[00:00:18] Speaker 03:
Next space is Nintendo of America versus iLife Technologies.

[00:00:49] Speaker 03:
2016 2266 Mr. Presto.

[00:01:00] Speaker 04:
How may it please the court?

[00:01:01] Speaker 04:
Joe Presto on behalf of Nintendo.

[00:01:05] Speaker 04:
This case highlights an important purpose of the written description requirement in policing priority claims.

[00:01:12] Speaker 04:
It's well settled that when a person follows a continuation of part application adds new matter to that application

[00:01:18] Speaker 04:
and then directs claims such that they encompass that new matter, that the claim is not entitled to an earlier priority date.

[00:01:27] Speaker 01:
That's not quite true.

[00:01:28] Speaker 01:
It encompasses that new matter and is not taught by the pre-existing matter.

[00:01:33] Speaker 01:
There can easily be duplicativeness, right?

[00:01:35] Speaker 01:
Correct.

[00:01:36] Speaker 01:
So the real question is whether it's covered by the pre-existing matter.

[00:01:40] Speaker 04:
Yes, but my point was, if it is new matter, then by definition, it's not covered by the pre-existing matter.

[00:01:46] Speaker 04:
And in this case,

[00:01:47] Speaker 02:
So that sort of assumes the conclusion here, right?

[00:01:50] Speaker 02:
We've got to now find out whether it truly is new matter, which really means we've got to figure out what is in the grandparent application.

[00:01:57] Speaker 04:
Correct.

[00:01:58] Speaker 04:
And in the grandparent application, we have several embodiments.

[00:02:02] Speaker 04:
One is an embodiment that only discloses a one-way transmitter.

[00:02:06] Speaker 04:
Another embodiment is where you still have that one-way transmitter and you have a remote device that might be a cell phone, but it's not with the user.

[00:02:13] Speaker 04:
The user can't make cell phone calls on a remote device.

[00:02:17] Speaker 04:
The new invention, which was an aha moment that Mr. Massman told us he came up with with the other inventors after the grandparent application was filed, was that they could combine the sensor with the cell phone so that the user could actually communicate on the cell phone as well as sense his body movements.

[00:02:38] Speaker 04:
Nowhere in that earlier grandparent application is there a device that enables that type of dual functionality.

[00:02:44] Speaker 04:
And here we have actually inventor Mr. Mastman I mentioned.

[00:02:48] Speaker 04:
He actually put a declaration in explaining that he was added as an inventor in the CIP because after the original application was filed, he and the other inventors came up with this idea of combining them into one.

[00:03:03] Speaker 02:
As I understand, what the board did here is it looked at the initial embodiment disclosed in the grandparent application, which said, OK, you can have

[00:03:12] Speaker 02:
self-contained unit with a sensor, with a processor, and an indicating means.

[00:03:19] Speaker 02:
Indicating means 41.

[00:03:20] Speaker 02:
And indicating means 41, according to the spec, can take many forms.

[00:03:25] Speaker 04:
Correct.

[00:03:26] Speaker 02:
And then in this particular present embodiment, the indicating means 41 is an RF transmitter.

[00:03:33] Speaker 02:
So there's some breathing room right there in that disclosure that it's not

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We're being told by the application that that embodiment's not restricted necessarily narrowly down to an RF transmitter.

[00:03:50] Speaker 02:
It's telling us that device that's operable to communicate the data to some monitor, some remote monitor, can take many forms.

[00:04:02] Speaker 02:
And then later on in the spec, we can see other disclosure of

[00:04:08] Speaker 02:
devices that are operable to communicate that include a number of different things, computers, cell phones, et cetera.

[00:04:15] Speaker 02:
And so as I understand what the board did is it looked at the overall written description and concluded these particular inventors provided support for a range of devices that perform this communication action.

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And so for that reason, when we go back and try to figure out

[00:04:38] Speaker 02:
What does it mean for an indicating means 41 to take many forms that can also, the inventor's fairly contemplated cell phones.

[00:04:49] Speaker 04:
Yes, so that is what the patent office did.

[00:04:51] Speaker 04:
Now when we look at those individuals.

[00:04:53] Speaker 02:
Yeah, so why is that unreasonable?

[00:04:55] Speaker 04:
Well, it's unreasonable in our view because when you look at that statement of takes many forms, they never described any other form with respect to the device that has the sensor in it.

[00:05:05] Speaker 04:
And as this court explained in Power Oasis, simply saying that it may take many forms does not help unless you describe other forms.

[00:05:14] Speaker 04:
And that issue came up exactly in Power Oasis, that just saying it can take many forms is not sufficient.

[00:05:19] Speaker 04:
Now, where we get this more detailed disclosure of the cell phone technology and other things, it's not in connection with the device that the user would have with him, which is a fundamental difference.

