your expert did concede that some computers might be able to do this and some not.

[00:33:17] Speaker 04:
So where did you argue that this particular computer structured this way satisfied that limitation?

[00:33:26] Speaker 01:
in the appendix at pages 1452 through 1454, and there are other places, but this is an example.

[00:33:34] Speaker 01:
The patent owner was arguing that the various interfaces and other capabilities that we said Kenoyer showed only related to a computer, not to a set-top box.

[00:33:45] Speaker 01:
And we went on and argued that the way set-top box is defined in the 182 patent, it is broad enough to encompass a computer

[00:33:55] Speaker 01:
and Knoyer describes a computer.

[00:33:58] Speaker 01:
No, I shouldn't.

[00:33:59] Speaker 01:
It seems, no I shouldn't.

[00:34:01] Speaker 04:
Yeah, but that's a big difference.

[00:34:02] Speaker 01:
Well, it's a difference, but I think that that's an issue for the board.

[00:34:06] Speaker 01:
The problem the board, from our perspective, the problem with the board's decision is it didn't even allow for the possibility that the computer described in Knoyer could serve the purpose of the set-top box.

[00:34:19] Speaker 04:
Well, they don't have to just allow for the possibility if you don't make the argument.

[00:34:23] Speaker 01:
Well, we did make, I think we made the argument right here.

[00:34:25] Speaker 01:
I mean, we say at the bottom of 1453, a computer can be an STB set-top box, which the 182 patent defines as a device that can provide video tuning, et cetera.

[00:34:36] Speaker 01:
Computers by 2008 could contain tuners for broadcast reception.

[00:34:40] Speaker 01:
And I think it's important to note that the computer in Kenoyer is expressly described as providing video output to the codec.

[00:34:48] Speaker 01:
So that capability is certainly at least suggested there, and it seems to be the dead end of it all.

[00:34:54] Speaker 00:
Is that type of suggestion enough in anticipation?

[00:34:57] Speaker 01:
I think it's enough to put the issue before the board, and the board ended up not deciding that issue, because it didn't even allow for that possibility.

[00:35:06] Speaker 00:
And you made this argument already.

[00:35:08] Speaker 01:
Well, we made this argument as I just laid it out, yes.

[00:35:12] Speaker 01:
Now, the other thing I'd like to address is- Did you make that argument before the board?

[00:35:16] Speaker 01:
Yes.

[00:35:17] Speaker 01:
Yes.

[00:35:17] Speaker 01:
I mean, that's what I said.

[00:35:19] Speaker 01:
I was referring to those appendix pages.

[00:35:21] Speaker 01:
And there are other places where we've made essentially the same argument.

[00:35:25] Speaker 01:
Now, the other thing I want to comment on, and just so there's no confusion, and Judge Imel, you had asked a question about whether what I had told you about the disclosure in column 10 of Kenoyer was somehow hadn't been made to the board.

[00:35:40] Speaker 01:
That was actually the focus of the argument to the board was because this has nothing to do with the does a computer equal a set-top box or anything.

[00:35:49] Speaker 01:
The disclosure in column 10 is, and I'll just read it, the codec may also be in an independent housing that is coupled to the set-top box and receives programming from it.

[00:35:58] Speaker 01:
The codec has been described in the prior three columns as having these audiovisual inputs.

[00:36:05] Speaker 01:
It's receiving the set-top box, and that is the Claim 69 limitation.

[00:36:09] Speaker 01:
The last thing I'll say, I'm out of time, when the codec 309 designation is used, when Connolly was specifically referencing a particular drawing, it's not like he's saying codec 309 is different from every other codec.

[00:36:24] Speaker 01:
It uses that designation when he's referring to a particular figure.

[00:36:28] Speaker 01:
Thank you very much.

[00:36:29] Speaker 03:
Thank you.

[00:36:30] Speaker 03:
Thank you both.

[00:36:30] Speaker 03:
The case is taken under submission.