[00:05:31] Speaker 04:
These other ones, there's a distributed embodiment, where you have

[00:05:34] Speaker 04:
a one-way transmitter on the user, and you have a cell phone, potentially a cell phone, it's described as a variety of things that would be mounted on a wall remote.

[00:05:43] Speaker 04:
So the user cannot use that cell phone to do any type of voice communication.

[00:05:47] Speaker 04:
The only thing those earlier embodiments can do is have a transmission of an automatic signal from the sensor through the processor that the user cannot use to do voice communication, to send data messages.

[00:06:00] Speaker 04:
This is the breakthrough of the new patent.

[00:06:03] Speaker 04:
as described by the inventors.

[00:06:05] Speaker 04:
Now we are going to take, because the earlier patent talked about, it's advantageous to distribute the device so that the sophisticated communication capabilities are far away.

[00:06:15] Speaker 04:
It actually is very similar to Power Oasis on the remote versus local issue.

[00:06:19] Speaker 04:
But the new embodiment said, let's bring that communication device local with the user so that you have this new thing where a user, for the first time, can talk on his phone at the same time monitor his body movements.

[00:06:31] Speaker 04:
There's no earlier embodiment, and the patent office did not find any earlier embodiment that enabled this new functionality, which is why Mr. Massman was added as an inventor.

[00:06:41] Speaker 04:
And it's also why iLife admits that a self-contained single device that has the sensor and cell phone capabilities is not described in the earlier application.

[00:06:54] Speaker 03:
Hence, they're not entitled to the grandparent application, and in your view,

[00:06:58] Speaker 03:
The sushi is effective prior to that.

[00:07:00] Speaker 04:
That's exactly right, Your Honor.

[00:07:03] Speaker 04:
This is the reason we believe that the written description should apply here is because there's an attempt here to get back to an earlier priority date and claim that they invented something that they did not invent.

[00:07:15] Speaker 04:
The sushi is a dead-on 102B reference.

[00:07:17] Speaker 04:
The Patent Office has already found that in that the only argument they raised on sushi in related IPRs was already rejected by the Patent Office.

[00:07:26] Speaker 04:
So if the priority is not provided, there's wanted to be reference, and this court does not need to remand.

[00:07:33] Speaker 04:
It simply is an invalid claims.

[00:07:36] Speaker 04:
So there really was a new matter in the CIP.

[00:07:43] Speaker 02:
But that's subject to debate, right?

[00:07:45] Speaker 02:
Whether or not we would, if sushi is prior art, that we would just automatically find the claims unpatentable.

[00:07:54] Speaker 04:
Well, I think because of collateral stoppable the identical issue was already Litigated at the Patent Office the exact issue was already litigated at the Patent Office and they lost on that issue They chose to only raise one issue across the multiple Patents that they had regarding your sushi was the same argument in each one in the three three one Related I think I mean the claims are all probably closely related, but they're nothing

[00:08:20] Speaker 02:
exact same claim.

[00:08:21] Speaker 04:
I agree with you, Your Honor, but this court's law tells us that it doesn't matter if the claim is the same.

[00:08:26] Speaker 04:
All that matters for collateral estoppel is that the issue is the same and the issue is identical.

[00:08:32] Speaker 04:
If the case happened to be remanded, the Patent Office will face the identical issue that they already addressed without any new issue to even consider.

[00:08:41] Speaker 04:
And in addition, new arguments could be raised because under the Patent Office rules, you can't come up on appeal and go back and raise brand new issues.

[00:08:49] Speaker 04:
So the combination of collateral estoppel and waiver make a remand, actually in Nintendo's view, would be inappropriate to remand because there would be nothing to consider because of waiver and collateral estoppel.

[00:09:02] Speaker 04:
But we do, it's very important.

[00:09:04] Speaker 04:
Obviously the fundamental issue here is whether there's new matter.

[00:09:08] Speaker 04:
If you look at figure nine, figure nine for the first time you're going to see a box around figure nine.

[00:09:13] Speaker 04:
You're going to see a speaker, a microphone, the sensor, all contained within that same box.

[00:09:19] Speaker 04:
which enables the single device to provide this dual functionality, which is a fundamentally new concept that is not in the early application.

[00:09:27] Speaker 04:
And the PTAB never found that that was in the early application.

[00:09:31] Speaker 04:
In fact, it's our view that the PTAB did not find that the new embodiment was supported by the old claims, by the old disclosure, excuse me.

[00:09:40] Speaker 04:
What the patent office did was they didn't consider whether the new matter was covered.

[00:09:46] Speaker 04:
What they felt was, if we can find an embodiment in the old specification that's covered, that's good enough.

[00:09:53] Speaker 04:
And that's exactly the mistake the power oasis made, and this court made clear, was the improper legal analysis.

[00:10:00] Speaker 04:
That was a legal error by the Patent Office.

[00:10:03] Speaker 04:
Not to consider whether the new matter is covered, rather than looking back to see whether the old matter is also covered.

[00:10:10] Speaker 04:
And our view is that that was the legal error.

[00:10:13] Speaker 04:
Another legal error in our view is that

[00:10:15] Speaker 04:
we think that the appropriate construction would exclude the old embodiments.

[00:10:21] Speaker 04:
The patent office's construction includes the new and the old embodiments.

[00:10:24] Speaker 04:
Our view is that when you read the 796 specification, and we provided a yellow highlighted copy for convenience of the court at A2464 that shows all of the new matter that was added by CIP.

[00:10:38] Speaker 04:
And when you read that, the titles changed, the backgrounds changed.

[00:10:42] Speaker 04:
Every aspect of it has changed to reflect that this idea of putting the system that they earlier described within a communication device is a brand new thing.

[00:10:54] Speaker 02:
Could you quickly address the reduction, actual reduction of practice question?

[00:11:00] Speaker 04:
Yes.

[00:11:02] Speaker 04:
Our view is that the actual reduction of practice was also an error of the patent office because it was based on an improper claim construction.

[00:11:10] Speaker 04:
Our view is that

[00:11:12] Speaker 04:
Under the proper claim construction, simply having an RF transmitter would not be sufficient to reduce to practice the claims in the CIP application.

[00:11:22] Speaker 04:
And the reason is that that RF transmitter is the invention of the grandparent application.

[00:11:28] Speaker 04:
There is a new embodiment here that requires the communication device to have the sensor in it, and the communication device being much more than just sending RF transmission signals on the sensor.

[00:11:40] Speaker 04:
They never reduced the practice anything but the 481 application, the original grandparent application.

[00:11:47] Speaker 04:
The reduction of practice is exactly the figure one and two in the grandparent application.

[00:11:54] Speaker 04:
We know Mr. Massman tells us that this was a brand new aha moment idea that they had to put in the communication.

[00:11:59] Speaker 02:
There's testimony about the reduction of practice that addresses the R, yes, using an RF transmitter, like you said.

[00:12:08] Speaker 02:
And then there's also something about

[00:12:10] Speaker 02:
using an autodialer, which suggests some kind of phone was also being implemented at the time of the working prototype.

[00:12:21] Speaker 04:
Yes, your honor, the autodialer is part of the distributed embodiment.

[00:12:25] Speaker 04:
The autodialer is disclosed in that original 481 application as being something that the piece that you wear on your body that received the RF transmissions could be an autodialer, which instead of cellular technology would cause like a landline to automatically dial.

[00:12:40] Speaker 04:
That again does not put the sensor inside a communication device to provide a dual functioning device.

[00:12:47] Speaker 04:
That autodialer is a remote device in the 481.

[00:12:50] Speaker 04:
The user can't use it to make any calls because by definition it's remote.

[00:12:54] Speaker 04:
The only thing the user has is a one-way RF transmission signal that is being sent out.

[00:13:00] Speaker 04:
And all of the early embodiments, including the autodialer embodiment, only deal with that one-way RF transmission.

[00:13:08] Speaker 04:
The auto-dialer receives the art.

[00:13:09] Speaker 03:
You're into your butthole time.

[00:13:11] Speaker 03:
You can continue.

[00:13:12] Speaker 03:
I'll save it.

[00:13:13] Speaker 04:
I'll save my time.

[00:13:14] Speaker 04:
Thank you very much.

[00:13:17] Speaker 03:
We do have seats for those who are standing if you are interested.

[00:13:24] Speaker 03:
And you're not disturbing us to sit down.

[00:13:29] Speaker 00:
May it please the court.

[00:13:31] Speaker 00:
Good morning.

[00:13:34] Speaker 00:
The board correctly analyzed priority in this case by doing two things.

[00:13:39] Speaker 00:
First, construing the claims, and I'll address claim construction.

[00:13:44] Speaker 00:
And second, and I think Judge Toronto already picked up on this, comparing the original grandfather 991 application to the claims as they were construed.

[00:13:56] Speaker 00:
Nintendo's priority analysis suffers from two fundamental flaws.

[00:14:01] Speaker 00:
First,

[00:14:02] Speaker 00:
Nintendo tries to impose limitations into the construction of communications device.

[00:14:08] Speaker 00:
And we heard it during opening arguments that it has to have two-way communication, that it can't be remote from the person that's wearing it, that it can't be RF transmitter.

[00:14:22] Speaker 00:
All those are limitations that Nintendo wants to impose into the definition of communication device that are improper.

[00:14:28] Speaker 02:
Well, let's assume for the moment

[00:14:31] Speaker 02:
you're fine on the understanding of what a communications device is in light of this specification.

[00:14:37] Speaker 02:
But I'm trying to figure out to what degree you need to rely on your disclosed distributed embodiment in order to find written description support as well as actual reduction to practice because the claims all call for the system to be within a communications device and in your distributed

[00:15:00] Speaker 02:
embodiment that's disclosed.

[00:15:03] Speaker 02:
The sensor is not within the communications device.

[00:15:07] Speaker 02:
The sensor is down the hallway in a separate room attached to the person, and the communications device is a walled unit.

[00:15:18] Speaker 00:
I disagree, Your Honor, for this reason.

[00:15:20] Speaker 00:
If you have a distributed communication device made up of multiple components, then the system, the processor and the sensor... You have a distributed embodiment.

[00:15:30] Speaker 02:
Let's not go so quickly to say you have a distributed communications device.

[00:15:36] Speaker 02:
You have to convince me of that before you can get to the next step.

[00:15:41] Speaker 00:
Well, I think that's a claim construction issue.

[00:15:43] Speaker 00:
The patent specifically says that you can have one advantageous embodiment is when the process and their sensor are not co-located.

[00:15:51] Speaker 00:
And that is an appropriately arranged device, uses the word device singular.

[00:15:56] Speaker 00:
The other thing that I think's important.

[00:15:58] Speaker 02:
I think that's, perhaps that goes to the motion detection device, right?

[00:16:04] Speaker 02:
And then processing and understanding what the motion detector has detected.

[00:16:11] Speaker 02:
But then there's the communication aspect, which is not necessarily part of that motion detection.

[00:16:18] Speaker 00:
So what we have in terms of written description in terms of the communication device, we have two.

[00:16:25] Speaker 00:
First, the board found that System 11, the body worn device, by itself is a communication device.

[00:16:30] Speaker 00:
It had the sensor, the processor, and the transmitter.

[00:16:33] Speaker 00:
And I think that's clearly correct in terms of a claim construction standpoint.

[00:16:36] Speaker 00:
We have the claims only require that the system transmit.

[00:16:40] Speaker 00:
There's no requirement that it be able to receive communications from somebody else or have any of the other dual functionality that Nintendo wants to attribute it to.

[00:16:49] Speaker 00:
So the claims themselves only require transmission.

[00:16:51] Speaker 00:
So we clearly have written description support of System 11, which is an entire communication device in and of itself that has all the elements of the claim.

[00:17:00] Speaker 00:
What we also have is a distributed communications device.

[00:17:04] Speaker 00:
And the board specifically made that factual finding.

[00:17:07] Speaker 00:
And by the way, the written description decision by the board is a factual finding that's entitled to deference and must be supported by substantial evidence.

[00:17:17] Speaker 00:
And what the board found,

[00:17:18] Speaker 02:
What page?

[00:17:20] Speaker 00:
On the distributed embodiment.

[00:17:23] Speaker 00:
Are you asking what is the page of the patent that describes it?

[00:17:26] Speaker 02:
The page of the board decision that said this distributed embodiment, it's also written description support for a system within a communications device.

[00:17:39] Speaker 00:
Yes, Your Honor.

[00:17:39] Speaker 00:
I believe that is at the final written decision 22, I believe.

[00:17:48] Speaker 00:
I'm sorry, it's on page 21, Your Honor, in the middle of the page.

[00:17:53] Speaker 00:
It discussed the distributed embodiment that we were just discussing.

[00:17:57] Speaker 00:
In the middle, it says, based on these disclosures, we find that the grandparent application provides adequate written description support for system 11 and remote receiver unit 103 being a communication device, as recited in the challenge claims.

[00:18:11] Speaker 00:
And so the board has not only in claim construction, but here in the priority analysis, made the specific factual finding

[00:18:18] Speaker 00:
that that is a communication device, those two items together.

[00:18:22] Speaker 00:
And by the way, I also think it's important, which is never acknowledged by Nintendo in the briefing, but you have to look at the dependent claims that actually discuss cell phones.

[00:18:32] Speaker 00:
So for example, if you look at dependent claim two, which is that appendix 51, and this is true for claims two, three, 11, and 12, the system as claimed in claim one

[00:18:48] Speaker 00:
wherein said communications device comprises one of and then it lists a cell phone and other devices.

[00:18:57] Speaker 00:
And I think it's critical that the use of the term comprises in the context of what the communication device is requires that it can include more than just the cell phone.

[00:19:07] Speaker 00:
So, of course, we know comprises means including but not limited to, but the way the claims were written, the communications device can include but not be limited to,

[00:19:17] Speaker 00:
a cell phone or a computer or the other devices that are listed on claims 2, 3, 11, and 12, as well as, for example, the body-worn sensor.

[00:19:27] Speaker 00:
And these claims were intended and drafted to specifically cover the distributed device environment we talked about earlier with system 11 and remote, mobile station 103.

[00:19:39] Speaker 00:
And the patent, of course, specifically says that mobile station 103 can be a cell phone.

[00:19:45] Speaker 00:
Not only is there support in the claims, we have support in the specification.

[00:19:49] Speaker 00:
And we also have a specific factual finding by the board, which is entitled the deference, that that distributed device is a communications device within the meaning of the claims.

[00:20:00] Speaker 02:
And it's a communications device.

[00:20:03] Speaker 02:
Why?

[00:20:04] Speaker 02:
Why does the sensor that you're wearing get to be called part of a communications device?

[00:20:13] Speaker 02:
That sensor has some kind of RF transmitter, and so therefore that sensor is in a sense communicating with the wall unit, with the remote unit.

[00:20:23] Speaker 00:
Exactly, Your Honor.

[00:20:24] Speaker 00:
That is the description.

[00:20:25] Speaker 00:
You have the sensor 11.

[00:20:27] Speaker 02:
And then the wall unit has its own, I guess, communication device.

[00:20:33] Speaker 02:
It does.

[00:20:34] Speaker 02:
That's communicating to the monitor.

[00:20:36] Speaker 00:
It receives communications, obviously, from system 11.

[00:20:39] Speaker 00:
And it's described as it could be an autodialer.

[00:20:41] Speaker 00:
It's described as having one option, having embedded cellular technology.

[00:20:45] Speaker 00:
It's described as being a cell phone.

[00:20:48] Speaker 00:
So that distributed device, the communications device in that description is both components.

[00:20:55] Speaker 00:
And one of the important decisions that was made by the board in the claim construction is two things.

[00:21:00] Speaker 00:
And Nintendo's claim construction refuses to address either one.

[00:21:04] Speaker 00:
One is, is transmission sufficient?

[00:21:07] Speaker 00:
And I think based on the claim language itself that only requires transmission and the other things that were cited by the board, transmission is sufficient to be a communications device.

[00:21:16] Speaker 00:
But the other thing that was addressed by the board is what I pointed to in the final written decision on page 21.

[00:21:20] Speaker 00:
And it's well briefed in our claim construction section in our red brief.

[00:21:28] Speaker 00:
And that is a communications device can be made up of multiple components.

[00:21:33] Speaker 00:
That's specifically called out in the specification

[00:21:36] Speaker 00:
A couple of different places, both columns 10 and 11, discuss this distributed device and the board make that factual determination that that is a communications device and that it met the written description requirement.

[00:21:53] Speaker 00:
And there is substantial evidence to support that board finding and it should not be disturbed.

[00:22:01] Speaker 00:
One thing I want to address with respect to Nintendo's argument is

[00:22:06] Speaker 00:
this backwards analysis of priority.

[00:22:10] Speaker 00:
This is fundamental to their analysis of the written description issue.

[00:22:15] Speaker 00:
Nintendo's position is that if the CIP claims encompass any new matter, then you're not entitled to priority date.

[00:22:27] Speaker 00:
And that's directly contrary to long-standing federal circuit law, that you can have description support in both the original application and the CIP.

[00:22:37] Speaker 00:
And when you have common matter like that, the original application is entitled a priority.

[00:22:43] Speaker 00:
We've cited the Santaris case, Judge Newman, that says that that concept, where it's supported both by the original application and also appears in the... Can you explain why the

[00:22:54] Speaker 02:
The purported new co-inventor in his declaration said, we're adding all this new matter and we're claiming a new invention.

[00:23:04] Speaker 02:
And the new invention is installing the system in a cell phone.

[00:23:09] Speaker 00:
Well, I think that's the way Nintendo characterizes the testimony, but it's not accurate.

[00:23:13] Speaker 00:
What Mr. Massman said, and I think Mr. Massman's testimony is a red herring on this written description issue.

[00:23:19] Speaker 00:
What he said was,

[00:23:21] Speaker 00:
that, first of all, he was very, very clear.

[00:23:23] Speaker 00:
He was not involved in the original invention, that by the time he came to the company, they already had a working device, like is described in the 481.

[00:23:32] Speaker 00:
So he was not involved in the original invention that includes System 11, includes the distributed device with the autodialer.

[00:23:39] Speaker 00:
He's very clear in paragraph six of his declaration that's at A2024 that he was not involved in that.

[00:23:47] Speaker 00:
He did not say

[00:23:48] Speaker 00:
as Nintendo characterized it, that he was involved in a new invention.

[00:23:51] Speaker 00:
What he says is he had discussions with the inventors about new embodiments.

[00:23:56] Speaker 00:
And that new material was added to the CIP to discuss that.

[00:24:02] Speaker 00:
They did beef up the written description in terms of communication device.

[00:24:06] Speaker 00:
And when you file a CIP, you don't know what's going to be required by the examiner in terms of written description support for a particular claim.

[00:24:14] Speaker 00:
But as it turns out, the way that the claims issued

[00:24:18] Speaker 00:
None of those claims required any of that new material.

[00:24:22] Speaker 00:
As I've already mentioned, even the dependent claims that mention a distributed system that has a cell phone is already supported by the original 991 application.

[00:24:32] Speaker 01:
Are there other claims that did require the added material?

[00:24:39] Speaker 00:
None of the disputed claims require that.

[00:24:42] Speaker 00:
I haven't analyzed the ones that issued that aren't in dispute or weren't challenged.

[00:24:46] Speaker 00:
But at least at first blush, it does not appear that any of the claims require the new material.

[00:24:53] Speaker 00:
For example, none of the claims state that everything would have to be contained in a cell phone.

[00:24:58] Speaker 00:
None of the claims require that.

[00:24:59] Speaker 00:
The only claims that even mention a cell phone are claims two and 11.

[00:25:03] Speaker 00:
And as I already mentioned earlier, all that says is you have a communications device that comprises a cell phone.

[00:25:09] Speaker 01:
Should this added inventor have been added as a code inventor?

[00:25:13] Speaker 00:
Well, I think at the time of the application,

[00:25:15] Speaker 00:
They had these discussions.

[00:25:17] Speaker 00:
They beefed up the specification.

[00:25:18] Speaker 00:
And again, you don't know how a claim is going to be construed.

[00:25:21] Speaker 00:
You don't know what the examiner is going to require in terms of 112.

[00:25:26] Speaker 00:
And so I certainly understand if he was involved in those discussions why he would have been added as an inventor.

[00:25:31] Speaker 00:
And you also don't know what claims you're going to get.

[00:25:34] Speaker 00:
But in retrospect, as to these claims, all of these claims are fully supported by the grandparent application, which is the factual determination that was made by the board.

[00:25:45] Speaker 00:
And based on the board's claim construction and based on the board's priority analysis, he's not an inventor as to these disputed claims.

[00:25:58] Speaker 00:
I want to briefly address reduction of practice.

[00:26:02] Speaker 00:
I'm sorry, one other question.

[00:26:06] Speaker 01:
In your view, how did the, as I understand it, the communications device limitation was added to overcome

[00:26:15] Speaker 01:
possible double patenting, rejection or objection or something.

[00:26:21] Speaker 01:
How, in your view, did it do that?

[00:26:24] Speaker 00:
Well, very simply, the 481, the original grandparent application in the 481 patent didn't have a communications device requirement.

[00:26:30] Speaker 00:
So the 481 claims were very broad.

[00:26:33] Speaker 00:
It didn't require transmission.

[00:26:34] Speaker 00:
For example, claim one of the 481 just requires you have a system, you have a processor, you have a sensor, and that it processes the acceleration in a certain manner.

[00:26:44] Speaker 00:
It doesn't require transmission and doesn't require communications.

[00:26:47] Speaker 00:
So adding a communication device element and also adding the transmission element, which all the claims, at least in the 796 patent, require transmission as well, none of that was required by the original 481 patent.

[00:27:01] Speaker 00:
And so it is patentably distinct, and it does add a new limitation.

[00:27:08] Speaker 00:
With respect to briefly reduction of practice,

[00:27:14] Speaker 00:
I think the board's decision with respect to reduction of practice for most of the claims is very clear.

[00:27:21] Speaker 00:
When you properly construe the claims as the board did and as... Most of the claims doesn't quite get you home, does it?

[00:27:28] Speaker 00:
Well, this is the issue on that.

[00:27:30] Speaker 00:
So with respect to claims 2, 3, 11, and 12, which is, I assume, Judge Toronto's, what you're referring to, which is the ones that comprise a cell phone or a computer, we've cited

[00:27:41] Speaker 00:
law on that with respect to the extent to which you have to swear behind a particular reference.

[00:27:49] Speaker 00:
If you give me one moment.

[00:27:53] Speaker 00:
By the way, it's discussed in the red brief 55 to 64, and this law has never been disputed or contested in the reply brief.

[00:28:02] Speaker 00:
They didn't address it at all.

[00:28:04] Speaker 00:
What the law says, based on the Stempel case, is that all the applicant is required to show

[00:28:11] Speaker 00:
is priority with respect to so much of the claim convention as the reference happens to show.

[00:28:17] Speaker 00:
So you look at the extent of the disclosure in Yasushi, and so long as your reduction of practice evidence is commensurate in scope with what Yasushi shows, Yasushi is removed as a reference for all purposes.

[00:28:30] Speaker 00:
That's the Stempel case, 241F2 755.

[00:28:33] Speaker 00:
It's cited in the brief again.

[00:28:36] Speaker 00:
And by the way, this is...

[00:28:38] Speaker 02:
You're saying the actual reduction of practice doesn't need to support the breadth and scope or specificity of your claims?

[00:28:47] Speaker 00:
With respect to elements that are not disclosed in the reference, such as, for example, I'm going to put everything in a computer, which isn't discussed in your sushi or a cell phone, you're only required to show reduction of practice to the extent of the reference.

[00:29:01] Speaker 02:
So actual reduction of practice analysis is dependent on what the reported prior art reference discloses, not

[00:29:08] Speaker 00:
based on what the claim language is?

[00:29:10] Speaker 00:
You do have to reduce to practice the claims.

[00:29:12] Speaker 00:
And the board specifically found, by the way, made a factual determination that we did show reduction of practice of all disputed claims.

[00:29:19] Speaker 00:
So let's get that clear, that the board has made that factual determination, very detailed analysis, that reduction of practice was shown as to all claims.

[00:29:27] Speaker 00:
But when it comes to these dependent claims, 2, 3, 11, and 12, yes, if you look at the MPEP

[00:29:34] Speaker 00:
715.02.

[00:29:34] Speaker 00:
It discusses the rules.

[00:29:36] Speaker 00:
It discusses all the cases.

[00:29:37] Speaker 00:
Many of those cases are also discussed in the red brief.

[00:29:41] Speaker 00:
What it says specifically is, yes, if you show in your reduction of practice evidence all that the reference shows, then you don't have to show more.

[00:29:50] Speaker 00:
You remove it as a reference.

[00:29:51] Speaker 00:
It's no longer 102A art, and it's removed for all purposes.

[00:29:56] Speaker 00:
And it makes sense in the context of 102A.

[00:29:58] Speaker 00:
What 102A says is that

[00:30:01] Speaker 00:
you're entitled to a patent unless a printed publication shows the invention prior to your date of invention.

[00:30:08] Speaker 00:
If your sushi doesn't show those additional elements, it's not 102A art.

[00:30:13] Speaker 00:
And so I think this issue is discussed extensively in 55 to 64, the red brief, and also MPEP 715.02.

[00:30:22] Speaker 00:
And so even setting aside the board's decision about reduction of practice of all claims, which I think is entitled to deference and is correct

[00:30:30] Speaker 00:
and is supported by substantial evidence, this argument about what you have to show to swear behind a reference with respect to claims that include elements that are not discussed in the prior art reference here, Yasushi, I think also requires that even if you were to consider the reduction of practice evidence inadequate for 2, 3, 11, and 12, which are the dependent claims that have the cell phone, et cetera, this law.

[00:30:56] Speaker 03:
Thank you, Mr. Wilson.

[00:30:57] Speaker 03:
We have the point.

[00:30:58] Speaker 00:
Thank you, Your Honor.

[00:31:00] Speaker 03:
Mr. Prester?

[00:31:02] Speaker 04:
Thank you, Your Honor.

[00:31:03] Speaker 04:
We'll give you four minutes.

[00:31:04] Speaker 04:
Thank you.

[00:31:05] Speaker 04:
Just briefly on the reduction of practice, there was an admission here that you have to at least reduce the practice which is disclosed on the prior device.

[00:31:12] Speaker 04:
The Yashoushi reference teaches that the sensor is in what they call a personal handy phone system.

[00:31:17] Speaker 04:
It's within the same device.

[00:31:18] Speaker 04:
That's why Yashoushi is a dead-on 102 reference to the claims.

[00:31:23] Speaker 04:
And that is it.

[00:31:24] Speaker 04:
The disclosure of putting in a cell phone is at the record at 294.

[00:31:29] Speaker 04:
Now getting back to the distributed embodiment.

[00:31:31] Speaker 04:
The distributed embodiment, when you look at the new claims, the claims expressly are excluding the distributed embodiment.

[00:31:39] Speaker 04:
The distributed embodiment said, don't put these things in the same device.

[00:31:44] Speaker 04:
The CIP was a complete reversal when Mr. Massman had the aha moment of let's put it all together, because the reasoning is set forth in the background of the specification in column 2, lines 19 to around 33.

[00:31:59] Speaker 04:
where Mr. Massman noticed that people were carrying around, very commonly now, cell phones.

[00:32:04] Speaker 04:
Cell phones were starting to become common.

[00:32:06] Speaker 04:
People were not carrying around distributed devices.

[00:32:09] Speaker 04:
The problem is the Patent Office ignored the context that the term communication device is being used in the CIP application.

[00:32:17] Speaker 04:
The communication device is not a dedicated RF transmitter that's dedicated to sending body signals.

[00:32:24] Speaker 04:
It's to let the user do voice and data communication.

[00:32:27] Speaker 04:
That's what Figure 9 shows us.

[00:32:29] Speaker 02:
Let me just tell you what's on my mind right now.

[00:32:33] Speaker 02:
I'm thinking of an example of something to do with wireless earbuds and then a cell phone that's maybe working with a streaming website to get music.

[00:32:45] Speaker 02:
And then the music goes to the machine, the phone, and then the music goes from the phone to my wireless earbuds.

[00:32:56] Speaker 02:
Are the earbuds in the phone?

[00:32:58] Speaker 02:
phone together a communications device?

[00:33:03] Speaker 02:
Or why couldn't you consider that mix of elements together as a communications device?

[00:33:12] Speaker 04:
I think there are many devices that could be potentially distributed that could be a communications device.

[00:33:17] Speaker 04:
But the communication devices that we're talking about in the CIP application are devices that enable the user to communicate.

[00:33:25] Speaker 04:
Not just automatic sensing of sensor signals.

[00:33:27] Speaker 04:
That's the old invention.

[00:33:29] Speaker 04:
So you're having a distributed device on you that enables you to communicate to different devices that are on the user.

[00:33:35] Speaker 04:
Maybe that could be a communication device in the CIP application.

[00:33:39] Speaker 04:
But that's not what we have here.

[00:33:41] Speaker 02:
Right.

[00:33:41] Speaker 02:
What we're wrestling with here is that the board already made a fact finding.

[00:33:46] Speaker 02:
And now we're trying to wrestle with that fact finding.

[00:33:50] Speaker 02:
I understand your argument.

[00:33:51] Speaker 02:
And then decide, OK, they said.

[00:33:54] Speaker 00:
Yes.

[00:33:55] Speaker 02:
that this particular embodiment, this so-called distributed embodiment, is collectively a communications device.

[00:34:03] Speaker 04:
I understand, Your Honor, and that comes back exactly to the law of this Court that set forth in power Oasis.

[00:34:08] Speaker 04:
There was an earlier embodiment that is different.

[00:34:11] Speaker 04:
There's no question that that distributed embodiment is different.

[00:34:13] Speaker 04:
In fact, it's fundamentally different.

[00:34:16] Speaker 04:
In fact, the claim language we think excludes that embodiment, as Your Honor said, that is not within

[00:34:21] Speaker 04:
It's not a system within a communication device.

[00:34:23] Speaker 04:
So we don't have to think that distributed environment should be a communication device.

[00:34:26] Speaker 02:
Unless the whole distributed environment is a communication device.

[00:34:29] Speaker 02:
I guess that's the problem.

[00:34:30] Speaker 02:
I'm trying to figure out.

[00:34:31] Speaker 04:
Well, the reason it's not a communication device in our view is that it doesn't enable the user to communicate.

[00:34:37] Speaker 04:
Figure 9 allows voice communication.

[00:34:40] Speaker 04:
The distributed environment does not allow the user to do anything.

[00:34:43] Speaker 04:
It doesn't add any user communication functionality whatsoever.

[00:34:47] Speaker 04:
All it does is offload some of the processing capability

[00:34:50] Speaker 04:
to a device that's on the wall that can communicate to a monitoring station.

[00:34:54] Speaker 04:
The user cannot use it to make calls, two-way texting, or anything else.

[00:34:59] Speaker 04:
That is the aha moment that Mr. Massman came up with and was added to the specification for that specific purpose.

[00:35:07] Speaker 04:
And this gets down.

[00:35:07] Speaker 04:
Even though the distributed environment was covered, Your Honor, this is exactly the power oasis situation, where you had a user interface on a vending machine that did not provide support

[00:35:18] Speaker 04:
for a user interface remotely on a user's laptop.

[00:35:22] Speaker 04:
We have that exact same situation here in reverse.

[00:35:25] Speaker 04:
They told you in the original case to put things in remote locations.

[00:35:28] Speaker 04:
Now in the CIP, they're telling you, oh, we got a great new idea.

[00:35:32] Speaker 04:
Let's put it all in one.

[00:35:34] Speaker 04:
That's exactly the situation in Power Oasis.

[00:35:37] Speaker 04:
And it's the legal decision that the patent office made that was wrong.

[00:35:41] Speaker 04:
They looked to whether to see old embodiments were covered rather than the critical questions.

[00:35:45] Speaker 04:
is whether new matter is encompassed by those claims.

[00:35:48] Speaker 04:
The Patent Office did not decide.

[00:35:49] Speaker 03:
Thank you, Mr. Preston.

[00:35:50] Speaker 03:
Your communication device is looking red.

[00:35:55] Speaker 03:
Thank you.

[00:35:56] Speaker 03:
Thank you, Your Honor, very much.

[00:35:57] Speaker 03:
We will take the case under review.

[00:35:59] Speaker 03:
Appreciate it.